JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
13 April 2011 (*)
(Community trade mark – Invalidity proceedings – Community word mark ALDER CAPITAL – Earlier Benelux word marks Halder and Halder Investments – Earlier international word mark Halder – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009) – Genuine use of the trade mark – Article 15 of Regulation No 40/94 (now Article 15 of Regulation No 207/2009))
In Case T‑209/09,
Alder Capital Ltd, established in Dublin (Ireland), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider and R. Manea, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Gimv Nederland BV, established in The Hague (Netherlands), represented by M. van de Braak and S. Beelaard, lawyers,
intervener,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 February 2009 (Case R 486/2008-2) in relation to invalidity proceedings between Halder Holdings BV and Alder Capital Ltd,
THE GENERAL COURT (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas (Rapporteur) and N. Wahl, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 27 May 2009,
having regard to the response of OHIM lodged at the Court Registry on 18 September 2009,
having regard to the response of the intervener lodged at the Court Registry on 7 September 2009,
further to the hearing on 9 September 2010,
gives the following
Judgment
Background to the dispute
1 On 16 August 2001, the applicant – Alder Capital Ltd (‘Alder Capital’) – 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 sign for which registration was sought is the word mark ALDER CAPITAL.
3 The services for which registration was sought fall within Class 36 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 to the following description: ‘Financial services, banking, investment banking and corporate finance services; management of securities; currency fund management; currency exchange services; financial appraisals and analysis; advisory and consultancy services relating to the aforementioned services’.
4 The Community trade mark ALDER CAPITAL was registered for the services referred to in paragraph 3 above on 21 February 2003 under number 2346575.
5 On 14 October 2005, Halder Holdings BV – now Gimv Nederland BV, the intervener in the present case – filed an application for a declaration of invalidity of the mark at issue on the basis of Article 8(1)(b) and (4) of Regulation No 40/94, read in conjunction with Article 52(1)(a) and (c) thereof (now Article 8(1)(b) and (4) and Article 53(1)(a) and (c) of Regulation No 207/2009). In support of that application, the intervener relied on:
– the earlier word marks No 648 280 and No 648 279 – Halder and Halder Investments – registered with the Bureau Benelux des marques (Benelux Trade Marks Office) on 14 September 1998 for services in Class 35 (in respect of Halder, ‘business administration; office functions; acquiring investors for the benefit of investment funds; business management and business economics consultancy; interim management; commercial project management’ and, in respect of Halder Investments, ‘business administration; office functions’) and in Class 36 (in respect of Halder, ‘insurance; financial affairs; granting loans, among which loans in share capital, for the benefit of companies; setting up of investment funds’ and, in respect of Halder Investments, ‘insurance; financial affairs; granting loans, among which loans in share capital, for the benefit of companies’);
– the earlier international word mark No 721 499, Halder, registered on 18 November 1999 with effect in Germany, France, and Italy for services in Class 35 (‘business administration; office functions; business management and business economics consultancy; interim management; commercial project management’) and Class 36 (‘insurance; financial affairs; acquiring investors for the benefit of investment funds; granting loans, among which loans in share capital, for the benefit of companies; setting up of investment funds’);
– the unregistered trade and company names Halder, Halder Holdings, Halder Investments and Halder Interest, used in the course of trade in the Netherlands for the following activities: ‘investing capital in companies, acquiring investors for the benefit of investment funds’.
6 By decision of 15 January 2008, the Cancellation Division of OHIM declared the Community mark ALDER CAPITAL to be invalid in its entirety on the basis of the earlier unregistered Netherlands rights. The Cancellation Division found, however, that there had been no genuine use of the intervener’s earlier registered marks in the period from 15 October 2000 to 14 October 2005 (‘the relevant period’).
7 On 14 March 2008, the applicant filed an appeal against the decision of the Cancellation Division.
8 On 24 July 2008, the intervener lodged observations in which, inter alia, it requested the Board of Appeal to reconsider the findings of the Cancellation Division as regards proof of use of its earlier trade marks.
