JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
16 November 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark ‘doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS’ – Earlier national and international word and figurative marks ‘DORMA’ – Lodging of additional documents on the reputation of the earlier marks in the procedure before the Board of Appeal – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑500/10,
Dorma GmbH & Co. KG, established in Ennepetal (Germany), represented by P. Koch Moreno, 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 being
Puertas Doorsa, SL, established in Petrel (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 August 2010 (Case R 542/2009‑4), relating to opposition proceedings between Dorma GmbH & Co. KG and Puertas Doorsa, SL,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and H. Kanninen, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 19 October 2010,
having regard to the response lodged at the Court Registry on 2 February 2011,
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 Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 5 April 2006 Puertas Doorsa, SL filed an application for registration of a Community trade mark with 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 6, 9 and 19 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 6: ‘Doors of metal; manual tilting doors of steel; sectional industrial and residential manual doors; steel fire doors; door panels; roller blinds of steel and aluminium; automatic doors of metal; automatic tilting doors of steel; automatic roller blinds of metal; door frames of metal; door knockers; ironmongery, small items of metal hardware; door bolts; frames, runners and door handles; non-electric devices for opening and closing doors; props of metal; door stops; grids and screens; grates and trellises; common metals and their alloys; metal building materials; transportable buildings of metal, non-electric cables and wires of common metal; pipes and tubes of metal; steel sheets; roller blinds of steel; safes; goods of common metal not included in other classes; ores’;
– Class 9: ‘Automatic anti-panic systems for closing devices; door alarms; electric door bells; electrical checking apparatus and instruments; electric apparatus for closing and opening of doors; automatic devices for doors; electrical cables and connectors; theft prevention installations, electric; signalling and apparatus and instruments for recording, transmission and reproduction of sound or images; peepholes [magnifying lenses] for doors; mechanisms for coin-operated apparatus; electric wires and identification sheaths and threads for electric wires’;
– Class 19: ‘Non-metal doors; sectional industrial and residential doors, not of metal; automatic doors, not of metal; quick-opening mechanical glass doors; automatic roller blinds not of metal or of textile; door casings, frames, door frames (not of metal), door panels, not of metal; windows, not of metal; stained-glass windows; window glass (except glass for vehicle windows); wood, semi-worked, and plywood; mouldings, not of metal, for building; building materials (non-metallic); non-metallic transportable buildings’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 7/2007 of 19 February 2007.
5 On 14 May 2007 the applicant, Dorma GmbH & Co. KG, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier German and United Kingdom marks, within the meaning of Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).
6 The opposition was based on the following earlier rights:
– the German figurative mark, filed on 26 June 1995, registered on 11 March 1997, under No 39525884 and renewed until 30 June 2015 for goods and services in Classes 6, 9, 16, 19 and 37, reproduced below:
– the word mark DORMA, filed on 30 June 1999 and registered in the United Kingdom on 5 April 2002, under No 2201691, for goods in Classes 6, 7, 9, 16 and 19;
– the international figurative mark, filed and registered on 15 June 1995, under No 722009, for goods and services in Classes 6, 7, 9, 16 and 19 reproduced below:
7 As regards the earlier German figurative mark No 39525884, the opposition was based on goods and services in Classes 6, 9, 19 and 37 which correspond, for each of those classes, to the following description:
– Class 6: ‘Electric and mechanical locks and keys for these locks; fittings for construction, namely hinges for doors, lever handles, locks and strike boxes, door handle fittings; fittings for doors of glass; accessories for installations of glass, namely locks and lock cases, striker plates, hand levers, door knobs, cross bars, screw-on fittings, clamping fittings, points connection fittings, protective fittings; all the aforesaid goods made of metal and/or in combination with raw materials formed of coated material or compressed substances of various materials’;
