JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
4 March 2009 (*)
(Community trade mark – Opposition proceedings – Application for registration of the figurative mark PTR PROFESSIONAL TENNIS REGISTRY as a Community trade mark – Earlier national and Community figurative mark RPT Registro Profesional de Tenis, S.L. and earlier national figurative mark RPT European Registry of Professional Tennis – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑168/07,
Professional Tennis Registry, Inc., established in Hilton Head Island, South Carolina (United States), represented by M. Vanhegan and B. Brandreth, Barristers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Registro Profesional de Tenis, SL, established in Madrid (Spain), represented by M. Zarobe, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 28 February 2007, as rectified (Case R 1050/2005‑1), concerning opposition proceedings between Registro Profesional de Tenis, SL and Professional Tennis Registry, Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, N. Wahl (Rapporteur) and A. Dittrich, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court on 16 May 2007,
having regard to the response of OHIM lodged at the Registry of the Court on 16 October 2007,
having regard to the response of the intervener lodged at the Registry of the Court on 27 September 2007,
further to the hearing on 14 November 2008,
gives the following
Judgment
Background to the dispute
1 On 15 August 2001, the applicant, Professional Tennis Registry, Inc., filed an application for 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.
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods and services in respect of which registration was sought are in Classes 16, 25 and 41 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 to the following descriptions:
– Class 16: ‘Printed matter, instructional and teaching material, manuals, publications, books, photographs, brochures, promotional material, stationery’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; teaching and training services relating to sporting and recreational activities; education and providing of training, all relating to tennis; organisation and management of sporting and recreational activities; organising and conducting conferences and seminars relating to sporting and recreational activities; providing tennis instruction; organising and conducting conferences and seminars for tennis teachers; organising and conducting tennis tournaments’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 40/2003 of 12 May 2003.
5 On 5 August 2003, the intervener, Registro Profesional de Tenis, SL, filed a notice of opposition under Article 8(1)(b) of Regulation No 40/94 against registration of the mark applied for.
6 The opposition was based on the following earlier registrations:
– Community trade mark No 1414234, registered on 29 January 2000 for ‘ready-made clothing for women, men and children; footwear (except orthopaedic), headgear’ in Class 25, ‘games and playthings; gymnastic and sporting articles not included in other classes, decorations for Christmas trees’ in Class 28, and ‘educational services, providing of training, entertainment, sporting and cultural activities’ in Class 41, and Spanish trade mark No 2132726, registered on 5 June 1998 for ‘educational services, providing of training, entertainment, sporting and cultural activities’ in Class 41, both corresponding to the figurative sign reproduced below:
– Spanish trade mark No 2132727, registered on 5 April 1999 for ‘educational services, providing of training, entertainment, sporting and cultural activities’ in Class 41, which is represented by the figurative sign reproduced below:
7 The opposition was based on all of the goods and services covered by the earlier marks and was directed against all of the goods and services designated by the mark applied for.
8 By decision of 29 June 2005, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the opposing marks.
9 On 26 August 2005, the intervener filed a notice of appeal against the Opposition Division’s decision.
10 By decision of 28 February 2007 (‘the contested decision’), the First Board of Appeal allowed the appeal in part. The Board of Appeal concluded that there was an average degree of visual and phonetic similarity, as well as conceptual identity, between the sign applied for and the earlier Spanish marks registered under No 2132726 and No 2132727, which, in view of the interdependence principle, were sufficient to give rise to confusion on the part of the relevant public for goods or services that were identical or similar.
Procedure and forms of order sought
11 By application lodged at the Registry of the Court on 16 May 2007, the applicant brought the present action.
12 In its response, the intervener requested the partial annulment of the contested decision in accordance with Article 134(2) and (3) of the Court’s Rules of Procedure. In support of that request, the intervener submitted that the Board of Appeal had failed to take into consideration the earlier Community trade mark No 1414234, even though that mark had been expressly referred to in its opposition and had been mentioned in the decision of the Opposition Division. Consequently, it submitted, the Board of Appeal had erred in authorising registration of the mark applied for in respect of the disputed goods in Class 25 and had wrongly ruled that each of the parties was to bear its own costs. According to the intervener, the same reasons as those for which the Board of Appeal rejected the application for a Community trade mark in respect of Classes 16 and 41 apply, mutatis mutandis, to Class 25.
13 Following that response, the First Board of Appeal corrected, on 21 December 2007, the contested decision under Rule 53 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as revised and amended. The Board of Appeal added a reference to the earlier mark omitted on 28 February 2007. It also stated that its reasoning applied equally to that mark and rejected the application for a Community trade mark for all of the goods in question, ordering in addition that the applicant bear the costs of the proceedings.
