JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
7 November 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark IBSolution – Earlier Community figurative mark IBS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑533/12,
IBSolution GmbH, established in Neckarsulm (Germany), represented by F. Ekey, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
IBS AB, established in Solna (Sweden),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 21 September 2012 (Case R 771/2011-2) relating to opposition proceedings between IBS AB and IBSolution GmbH,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas (Rapporteur), President, M. van der Woude and V. Tomljenović, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 7 December 2012,
having regard to the response lodged at the Court Registry on 4 April 2013,
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 and pursuant to Article 135a of the Rules of Procedure of the Court, to rule on the action without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 13 July 2009, the applicant, IBSolution GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 sign IBSolution.
3 The services in respect of which registration was sought fall within Classes 35, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to, in particular, the following description:
– Class 35: ‘Business management services; business administration; office functions’,
– Class 41: ‘Education; providing of training; sporting and cultural activities’,
– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 32/2009 of 24 August 2009.
5 On 9 November 2011, IBS AB filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the following earlier Community figurative mark:
7 The goods and services covered by the earlier mark came under, inter alia, Classes 35, 41 and 42 and corresponded, for each of those classes, to the following description:
– Class 35: ‘Commercial management assistance, in particular computer aid in connection with administrative routines’,
– Class 41: ‘Teaching and educational services in the computer field’,
– Class 42: ‘Computer programming, computer software design, consultancy in the field of computer hardware and product development in particular in the computer field’.
8 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.
9 On 11 February 2011, the Opposition Division upheld the opposition in so far as it concerned the contested services, referred to in paragraph 3 above, on the ground that, as those services were identical or similar to those covered by the earlier mark, there was a likelihood of confusion between the marks at issue.
10 On 7 April 2011, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 21 September 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It took the view, essentially, that the marks at issue were similar, in particular visually and phonetically, and held that, in the light of the fact that the most distinctive element of each of those marks, namely the letter group ‘ibs’, was identical, there was a likelihood of confusion in relation to the identical or similar services covered by those marks, despite the relevant public’s high degree of attention.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– amend the contested decision by granting registration of the trade mark applied for;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 It claims, in essence, that the marks at issue are, overall, not similar, in the light of the lack of phonetic and conceptual similarity and the low degree of visual similarity between them. It claims, in that regard, first, that the letter group ‘ibs’, in the marks at issue, is not their dominant element and, secondly, that the Board of Appeal duplicates, incorrectly, the letter ‘s’ of the mark applied for by dividing it into two elements, ‘ibs’ and ‘solution’, and that it erred by holding that the element ‘solution’ is descriptive. According to the applicant, in the absence of the allegedly ‘illegal’ duplication of the consonant ‘s’, there would be no likelihood of confusion between the marks at issue, in particular from a phonetic point of view. It claims, finally, that, contrary to the Board of Appeal’s findings, the earlier mark is not very intrinsically distinctive since the relevant public is familiar with three‑letter acronyms starting with the letter ‘i’ or the letters ‘ib’.
16 OHIM disputes the applicant’s arguments.
17 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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.
18 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 that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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).
The relevant public
19 In the present case, the earlier mark is a Community trade mark. Consequently, as the Board of Appeal found, and as a fact not contested by the applicant, the relevant territory is that of the European Union.
20 It is, moreover, not disputed, as the Board of Appeal correctly held, that, if the relevant public consists mainly of professionals with a high level of attention, the general public, which is reasonably well informed and reasonably observant and circumspect, must also be taken into account with regard to the services covered by Class 41.
The comparison of the services
21 With regard to the similarity of the services concerned, it should be noted that the Board of Appeal confirmed, in the absence of a dispute before it on that issue, the assessment of the Opposition Division that the services referred to in paragraph 3 above, covered by the mark applied for, were in part identical and in part similar to those covered by the earlier mark. That assessment, which has also not been challenged before the Court and is free of error, must be upheld.
The comparison of the signs
22 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 appreciation of such a 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).
23 It should also be noted that, according to case-law, a complex trade mark may be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark where that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see judgment of 22 May 2008 in Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), not published in the ECR, paragraph 48 and the case-law cited).
