JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
15 January 2008 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark AMPLITUDE – Earlier national figurative mark AMPLY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 40/94)
In Case T‑9/05,
Hoya Kabushiki Kaisha, established in Tokyo (Japan), represented by A. Nordemann, C.-R. Haarmann, F. Schwab and M. Nentwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and G. Schneider, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Indo Internacional SA, established in Hospitalet de Llobregat (Spain), represented by M. Currel Aguilà, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 3 November 2004 (Case R 433/2004-1), relating to opposition proceedings between Indo Internacional SA and Hoya Kabushiki Kaisha,
THE COURT OF FIRST INSTANCEOF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President, J. Azizi and E. Cremona, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 12 January 2005,
having regard to the response of OHIM lodged at the Registry of the Court on 3 May 2005,
having regard to the response of the intervener lodged at the Registry of the Court on 12 May 2005,
further to the hearing on 15 March 2007,
gives the following
Judgment
Background to the dispute
1 On 26 June 2000, the applicant filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The mark in respect of which registration was sought is the word mark AMPLITUDE.
3 The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended (‘the Nice Agreement’) and correspond to the following description: ‘Eyeglasses; lenses for eyeglasses; frames for eyeglasses; sunglasses; contact lenses.’
4 The application for the trade mark was published in Community Trade Marks Bulletin No 12/2001 of 29 January 2001.
5 On 25 April 2001, the intervener lodged an opposition against registration of the mark applied for, on the basis of Article 42(1) of Regulation No 40/94.
6 The opposition was based on the registration of the following turquoise‑blue‑coloured figurative mark:
7 That mark was registered in Spain under No 2 291 576 on 20 July 2000 in respect of goods in Class 9 of the Nice Agreement and corresponding to the following description: ‘Optical apparatus and instruments, in particular spectacles and sunglasses, sun lenses and ophthalmic lenses’.
8 The opposition related to all the goods covered by that earlier registration and was based on Article 8(1)(b) of Regulation No 40/94.
9 By Decision No 1135/2004 of 2 April 2004, the Opposition Division of OHIM rejected the opposition on the ground that there was no likelihood of confusion between the two conflicting marks.
10 On 28 May 2004, the intervener filed an appeal at OHIM under Articles 57 to 62 of Regulation No 40/94 against the decision of the Opposition Division.
11 By decision of 3 November 2004 in Case R 433/2004-1 (‘the contested decision’), the First Board of Appeal upheld the opposition and annulled the decision of the Opposition Division on the ground that there was a likelihood of confusion between the two conflicting marks.
Forms of order sought
12 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court of First Instance should:
– dismiss the application;
– order the applicant to pay the costs.
14 The intervener claims that the Court of First Instance should:
– dismiss the action;
– confirm the contested decision and reject the application for registration of AMPLITUDE as a Community trade mark;
– order the applicant to pay the costs.
Law
15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
16 The applicant claims that the Board of Appeal erred when it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 in this instance.
17 As regards, first, the visual comparison, the applicant states that the two marks differ in appearance. It explains that the letters of the earlier mark are written in a font different from that used for the mark applied for. The earlier mark is thus written in finer lettering. Furthermore, there is a larger space between each letter of the earlier mark than that which separates the letters constituting the mark applied for. The applicant adds that the Board of Appeal did not take sufficiently into account the fact that the earlier mark was turquoise-blue in colour.
18 The applicant also submits that the trade mark applied for is twice as long as the earlier mark. The case-law on the importance of letters at the beginning of marks is, it is claimed, mainly based on the fact that consumers do not pay attention to minor differences appearing in the endings of marks, such as single letters or suffixes which are more or less insignificant. However, the ending of the trade mark sought (‘itude’) cannot be considered to be insignificant.
19 Phonetically, the applicant maintains that, even if the letter ‘y’ in the earlier trade mark is pronounced in Spanish like the ‘i’ in the mark applied for, it should not be forgotten that that mark is twice as long as the earlier mark, resulting in a different rhythm of pronunciation. It adds that the average consumer will not shorten the word ‘amplitude’ to ‘ampli’ and that consumers do not tend to change marks in any way unless they are very long and/or hard to remember.
20 The applicant submits that the two additional syllables in the trade mark applied for create a special phonetic impression, since the word ‘amplitude’ is stressed in Spanish on the third syllable ‘tu’. The applicant claims that that phonetic accentuation cannot be considered unimportant or pass unnoticed by the relevant public.