– Class 9: ‘Mechanical, pneumatic, hydraulic and/or electric devices for operating doors or gates formed of a single or several parts, namely sliding doors, pivot doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding gates, sliding gates, all of metal, manually and power-operated; electric drives, mechanical drives, pneumatic drives as well as electric and/or electronic controls and settings for sliding doors, swing leaf doors, pivot security doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding and sliding gates; security installations, namely fire detectors, microwave detectors, motion detectors, infrared detectors, batten luminaires, push-buttons for sliding doors, swing leaf doors, revolving doors, folding doors, telescopic sliding doors, arched sliding doors, leaf gates, folding and sliding gates; closing devises or closing installations shifted into their locking and/or unlocking position by controls of electronic components respectively for doors and gates formed by one or several parts; electronic switching apparatus, electronic control apparatus, electronic monitoring apparatus and control apparatus for the said closing devices or installations; access control systems; encoded cards; data storage units in the form of encoded cards; devices and installations for the identification of persons; alarm installations; apparatus for industrial electricity, namely transformation, storage and control; computer programs on machine detectable media, including cards and chips; installations for surveillance by video including video cameras transmitting, by wireless means or by cable, images to control screens, transmitters and receivers for data transmission; drives for garage doors, distribution cabinets, distribution boxes, electrical door openers; internal communication systems; electrical drive mechanisms for locks, windows and gates; door closers’;
– Class 19: ‘All types of glazed doors, revolving doors with leaves consisting in swing-doors, automatically and manually controlled glazed separation partitions; glass doors’;
– Class 37: ‘Planning, maintenance and repair of mechanical, pneumatic and hydraulic components for sliding doors, swing leaf doors, revolving doors, folding doors, telescopic sliding doors, arched sliding doors, leaf gates, folding gates, sliding gates’.
8 As regards the earlier word mark No 2201691, registered in the United Kingdom, the opposition was based on goods in Classes 6, 7, 9 and 19 which correspond, for each of those classes, to the following description:
– Class 6: ‘Mechanical locks and keys for these locks; buildings’ hardware including hinges, handles, locks and strike boxes, lever handles, fittings for toughened glass doors and glass panes, accessories for toughened glass assemblies, namely locks and lock cases, striking plates, handles, door knobs, cross bars, screw-on fittings, clamping fittings, connectors, protective fittings; manually operated single-panel or multiple-panel doors and gates, namely sliding doors, swing doors, revolving doors, curved sliding doors, telescopic sliding doors, wing gates, folding gates, sliding gates, sliding gates, horizontal sliding walls: all the aforesaid goods being made of metal and/or combined materials, consisting of different kinds of laminated material or pressed material; revolving doors of metal or glass, the leaves of which are designed as swing doors; door closers’;
– Class 7: ‘Mechanical, pneumatic and hydraulic devices for moving single‑panel or multipanel doors or gates, namely single doors, swing doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, wing gates, folding gates, sliding gates; all of metal and power operated; electrical mechanical and pneumatic drives, controls and automatic-control for sliding doors, swing doors, secure swinging doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, wing gates, folding gates and sliding gates; motorized garage-gates drives’;
– Class 9: ‘Automatic lock devices and lock systems transferred into the locking and/or unlocking position by means of electronic switches for respectively single panel or multiple panel doors or gates; electronic switch, control, monitoring and checking devices for the mentioned lock devices and lock systems: access-control installations; code-cards; code cards as data storage units; devices and installations for the identification of persons; alarm circuit; devices for heavy current engineering for the change, storage and control; computer programs in machine-readable media, including cards and chips; video-monitoring systems, consisting of video cameras which transmit pictures on control-systems without any wire or via cable, transmitter and receiver for the transmission of data; distributing boxes, junction boxes, electrical door opener; talk-back circuits; electrical control for locks, windows and door drives; electrical locks and keys for these locks’;
– Class 19: ‘Glass doors of all kinds; separation walls of glass, automatically and manually operated; manually operated single or multiple-panel doors and gates, namely sliding doors, swing doors, revolving doors, curved sliding doors, telescopic sliding doors, wing gates, folding gates, sliding gates, horizontal sliding walls, all goods being not made of metal’.
