JUDGMENT OF THE GENERAL COURT (Third Chamber)
4 February 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark APRO — Earlier national figurative mark B-PRO by Boomerang, earlier Community word mark PRO MOUNTAIN and applications for earlier Community figurative and word marks B-PRO by Boomerang and PRO OUTDOOR — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑372/12,
El Corte Inglés, SA, established in Madrid (Spain), represented by E. Seijo Veiguela, J. Rivas Zurdo and I. Munilla Muñoz, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Apro Tech Co. Ltd, established in Tachia (Taiwan),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 May 2012 (Case R 196/2011-2), relating to opposition proceedings between El Corte Inglés, SA and Apro Tech Co. Ltd,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas (Rapporteur), President, N.J. Forwood and E. Bieliūnas, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 August 2012,
having regard to the response lodged at the Court Registry on 20 December 2012,
having regard to the reply lodged at the Court Registry on 8 April 2013,
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 28 April 2009, Apro Tech Co. Ltd filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 for which registration was sought are in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Bicycles and bicycle parts and accessories, bicycle frames, folding bike, front fork, cranks, brakes, derailleur, brake levers, handlebar, pedals, chain rings, rim for wheels of bicycles, gear wheels, handlebar stems, saddles, seat post, grips, water bottle cages, hubs, bicycle gear, derailleur gear units, bicycle free wheel, quickly disassembled device, electric bicycle.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 33/2009 of 31 August 2009.
5 On 19 November 2009, the applicant — El Corte Inglés, SA — filed a notice of opposition, pursuant to 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 following earlier rights:
– the Spanish figurative mark reproduced below, registered on 25 October 2004 for goods in Class 12, inter alia, corresponding to the following description: ‘bicycles’ (‘the earlier Spanish mark’):
– the Community word mark PRO MOUNTAIN, registered on 5 January 2007 for goods in Class 12, inter alia, corresponding to the following description: ‘Vehicles; apparatus for locomotion by land, air or water’;
– application for the Community figurative mark reproduced below, filed on 24 November 2005 for goods in Class 12, inter alia, corresponding to the following description: ‘Vehicles; vehicles for locomotion by air, land or water’:
– Application for the Community word mark PRO OUTDOOR, filed on 14 December 2005 for goods in particular in Class 12 and corresponding to the following description: ‘Vehicles; vehicles for locomotion by air, land or water’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 9 December 2010, the Opposition Division rejected the opposition.
9 On 21 January 2011, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 25 May 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In the first place, it compared the mark applied for with the earlier Spanish mark. In that regard, it found that, in view, inter alia, of the low degree of visual and phonetic similarity between the signs at issue and the higher than average level of attention of the relevant public when purchasing the goods concerned, Spanish consumers, including those who would not perceive any conceptual difference between those signs, are not likely to believe that the goods covered by those signs come from the same undertaking or from economically related ones, despite the identity or similarity of those goods. In the second place, the Board found that the same conclusion applies to the assessment of the likelihood of confusion between the mark applied for and the other earlier marks relied on in support of the opposition. The Board therefore found that there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises in essence a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14 It submits that the Board of Appeal was wrong to find that there was no likelihood of confusion.
15 In that respect, it should be noted that, under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark and the goods or services covered by the two marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion is to be understood as including the likelihood of association with the earlier trade mark. In addition, in accordance with Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than that of the Community trade mark.
16 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services respectively covered are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
18 As the first question addressed by the Board of Appeal was whether there was a likelihood of confusion between the mark applied for and the earlier Spanish mark, it is appropriate to examine, first of all, the assessments made in that regard.
The likelihood of confusion between the mark applied for and the earlier Spanish mark
The relevant public
19 The Board of Appeal considered it appropriate to refer to the perception of the Spanish public, since the earlier right examined in the decision given by the Opposition Division was a Spanish mark.
20 The applicant does not dispute that assessment, which must, moreover, given the nature of the goods at issue, be endorsed.
21 As regards the level of attention of that public, the Board of Appeal found that it was higher than average, since the goods at issue can be relatively expensive and are not purchased frequently. The Board also noted that consumers are generally assisted by a professional in the purchase of those goods.
22 The applicant does not challenge that finding, which must also be endorsed for the reasons stated, correctly, by the Board of Appeal and summarised in paragraph 21 above.
Comparison of the goods
23 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
24 In the present case, the Board of Appeal upheld the findings of the Opposition Division that the goods concerned were partially identical and partially similar.
25 While indicating its agreement with that assessment, the applicant states that the proper conclusion is that the goods at issue are identical.
26 In that regard, it should be noted, first, that the goods covered by the earlier Spanish mark — ‘bicycles’ — are identical to some of the goods covered by the mark applied for, such as the ‘bicycles’, the ‘folding bike’ and the ‘electric bicycle’; and, second, that they are similar to the other goods covered by the mark applied for, since they are bicycle parts or accessories, which means that they all fall within the area of cycling and are complementary to those covered by the earlier Spanish mark.
27 It must therefore be held that the Board of Appeal was right to find that the goods at issue were partially identical and partially similar.