21 Lastly, the applicant submits that the word ‘amplitude’ does not exist in Spanish. The corresponding Spanish word is ‘amplitud’. The applicant takes the view that, on account of the ‘e’ at the end of the word ‘amplitude’, a substantial part of the relevant public may try to pronounce that word as in English and thus very differently from the pronunciation of the earlier mark.
22 As regards the conceptual comparison, the applicant considers that the Board of Appeal failed to take into account settled case-law (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25) according to which the global appreciation of the likelihood of confusion must be based on the overall impression and the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
23 The applicant submits that the average Spanish consumer does not hear the word element ‘amply’ as the Spanish word ‘amplio’ or the word ‘amplitude’ as the Spanish word ‘amplitud’. Even if he did, that would not be relevant since those Spanish word elements are not registered as marks.
24 As for the word elements constituting the two trade marks at issue, the applicant takes the view that, although it is true that the relevant consumers will understand that they are two words derived from the same root, they are, however, English words which do not exist in Spanish. The applicant concludes from this that the two words cannot, in principle, be understood by the average Spanish consumer as having a particular connotation. It submits that only the mark AMPLITUDE may perhaps have a meaning, because it is a word widely used in the area of technology, but there is no word equivalent to ‘amply’ in Spanish.
25 OHIM and the intervener submit, essentially, that the Board of Appeal was right to find that there was a likelihood of confusion between the marks in question and, therefore, that this action must be dismissed as unfounded.
Findings of the Court
General points
26 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.
27 Under Article 8(2)(a)(ii), earlier trade marks are, inter alia, trade marks registered 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.
28 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, as the case may be, 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, according to the perception which the relevant public has of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and 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 there).
29 It should also be borne in mind that the consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 17 January 2006 in Case T‑398/04 Henkel v OHIM (Red and white rectangular tablet with an oval blue centre), not published in the ECR; operative part published at [2006] ECR II-6, paragraph 28; see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 22 above, at paragraph 26).
30 In particular, a consumer of everyday consumer goods is deemed to be reasonably well informed and reasonably observant and circumspect (judgment of 17 January 2007 in Case T‑283/04 Georgia-Pacific v OHIM (Embossed motif), not published in the ECR, paragraph 41).
The relevant public and the similarity of the goods concerned
31 The Board of Appeal took the view that Spain was the relevant territory and that the target public was made up of average Spanish consumers. It found that, since what are involved are everyday consumer goods, the relevant public should be deemed to be reasonably well informed and reasonably observant and circumspect (paragraphs 18 and 19 of the contested decision).
32 With regard to the comparison of the goods at issue, the Board of Appeal considered that the goods covered by the earlier mark and those covered by the mark applied for were identical and were in Class 9 of the Nice Agreement (paragraph 20 of the contested decision).
33 The findings of the Board of Appeal have not been disputed. The Court is of the opinion, moreover, that there do not appear to be any reasons for calling that assessment into question.
34 Consequently, account must be taken, for the purposes of assessing the likelihood of confusion in the present case, of the fact that the goods covered by the conflicting marks are identical and of the point of view of the average Spanish consumer with an average level of attention.
The similarity of the signs
35 As regards comparison of the signs in question, it must be borne in mind that, according to settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, aural or conceptual similarity of the signs in question, be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Philips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47, and the case-law cited there).
– Visual comparison
36 With regard to the visual comparison of the signs at issue, the Board of Appeal found, in the contested decision, that there was a clear similarity. It stated that the beginning of the two conflicting marks was practically identical and that the consumer’s attention was particularly drawn to it. It considered that the differences stemming from the letters, the colour of the earlier mark and the length of the mark applied for (the additional ending ‘tude’), could not therefore diminish the overall visual similarity of the conflicting marks (see contested decision, paragraph 22).
37 In that regard, the Court would point out, first, that the earlier mark is, with the exception of a single letter (‘y’ instead of ‘i’), included in its entirety in the mark applied for. Secondly, the part of the mark sought which corresponds to the earlier mark is at the beginning and that, as has been recognised by the case-law, particularly catches the consumer’s attention (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), as the applicant admits.
38 As regards the visual differences between the trade mark applied for and the earlier mark pointed out by the applicant, the Court finds, first, that the earlier mark primarily consists of a word element, ‘amply’, but that it also includes figurative elements, in this case ordinary, turquoise-blue printed letters. By contrast, the mark applied for is a word mark consisting of the word ‘amplitude’.
39 In that regard, as the Board of Appeal correctly found, the figurative elements of the earlier mark are marginal. The mere graphic representation of the earlier mark, consisting of printed characters, of a more or less commonplace and ordinary kind, even if they are turquoise-blue in colour, cannot draw the average consumer’s attention to any figurative components other than the letters of which it consists (see, to that effect, Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 47).