9 As regards the earlier international figurative mark No 722009, the opposition was based on goods in Classes 6, 7, 9, and 19 which correspond, for each of those classes, to the following description:
– Class 6: ‘Mechanical locks and keys for these locks; fittings of metal for construction, namely ironwork for doors, lever handles, locks and mortise cases, door handle fittings, iron fillings for doors of glass and glazed parts, accessories for installations of glass, namely locks and lock cases, striker plates, hand levers, door knobs, handles, screwed attachment points, clamped attachment points, connection fittings, protective fittings; all the aforesaid goods made of metal in combinations with raw materials formed of coated material or compressed substances of various materials; revolving doors of metal in combinations with glass where the leaves are built as swinging doors; door closers; doors and gates made of a sole or several manually operated parts, namely sliding doors, pivot doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding gates, detachable horizontal partitions, the above goods are of metal.’;
– Class 7: ‘Mechanical, pneumatic and hydraulic devices for operating doors or gates formed of a single or several parts, namely sliding doors, pivot doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding gates, sliding gates, all of metal and operated by an external power source; electric drives, mechanical drives and pneumatic drives as well as controls and settings for sliding doors, swing leaf doors, pivot security doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding and sliding doors; controls for motor-driven garage doors’;
– Class 9: ‘Closing devices or closing installations shifted into their locking and/or unlocking position by controls of electronic components respectively for doors and gates formed by one or several parts; electronic switching apparatus, electronic control apparatus, electronic monitoring apparatus and control apparatus for the said closing devices or installations; access control systems; encoded cards; data storage units in the form of encoded cards; devices and installations for the identification of persons; alarm installations; apparatus for industrial electricity, namely transformation, storage and control; computer programs on machine-detectable media, including cards and chips; installations for surveillance by video including video cameras transmitting, by wireless means or by cable, images to control screens, transmitters and receivers for data transmission; distribution cabinets, distribution boxes, electrical door openers; internal communication systems; electrical control for locks, for drive mechanisms of windows and gates; electric locks and keys for such locks’;
– Class 19: ‘All types of glazed doors; automatically and manually controlled glazed separation partitions; doors and gates made of a sole or several manually operated parts, namely sliding doors, pivot doors, revolving doors, arched sliding doors, telescopic sliding doors, folding doors, leaf gates, folding gates, detachable horizontal partitions, all these goods not of metal’.
10 The opposition was based on the goods and services specified above and was directed against all the goods covered by the mark applied for.
11 By decision of 16 March 2009, the Opposition Division rejected the opposition on the ground that, notwithstanding the fact that the goods and services at issue were identical or similar, with the exception of ‘common metal and their alloys’, which were dissimilar, there was no likelihood of confusion. The Opposition Division held that the signs at issue were visually dissimilar, that there was a low degree of aural similarity between them and that there was no conceptual similarity. Further, the Opposition Division considered that the evidence produced by the applicant in relation to the enhanced distinctiveness and reputation of the earlier marks was insufficient, and consequently neither the enhanced distinctiveness nor the reputation had been proved.
12 On 14 July 2009 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
13 By decision of 17 August 2010 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal. First, in paragraph 14 of the contested decision, the Board of Appeal concurred with the findings of the Opposition Division that the goods at issue were identical or similar, with the exception of ‘common metal and their alloys’, which were dissimilar. Second, the Board considered, in paragraph 16 of the contested decision, that the target public consisted of the average consumer interested in doors, their accessories and opening and closing devices to be installed at his home but also professionals in the field of building construction. Third, in paragraphs 18 to 21 of the contested decision, the Board held that, visually, the signs at issue were different overall; that, phonetically, the signs were similar and that, conceptually, no comparison was possible. Fourth, the Board stated, in paragraphs 25 to 27 of the contested decision, that the evidence in support of the enhanced distinctive character acquired by the use of the earlier marks and as a result of their being well-known in Germany and the United Kingdom was insufficient and, in paragraphs 28 and 29 of the contested decision, that the additional evidence which had not been submitted for assessment by the Opposition Division should not be taken into consideration. Fifth, as regards the likelihood of confusion, the Board of Appeal held, in paragraphs 34 to 36 of the contested decision, that the aural similarity of the marks was of less importance and that no evidence had been produced that the earlier marks had an enhanced distinctive character acquired by use, and consequently the Board ruled out any likelihood of confusion. Sixth, in the light of the failure to prove the enhanced distinctive character of the earlier marks, the Board of Appeal held, in paragraph 37 of the contested decision, that it could not be assumed that they were well‑known, and consequently Article 8(2)(c) of Regulation No 207/2009 was not applicable, and, further, in paragraphs 38 and 39 of the contested decision, that no evidence had been adduced either of the reputation of the earlier marks, within the meaning of Article 8(5) of that regulation, or of the existence of a future risk of unfair advantage or detriment within the meaning of that article.
