JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark NaViKey – Earlier Community word mark NAVI – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Breach of the duty to state reasons – Article 75 of Regulation No 207/2009)
In Case T‑393/09,
NEC Display Solutions Europe GmbH, established in Munich (Germany), represented by P. Munzinger, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Hanne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Nokia Corp., established in Espoo (Finland), represented by J. Tanhuanpää, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 June 2009 (Case R 1143/2008-2), relating to opposition proceedings between Nokia Corp. and NEC Display Solutions Europe GMbH,
THE GENERAL COURT (Sixth Chamber),
composed of E. Moavero Milanesi, President, N. Wahl and S. Soldevila Fragoso (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 2 October 2009,
having regard to the response of OHIM lodged at the Registry of the Court on 12 January 2010,
having regard to the response of the intervener lodged at the Registry of the Court on 21 December 2009,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 12 May 2005, the applicant, NEC Display Solutions Europe GmbH, filed an application for registration of a Community trade mark at OHIM, under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word mark NaViKey.
3 The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘computer and computer accessories, namely computer monitors’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 47/2005 of 21 November 2005.
5 On 20 February 2006, the intervener, Nokia Corp., filed a notice of opposition, under Article 8(1) of Regulation (EC) No 40/94 (now Article 8(1) of Regulation No 207/2009), to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above and based the opposition on Community word mark No 726489 NAVI and Finnish word mark No 216948 NAVI.
6 The Community word mark No 726489 was registered on 17 December 2001 for the following goods and services:
– Class 9: ‘Electric and electronic control and regulating equipments, computer programs; all for use in apparatuses for recording, processing, sending, transmission, storage or reproduction of sound, data or images; user interfaces; keyboards, keypads, buttons, switchboards all for use in the above mentioned apparatuses; but not including any such goods primarily for use in navigation for vehicles’;
– Class 38: ‘Telecommunications; but not including any such services primarily for use in navigation for vehicles’.
7 The Finnish word mark No 216948 was registered on 15 March 2000 to designate goods falling within Class 9.
8 On 30 May 2008 the Opposition Division upheld the opposition in its entirety. It considered, in view of the earlier Community mark (‘the earlier mark’), that there was a likelihood of confusion between the two signs and excluded the earlier Finnish mark since its use had not been established.
9 On 30 July 2008, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
10 By decision of 16 June 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal, holding that there was a likelihood of confusion between the earlier mark NAVI and the mark applied for NaViKey. First, it found that the various goods in Class 9 covered by the mark applied for and by the earlier mark are similar to the extent that there is a close connection between them and they are complementary, since the goods have the same intended purpose. Secondly, it held that the signs in question are similar phonetically, visually and, possibly, conceptually for the public which understands the meaning of those signs. Moreover, the Board of Appeal confirmed the Opposition Division’s finding that only the earlier Community mark NAVI should be taken in consideration, since the intervener had not provided proof of use of the earlier Finnish mark.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– dismiss the opposition filed by the intervener to the application for registration of the Community trade mark NaViKey;
– order OHIM to pay the costs, including those incurred by the applicant before the Board of Appeal;
– order the intervener to pay the costs, including those incurred by the applicant before the Board of Appeal.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– refuse to register the mark NaViKey;
– order the applicant to pay the costs, including those incurred by the intervener in the proceedings before the Board of Appeal.
Law
14 The applicant raises two pleas in law in support of its action. By the first it alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and, by the second, infringement of Article 75 of Regulation No 207/2009.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
15 The applicant disagrees with the reasoning of the contested decision as regards, first, the determination of the relevant public; secondly, the similarity of the goods in question; thirdly, the earlier mark’s lack of or low degree of distinctiveness in the comparison of the signs in question and, fourthly and finally, the Board of Appeal’s global assessment of the likelihood of confusion.
16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks in question are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).
19 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods in question in that territory.
The relevant public
20 The applicant submits that the Board of Appeal’s finding, at paragraph 22 of the contested decision, that the relevant public consists of both professionals and the public at large with an average degree of attentiveness is wrong. It considers, in particular, that the target public is made up of attentive and circumspect consumers who buy the goods in question, in general, after having studied the relevant literature and inspected them on site.