9 By decision of 20 February 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the ground that there was a likelihood of confusion between the Community trade mark ALDER CAPITAL and (i) the earlier mark Halder Investments, the use of which as a mark was proved in the Benelux countries for services of acquiring investors for the benefit of investment funds, setting up investment funds, and company buy-outs, and (ii) the earlier mark Halder, use of which was proved in the Benelux countries, Germany and Italy for the same services.
Forms of order sought
10 Alder Capital claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs, including those incurred by Alder Capital before the Board of Appeal;
– order the intervener to pay the costs, including those incurred by Alder Capital before the Board of Appeal.
11 OHIM contends that the Court should:
– dismiss the action;
– order Alder Capital to pay the costs.
12 The intervener contends that the Court should:
– dismiss the action;
– uphold the contested decision;
– order Alder Capital to pay the costs, including those incurred before the Board of Appeal.
Law
13 In support of its action, Alder Capital relies on four pleas in law, alleging respectively: (i) infringement of Articles 57 and 58 of Regulation No 40/94 (now Articles 58 and 59 of Regulation No 207/2009), read in conjunction with Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (OJ 1996 L 28, p. 11), as amended; (ii) infringement of Article 55(1)(b) and Article 52(1) of Regulation No 40/94, read in conjunction with Article 42(1) and Article 8(2) thereof (now Article 56(1)(b), Article 53(1), Article 41(1) and Article 8(2) of Regulation No 207/2009); (iii) infringement of Article 56(2) and (3) of Regulation No 40/94, read in conjunction with Article 15 thereof (now Article 57(2) and (3) and Article 15 of Regulation No 207/2009) and Article 10 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), and of Rule 22(3) and (4) and Rule 40(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 (OJ 1995 L 303, p. 1); and (iv) infringement of Article 52 of Regulation No 40/94, read in conjunction with Article 8(1)(b) thereof.
14 At the hearing, Alder Capital declared that it withdrew its second plea in law, a point which was noted in the minutes.
The first plea in law: infringement of Articles 57 and 58 of Regulation No 40/94, read in conjunction with Article 8(3) of Regulation No 216/96, as amended
Arguments of the parties
15 Alder Capital submits that, by acceding to the intervener’s request that it reconsider the findings of the Cancellation Division as regards proof of use of the earlier marks, the Board of Appeal infringed Articles 57 and 58 of Regulation No 40/94 and Article 8(3) of Regulation No 216/96, as amended.
16 Alder Capital argues that the decision of the Cancellation Division was a response to two different legal claims: (i) an application for a declaration of invalidity because of a likelihood of confusion with the earlier marks and (ii) an application for a declaration of invalidity because of a likelihood of confusion with the trade or company names.
17 Given that the application for a declaration of invalidity based on a likelihood of confusion with the earlier marks was rejected by the Cancellation Division on the grounds of lack of genuine use, Alder Capital argues that the Cancellation Division’s decision did not uphold the intervener’s claims. The intervener should therefore have filed a separate appeal against the Cancellation Division’s decision within a period of two months, which it did not do.
18 Moreover, Alder Capital argues that Article 8(3) of Regulation No 216/96, as amended, on the basis of which the intervener’s request was considered by the Board of Appeal, is invalid. First, Article 157(3) and Article 158 of Regulation No 40/94 (now Article 162(3) and Article 163 of Regulation No 207/2009) do not empower the European Commission to create additional legal remedies against a decision taken at the first level of adjudication. Secondly, even if the Commission had been empowered to create an ‘ancillary’ appeal under Article 8(3) of Regulation No 216/96, as amended, that provision would be invalid since the legislative act which introduced it did not state reasons for that alteration to the structure of appeals against OHIM decisions taken at the first level of adjudication.