Forms of order sought by the parties
14 The applicant claims that the General Court should:
– declare that the contested decision does not comply with Regulation No 2007/09;
– order OHIM to pay the costs.
15 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
16 First, it must be noted that the first claim put forward by the applicant is that the Court should declare that the contested decision does not comply with Regulation No 207/2009.
17 In that regard, it must be recalled that, in accordance with the case-law, the jurisdiction of the courts of the European Union does not extend to the power to deliver declaratory judgments, to the effect, for example, that the contested decision does not comply with Regulation No 207/2009 (see, to that effect, the order in Case C‑224/03 Italy v Commission [2003] ECR I‑14751, paragraphs 20 and 21, and Case T‑145/06 Omya v Commission [2009] ECR II‑145, paragraph 23).
18 However, in the present case, it is very clear from the application that the applicant is in fact seeking the annulment of the contested decision, and moreover that is how OHIM, in its observations lodged with the Court, has understood the application. It follows that the object of the applicant’s first claim should be interpreted as being the annulment of the contested decision.
19 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
20 The applicant complains that the Board of Appeal erred in its assessment not only of visual and aural similarity but also of the likelihood of confusion and failed, when making that assessment, to take into consideration the evidence produced for the first time before the Board of Appeal in support of the reputation of the earlier German and United Kingdom marks.
21 In relation to the fact that the Board of Appeal considered that there was no reason why it should exercise its discretion in relation to deciding whether it should take into consideration evidence which had not been submitted for assessment by the Opposition Division, essentially the applicant first claims, relying on the Opinion of Advocate General Sharpston in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, I‑2215, that the Board of Appeal should have taken into consideration the new evidence which the applicant had submitted for its assessment.
22 In that regard, it must be recalled that, as held by the Court of Justice in paragraph 42 of OHIM v Kaul, paragraph 21 above, it follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time‑limits to which such submission is subject under the provisions of Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (Case T‑86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO Livre) [2007] ECR II‑4923, paragraph 44).
23 The possibility for parties to proceedings before OHIM to submit facts and evidence after the expiry of the periods specified for that purpose is conditional upon there being no provision to the contrary, and it is only if that condition is met that OHIM has discretion as regards the taking into account of facts and evidence submitted out of time (OHIM v Kaul, paragraph 21 above, paragraph 42, and CORPO Livre, paragraph 22 above, paragraph 47).
24 Where OHIM is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, paragraph 21 above, paragraph 44, and judgment of 19 May 2011 in Case C‑308/10 P Union Investment Privatfonds v OHIM, not published in the ECR, paragraph 43).
25 Lastly, it is equally apparent from the wording of Article 76(2) of Regulation No 207/2009 that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM (OHIM v Kaul, paragraph 21 above, paragraph 43, and CORPO Livre, paragraph 22 above, paragraph 45).
26 In the present case, although the applicant complains that the Board of Appeal failed to take into consideration the new evidence in support of the alleged reputation of the earlier German and United Kingdom marks, the applicant does no more than maintain that the Board of Appeal should have taken that evidence into account, and consequently it is sufficient ground to dismiss the applicant’s complaint to find that, as follows from the case‑law cited in paragraph 25 above, the Board of Appeal was under no such obligation.
27 In any event, while the Board of Appeal held, in paragraph 28 of the contested decision, that the relevant provisions precluded, in this case, taking into consideration new evidence which had not been submitted for assessment by the Opposition Division, it must be noted that the Board did exercise the discretion conferred on it by Article 76(2) of Regulation No 207/2009, since the Board explained, in paragraph 29 of that decision, why it considered that it should not agree to take that evidence into consideration, namely the legitimate interest of the other party to the proceedings, as dictated by the principle of equality of arms, and the absence of any explanation from the applicant as to why it had been unable to submit that material to the Opposition Division.
28 However, since the applicant does not, in the present action, challenge the reasons set out in the contested decision why the Board of Appeal declined to take into consideration the new evidence, the complaint cannot be upheld.