21 As the Board of Appeal noted at paragraph 21 of the contested decision, according to case-law, in the global assessment of the likelihood of confusion, account must be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
22 In the present case, the Board of Appeal defined the relevant public in paragraph 22 of the contested decision, stating that the goods and services in question are addressed both at the professional public and at the public at large, throughout the European Union.
23 It should nevertheless be pointed out that, contrary to what the applicant claims, the Board of Appeal did not expressly define that public’s level of attention in paragraph 22 of the contested decision. However, nor did it call into question the Opposition Division’s assessment that ‘the consumer’s level of attention [regarding the goods in question] would be higher than regarding articles of daily use’ owing to ‘the specific nature of those products’, which it reiterated in paragraph 8 of the contested decision. The Board of Appeal’s silence on that point can be explained by the fact that the applicant did not raise any objections in that regard in its appeal. Therefore, it must be held that the Board of Appeal agreed with the Opposition Division’s assessment concerning the level of attention of the relevant public and implicitly included it in its examination (see, to that effect, Case T-304/06 Reber v OHIM - Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 47).
24 The applicant’s argument concerning the level of attention of the relevant public must therefore be dismissed.
25 With regard to the way in which the goods and services in question are marketed and in which the signs in dispute will be perceived by the relevant public, it will be examined under the overall assessment of the likelihood of confusion.
Comparison of the goods in question
26 The applicant disputes the Board of Appeal’s finding that the goods in question are similar since they are complementary and have the same intended purpose. In particular, the applicant maintains that the goods in Class 9 covered by the earlier mark are, in essence, components for mobile phone equipment and that they have neither the same nature nor the same purpose as computer monitors.
27 According to settled case-law, in order to assess the similarity between goods or services, all the relevant features of the relationship between them should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
28 In the present case, the goods in question are, on the one hand, those covered by the mark applied for, namely computers and computer monitors, in Class 9, and, on the other hand, those covered by the earlier mark, namely electric and electronic control and regulating equipments, computer programs; user interfaces; keyboards, keypads and buttons, all for use in apparatuses for recording, processing, sending, transmission, storage or reproduction of sound, data or images and not including any such goods primarily for use in navigation for vehicles, in Class 9. At paragraph 38 of the contested decision, the Board of Appeal excluded the services in Class 38 covered by the earlier mark from the examination of the likelihood of confusion.
29 In that regard, it should be noted that the description of the apparatuses for which the goods covered by the earlier mark are intended is broad enough to include not only mobile phones, as the applicant claims, but also computers. Indeed, computers are, in essence, apparatuses for the recording, processing and reproduction of data, whereas mobile phones are apparatuses for the transmission of sound, and the most sophisticated (in particular ‘smartphones’) even enable the transmission and archiving of data and images. Therefore, the Board of Appeal rightly found, at paragraph 34 of the contested decision, that the goods covered by the earlier mark are not confined to components for mobile phone equipment, but also concern goods used with computers, such as computer programs or user interfaces, as well as their equipment.
30 Since the goods designated by the earlier mark are also intended to be used with computers or even form part of their equipment, it must be held that all the goods covered by the marks in dispute help to develop the same function, namely the use of a computer system, and that they have the same users. Moreover, the goods covered by the earlier mark are complementary to computers, covered by the mark applied for, since they are essential or important, as the case may be, for their use, so that consumers may think that the same undertaking is responsible for the production of those goods. The Board of Appeal therefore rightly found, at paragraph 37 of the contested decision, that the goods in Class 9 covered by the two marks at issue have the same purpose and a close complementary connection.
31 Therefore, contrary to what the applicant claims, it must be concluded that the goods covered by the mark applied for and those covered by the earlier mark are similar.
Comparison of the signs in question
32 The applicant submits, first, that the earlier mark is descriptive and lacks distinctiveness or, at least, is of very low distinctiveness, and, second, that the element ‘navi’ lacks distinctiveness and that the suffix ‘key’ is the distinctive and dominant element of the mark applied for. Therefore, there are significant visual, phonetic and conceptual differences between the two signs.
33 In that regard, it should be recalled that, according to case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression they produce, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case-law cited).
34 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30, and judgment of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 89).