40 The Court observes, secondly, that, apart from the difference between the letters ‘y’ and ‘i’ in the part which is common to both marks (see paragraph 37 above), the mark applied for can be distinguished from the earlier mark by the four additional letters forming the ending ‘tude’. Thus, the mark applied for, which is nine letters in length, is four letters longer than the earlier mark. The Court is of the opinion, however, that, contrary to the applicant’s claims, the four additional letters of the mark applied for which form the ending ‘tude’ are, in relation to the beginning, which is practically identical to the earlier mark, only an insignificant suffix. The ending ‘tude’ is very closely related to the ending ‘tud’, which is extremely common in Spanish.
41 Since the beginning of the element common to both marks plays a determinant role in the consumer’s perception of the mark (see paragraph 37 above), the Board of Appeal was right to find that there was a visual similarity between the conflicting marks taken as a whole.
– Phonetic comparison
42 As regards the phonetic comparison of the signs at issue, the Board of Appeal also referred to their similarity in that respect in the contested decision. It went on to state that, in spite of the similar impression produced by the first two syllables, based on the fact that the letter ‘y’ in the earlier mark was pronounced, in Spanish, like the letter ‘i’ in the mark applied for, their phonetic similarity was mitigated by the clearly greater length of the mark sought (see paragraph 23 of the contested decision).
43 On that point, the Court must uphold the Board of Appeal’s assessment that the first two syllables, which form the element common to both marks, create an extremely similar impression in view of the fact that, in Spanish, the letters ‘y’ and ‘i’ are both pronounced like the vowel ‘i’. That similarity is likely to be reinforced in the minds of consumers by the position of those two syllables at the beginning of the mark applied for and of the earlier mark.
44 Firstly, as regards the phonetic differences between the marks in question, clearly the Board of Appeal did not assert that the target public tended to shorten or change the name of the mark applied for. On the contrary, the Board of Appeal based its decision on the different lengths of the conflicting signs. Thus, it was right to find that the addition of two syllables doubled the length of the mark applied for, weakening the phonetic similarity.
45 Secondly, as regards the applicant’s assertion that a substantial part of the relevant public will pronounce the word ‘amplitude’ as in English and thus very differently from the pronunciation of the earlier mark, the applicant put forward that argument for the first time before the Court during the hearing. It had not done so previously in the course of the proceedings before OHIM. In that respect, it must be borne in mind that matters of fact or law relied on before the Court of First Instance which have not been raised previously before the departments of OHIM, in so far as an examination of those matters was not necessary to resolve the dispute brought before those departments, are inadmissible (Case T‑311/01 Éditions Albert René v OHIM – Trucco (Starix) [2003] ECR II‑4625, paragraph 72; Case T‑57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 22; and judgment of 17 October 2006 in Case T‑499/04 Hammarplast v OHIM – Steninge Slott (STENINGE SLOTT), not published in the ECR; operative part published at [2006] ECR II‑84, paragraph 20). Therefore, that matter of fact relied on by the applicant is inadmissible.
46 Thirdly, that dissimilarity is accentuated by the fact that, in Spanish, the main stress, in respect of the two marks at issue, is on the penultimate syllable. Thus, in the earlier mark, the main stress is on the syllable ‘am’ and, in the mark sought, the main stress is on the syllable ‘tu’. It was demonstrated in the course of the hearing that, in Spanish, the stressed syllable ‘tu’ in the mark applied for is longer than the stressed syllable ‘am’ in the earlier mark. In the mark sought, because of that pronunciation, it is one of the syllables added to the common root of the conflicting marks that is stressed, in such a way as to strengthen the phonetic difference between the two marks.
47 Therefore, the Court takes the view that, in Spanish, there are, at the phonetic level, differences between the conflicting marks, notwithstanding a very strong similarity between the first two syllables of those marks.
48 Consequently, the Court takes the view that the Board of Appeal’s assessment has to be qualified in that the phonetic difference between the marks at issue is fairly marked.
– Conceptual comparison
49 As regards the conceptual comparison, the Board of Appeal found, in the contested decision, that there was a similarity between the two conflicting marks. It stated that, although the two signs, as such, had no meaning in Spanish, the relevant public was likely to understand the English word ‘amplitude’ as equivalent to the Spanish word ‘amplitud’, meaning, inter alia, breadth, width, fullness or spaciousness.