24 With regard to the assessment of the dominant character of one or more given components of a compound trade 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 (see Presto! Bizcard Reader, paragraph 49 and the case-law cited).
25 Furthermore, concerning the similarity of the signs at issue, it should be noted that 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 8 September 2010 in Case T‑369/09 Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), not published in the ECR, paragraph 21).
26 It should also be noted that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name rather than by describing the figurative element of the mark (see Presto! Bizcard Reader, paragraph 54 and the case-law cited).
27 Finally, a potentially weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (see Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 54 and the case-law cited).
28 It is in the light of the foregoing considerations that the assessment made by the Board of Appeal as to the likelihood of confusion between the conflicting signs falls to be examined.
29 In the present case, it must be noted that the earlier mark is a complex trade mark consisting of a figurative element, namely two small black rhombuses which partially overlap, followed by a word element which is larger, made up of the capital letters ‘I’, ‘B’ and ‘S’ in a stylised font. Furthermore, there is a small rectangle between the first two letters. As regards the mark applied for, it consists of the capital letters ‘I’, ‘B’ and ‘S’, to which are attached the letters ‘olution’.
30 The Board of Appeal held that, as a result of the presence of the group of capital letters ‘IBS’ in both signs, there was a visual similarity between the marks at issue, even if that similarity could not be considered to be high.
31 The applicant considers that the earlier mark is dominated not only by the group of capital letters ‘IBS’ but also by the figurative elements which it contains, namely the two black rhombuses at the beginning of the sign and the rectangle between the letters ‘i’ and ‘b’, which could be treated as a dot or point. It acknowledges, however, that the letters after the figurative elements of the earlier mark have a certain significance in the perception of the relevant public, since they are the only part of the sign which that public could name. Finally, it claims that the marks at issue are similar only to a low degree, in so far as, first, the capital letter ‘S’ is part of the word ‘solution’ in the mark applied for and would not be dissociated from it and, secondly, the word element of the earlier mark is the same as only the first 3 of the 10 letters of the mark applied for. It thus claims that the mark applied for will be perceived as consisting of the elements ‘ib’ and ‘solution’, whereas the word element of the earlier mark will be perceived as consisting of the elements ‘i’ and ‘bs’.
32 First, as regards the visual comparison, it must be recalled, initially, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).
33 It is necessary to note, as did the Board of Appeal, that the dominant element of the earlier mark is the letter group ‘ibs’, which will more strongly attract the attention of the relevant public, in the light, first, of the size of those letters and, secondly, of the fact that, in accordance with the case-law cited in paragraph 26 above, consumers will more readily refer to them than to the figurative elements preceding them, a fact which the applicant, moreover, does not contest.
34 Furthermore, the two rhombuses featuring in the earlier mark are common geometric shapes which have no independent evocative force and which are not, by reason of their size or originality, particularly inventive or striking, such as to hide the element ‘ibs’. Therefore, in line with the Board of Appeal’s assessment, it must be concluded that the figurative elements at issue will not have a significant effect on the overall impression made by the earlier mark.
35 With regard to the rectangle between the first two letters of the earlier mark, this represents, as OHIM states, the lower part of the letter ‘s’ which is prolonged behind the letter ‘b’, and is not a punctuation mark. Even assuming that it could be perceived as a dot or point, it would hardly be noticed, as the Board of Appeal, moreover, held, with the result that it could not dominate the impression made by the earlier mark and distinguish it from the mark applied for, as the applicant claims. In that regard, it should be recalled that, in accordance with the case-law cited in paragraph 22 above, the relevant public will perceive the mark as a whole and will not proceed to analyse its various details.
36 Likewise, the applicant’s argument, based on the artificial separation established between, on the one hand, the first two letters of the mark applied for and, on the other, the letter ‘s’ must be rejected, since the letters are attached to one another without any hyphen or space. Therefore, the conclusion cannot be drawn that the relevant public will necessarily dissociate the word ‘solution’ from the first two letters, all the more so as the first letter of that word is a capital letter and is likely to be perceived both as part of the letter group ‘ibs’ and as part of the word ‘solution’.