35 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, inter alia, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by it (Nestlé v OHIM, paragraph 43).
36 In accordance with the case-law, when assessing the dominant character of one or more components of a mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (MATRATZEN, paragraph 35).
37 It is in the light of those considerations that it is appropriate to consider whether there is a similarity between the mark applied for NaViKey and the earlier mark NAVI.
38 First of all, it should be pointed out that the mark applied for consists of the juxtaposition of the elements ‘navi’ and ‘key’, whereas the earlier mark consists of the single element ‘navi’. Thus, the earlier mark NAVI is incorporated, with typographical differences, in the mark applied for NaViKey.
39 As the intervener conceded, the element ‘navi’ derives from ‘navigation’. In the computing and telecommunications sector, that term means in certain languages of the European Union, such as French or English, to move around within a computer network. Thus in French we refer to ‘naviguer dans les menus’ or ‘menu de navigation’ and in English to ‘navigation menus’ or to ‘navigate a menu’. That term has quite close equivalents in Spanish (navegar), in Italian (navigare) and in German (navigieren), with the same meaning (respectively, ‘navegar por los menus’, ‘navigare nei menu’ and ‘navigieren in den Menus’).
40 In that context, the applicant maintains that the element ‘navi’ of the earlier mark as well as the earlier mark itself are descriptive and lack distinctiveness. It criticises the Board of Appeal for failing to reach that conclusion by finding that other meanings for the element ‘navi’ were conceivable and maintains that, since the earlier mark is a descriptive mark, its proprietor should not be able to prevent the registration of the mark NaViKey.
41 As is apparent, admittedly, from settled case-law and as the applicant pointed out, the fact that a sign has several meanings is not relevant in determining whether it is descriptive. In that regard, it is sufficient if at least one of the possible meanings of the sign in question designates a characteristic of the goods or services concerned (see, by analogy, Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 38, and Case T‑316/03 Münchener Rückversicherungs‑Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 33).
42 Nevertheless, that error by the Board of Appeal cannot render the contested decision unlawful. In the first place, that argument is tantamount to alleging that the earlier mark is precluded by absolute grounds for refusal and should not be registered. In that case, it should be recalled that that is not a matter which the Court is competent to determine in the context of opposition proceedings (judgment of 15 October 2008 in Joined Cases T-305/06 to T-307/06 Air Products and Chemicals v OHIM – Messer Group (Ferromix, Inomix and Alumnix), not published in the ECR, paragraph 62).
43 In the second place, the fact that, as the applicant claims, the intervener conceded that the element ‘navi’ constituting the earlier mark is an abbreviation for ‘navigation’ and that that element is used as an abbreviation for ‘navigation’ or ‘navigationssystem’ and has become a customary term in German to designate navigation systems is irrelevant in the present case for the purpose of determining whether that element or the mark itself is descriptive. In that regard, first, it must be pointed out that, contrary to what the applicant claims, the intervener did not concede that the element ‘navi’ is an abbreviation for ‘navigation’ but merely stated that it derives from that word, as is apparent from paragraph 23 of the contested decision. Secondly, it should be noted that the description of the goods covered by the earlier mark expressly excludes goods primarily for use in navigation for vehicles. Therefore, it is impossible to establish a specific and direct link, as required by case-law, between the goods and services covered by the earlier mark and that meaning of the element ‘navi’.
44 Consequently, the Board of Appeal rightly did not hold in the contested decision that the element ‘navi’ and the earlier mark NAVI were descriptive.
45 It should, however, be noted that the Board of Appeal’s finding at paragraph 26 of the contested decision, that the earlier mark is endowed with normal inherent distinctive character, is wrong. Admittedly, as the Board of Appeal stated at paragraph 24 of the contested decision, the applicant did not furnish sufficient proof showing that the element ‘navi’ will be perceived by the relevant public as a known abbreviation for ‘navigation’, throughout the European Union. However, since the element ‘navi’ is the same as the root of the word ‘navigation’, it must be held, contrary to the Board of Appeal’s finding at paragraph 26 of the contested decision, that it can evoke, on the part of a section of the relevant public, the idea of movement within a computer network in respect of goods such as equipment for computers or for mobile phones. As an evocative element, it must therefore be considered to have weak distinctive character.