50 Furthermore, the Board of Appeal took the view that the same conceptual link could be established between the earlier mark AMPLY and the Spanish word ‘amplio’. It concluded that the relevant consumer, understanding the mark AMPLITUDE as meaning ‘amplitud’ and the mark AMPLY as meaning ‘amplio’, would undoubtedly realise that both words belong to the same semantic family (see paragraphs 24 and 25 of the contested decision).
51 The Court takes the view that that assessment must be endorsed in essence.
52 Even though it is not disputed that none of the word elements constituting the two conflicting marks are part, as such, of the vocabulary of the Spanish language, the conceptual link between the common root of the relevant marks (‘amply/ampli-’) and the semantic family of Spanish words like ‘ampliar’ and ‘amplificar’ (amplify), ‘amplificación’ (amplification), ‘amplitud’ (amplitude), ‘amplio’ (extensive, large), and so forth, is undeniable.
53 In that regard, it is necessary to reject the applicant’s assertion that, first, the relevant consumer does not understand the word element ‘amply’ because the signs in question have no meaning in Spanish and, secondly, only the word ‘amplitude’, as a result of its similarity to the Spanish word ‘amplitud’, can be understood.
54 The Court takes the view that it is not necessary, as the applicant maintains, for the relevant consumer to understand, transform or shorten the conflicting marks. The conceptual link between the meaning of the words mentioned above, on the one hand, and the common root of the word elements constituting the conflicting marks, on the other hand, is sufficient to establish their conceptual similarity.
55 Lastly, there is, for the average Spanish consumer, a very strong relationship between the goods concerned and the meaning of the marks which cover them. All the words associated with the common root of the two marks allude in evocative fashion to intensification, magnification, the inclusion of certain objects or qualities, amplitude, space or extensiveness, that is to say to impressions which are very relevant with regard to the goods concerned (eyeglasses, lenses, sunglasses, and so forth).
56 Therefore, the Court considers that the Board of Appeal was right to find that there was a conceptual similarity between the marks at issue.
– Overall assessment of the similarity of the conflicting signs
57 First of all, in the present case, as the Board of Appeal correctly found, two marks are in issue that are visually, phonetically and conceptually similar with regard to the common root (‘amply/ampli‑’) with which they begin.
58 At the visual level, notwithstanding certain differences, there is an overall visual similarity between the two marks in question (see paragraphs 36 to 41 above). On the other hand, the phonetic similarity of the first syllables of the two conflicting marks is mitigated by the rather different pronunciation of the two marks in Spanish (see paragraphs 42 to 48 above). Furthermore, there is very great conceptual similarity on account of the strong link between the goods concerned and the meaning attached by the relevant consumers to the signs in question (see paragraphs 49 to 56 above).
59 Taking into account all those circumstances, the Court finds that the undeniable overall visual similarity and above all the very strong conceptual similarity, as well as, to a lesser extent, the phonetic similarity, albeit not so great, result in a general assessment that the signs in question are indeed similar.
60 Therefore, the Board of Appeal’s overall assessment that the conflicting signs were similar is correct.
The likelihood of confusion
61 In its overall assessment of the likelihood of confusion as a whole, the Board of Appeal found, in the contested decision, that the similarities between the two marks outweighed their minor differences. It explained that the beginning of the conflicting marks was practically identical and that the average consumer would normally perceive a mark as a whole, without analysing its various details, since he was not often able to make a direct comparison between the conflicting marks (see paragraph 26 of the contested decision).
62 As has been explained (see paragraphs 57 to 60 above), the Court concurs with the Board of Appeal’s assessment concerning the overall similarity of the signs in question as far as the result is concerned. It must be held that there is an overall similarity between the two marks at issue, particularly in view of the position of the common element ‘amply/ampli-’ at the beginning of both marks and the conceptual aspect of that common element.
63 Furthermore, considering that the goods in question are identical and that the average Spanish consumer, as the targeted public, is only averagely observant in relation to the everyday consumer goods concerned, it is conceivable, as stated in the contested decision (contested decision, paragraph 28), that the relevant consumer might regard the goods covered as coming from the same undertaking.
64 Therefore, the Court concludes that the Board of Appeal did not err in finding that there was, for the relevant public, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
65 For the foregoing reasons, the action for annulment must be dismissed as unfounded.
Costs
66 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
67 In the present case, the applicant has been unsuccessful and OHIM and the intervener asked that the applicant be ordered to pay the costs. The applicant must therefore be ordered to pay the costs incurred by OHIM and by the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Hoya Kabushiki Kaisha to pay the costs.
Delivered in open court in Luxembourg on 15 January 2008.