29 Next, although the applicant does not dispute the Board of Appeal’s analysis of the similarity of the goods at issue, of the relevant public or of the absence of conceptual similarity between the signs at issue, the applicant complains that the Board of Appeal erred (i) in relation to its assessment of the visual and aural similarities of the signs at issue, (ii) in relation to the alleged enhanced distinctive character or reputation of the earlier marks and (iii) in relation to the likelihood of confusion between the signs at issue.
30 First, the applicant claims that, contrary to the view of the Board of Appeal in paragraphs 18 and 19 of the contested decision, there are aural and visual similarities between the signs at issue.
31 As regards the aural similarity, the Board of Appeal specifically stated, in paragraph 20 of the contested decision, that the signs at issue were similar, since it considered both that the verbal elements ‘doorsa’ in the mark applied for and ‘dorma’ in the earlier mark coincided in the number of syllables and in the last vowel ‘a’ and that there was a high similarity between the initial syllables ‘door’ and ‘dor’.
32 It is therefore clear that the applicant’s complaint on this point has no factual basis.
33 In that regard, it should also be stated that the Board of Appeal did indeed hold that, for consumers who would pronounce the phrase ‘fábrica de puertas automáticas’, there were substantial aural differences. However, when holding that the signs at issue were similar, the Board of Appeal relied, as is clear particularly from the last sentence of paragraph 20 of the contested decision, on the fact that, while there are substantial aural differences for consumers who pronounce the phrase ‘fábrica de puertas automáticas’, it has to be assumed, conversely, that there are no such differences for consumers who perceive merely its descriptive meaning and do not pronounce that phrase.
34 As regards, next, the visual similarity, the Board of Appeal found, in paragraph 19 of the contested decision, that consumers, in particular in Spain, Italy and Portugal, will perceive the phrase ‘fábrica de puertas automáticas’, in the mark applied for, as purely descriptive, and consequently they will pay more attention to the verbal element ‘doorsa’. The Board of Appeal observed that ‘doorsa’ was similar in length to the earlier marks, with which it coincided in four letters (namely, the letters ‘d’, ‘o’, ‘r’, and ‘a’), three of which occupied an identical position (namely the letters ‘d’, ‘o’ and ‘a’). The Board also took into consideration the graphic elements in the mark applied for and held that, despite the descriptive character of the phrase ‘fábrica de puertas automáticas’, that phrase, together with the graphic elements – in other words the rectangular orange frame in which it appears, the particular script, the dark blue of the word ‘doorsa’ and the light blue background of the mark resembling a representation of the sky – could not be disregarded in the overall visual impression. The Board concluded that, since all those elements were absent from the earlier marks, the signs at issue were, overall, visually dissimilar.
35 The Court must concur with that analysis.
36 In that regard, it must be recalled that, according to settled case-law, the 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41 and the case-law cited).
37 Visual similarity cannot be assessed by taking into consideration only the dominant component, since 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 42, and Case C‑498/07 P Aceites del Sur‑Coosur v Koipe [2009] ECR I‑7371, paragraph 62).
38 Contrary to what is claimed by the applicant, the analysis of the Board of Appeal did, in paragraph 19 of the contested decision, take into consideration the descriptive character of the phrase ‘fábrica de puertas automáticas’ and the fact that the consumer would pay more attention to the verbal element ‘doorsa’ than to the figurative elements.
39 Even if, as claimed by the applicant, the element ‘doorsa’ were the distinctive and dominant component of the mark applied for, the consequence of that would not be that the Board of Appeal should not, in its overall assessment of similarity, have taken into consideration the element ‘fábrica de puertas automáticas’, the graphic elements and the script of that mark, since those could not be regarded as negligible in the overall impression.
40 The figurative elements, which consist of the representation of a blue sky with clouds, the typeface used and the element ‘fábrica de puertas automáticas’ are part of the overall impression given by the mark applied for and cannot be disregarded when similarity is assessed.
41 Since the other components of the mark applied for, more specifically the element ‘fábrica de puertas automáticas’, cannot be regarded as negligible, the Board of Appeal was correct to take them into consideration when assessing similarity (see, to that effect, Case T‑472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑0000, paragraph 48).
