JUDGMENT OF THE GENERAL COURT (First Chamber)
8 September 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ICEBREAKER – Earlier national word mark ICEBERG – Relative ground for refusal – Likelihood of confusion – Partial refusal to register – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑112/09,
Icebreaker Ltd, established in Wellington (New Zealand), represented by L. Prehn, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Gilmar SpA, established in San Giovanni in Marignano (Italy), represented by P. Perani and P. Pozzi, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 January 2009 (Case R 1536/2007-4) relating to opposition proceedings between Gilmar SpA and Icebreaker Ltd,
THE GENERAL COURT (First Chamber),
composed of I. Wiszniewska-Białecka, President, F. Dehousse (Rapporteur) and H. Kanninen, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 19 March 2009,
having regard to the response of OHIM lodged at the Registry of the Court on 17 July 2009,
having regard to the response of the intervener lodged at the Registry of the Court on 13 July 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 Court,
gives the following
Judgment
Background to the dispute
1 On 30 May 2003, the applicant, Icebreaker Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (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 ICEBREAKER.
3 The goods in respect of which registration was sought are in Classes 9, 24 and 25 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 the following description:
– Class 9: ‘Wet suits in the nature of dive or diving suits;
– Class 24: ‘Fabric’;
– Class 25: ‘Clothing; footwear; headgear’.
4 The application for the Community trade mark was published in the Community Trade Marks Bulletin No 31/2004 of 2 August 2004.
5 On 2 November 2004, the intervener, Gilmar SpA, filed a notice pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) opposing the registration of the mark for the goods, particularly those in Class 25, specified in the application for registration.
6 The opposition was based on a number of national and international registrations of the earlier word marks ICE and ICEBERG and of the earlier figurative mark ICEBERG, in particular:
– the earlier Italian word mark ICEBERG, registered on 8 November 1985, under No 376926, for goods in Class 25 and corresponding to the description: ‘Clothing, footwear, headgear’;
– the earlier Italian word mark ICE, registered on 11 May 1987, under No 480006, for goods in Class 25 and corresponding to the description: ‘Clothing, footwear, headgear’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).
8 By decision of 27 July 2007, the Opposition Division partially upheld the opposition. It held that, upon the applicant’s request, evidence of genuine use had been provided for the earlier word marks ICEBERG and ICE mentioned in paragraph 6 above, at least as regards the goods in Class 25. It considered that, for those goods, there was a likelihood of confusion between those earlier marks and the mark ICEBREAKER for which registration was sought, and rejected the remainder of the opposition.
9 On 26 September 2007, the applicant brought an appeal before OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
10 By decision of 15 January 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. Basing its analysis on the comparison of ICEBREAKER, the mark for which registration is sought, solely with the Italian word mark ICEBERG, it found a considerable degree of visual similarity and stated that no element of the sign ICEBREAKER was dominant. It found that phonetically only the beginning of the signs at issue were similar and concluded that they had a low degree of similarity, namely less than average. From a conceptual point of view, it found that the conceptual comparison was not decisive and did not affect the visual and aural similarities or differences of the signs at issue. Finally, the Board of Appeal took into account the distinctiveness acquired by the earlier mark on the Italian market and, in view of the identity of the goods and the similarities between the signs at issue, concluded that a likelihood of confusion existed within the meaning of Article 8(1)(b) of Regulation No 40/94, and it was not necessary to examine the similarities with the other earlier trade marks.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision;
– approve the registration of the Community trade mark ICEBREAKER in class 25;
– order OHIIM to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of certain documents annexed to the application
13 OHIM and the intervener contend that the action is inadmissible in that the applicant relies on a series of extracts from Italian internet sites annexed to the application (‘the documents at issue’) and submitted for the first time before the Court.
14 It must be held that the documents at issue exclusively contain extracts from Italian internet sites dated 16 March 2009, which were submitted for the first time before the Court.
15 It should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM as provided for in Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so that it is not the Court’s function, in dealing with that application, to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. Accordingly, the documents at issue must be excluded, and it is not necessary to assess their probative value (see Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
16 It follows that the documents at issue must be rejected as inadmissible.
Substance
17 In support of its application, the applicant puts forward a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94. It is the applicant’s view that the Board of Appeal wrongly concluded that there was a likelihood of confusion between the trade marks at issue.