46 On the basis of the allegedly descriptive character of the element ‘navi’, the applicant claims that ‘key’ is the dominant element of the mark applied for and that it is therefore the element to be taken into consideration in order to carry out a comparison of the two signs.
47 That argument is entirely unfounded. In that regard, first, it must be held that ‘key’ has a weak distinctive character with respect to computers and screens, since it designates one of their components, namely a button. Secondly, the juxtaposition of the English word ‘key’, meaning ‘button’ or ‘key’, in accordance with the rules of English grammar, and the element ‘navi’ forms a logical unit which means ‘navigation button’ and will evoke for the relevant public the idea of a button used to navigate, that is to say to move around within a computer network, such as that of the configuration menu of a computer or screen.
48 It follows from the foregoing that the two terms making up the mark applied for have, at least, a weak distinctive character. Furthermore, the element ‘navi’ – which is placed at the beginning of the two marks, takes up two of the three syllables of the mark applied for and is longer than the second element of that mark – makes a significant contribution to the overall impression produced by it (RESPICUR, paragraph 60). Indeed, as stated at paragraph 47 above, the element ‘navi’ constitutes, with the element ‘key’, a logical unit which evokes a navigation button. Therefore, in view of the case-law cited at paragraph 36 above and contrary to what the applicant claims, there are no grounds for excluding the term ‘navi’ from the overall impression produced by the sign NaViKey and for considering ‘key’ to be the dominant element of that sign (see, to that effect, Case T-22/04 Reemark v OHIM – Bluenet (Westlife) [2005] ECR II-1559, paragraph 36).
49 Since it has been established that ‘key’ is not the dominant element of the mark applied for, it is necessary to examine each of the marks in question as a whole in order to determine whether there are similarities between them.
50 Visually, the presence of the element ‘navi’ in the two marks in question results in their being somewhat similar. In addition, the fact that the earlier mark NAVI is wholly included in the mark applied for NaViKey and that it is the first part of that mark reinforces that visual similarity, without the different length of the signs being able to offset that impression (see, to that effect, Case T-181/05 Citigroup and Citybank v OHIM – Citi (CITI) [2008] ECR II-669, paragraph 66, and judgment of 16 May 2007 in Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the ECR, paragraph 46).
51 The fact that the sign NAVI is represented only in upper-case whereas the sign NaViKey alternates between upper-case and lower-case does not help to offset the similarity existing between them since the protection offered by the registration of a word mark applies to the word and not to the graphic or stylistic characteristics of the mark (judgment of 12 November 2008 in Case T‑281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 31).
52 Therefore, it must be concluded that the two signs are visually similar.
53 Phonetically, the Court finds that the marks in question share two consecutive syllables ‘na’ and ‘vi’ and are distinguished only by the final syllable ‘key’. Since the first part of the mark applied for, which is likely to attract the attention of the relevant public more, is identical to the earlier mark and is longer, it must be concluded that the two signs are also similar from a phonetic point of view (Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraphs 83 and 84, and judgment of 4 March 2010 in Case T-477/08 Mundipharma v OHIM – ALK-Abelló (AVANZALENE), not published in the ECR, paragraph 34).
54 Conceptually, it should be noted that the signs in question, taken as a whole, do not have a clear and precise meaning likely to be immediately understood by the relevant public. At most, they would merely evoke on the part of a section of the relevant public the meanings found in paragraphs 45 and 47 above. Therefore, their comparison at a conceptual level is irrelevant (see, to that effect, Case T‑423/04 Bunker & BKR v OHIM – Marine Stock (B.K.R) [2005] ECR II-4035, paragraph 75 and the case-law cited, and judgment of 11 June 2009 in Case T‑33/08 Bastos Viegas v OHIM - Fabre Médicament (OPDREX), not published in the ECR, paragraph 34). Moreover, as the Board of Appeal stated at paragraph 31 of the contested decision, if any conceptual comparison were possible, it would rather add to the similarities existing between the signs.
55 In the light of the foregoing, it must be concluded that the signs NAVI and NaViKey are similar, at least visually and phonetically.
The likelihood of confusion
56 With regard to the global assessment of the likelihood of confusion, it should be recalled that it entails some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T-81/03, T‑82/03 and T-103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).