14 That corrigendum was notified to the parties on 8 January 2008.
15 On 10 March 2008, the applicant lodged its amended application.
16 On 13 May 2008, the intervener lodged its amended response. Having regard to the correction of the contested decision, it withdrew its head of claim seeking partial annulment of that decision and the head of claim seeking that the applicant and OHIM be ordered to pay the costs relating to the appeal proceedings before OHIM.
17 The applicant claims that the Court should:
– annul the contested decision, as corrected, by which the applicant’s Community trade mark application No 2826709 for goods and services in Classes 16, 25 and 41 was rejected;
– reject, in its entirety, the opposition to the applicant’s Community trade mark application No 2826709;
– order that Community trade mark application No 2826709 be granted in respect of the goods and services in Classes 16, 25 and 41;
– order OHIM to pay the costs relating to the appeal proceedings before OHIM and to the present proceedings.
18 At the hearing the applicant withdrew its second and third heads of claim and the Court took formal notice of that withdrawal.
19 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
20 The intervener contends that the Court should:
– dismiss the action as unfounded;
– order the applicant to pay the costs of the present proceedings.
Law
21 In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.
22 The applicant submits, essentially, that the Board of Appeal erred in finding that the marks in question were similar and in concluding that there was a likelihood of confusion.
23 OHIM and the intervener reply, essentially, that the Board of Appeal acted correctly in law in finding that there was a likelihood of confusion between the signs in question.
24 Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, that earlier trade mark and the identity or similarity of the goods or services covered by the two 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.
25 According to established case-law, the risk that the relevant public might believe that the goods or services covered by the marks at issue come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, on the basis of the perception that the relevant public has of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case (Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills(GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 and 31; see also, by way of analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 17 and 18).
26 In the present case, the relevant public is composed of average consumers in the Member States in which the earlier signs enjoy protection.
27 Since the identical nature or similarity of the goods and services in issue has not been contested by the parties, a comparison must be made of the signs concerned.
The similarity of the signs
28 According to established case-law, the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In that context, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35, and order in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657, paragraph 29; see also, by way of analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25).
29 In the present case, the mark applied for, the earlier Community trade mark No 1414234 and the earlier Spanish trade marks No 2132726 and No 2132727 are figurative marks. Those earlier marks consist of a word element composed of the acronym RPT and the expressions ‘Registro Profesional de Tenis, S.L.’ or ‘European Registry of Professional Tennis’, which contain the words from which the acronym is formed, and of a figurative element in the form of a stylised wave. The mark applied for consists of a word element composed of the acronym PTR and the expression ‘Professional Tennis Registry’, which contains the words from which the acronym is formed, and of a figurative element representing a half-globe and a moving tennis ball.
30 On the visual level, the applicant challenges the finding of the Board of Appeal, with which OHIM and the intervener concur, that, despite the different arrangement of some of their elements, there is a certain visual similarity between the conflicting signs by reason of the structure of the signs in question and the identity of their elements. The Board of Appeal concentrated almost exclusively on the acronyms and the expressions which make up the verbal element of the signs in question and failed to recognise that the sign applied for was dominated by the association of the figurative element and the acronym.
31 The Court first of all notes, as did the Board of Appeal, that the earlier marks and the mark applied for are similarly structured, in that each contains the figurative element placed in the upper part of the sign, the acronym at the centre and the expression containing the words from which the acronym is formed at the bottom. However, it must also be noted that there are several differences as regards, first, the size, position and form of the figurative elements and, second, the size, stylisation and order of the letters of the acronyms and the words contained in the expressions which make up the verbal elements of the signs in question. In particular, with regard to the figurative elements, it should be noted that the figurative element of the earlier marks takes up a small amount of space, whereas the figurative element of the mark applied for occupies the greater part of the sign as a whole.
32 Next, even though the acronyms in question share the same letters, it should be noted that the letters ‘p’, ‘t’ and ‘r’ are placed in a different order. In addition, the difference between the signs in question is reinforced by the particular calligraphy of the letter ‘p’ placed in the centre of the earlier marks, the body of which is larger than those of the letters ‘r’ and ‘t’, whereas the three letters of the mark applied for are similar in size.
33 Finally, it must be stated that the association of the acronym PTR and the figurative element representing a half-globe and a moving tennis ball draws the attention of the target public, with the result that it forms the distinctive and dominant element of the mark applied for, whereas the dominant element of the earlier marks is the acronym RPT, in which the letter ‘p’ predominates.
34 It follows that the representation of the acronym PTR in the mark applied for and the figurative element with which it is associated contribute to create an entirely different overall visual impression to that produced by the earlier marks.
35 Accordingly, the conclusion must be drawn that the overall visual assessment of the signs in question leads to the finding that the differences between the signs in question are greater than their similarities, with the result that, on the visual level, those signs are not similar.