19 OHIM and the intervener dispute Alder Capital’s arguments.
Findings of the Court
20 Article 62(1) of Regulation No 40/94 (now Article 64(1) of Regulation No 207/2009) provides that, following the examination as to ‘the allowability of the appeal’, the Board of Appeal is to decide on the appeal and that, in so doing, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, for present purposes, the Board may itself rule on the opposition by rejecting it or by declaring it to be well founded, thereby either upholding or reversing the contested decision. Consequently, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms both of law and of fact (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraphs 56 and 57, and Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 96).
21 However, where the Board of Appeal finds that one of the relative grounds for refusal put forward by the opposing party in support of its opposition and upheld by the Opposition Division in its decision is not well founded, the new, full examination of the merits of the opposition – referred to in the previous paragraph – necessarily means that, before annulling the Opposition Division’s decision, the Board of Appeal must consider whether it may be possible to uphold the opposition on the basis of another relative ground for refusal, put forward by the opposing party before the Opposition Division but which the latter has rejected or left unexamined (VIPS, paragraph 97).
22 It is also apparent from the case-law that the powers of the Boards of Appeal of OHIM imply that they are to re-examine the decisions taken by OHIM bodies at the first level of adjudication. In the context of that re-examination, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling (see Case T‑308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II‑3253, paragraph 26).
23 It is in the light of those considerations, which are applicable both to opposition proceedings and to invalidity proceedings (see, to that effect, KLEENCARE, paragraph 22 above, paragraph 25), that the plea relied upon by Alder Capital must be examined.
24 In the present case, an appeal was brought before the Board of Appeal for annulment of the decision of the Cancellation Division, which had found that there was no proof of genuine use of the marks registered by the intervener, but had upheld, on the basis of the earlier unregistered Netherlands rights, the application for a declaration of invalidity under Article 8(4) of Regulation No 40/94.
25 The Board of Appeal was therefore required to carry out a full examination of the application for a declaration of invalidity, in terms both of law and of fact. In that context, it was able to make a ruling in relation, not only to Article 8(4) of Regulation No 40/94, but also to the genuine use of the earlier marks and the potential likelihood of confusion between those marks and the mark ALDER CAPITAL, on the basis of Article 8(1)(b) of Regulation No 40/94.
26 That conclusion is unaffected by the fact that the application for a declaration that the Community trade mark at issue was invalid had been made on the basis of different rights (trade marks and trade names).
27 Article 52(1) of Regulation No 40/94 does not draw any distinction between the various relative grounds for invalidity, whether based on earlier marks or on other rights.
28 Consequently, there is no need to differentiate between, on the one hand, cases where applications for a declaration of invalidity are based on a single earlier right and, on the other, cases where applications for a declaration of invalidity are based on a number of different earlier rights.
29 Furthermore, although the intervener’s application to the Board of Appeal on the basis of Article 8(3) of Regulation No 216/96, as amended, was regarded as admissible, that fact is irrelevant to the present case, since neither the aim nor the effect of that provision is to prevent the Board of Appeal from carrying out, even of its own motion, a new, full examination of the substance of the case.
30 In the light of all the foregoing, the first plea must be rejected as unfounded, without it being necessary to rule on the intervener’s obligation to file a separate appeal against the decision of the Cancellation Division, or on the lawfulness of Article 8(3) of Regulation No 216/96, as amended.
The third plea in law: infringement of Article 56(2) and (3) of Regulation No 40/94, read in conjunction with Article 15 thereof and Article 10 of Directive 2008/95, and of Rule 22(3) and (4) and Rule 40(6) of Regulation No 2868/95
Arguments of the parties
31 First, Alder Capital submits that genuine use of the earlier marks has not been proved. The documents produced to establish genuine use must either be drafted in the language of the case or translated into that language. According to Alder Capital, the Board of Appeal’s statement that the documents, whose ‘content speaks for itself’, can be taken into account is difficult to understand and should not permit account to be taken of documents which have not been translated.
32 Secondly, Alder Capital submits that the evidence produced does not prove the use of the marks but in fact shows use as a trade or company name. According to Alder Capital, the fact that the Board of Appeal states that it is more difficult to prove use for marks covering services than for those covering goods, whereas there is no difference in law between those two situations, shows that in reality the evidence produced relates to a trade name and not to use as a trade mark.