18 OHIM and the intervener dispute the arguments put forward by the applicant.
19 In accordance with Article 8(1)(b) of Regulation No 40/94, 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. Furthermore, earlier trade marks are to be understood as meaning, pursuant to Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), national trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
20 According to established 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 case-law, the likelihood of confusion must be assessed globally, depending on the perception on the part of the relevant public of the signs and of the goods or services in question, taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services covered (see, to that effect, 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).
21 In the present case, the earlier trade mark examined by the Board of Appeal is the Italian word mark ICEBERG.
22 Since the goods at issue are everyday consumer goods, it is not disputed that the relevant public consists of the average Italian consumer, who is reasonably well‑informed and reasonably observant and circumspect.
23 Since the identical nature of the goods at issue is not disputed, the signs at issue should be compared.
Comparison of the signs
24 It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, 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 the likelihood of confusion. In this 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 the case-law cited).
25 In the present case, the Board of Appeal found that the marks ICEBREAKER and ICEBERG are to a considerable degree similar on a visual level, have a lower than average phonetic similarity and a non‑decisive conceptual similarity.
26 The applicant contests the similarity on a visual level found by the Board of Appeal. It argues that the sign ICEBERG is made up of 7 letters and 2 syllables, whereas the sign applied for ICEBREAKER is made up of 10 letters and 3 syllables. According to the applicant, their common word element made up of the first 4 letters is not sufficient to offset the prevailing impression of dissimilarity.
27 OHIM and the intervener contest that argument.
28 As the Board of Appeal observed, the sign ICEBREAKER contains 10 letters and the mark ICEBERG contains 7. Similarly, the letters ‘e’ and ‘r’, respectively in fifth and sixth position in the mark applied for, are in fifth and sixth position of the earlier mark, although in reverse order. Furthermore, the signs have 6 letters in common. Only 2 out of 10 letters of the sign applied for, namely the letters ‘a’ and ‘k’, do not appear in the earlier sign.
29 In addition, the first four letters are identical in the signs at issue. As OHIM and the intervener have pointed out, the consumer normally attaches more importance to the first part of words (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).
30 It follows from the foregoing that, despite certain differences, the Board of Appeal was right in concluding that there was considerable visual similarity between the signs ICEBERG and ICEBREAKER.
31 It should be pointed out that at a phonetic level the length and the ending of the conflicting signs are different. However, their first four letters are identical and are pronounced in the same manner.
32 In the light of these circumstances, the Board of Appeal did not err in finding that there was a phonetic similarity between the signs at issue, but to a lesser than average degree.
33 The Board of Appeal found that, on a conceptual level, with regard to the part of the relevant public who do not understand English even at a basic level, it was impossible to make a conceptual comparison between the signs. According to the Board of Appeal, the part of the relevant public able to understand the word ICEBERG in its proper sense in English would also probably understand the word ICEBREAKER. It indicated that, to a certain extent, those words differ in that one refers to ice and the other to a boat designed to break ice. It adds that it could also be claimed that the signs are similar on a conceptual level because an icebreaker is necessary during extreme weather, if there is a lot of ice, from which icebergs are formed. In that case, there is a connection between the word ‘iceberg’ in so far as it relates to drift ice from the North Atlantic waters in winter and the word ‘icebreaker’, which refers to a vessel designed to protect commercial boats from icebergs and other dangers. It considers that the question as to whether there is a common or different concept will thus vary in accordance with the people’s perception. It considers that it is thus safer to conclude that the conceptual comparison is not decisive and does not affect the visual and phonetic similarities or differences of the signs.
34 The applicant claims that the fact that both signs have a relationship to ice, and thus have a similar semantic content, is not sufficient to conclude that there is likelihood of confusion.
35 However, the fact remains that the Board of Appeal held in the contested decision, that the conceptual comparison was not decisive and did not affect the visual and phonetic similarities or differences of the signs at issue.
36 Accordingly, the applicant is wrong to assert that the Board of Appeal Commission merely observed that the marks at issue have a similar semantic content.
37 Furthermore, the applicant claims, in the documents at issue, that the Italian consumers would most likely make the connection between the words ‘icebreaker’ and ‘windbreaker’, a word to which they are accustomed. Accordingly, despite a limited knowledge of the English language, knowledge of the word ‘breaker’ on the basis of the word ‘windbreaker’ would prevent confusion between the words ‘iceberg’ and ‘icebreaker’.
38 However, as has been established in paragraph 16 of the present judgment, the documents at issue, relied upon by the applicant in support of that claim, have been ruled inadmissible. In addition, there is no evidence that the word ‘breaker’ is known by the part of the relevant public that does not speak English. Similarly, the likelihood of a connection being made by the Italian consumers between the words ‘windbreaker’ and ‘icebreaker’ is not established. Finally, even if there were a conceptual link between those two words, its impact on the comparison of the marks at issue has not been established. That argument by the applicant must therefore be rejected.