57 In the present case, the Court has found, first, that the goods and services in question are similar (see paragraph 31 above) and, secondly, that the signs in dispute are visually and phonetically similar (see paragraphs 52 and 53 above).
58 The Board of Appeal found, at paragraph 39 of the contested decision, that, in view of the similarity of the goods and the phonetic, visual and possible conceptual similarities of the signs, it had to be concluded that there exists a likelihood of confusion between the signs in dispute.
59 That conclusion must be endorsed.
60 Given the high degree of similarity between the goods and services in question and the similarity between the signs in dispute, at least visually and phonetically, it must be held that there is a likelihood that the relevant public would not distinguish between the two signs in dispute, the only difference between them being the presence of the final syllable ‘key’ in the mark applied for. That difference is so slight that even an observant and circumspect public might think that the mark applied for is a variant of the earlier mark and that the goods and services in question therefore have the same commercial origin or come from economically-linked undertakings. Moreover, since, as was found at paragraph 52 above, the signs in dispute are visually similar, the applicant’s argument that the visual aspect should have played a more important role in the present case when the likelihood of confusion between the signs in dispute was assessed is entirely unfounded.
61 The applicant raises against the Board of Appeal’s finding an argument based on Article 12 of Regulation No 207/2009, to the effect that, since the earlier mark has a descriptive character, the applicant is entitled to use the descriptive element ‘navi’, to incorporate it in its mark and to combine it with the suffix ‘key’.
62 That argument of the applicant must be dismissed as ineffective, as Article 12(b) of Regulation No 207/2009 concerns the limits of the exclusive right resulting from registration of a mark and cannot be taken into account during the procedure for opposition to registration of a trade mark. It does not entitle third parties to use as a trade mark terms designating the quality or other characteristics of the goods concerned, but merely ensures that they may use them in a descriptive manner, that is to say, as indications concerning the quality or other characteristics of the goods, subject to the condition that they use them in accordance with honest practices in industrial or commercial matters (see, to that effect, Case T-20/02 Interquell v OHIM – SCA Nutrition (HAPPY DOG) [2004] ECR II-1001, paragraph 56). Therefore, Article 12 of Regulation No 207/2009 does not provide for the criteria for examining the likelihood of confusion to be modified.
63 Moreover, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Canon, paragraph 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 61). The contrary argument would make it possible to register a mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs designating those marks reflected a variation in the nature of the goods or stemmed from marketing considerations and not that it denoted goods from different traders (order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, not published in the ECR, paragraph 45).
64 In the light of all the foregoing, it must be concluded that the Board of Appeal did not err in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Consequently, the first plea in law raised by the applicant must be dismissed.
The second plea, alleging infringement of Article 75 of Regulation No 207/2009
65 The applicant submits that the reasoning of the contested decision relating to the global assessment of the likelihood of confusion is inadequate since it is limited to a single sentence.
66 In that regard, although the Board of Appeal’s reasoning, at paragraph 39 of the contested decision, is very succinct, account should be taken of the more detailed reasoning in that regard in the Opposition Division’s decision (see paragraph 8) which takes into consideration the high degree of attention of the relevant public, the distinctive character of the earlier mark, the high degree of similarity between the goods and services in question and the similarity between the signs in dispute.
67 Since the Board of Appeal endorsed that decision in its entirety, and in view of the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 64(1) of Regulation No 207/2009 (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 30, and Case T-323/03 La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE) [2006] ECR II-2085, paragraphs 57 and 58), that decision of the Opposition Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, which is known to the applicant and enables the Court to carry out fully its review as to whether the assessment of the likelihood of confusion was well founded (see, to that effect, judgment of 21 November 2007 in Case T‑111/06 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (VITAL& FIT), not published in the ECR, paragraph 64).
68 In the light of the foregoing, this plea must be dismissed and therefore so must the action in its entirety, without it being necessary to rule on the admissibility of the applicant’s and intervener’s second head of claim.
Costs
69 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders NEC Display Solutions Europe GmbH to pay the costs.
Moavero Milanesi | Wahl | Soldevila Fragoso |
Delivered in open court in Luxembourg on 13 October 2011.
[Signatures]