33 Thirdly, Alder Capital submits that the Board of Appeal has misinterpreted the judgment in Case C‑17/06 Céline [2007] ECR I‑7041, since that judgment concerns use as a trade name and not use as a trade mark.
34 Fourthly, Alder Capital submits that the fact that the company or trade name and the mark are identical must not lead to a ‘downwards review’ of the criteria for genuine use of a mark. Where there are doubts, as in the present case, it should be found that genuine use has not been established.
35 Fifthly, Alder Capital argues, on the one hand, that the Board of Appeal failed to examine the arguments which Alder Capital had put forward before the Cancellation Division and, on the other, that, if the Board of Appeal had taken due account of those arguments, it would have had to reach the conclusion that the earlier marks had not been in genuine use. Alder Capital refers to the arguments put forward before the Cancellation Division and appends them to its application.
36 Sixthly, Alder Capital argues that the evidence taken into account by the Board of Appeal does not show genuine use of the marks at issue. Alder Capital submits, in particular, that newspaper articles do not constitute evidence capable of demonstrating use of a mark, since they are not included in the exhaustive list of permissible evidence under Rule 22(4) of Regulation No 2868/95.
37 In addition, Alder Capital states that some items of evidence do not show the marks in the forms in which they were registered; that they have no connection with the Member States in which the marks were registered; that they do not date from the relevant period; or that they show use of a company name and not of a mark.
38 Furthermore, Alder Capital argues that none of the evidence establishes the extent of use for the services provided under the earlier marks.
39 Alder Capital concludes that, whether considered separately or as a whole, the items of evidence do not show genuine use of the earlier marks.
40 Seventhly, Alder Capital submits that the intervener was not authorised to provide financial services in the Benelux countries, Germany, Italy or France, in breach of Directive 2004/39/EC of the European Parliament and of the Council of 21 April 2004 on markets in financial instruments, amending Council Directives 85/611/EEC and 93/6/EEC and Directive 2000/12/EC of the European Parliament and of the Council and repealing Council Directive 93/22/EEC (OJ 2004 L 145, p. 1).
41 According to Alder Capital, to accept use of the earlier marks for financial services when that use was unlawful would amount to a breach of the principle of good faith, which, although not expressly referred to in Regulation No 40/94, should underpin the examination of genuine use.
42 OHIM and the intervener dispute Alder Capital’s arguments.
Findings of the Court
43 Under Rule 22(3) of Regulation No 2868/95, evidence for the furnishing of proof of use must concern the place, time, extent and nature of the use made of the earlier trade mark (judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 27 and the case-law cited).
44 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred (see judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 20 and the case-law cited).
45 In that regard, the Court of Justice has stated, with regard to Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), that a company name, trade name or shop sign does not, of itself, have the aim of distinguishing goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company, trade or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ (see jello SCHUHPARK, paragraph 44 above, paragraph 21 and the case-law cited).
46 However, there is use ‘in relation to goods’ when a third party affixes the sign constituting its company, trade or shop name on the goods which it markets. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of Article 5(1) of Directive 89/104 where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party (see jello SCHUHPARK, paragraph 44 above, paragraph 22 and the case-law cited).
47 In interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market. However, the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking; nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see CAPIO, paragraph 43 above, paragraph 28 and the case-law cited).
48 Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see CAPIO, paragraph 43 above, paragraph 29 and the case-law cited).
49 In addition, it should be noted that, by virtue of Article 15(2)(a) of Regulation No 40/94 (now point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009), proof of genuine use of an earlier mark – whether a national mark or a Community mark – also includes proof of use of the Community trade mark ‘in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’.