39 The applicant emphasizes that the word ‘iceberg’ must be considered to be known to the Italian consumer.
40 OHIM and the intervener state that, if the semantic content of the words ‘iceberg’ and ‘icebreaker’ is not identical, it is nevertheless very close. They call to mind associated concepts, in that ice breakers have the purpose of protecting boats from icebergs. In OHIM’s view, if neither of the two marks is understood, the conceptual comparison is not affected by conceptual considerations, and if only the reference to ice is understood, there is a conceptual affinity which strengthens rather than moderates the overall similarity of the marks at issue. The position would be the same if the two marks were understood.
41 It is to be noted that, in that regard, the signs at issue are two English words. Although the word ‘icebreaker’ will be understood only by the part of the Italian public mastering the English language, that is not the case for the word ‘iceberg’, which is a common word with an immediately obvious meaning to the relevant public. It follows that the latter would perceive the earlier mark ICEBERG as having a clear meaning, whereas the mark applied for ICEBREAKER would be devoid of any clear meaning for that public.
42 However, the marks at issue have the prefix ‘ice’ in common, which can be considered a basic English word, understandable for most of the relevant public. Since the prefix ‘ice’ has a certain evocative force, it must be regarded as limiting, in the present case, the conceptual difference between the marks at issue. Nor is it disputed by the applicant that the prefix ‘ice’ acts as a semantic bridge between the marks at issue.
43 Consequently, the Board of Appeal was right to find that that the conceptual comparison was not decisive and did not affect the visual and phonetic similarities or differences between the conflicting signs.
44 Accordingly, in light of the evidence in the case, the signs at issue must be regarded as similar within the meaning of Article 8(1)(b) of Regulation No 40/94.
Likelihood of confusion
45 A global assessment of the likelihood of confusion implies 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 these 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).
46 In addition, an assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
47 Consequently, the Court must reject the applicant’s argument that the reputation of the earlier mark ICEBERG, which is not disputed, makes a likelihood of confusion with the mark applied for ICEBREAKER unlikely.
48 It therefore follows that, given the identical nature of the goods at issue and the similarity of the signs at issue, the Board of Appeal rightly held in the contested decision that, when they are examined together, the similarities between the marks at issue, associated with the distinctive character of the earlier mark on the Italian market and added to the identical nature of the goods which they cover, are sufficient to conclude that there is a likelihood of confusion between those marks.
49 That conclusion is not invalidated by the applicant’s other arguments.
50 First of all, the Court must reject the applicant’s argument concerning the decision of the Tribunal Superior de Justicia (High Court of Justice, Spain) of 3 May 2007, holding that the Spanish trade mark ICEBERG cannot hinder registration of the trade mark ICEBREAKER.
51 The legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94 (Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 37). Registrations already made, if any, in some Member States constitute only one factor which, without being given decisive weight, may merely be taken into consideration for the purposes of registering a Community trade mark. The same considerations apply to cases decided by the courts of the Member States (see Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II-2597, paragraph 58 and the case-law cited).
52 Therefore, OHIM and the Courts of the European Union are not bound by a decision adopted in a Member State (Case T‑312/03 Wassen International v OHIM – Stroschein Gesundkost (SELENIUM ACE) [2005] ECR II‑2897, paragraph 46).
53 Finally, with regard to the applicant’s argument that there is no risk of confusion between the earlier mark ICE and the mark ICEBREAKER, it is important to note that for registration to be refused under Article 8(1)(b) of Regulation No 40/94 it suffices that one earlier mark gives rise to a likelihood of confusion within the meaning of that provision (see, to that effect, Case T‑164/03 Ampafrance v OHIM – Johnson and Johnson (monBebé) [2005] ECR II-1401, paragraph 85, and Case T-149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [2007] ECR II-4755, paragraph 46).
54 It follows from all of the foregoing that the single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 is unfounded and the action must be dismissed and it is not necessary to rule on the admissibility of the applicant’s second head of claim seeking approval of the application to register ICEBREAKER as a Community trade mark.
Costs
55 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.
56 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 (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Icebreaker Ltd to bear the costs.
Wiszniewska-Białecka | Dehousse | Kanninen |
Delivered in open court in Luxembourg on 8 September 2010.
[Signatures]