36 On the phonetic level, the applicant disputes the conclusion of the Board of Appeal that the marks in question are similar by reason of the fact that the acronyms are composed of the same letters which refer to words the spelling of which is almost identical, with the result that their pronunciation is also almost identical. The applicant takes the view that the three possible ways of pronouncing the marks in question (using only the acronym, only the expression which contains the words from which that acronym is formed, or both) are all different. A separate error, it submits, relates to the significance which the Board of Appeal attached to the expressions ‘Professional Tennis Registry’ and ‘Registro Profesional de Tenis’. According to the applicant, those words are minor descriptive elements of the marks in question and are entirely descriptive of the types of services offered by those two organisations. OHIM and the intervener concur with the assessment of the Board of Appeal in that respect.
37 The Court first of all notes that, although the acronyms in question are made up of the same letters, they are not pronounced in the same way. In that context, it should be noted that the letters are arranged differently. Furthermore, the absence of a vowel in the acronyms in question means that the three letters have to be pronounced individually. As a result, the relevant public will identify the earlier marks primarily by the consonants ‘r’, ‘p’ and ‘t’, whereas the mark applied for will be identified by the consonants ‘p’, ‘t’ and ‘r.’ The acronyms in question start with consonants which have very distinct sounds in numerous languages, particularly Spanish, as the consonant ‘r’ is a vibrant, resonant and apical consonant and the consonant ‘p’ is an occlusive, labial and unvoiced consonant.
38 Next, while the marks in question also contain the expression ‘Professional Tennis Registry’ or the expression ‘Registro Profesional de Tenis’ or, again, the expression ‘European Registry of Professional Tennis’, it is likely that the average consumer will refer to those marks solely by the acronym PTR or the acronym RPT, since these serve as abbreviations for the words contained, first, in the expression ‘Professional Tennis Registry’ and, second, in the expressions ‘Registro Profesional de Tenis’ and ‘European Registry of Professional Tennis’. Besides, even on the assumption that those expressions placed beneath the acronyms in question are pronounced, the words which they contain are placed in a different order and will therefore be pronounced differently. Furthermore, the mark ‘European Registry of Professional Tennis’ has one additional word.
39 Consequently, the Board of Appeal was wrong to conclude that there was phonetic similarity between the signs in question.
40 On the conceptual level, the applicant argues, essentially, that the Board of Appeal erred in finding that, in the conflicting marks, the acronym and the expression which contains the words from which that acronym is formed constitute an inseparable whole. OHIM and the intervener concur with the assessment of the Board of Appeal in this respect.
41 In this connection, the Court finds that, despite the fact that the expressions ‘Professional Tennis Registry’, ‘European Registry of Professional Tennis’ or ‘Registro Profesional de Tenis’ cannot be considered to be the dominant elements of the marks in question, those expressions may be a relevant element for the purposes of the conceptual analysis of the marks in issue.
42 In that context, each of the words used in the marks in issue is placed just below the letters making up the acronym to which it refers, with the result that the relevant public can easily understand that the expressions featured below the acronyms in question contain words indicating to what each letter making up the acronym corresponds. Apart from the fact that the objective of such a presentation is, generally, to facilitate memorisation of the acronym, which does not, in itself, have any particular meaning, it must be held that, in the present case, the expressions refer to the same concept, namely tennis. Therefore, the marks in question are, from the conceptual point of view, similar overall.
The overall assessment of the likelihood of confusion
43 With regard to the overall assessment of the likelihood of confusion between the signs in question, those signs have important visual and phonetic differences. In the present case, the view must be taken that those visual and phonetic differences, established in paragraphs 30 to 34 and 36 to 38 above, clearly cancel out their conceptual similarity (see, to that effect, Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) ?2005? ECR II‑4837, paragraph 55). It follows that, notwithstanding the identity or similarity of the goods concerned, the differences existing in this case between the conflicting marks are such that there is no likelihood that the relevant public will be led to believe that the goods covered by the figurative mark PTR Professional Tennis Registry come from the undertaking which holds the earlier marks RPT Registro Profesional de Tenis S.L. and RPT European Registry of Professional Tennis, or from an undertaking economically linked to that undertaking.
44 It follows from all of the foregoing that the applicant’s plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, is well founded. Consequently, the contested decision, as corrected, must be annulled.
Costs
45 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. Since OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. As the applicant did not apply for the intervener to be ordered to pay costs, the intervener shall bear its own costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 February 2007, as corrected (Case R 1050/2005-1);
2. Orders OHIM to bear its own costs and to pay the costs incurred by Professional Tennis Registry, Inc.;
3. Orders Registro Profesional de Tenis, SL, to bear its own costs.
Martins Ribeiro | Wahl | Dittrich |
Delivered in open court in Luxembourg on 4 March 2009.
[Signatures]