50 It is in the light of those considerations that the plea in law relied upon by Alder Capital must be examined.
51 In that regard, it should be noted that, as emerges from paragraphs 28 to 36 of the contested decision, the evidence provided by the intervener in the language of the case, or which has been translated into that language, with regard to the use of the mark Halder in Germany, the Benelux countries and Italy and the use of the mark Halder Investments in the Benelux countries is the following:
– a newspaper article from the Frankfurter Allgemeine Zeitung of 14 September 2000;
– a newspaper article from Deutsche…unquote dating from July/August 2002;
– a newspaper article from Private Equity Europe dating from February 2003;
– a newspaper article from L’Écho of 19 November 2003;
– a newspaper article from Wirtschaftswoche of 4 December 2003;
– a newspaper article from Het Financieele Daagblad of 27 May 2004;
– a newspaper article from Deutsche…unquote dating from March 2005;
– a newspaper article from Börsen Zeitung of 31 January 2006;
– four newspaper advertisements published in the Frankfurter Allgemeine Zeitung on 16 May 2001, 4 June 2002, 30 September 2003 and 29 September 2004.
52 With regard to the evidence relating to Germany, it should be noted – as the Board of Appeal pointed out in paragraph 32 of the contested decision, thus confirming the analysis made by the Cancellation Division on that point – that the term ‘halder’ appears independently of any mention of corporate form or investment fund number in the four newspaper advertisements which appeared in the Frankfurter Allgemeine Zeitung. That does indeed constitute use as a mark for the services referred to in the advertisements, that is to say, for company buy-outs with private equity investors.
53 Furthermore, those advertisements show constant and regular use of the mark during the relevant period, since they date from 16 May 2001, 4 June 2002, 30 September 2003 and 29 September 2004. They also demonstrate that the mark Halder has been used publicly and externally in Germany, having been the subject-matter of advertisements in a German newspaper with a high circulation.
54 As regards the press articles produced by the intervener, it should be noted, first, that the list in Rule 22(4) of Regulation No 2868/95 of permissible evidence for establishing genuine use of a mark is not exhaustive, since the listing of those items is preceded by the phrases ‘in principle’ and ‘such as’. Contrary to the assertions made by Alder Capital, press articles can in some cases, therefore, constitute evidence of use of a mark.
55 Secondly, it should be noted that the newspaper articles in question refer to Halder either as a company or as an investment fund.
56 The use of the term ‘halder’ to designate investment funds, which frequently take the form of separate companies, constitutes not only a use as a company or trade name, but also as a mark for the subcategories of financial services identified in the contested decision. That use establishes a link between the sign Halder and the services identified by the Board of Appeal, since some services are provided by the investment funds (acquiring investors for the benefit of investment funds and company buy-outs) and are parcelled together with other services (setting up investment funds).
57 Thirdly, as the Board of Appeal points out in the contested decision, the press articles also give information on the place, time and extent of the use of the earlier trade mark. Thus, the newspaper article from Deutsche…unquote of March 2005 shows that the sign Halder was used, during the relevant period, to designate investment funds active mainly in Germany for the acquisition of small and medium-sized undertakings.
58 Furthermore, the fact that, in that newspaper article, the names of the funds are composed of the term ‘halder’ to which a number in Roman numerals has been added is not such as to call into question the conclusion on use of the mark, since, because of their brevity, their weak distinctive character and their ancillary position, those additions do not alter the distinctive character of the mark in the form in which it was registered.
59 The existence of extensive investment activity in Germany is confirmed to a certain extent by the newspaper article from Deutsche…unquote of July/August 2002, which states that, in 2001, investments in Germany accounted for 49% of the intervener’s portfolio.
60 In view of the advertisements referred to in paragraphs 51 to 53 above and the abovementioned press articles, it must be concluded that proof of genuine use of the mark Halder has been provided as regards Germany for the relevant period.
61 That conclusion cannot be called into question by the additional arguments put forward by Alder Capital in the annexes to its application to the effect that the public reading the press articles is not necessarily German and that those articles do not constitute active promotion of the mark in question. Even if those arguments were admissible despite the fact that they were first raised in the annexes to the application, it follows from an overall assessment of the items of evidence provided that the mark Halder was used publicly and externally in Germany in advertisements or through the setting up of investment funds bearing the name Halder and purchasing German undertakings. Furthermore, the fact that the press articles were written by a journalist and not by the intervener for advertising purposes cannot mean that they have no evidentiary value.