37 Consequently, the only difference between the mark applied for and the earlier mark lies in the addition, at the end of the mark applied for, of the seven letters ‘o’, ‘l’, ‘u’, ‘t’, ‘i’, ‘o’ and ‘n’ after the capital letters ‘I’, ‘B’ and ‘S’, the ‘S’ being part of the word ‘solution’.
38 It should be recalled that the consumer normally attaches more importance to the first part of words (see, to that effect, 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, paragraph 81). Thus, the additional letters of the mark applied for will not have any effect on the perception of the mark applied for by the relevant public.
39 Consequently, in the light of the fact that the word element of the earlier mark, ‘ibs’, which is the dominant element of that mark, is the same as the first three letters of the mark applied for, it is necessary to confirm the Board of Appeal’s assessment that there is a visual similarity between the signs at issue.
40 Secondly, concerning the phonetic comparison of the signs, the Board of Appeal found that there was a certain degree of similarity as a result of the identical pronunciation of the first two letters ‘i’ and ‘b’ appearing in both marks and a higher degree of similarity for the sector of the public which is not familiar with English and which would also pronounce the third letter ‘s’ identically. The Board of Appeal held, in that regard, that the earlier mark would be pronounced as the succession of the letters ‘i’, ‘b’ and ‘s’ and that the mark applied for would be pronounced either as ‘i-b-solution’, or as ‘i-b-s-solution’ by the English-speaking or French-speaking public, or also as ‘i-b-s-olution’ by the sector of the relevant public which is not familiar with English.
41 The applicant claims that, since the majority of the relevant public is familiar with English, it will understand the word ‘solution’ and will pronounce the mark applied for as ‘i-b-solution’. As regards the sector of the public which is not familiar with the meaning of that word, this will, in its view, pronounce the mark applied for in the same way, in so far as it realises that the capital letter ‘S’ is part of the word ‘solution’. Furthermore, the applicant claims that the pronunciation of the marks at issue is different not only because of the sound produced by the additional letters ‘olution’, but also because the letter ‘s’ is not pronounced in the same way in the earlier mark and in the mark applied for. It also claims that the Board of Appeal found a similarity between those two elements by ‘illegally’ duplicating the letter ‘s’ in the mark applied for.
42 It should be noted that, because of the presence of the letters ‘i’, ‘b’ and ‘s’ in each of the signs at issue, placed in the same order, there will, no matter how they are pronounced by the relevant public, be a partial phonetic identity between those signs, which is all the more noticeable because those letters are at the beginning of the mark applied for and they are the same as the whole of the part of the earlier mark which will be pronounced. In light of the findings in paragraphs 26 and 33 above, the fact that no account is taken of the figurative element during the global phonetic comparison of the signs at issue makes the similarity between them more obvious than during the visual comparison (see Presto! Bizcard Reader, paragraph 63 and the case-law cited).
43 Moreover, as has also been observed by the Board of Appeal, it cannot be ruled out that the section of the relevant public which is familiar with English would pronounce the mark applied for – in the same way as the non-English-speaking public – by duplicating the consonant ‘s’ in so far as, as the last letter of the letter group ‘ibs’ and the first letter of the word ‘solution’ which is attached, it could be perceived as belonging to both. In addition, no matter how the mark applied for is pronounced, namely as ‘i-b-so-lu-tion’ or as ‘i-b-ess-so-lu-tion’, the sound produced by the letter ‘s’ will be noticeable, without being neutralised by the distortion which could be caused by the adjoining vowels, namely ‘o’ and ‘e’, as the case may be.
44 Thus, the only phonetic difference between the marks at issue results from the last seven letters ‘o’, ‘l’, ‘u’, ‘t’, ‘i’, ‘o’, and ‘n’, which feature solely in the mark applied for and have the effect of adding three additional syllables to it. However, in light of the fact that these are situated in the second part of the mark applied for, they will not have the effect of dominating the overall impression created by that mark. Therefore, their presence is not such as to neutralise the phonetic similarity between the marks at issue resulting from the identity of their first three letters in common, which, moreover, form the dominant element of the earlier mark.
