JUDGMENT OF THE GENERAL COURT (First Chamber)
4 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark FOCUS extreme — Earlier national word mark FOCUS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑568/12,
Sofia Golam, residing in Athens (Greece), represented by N. Trovas, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Derby Cycle Werke GmbH, established in Cloppenburg (Germany), represented by U. Gedert, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 16 October 2012 (Case R 2327/2011-4), relating to opposition proceedings between Derby Cycle Werke GmbH and Ms Sofia Golam,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 17 December 2012,
having regard to the response of OHIM lodged at the Court Registry on 14 May 2013,
having regard to the response of the intervener lodged at the Court Registry on 2 May 2013,
having regard to the decision of 27 June 2013 refusing leave to lodge a reply,
having regard to the change in the composition of the Chambers of the General Court,
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 General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 11 March 2010, the applicant, Sofia Golam, 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 in respect of which registration was sought is the following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond, for that class, to the following description: ‘Clothing, shoes, headgear’.
4 The Community trade mark application No 8945487 was published in Community Trade Marks Bulletin No 2010/135 of 23 July 2010.
5 On 19 October 2010, the intervener, Derby Cycle Werke GmbH, filed a notice of opposition, under Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier German word mark FOCUS, registered on 19 April 1994, under number 2062620, covering goods in Class 25 and corresponding to the following description: ‘Clothing, footwear, headgear’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
8 By decision of 19 September 2011, the Opposition Division upheld the opposition for the contested goods on the ground that, in essence, the goods covered by the marks at issue were identical and that the visual, phonetic and conceptual similarities between the signs outweighed their dissimilarities and could induce at least part of the relevant public to believe that the goods concerned came from the same or economically-linked undertakings.
9 On 11 November 2011 the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision.
10 By decision of 16 October 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It first stated, in essence, that the likelihood of confusion had to be assessed with regard to German consumers, given that the earlier mark was a German mark and that the goods at issue were directed at the general public. The Board of Appeal then went on to hold that the goods at issue were identical, the comparison relating to the specification of the goods by each mark. In this respect, the Board of Appeal explained that ‘[w]hether the marks are used, or intended to be used, for specific sectors of the public, athletes for instance, [did] not change the fact that the specifications [were] worded in the broadest terms’, with the result that the marks at issue ‘[were able to], or could, be used for all of the goods of the identical specifications of [goods] in Class 25’. As regards the comparison of the signs at issue, the Board of Appeal stated that, since the sole element of the earlier mark was the ‘dominant [and] central element’ of the mark applied for, those signs had to be considered to be ‘visually similar to a degree above average’. From a phonetic point of view, the Board of Appeal observed that, since the secondary verbal element of the mark applied for, namely ‘extreme’, would not be pronounced in most cases, it had to be held that the signs at issue were identical. The Board of Appeal added that, should that secondary element be pronounced, the phonetic similarity between the signs should be considered to be average. As for the conceptual comparison of the signs, the Board of Appeal stated that all of the words contained in the signs at issue were understood by German consumers and that, because of the common notion of ‘centre of interest or activity’ capable of being conveyed by the word ‘focus’, the marks at issue showed an average degree of similarity. So far as concerns the general assessment of the likelihood of confusion, the Board of Appeal noted, first, that the earlier mark had an average distinctive character, secondly, that the goods were identical, thirdly, that the marks at issue were visually similar to an above average degree and phonetically similar to an at least average degree, and that they conveyed a common notion. The Board of Appeal concluded that, as the goods were identical, the dissimilarities between the signs at issue were not capable of outweighing the significant similarities between them, with the result that they were not able safely to exclude a likelihood of confusion in the minds of the consumers of goods in Class 25. Lastly, the Board of Appeal found that the applicant had not even attempted to provide evidence of the lack of good faith and poor ‘business ethics’ of the intervener. The Board of Appeal also dismissed the applicant’s argument that the identity of the goods had not been proved by the intervener and the argument that the graphic designer who had designed the sign applied for had stated that that sign was original.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– register the mark applied for;
– order the intervener 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
13 In support of the application, the applicant puts forward, in essence, three pleas, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the second alleging abusive and unlawful exercise of the right of opposition, and the third alleging infringement of Article 8(5) of Regulation No 207/2009.