42 Moreover, the Board of Appeal took into consideration, in paragraph 19 of the contested decision, the existence of such differences between the verbal elements ‘doorsa’ and ‘dorma’ as the differing number of letters, the additional letter ‘o’ in the mark applied for and the difference between the consonant ‘s’ in the mark applied for and the consonant ‘m’ in the earlier marks.
43 As regards the judgments relied on by the applicant in support of its argument (namely, the judgment of 14 December 2005 in Case T‑169/04 Arysta Lifescience v OHIM – BASF (CARPOVIRUSINE), not published in the ECR; the judgment of 15 November 2007 in Case T‑38/04 Sunplus Technology v OHIM – Sun Microsystems (SUNPLUS), not published in the ECR; Case T‑363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II‑2217; the judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM – Editoral Planeta (FOCUS Radio) not published in the ECR; and Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑0089), it must be stated that the signs at issue in those judgments contained an identical root or adjunct (CARPO and CARPOVIRUSINE; SUNPLUS and SUN; MAGIC SEAT and SEAT; FOCUS Radio and FOCUS MILLENIUM; LIFE BLOG and LIFE), which does not apply in this case, and consequently the comparison made by the applicant cannot, in any event, be accepted.
44 Secondly, the applicant claims that the Board of Appeal erred by holding that there was insufficient evidence to prove the enhanced distinctive character or reputation of the earlier marks.
45 As regards the evidence submitted for assessment by the Opposition Division, it must be recalled that the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not that it necessarily has to have a reputation within the meaning of Article 8(5) of Regulation No 40/94. It is not possible to establish in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character because of the public’s recognition of it (see, to that effect and by analogy, Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 52, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 24). Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened (Case T‑277/04 Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraph 34).
46 In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (Case C‑375/97 General Motors [1999] ECR I‑5421, paragraphs 26 and 27, and VITACOAT, paragraph 45 above, paragraph 35).
47 In the present case, it must be observed at the outset that, contrary to the applicant’s claim that the Board of Appeal did not admit the documents submitted before the Opposition Division, the Board of Appeal did, in paragraphs 25 to 27 of the contested decision, take them into consideration, but held them to be insufficient to prove the distinctive character or reputation of the earlier marks.
48 Next, the fact that the Board of Appeal stated, in paragraph 27 of the contested decision, that the evidence emanating from the company itself, although possessing probative value, had to be given less weight than independent evidence, does not mean that that evidence was dismissed.
49 In that regard, it should be recalled that, as regards documents in the case‑file which come from the company itself, the General Court has held that, in order to assess the evidential value of such a document, regard should be had first and foremost to the credibility of the account it contains. The Court added that it is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the documents appears sound and reliable (Case T‑303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II‑1917, paragraph 42).
50 The Board of Appeal did take into consideration the documents supplied by the applicant, but took the view, as is clear from paragraph 27 of the contested decision, that they contained no objective data on market share, sales figures in the United Kingdom and Germany, investments made in advertising, or recognition of the mark by the relevant public.
51 The applicant has failed to show, and moreover has not even claimed, that those documents contained information of that kind which was not taken into account by the Board of Appeal but which should have been.
52 Lastly, as correctly stated by the Board of Appeal in paragraph 25 of the contested decision, the enhanced distinctive character of the earlier marks would have had to be based on use of the marks for the goods and services for which those marks were registered.
53 Most of the documents consist of press articles which indeed mention the applicant’s expertise, but make no reference at all to the goods or services covered by the earlier marks, with the exception of a passing reference to the TS90 product. A large number of documents come from the applicant’s own Internet site and, as correctly stated by the Board of Appeal in paragraph 25 of the contested decision, the documents relied on by the applicant demonstrate that it is known for its expertise ‘in improving visitor access at historic and cultural centres in the United Kingdom’ and as ‘one of the world’s leading suppliers of door technology systems and allied products’, but contain no specific reference to the goods and services covered by the earlier marks.