62 It follows from the foregoing that the Board of Appeal was correct in holding that there was genuine use of the mark Halder in Germany for services consisting in acquiring investors for the benefit of investment funds, company buy-outs, and setting up investment funds.
63 In that regard, it should be borne in mind that it suffices, in order for invalidity to be declared on the basis of likelihood of confusion, for use of the earlier marks to have been demonstrated only in part of the European Union (see, to that effect, 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 76 and the case-law cited).
64 In addition, Alder Capital’s allegation that the intervener does not comply with the financial regulations is ineffective in relation to the assessment of the use of the earlier marks. OHIM does not have jurisdiction to rule on compliance with the financial regulations. Similarly, Article 15 of Regulation No 40/94 does not lay down any requirement that the services be lawful or that the mark be used in good faith.
65 It therefore follows from all the foregoing that the third plea in law must be rejected, without it being necessary to examine the items of evidence relating to the Benelux countries and to Italy.
The fourth plea in law: infringement of Article 52 of Regulation No 40/94, read in conjunction with Article 8(1)(b) thereof
Arguments of the parties
66 Alder Capital submits, in the alternative, that there is no likelihood of confusion between the mark ALDER CAPITAL and the earlier marks.
67 Alder Capital argues that, even though the Board of Appeal found, in paragraph 54 of the contested decision, that there was a likelihood of confusion ‘between the marks compared’, Article 8(1)(b) of Regulation No 40/94 does not concern possible confusion existing between marks, but confusion as to the commercial origin of the goods or services. That error alone justifies the annulment of the contested decision.
68 Alder Capital also argues that the marks at issue differ decisively in their first letter: ‘h’ in the case of the earlier marks and ‘a’ in the case of the contested mark. Since the relevant public is composed of highly specialised professionals whose level of attention is particularly high, it is unlikely that that public would regard those marks as so similar that it could be concluded that there is a likelihood of confusion as regards the commercial origin of the services in question. Alder Capital also argues that no client of the companies concerned could be led to believe that there are commercial relations between Alder Capital and the intervener, still less that they have the same commercial origin. It claims that the arguments of the Board of Appeal in that regard are purely hypothetical.
69 Alder Capital states that the parties have co‑existed on the financial services markets in Europe and there has never been a single incident where any confusion has occurred (misdirected mail, inquiries, and so on).
70 Moreover, Alder Capital appends to its application one of its forms for opening an account, which, it claims, establishes that the level of attention and concentration required to form a commercial relationship with it rules out any likelihood of confusion.
71 In addition, Alder Capital states that, in the financial services field, similarity between names, which is very common, does not lead to a likelihood of confusion, essentially because of the specialised nature of the clients concerned.
72 OHIM and the intervener dispute Alder Capital’s arguments.
Findings of the Court
73 Under Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid, on application to OHIM or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in Article 8(1) or (5) are fulfilled.
74 Under 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 is to include the likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(ii) and (iii) of Regulation No 40/94 (now Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009), ‘earlier trade marks’ is to mean trade marks registered in a Member State, or trade marks registered under international arrangements which have effect in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
75 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that 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).
76 Where the protection of the earlier trade mark extends to the entirety of the Community, it is necessary to take into account the perception of the marks in dispute by the consumer of the services at issue in that territory. However, it should be borne in mind that, to refuse registration of a Community trade mark, it is sufficient that a relative ground for refusal, within the meaning of Article 8(1)(b) of Regulation No 40/94, obtains in only part of the Community (see, to that effect, VENADO with frame and others, paragraph 63 above, paragraph 76 and the case-law cited).
– The relevant public
77 According to the case-law, in the global assessment of the likelihood of confusion, account should 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).
78 In the present case, the Board of Appeal found, in paragraph 46 of the contested decision, that the relevant public is likely to be highly attentive and will be composed of bankers and investors, both corporate investors and private individual investors. Alder Capital and OHIM also believe that the level of attention of the relevant public will be very high.