45 It follows, as the Board of Appeal found, that there is a certain phonetic similarity between the signs at issue.
46 That conclusion cannot be invalidated by the applicant’s argument that the Board of Appeal erred in taking the view that a section of the relevant public might even pronounce the mark applied for as ‘i-b-ess-olution’, in which case the phonetic similarity would be even more noticeable. Even if such a case seems difficult to imagine, a phonetic similarity could, in any event, be established on the basis of the other two ways of pronouncing that mark, referred to in the contested decision.
47 Third, the Board of Appeal found that there was a low degree of conceptual similarity between the signs at issue, as the mark applied for could be perceived as consisting, on the one hand, of the letter group ‘ibs’, which coincides with the dominant element of the earlier mark, the meaning of which is unknown, and, on the other hand, of the common and widely used word ‘solution’, which would, however, attract the relevant public’s attention less because of its descriptive character.
48 The applicant disputes the Board of Appeal’s finding that there is a conceptual similarity between the signs. It claims that the low degree of similarity which was wrongly established in the contested decision stems from the allegedly ‘illegal’ duplication of the letter ‘s’. According to the applicant, however, the letter ‘s’ represents an entire word and cannot belong both to the acronym IBS and to the word ‘solution’.
49 First of all, it is necessary to reject the applicant’s arguments that the Board of Appeal held that there was a conceptual similarity between the signs at issue by incorrectly duplicating the letter ‘s’, on the basis of the findings set out in paragraph 43 above. Moreover, it cannot be ruled out that the relevant public will split the mark applied for into two elements, in light of the fact that the first three letters of which it consists are capital letters and the other seven letters are in lower case.
50 However, while, admittedly, the Board of Appeal held, correctly, that the meaning of the word ‘solution’ would be perceived by the relevant public and that that word is descriptive of the services concerned, it must be held that, contrary to what is noted in the contested decision, there is no conceptual similarity between the marks at issue, in so far as the letter groups ‘ib’ or ‘ibs’ have no meaning and the word ‘solution’ appears solely in the mark applied for.
51 Therefore, it must be held that the Board of Appeal erred in finding that there was a conceptual similarity between the signs at issue.
52 That error, however, is not such as to invalidate the Board of Appeal’s finding that the signs at issue are similar, in the light of the fact that visual and phonetic similarities have been found to exist.
53 Consequently, it must be held, in accordance with the case-law cited in paragraph 25 above, that the marks at issue are overall similar, and that the absence of conceptual similarity between them cannot neutralise their similarity.
The likelihood of confusion
54 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 26 and the case-law cited).
55 In the present case, it should be noted that it has been established, first, that the services concerned were in part identical and in part similar and, secondly, that the Board of Appeal held, correctly, that the signs at issue were similar.
56 In those circumstances, it must therefore be held, in accordance with the case-law cited in paragraphs 18 and 54 above, that the Board of Appeal acted correctly in holding that there was a likelihood of confusion between the marks at issue.
57 That finding cannot be invalidated by the applicant’s arguments that the earlier mark is not very distinctive, since numerous names of companies and trade marks in the sector concerned begin with the letter ‘i’ or the letter group ‘ib’. In that regard, it should be noted that the finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in such assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see PAGESJAUNES.COM, paragraph 70 and the case-law cited).
58 Furthermore, it is apparent from settled case-law that the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them on the part of the relevant public (see Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I‑5173, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25).
59 As was found by the Board of Appeal, the applicant has not shown that the letter combination ‘ibs’ was descriptive as regards both the services at issue and the relevant public’s perception of them. Therefore, the applicant’s arguments relating to the widespread use of acronyms consisting of the same letters as those making up the earlier mark cannot call into question the Board of Appeal’s finding that the element ‘ibs’ of the earlier mark possesses a normal distinctive character.
60 Consequently, the single plea in law must be rejected and, as a result, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
61 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.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders IBSolution GmbH to pay the costs.
Papasavvas | Van der Woude | Tomljenović |
Delivered in open court in Luxembourg on 7 November 2013.
[Signatures]