54 In particular, the applicant supplied no evidence of: the market share held by the earlier marks; how intensive, geographically widespread and long-standing use of the marks had been; the amount invested by the undertaking in promoting the marks; or the proportion of the relevant section of the public which, because of the earlier marks, identifies the goods or services as originating from the undertaking concerned, and supplied no statements from chambers of commerce and industry or other trade and professional associations, according to the case‑law cited in paragraph 46 above.
55 Further, the assertion that the earlier marks have distinctive character on the basis of information obtained from Wikipedia must, as stated by the Board of Appeal in paragraph 26 of the contested decision, be disregarded since, as it is based on an article from a collective encyclopaedia established on the Internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously, such a finding is based on information lacking certainty (Case T‑344/07 O2 (Germany) v OHIM (Homezone) [2010] ECR II‑153, paragraph 46).
56 In any event, it must be observed that the evidence adduced for the first time before the Board of Appeal, which consists of two catalogues emanating from the applicant itself and the applicant’s Annual Reports for the years 2004‑2005 and 2005‑2006 does not, to use the wording of the Court of Justice in OHIM v Kaul, paragraph 21 above, paragraph 44, have any real relevance to the outcome of the opposition brought before OHIM.
57 It follows from all of the foregoing that the applicant has not demonstrated that the earlier marks had acquired a highly distinctive character or, a fortiori, that they were marks with a reputation.
58 Thirdly, the applicant claims that the Board of Appeal erred in its examination of the likelihood of confusion, on the ground that, since aural similarity is of particular importance, that should necessarily have led the Board to find that there was a likelihood of confusion. Moreover, the Board of Appeal erred by not demonstrating that, in the sector in which the type of goods offered by the marks at issue is marketed, it is necessary to take into account the participation of consumers who display a high level of attention.
59 It is clear that the applicant’s argument that the finding of aural similarity alone should have led to a finding that there was a likelihood of confusion is manifestly misconceived.
60 It is indeed true that conceivably the marks’ aural similarity alone could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. However, the existence of such a likelihood must be established as part of a global assessment as regards the conceptual, visual and aural similarities between the signs at issue. In that regard, the assessment of any aural similarity is but one of the relevant factors for the purpose of that global assessment (Case C‑206/04 P Mülhens v OHIM [2006] ECR I‑2717, paragraph 21).
61 Consequently, it cannot be deduced from paragraph 28 of Lloyd Schuhfabrik Meyer, paragraph 45 above, that there is necessarily a likelihood of confusion each time that mere aural similarity between two signs is established (Mühlens v OHIM, paragraph 22).
62 Further, the Court must reject the argument that the Board of Appeal erred by not demonstrating that, in the sector in which the type of goods offered by the marks at issue are marketed, it is necessary to take into account the participation of consumers who display a high level of attention.
63 It should be noted that the consumer’s level of attention may vary according to the category of goods or services in question (Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 43, see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 45 above, paragraph 16).
64 In the present case, it is clear that, having regard to the nature of the goods, which, as correctly stated by the Board of Appeal in paragraph 34 of the contested decision, must be compatible with the design of a room or building and its existing electric or electronic equipment, the public concerned will necessarily pay particular attention to their appearance, their technical characteristics and the specific adaptation requirements, with the result that the visual impression is the most important. Further, it cannot validly be maintained that such goods can be acquired by means of a straightforward sale carried out without the consumer having been able to examine the goods concerned.
65 Moreover, even with regard to the targeted consumers who are, as correctly stated by the Board of Appeal in paragraph 16 of the contested decision, not only professionals in the construction sector, but the average consumer interested in doors, their accessories and opening and closing devices to be installed at his/her home, it is clear that such consumers have, when acquiring the goods concerned, a higher level of attention than they have when acquiring goods for everyday consumption, since the goods concerned are durable goods which are acquired on an occasional basis (Case T‑460/05 Bang & Olufsen v OHIM (Shape of a loudspeaker) [2007] ECR II‑4207, paragraph 33).
66 Having regard to all the foregoing, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
67 Under Article 87(2) of the Rules of Procedure of the 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 the applicant has been unsuccessful, it must be ordered to pay the costs of OHIM, 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 Dorma GmbH & Co. KG to pay the costs.
Truchot | Martins Ribeiro | Kanninen |
Delivered in open court in Luxembourg on 16 November 2011.
[Signatures]