14 It is appropriate to consider, firstly, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 It is important to note that, in the application, the applicant sets out a line of argument concerning, firstly, the comparison between the mark applied for, mentioned in paragraph 1 above, and the earlier mark, mentioned in paragraph 6 above, and, secondly, the comparison between another mark for which registration is sought under number 8885287 (‘the trade mark application No 8885287’) and any other earlier mark.
16 On the assumption that the applicant actually intended to rely on the trade mark application No 8885287 within the framework of the present case, suffice it to note that the comparison between that trade mark application and any other earlier mark was not part of the factual and legal context of the dispute as brought before the Board of Appeal.
17 It follows that, in so far as the applicant’s line of argument relates to the comparison between the trade mark application No 8885287 and any other earlier mark, it is of such a kind as to change the subject-matter of the dispute before the Court and falls foul of the prohibition laid down in Article 135(4) of the Court’s Rules of Procedure. It must therefore be rejected as being clearly inadmissible.
18 Thus, the applicant’s line of argument will be examined only in so far as it concerns the comparison of the mark applied for, mentioned in paragraph 1 above, and the earlier mark mentioned in paragraph 6 above.
19 The applicant challenges the contested decision inasmuch as it concludes that there is a likelihood of confusion between the marks at issue. The applicant claims, in essence, that the goods covered by the mark applied for and those covered by the earlier mark are not identical and that the marks at issue are not similar.
20 OHIM and the intervener dispute the applicant’s arguments.
21 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and because of 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.
22 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).
23 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
24 Since the earlier mark is a German mark, the finding of the Board of Appeal that the relevant territory for the purpose of examining the likelihood of confusion in the present case is that of Germany — a finding which, moreover, the applicant does not contest — must be approved.
25 The finding of the Board of Appeal that the goods at issue are directed at the ‘general public’, which the applicant does not contest either, must also be upheld.
Comparison of the goods
26 The mark applied for and the earlier mark cover in an identical manner goods in Class 25, corresponding to the following description: ‘Clothing, shoes/footwear, headgear’.
27 In those circumstances, the Board of Appeal’s finding that the goods are identical must be approved.
28 That conclusion cannot be invalidated by the applicant’s argument that it is appropriate to compare the specific goods for which the marks at issue are used, and not to compare the classes of goods covered by the marks at issue, which follow a list established for administrative reasons. The applicant claims in this regard that her activity relates to dietary supplements, whereas the intervener’s goods relate to cycling.
29 It must be stated, first of all, as the intervener has pointed out, that dietary supplements cannot fall within Class 25. In the present case, however, the only goods at issue are goods falling within Class 25.
30 Next, it should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) of Regulation No 207/2009 by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (see, to that effect, Case T‑364/05 Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 89; judgment of 16 June 2010 in Case T‑487/08 Kureha v OHIM — Sanofi-Aventis (KREMEZIN), not published in the ECR, paragraph 71; and judgment of 31 January 2013 in Case T‑66/11 Present-Service Ullrich v OHIM — Punt Nou (babilu), not published in the ECR, paragraph 45).
Comparison of the signs
31 The global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 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).
32 The assessment of the similarity between two marks cannot be limited simply to 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, cited in paragraph 31 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, cited in paragraph 31 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 could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, with the result that all other components of the mark are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
33 The Board of Appeal held, in essence, that, visually, the marks at issue had to be considered to be ‘similar to a degree above average’, that, phonetically, the marks were identical or, at least, similar to an average degree, and that, conceptually, they showed an average degree of similarity.
34 The applicant criticises, first, the contested decision on the ground that the Board of Appeal found that the signs at issue were visually similar. According to the applicant, the signs at issue differ in that the mark applied for contains two words and a star, whereas the earlier mark comprises one word.
35 It should be noted, first of all, that the mark applied for consists of a red star with five branches in the form of a wave pointing towards the right, positioned at the front and followed by two words, the first word, ‘focus’, being written in black capital letters and the second word, ‘extreme’, which is situated to the lower right hand side of the first word at an angle, being written with red lower-case letters.
36 Next, it must be noted that, in the contested decision, the Board of Appeal explained, first, the visual differences between the marks at issue by stating that ‘[t]he figurative mark applied for [consisted] of the word “FOCUS” in black and the addition of two other elements in red: the representation of a star to the left and the word “extreme” on the lower part of the “S” of “FOCUS”’, whereas ‘[t]he earlier trade mark [was] simply the word “FOCUS”’.