79 However, the intervener disputes that position. It argues that the relevant public is composed of undertakings which are not all specialised in financial services, so that their level of attention is not very high.
80 Nevertheless, it must be held that, in the case of financial services which generally put large sums at stake and require the assistance of accountants, lawyers and specialist bankers, the public concerned will be highly attentive.
81 It is apparent from paragraphs 62 and 63 above that the relevant territory covers Germany.
– The similarity of the services
82 None of the parties disputes the analysis made by the Board of Appeal in paragraphs 37 to 44 of the contested decision to the effect that there is a medium degree of similarity between the services at issue.
– The similarity of the signs
83 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 given by the signs, account being taken, in particular, of 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 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).
84 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 83 above, 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 83 above, 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, in particular, 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 the mark (Nestlé v OHIM, paragraph 43).
85 In the present case, given the proof of use produced by Alder Capital, the marks to be compared are Halder and ALDER CAPITAL.
86 Visually, the marks at issue differ because of the presence of the element ‘capital’ in one of them and the letter ‘H’ in Halder.
87 The element ‘capital’ will be perceived as ancillary – as the Board of Appeal held, without being challenged on that point by the parties – and it is all the more unlikely to attract attention since it is the second element of the mark. 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).
88 As regards the letter ‘H’, it should be noted that that difference between the signs at issue is offset by the fact that the remaining five letters of the mark Halder are the same as those of the element ‘alder’ of the mark ALDER CAPITAL and by the fact that those letters are placed in the same order. The Board of Appeal was therefore correct in finding that the signs compared were visually similar overall.
89 Phonetically, the consumer’s attention will generally be attracted by the element ‘alder’. For the German public, the ‘H’ of Halder will be pronounced softly but it will not be especially noticeable, particularly when pronounced quickly. The Board of Appeal was therefore correct in finding that the signs at issue were phonetically similar.
90 As regards the conceptual aspect, the Board of Appeal found that it was not possible to make a conceptual comparison. That has not been contested by the parties.
91 It follows from all the foregoing that the Board of Appeal was correct in finding, in paragraphs 51 and 53 of the contested decision, that, overall, the signs had a high degree of similarity.
– The likelihood of confusion
92 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 the 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 VENADO with frame and others, paragraph 63 above, paragraph 74).
93 In the present case, the medium degree of similarity between the services and the high degree of similarity between the signs at issue create a likelihood of confusion, despite the fact that the degree of attention of the relevant public is very high.
94 That conclusion cannot be called into question by the argument that the clients of the undertakings which own the marks at issue have never previously confused them: in order for invalidity to be declared, it is not necessary to demonstrate that there has been confusion, but merely that there is a risk that the public might believe that the goods or services in question originate from the same undertaking or from economically linked undertakings.
95 Furthermore, contrary to the assertions made by Alder Capital, the fact that the Board of Appeal stated in paragraph 54 of the contested decision that there was a risk of confusion ‘between the marks compared’ does not justify annulment of the contested decision. It is clear from the remainder of the contested decision and, in particular, from paragraphs 52 and 53 that the Board of Appeal correctly applied Article 52(1) and Article 8(1) of Regulation No 40/94.
96 It follows from all the foregoing that the fourth plea in law must be rejected, without it being necessary to rule on the admissibility of the form produced by Alder Capital.
Costs
97 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 Alder Capital has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
98 Furthermore, under Article 136(2) of the Rules of Procedure, costs necessarily incurred for the purposes of the proceedings before the Board of Appeal of OHIM are to be regarded as recoverable costs. Consequently, it is appropriate to order the applicant to pay the costs incurred on that occasion by the intervener, in accordance with the form of order sought by the latter.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action.
2. Orders Alder Capital Ltd to pay the costs, including the costs necessarily incurred by Gimv Nederland BV for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Martins Ribeiro | Papasavvas | Wahl |
Delivered in open court in Luxembourg on 13 April 2011.
[Signatures]