37 However, the Board of Appeal then went on to explain that, given that the sole element of the earlier mark is the dominant element of the mark applied for, the marks at issue had to be considered to be ‘visually similar to a degree above average’.
38 That finding of the Board of Appeal, which is not, moreover, contested by the applicant, must be approved.
39 The applicant criticises, secondly, the assessment of the Board of Appeal so far as concerns the comparison of the marks at issue from a phonetic point of view. She claims that, contrary to what is stated in the contested decision, consumers pronounce the whole of the words of the mark applied for.
40 In that regard, it must be stated, first of all, that the applicant merely asserts that consumers pronounce the two words of the mark applied for, without, however, substantiating that assertion by means of evidence. Next, it should be noted that the Board of Appeal does not rule out the possibility that consumers might pronounce the second word of the mark applied for. It takes the view, however, that, in this case, ‘the [phonetic] similarity between the signs is average’, a view which must be approved and which the applicant, moreover, does not dispute.
41 As for the conceptual comparison of the marks at issue, it is necessary to confirm the assessment of the Board of Appeal, which is, moreover, not contested by the applicant.
42 It follows that the marks at issue must be considered to be similar, as the Board of Appeal found.
43 That conclusion cannot be invalidated by the applicant’s argument that the Board of Appeal did not take account of the declaration of the graphic artist who designed the mark applied for or of the domestic trade mark declaration lodged with the Trade Marks Department of the Greek Ministry of Economic Affairs, Competitiveness and Shipping.
44 Suffice it, first of all, to state that, in the contested decision, the Board of Appeal specifically rejected the applicant’s argument that, according to the graphic artist who designed the sign applied for, that sign was ‘original’. The Board of Appeal rightly observed in this regard that, in opposition proceedings, what was required was to compare the marks at issue and to establish whether or not they could co-exist on the European Union market, with the result that such an argument of the applicant was irrelevant within the context of opposition proceedings.
45 As for the Board of Appeal’s omission to take account of the declaration of the mark FOCUS extreme which the applicant lodged with the Greek authorities, the applicant does not show how that declaration makes it possible to refute the Board of Appeal’s assessment relating to the similarity of the marks at issue.
The likelihood of confusion
46 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 trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
47 The Board of Appeal held, in essence, that, since the earlier mark had an average distinctive character, the goods were identical and the marks at issue were similar, the likelihood of confusion in the minds of consumers could not be safely excluded.
48 The applicant claims that, since the marks at issue differ from one another and the goods which they cover are unrelated to each other, there is no likelihood of confusion.
49 As is apparent from paragraphs 26 to 30 above, the mark applied for and the earlier mark cover goods in Class 25 in an identical manner.
50 Furthermore, as has been observed in paragraphs 35 to 45 above, the Board of Appeal was fully entitled to take the view that the signs at issue were similar overall.
51 It must therefore be held that the Board of Appeal did not err in finding that there was a likelihood of confusion between the signs at issue in so far as they cover goods in Class 25. The identity of those goods covered by the two marks at issue and the degree of similarity between those marks, considered cumulatively, prove sufficient to make it possible to draw the conclusion that there is a likelihood of confusion, regardless of the degree of distinctive character of the earlier mark. It should, moreover, be noted, in this regard, that the Board of Appeal found that the earlier mark had a normal distinctive character, a finding which the applicant does not challenge.
52 The applicant’s argument that she was entitled to a ‘temporal priority’, on the ground that, unlike the intervener, she had lodged an application for registration of a Community trade mark, must likewise be rejected. As OHIM states, it follows from Article 8(2) of Regulation No 207/2009 that the mark applied for may be refused registration, including upon opposition by the proprietor of an earlier mark registered in a Member State, which is the case here.
53 In those circumstances, the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.
54 It follows that the applicant cannot claim that the opposition filed by the intervener was abusive, brought in bad faith and contrary to ‘business ethics’. The second plea must therefore also be rejected.
55 Furthermore, in view of the rejection of the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the third plea, which alleges infringement of Article 8(5) of Regulation No 207/2009, must in any event be rejected.
56 In the light of all the foregoing considerations, the action must be dismissed in its entirety, without there being any need to give a ruling on the admissibility of the applicant’s second and third heads of claim.
Costs
57 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
58 Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Sofia Golam to pay the costs.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 4 April 2014.
[Signatures]