Comparison of the signs
28 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the marks, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
29 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 judgment in OHIM v Shaker, paragraph 28 above, EU:C:2007:333, 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 (judgment in OHIM v Shaker, paragraph 28 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of the mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
30 The Board of Appeal found that, visually and phonetically, the signs had a low degree of similarity. It found that, conceptually, those signs are likely to be distinguishable for a substantial part of the public, as the earlier Spanish mark, but not the mark applied for, may be associated with the concept of ‘advantage, benefit; in favour of’. It added that those signs may also be distinguishable for another part of the public, in so far as the earlier Spanish mark, unlike the mark applied for, may be associated with the concept of ‘professional’. Lastly, the Board found that, for another part of the public, the signs at issue may be perceived as totally fanciful and, accordingly, the conceptual comparison would not influence the assessment of the similarity of the signs.
31 The applicant maintains that, on the contrary, the signs at issue are identical or very similar, visually and phonetically. Moreover, according to the applicant, the conceptual comparison of those signs does not alter the assessment of their similarity since they have no meaning for the relevant public.
32 In that regard, it should be borne in mind that the signs to be compared are the following:
| 
|
Earlier Spanish mark | Trade mark applied for |
33 The first point to note is that, in the case of the earlier Spanish mark, the Board of Appeal was right to find that the element ‘b-pro’ is the dominant element — a point that the applicant does not dispute. As for the word element ‘by Boomerang’, the Board found that it is written in such small print that it is hardly legible, so it has limited influence in the comparison of the signs. Clearly, however, in the context of the overall impression created by the earlier Spanish mark, the word element ‘by Boomerang’ cannot be regarded as negligible. If a sign is so difficult to decipher, understand or read that the reasonably observant and circumspect consumer cannot manage to do so without making an analysis which goes beyond what may be reasonably expected of him in a purchasing situation, it may be considered to be illegible (judgment of 11 November 2009, Frag Comercio Internacional v OHIM — Tinkerbell Modas (GREEN by missako), T‑162/08, EU:T:2009:432, paragraph 43), but that is not the position in the present case as regards the element ‘by Boomerang’. Although that element is admittedly smaller than the element ‘b-pro’, it is still of a size that enables the relevant public to decipher and read it easily, particularly as the relevant public’s level of attention will be higher than average. Also, contrary to the finding made by the Board of Appeal, that element cannot be considered to be ‘hardly legible’. So far as the earlier Spanish mark is concerned, therefore, the assessment of the similarity of the signs at issue cannot be made solely on the basis of the dominant element ‘b-pro’.
34 The next point to note in relation to the visual comparison is that, as the applicant observes, the word elements ‘b-pro’ and ‘apro’ are distinguished by their first letter, the ending ‘pro’ being common to both signs, so that the signs at issue have in common most of the letters which make up those signs. Moreover, as the applicant notes, those two elements are written in italics. However, it should also be noted that, unlike the mark applied for, the dominant element of the earlier Spanish mark begins with a letter that is separated from the others by a hyphen. The insertion of a hyphen is an important difference, given that it is a short sign (judgment of 23 September 2009 in Arcandor v OHIM — dm drogerie markt (S-HE), T‑391/06, EU:T:2009:348, paragraph 41). In these circumstances, the applicant cannot usefully rely on the fact that the signs at issue are short in order to establish their visual similarity, since the shorter a sign is, the more the public will be able to perceive each of its different elements easily. Moreover, it should be noted that the letters which form the element ‘apro’ of the mark applied for are blue, whereas the characters which make up the element ‘b-pro’ in the earlier Spanish mark are white, although it is true that, in both the earlier Spanish mark and the mark applied for, the letters are surrounded — in the former entirely and in the latter partially — by a black border of variable depth giving an impression of volume. Lastly, unlike the corresponding letters of the mark applied for, the letters ‘p’, ‘r’ and ‘o’ of the earlier Spanish mark overlap slightly. It should further be noted that the presence — admittedly not decisive, but nevertheless not insignificant — of the element ‘by Boomerang’ in the earlier mark will be perceived by the relevant public as an additional element of dissimilarity between the signs at issue.
35 In those circumstances, it must be concluded that, on the basis of an overall impression, the signs at issue may be considered to have a low degree of visual similarity.
36 Phonetically, it should be noted that, although the final syllable of both marks at issue is ‘pro’, they have different first syllables. The first syllable of the earlier Spanish mark will be pronounced ‘be’ or ‘bi’ and will produce a consonant sound, whereas that of the mark applied for will be pronounced ‘a’ and produce a vowel sound. As the Board of Appeal correctly pointed out, that generates an important difference from a phonetic perspective. As for the applicant’s argument that much of the sound of the initial parts of the signs at issue is absorbed by the sound of the element ‘pro’, common to both marks, not only is that argument unsupported by tangible evidence but also it cannot be accepted in respect of the earlier Spanish mark, the first syllable of which is clearly separated from the second by a hyphen, which implies, to some extent, a break in its pronunciation, whereas this is not true of the trade mark applied for. It must be emphasised, moreover, that the differences between the signs at issue will be accentuated by the presence of the element ‘by Boomerang’ in the earlier Spanish mark. Contrary to the finding made by the Board of Appeal, it is conceivable that that element is pronounced, since the relevant public, whose level of attention is higher than average, will be able to decipher and read that element, as was noted in paragraph 34 above.
37 In those circumstances, it must be held that, on the basis of an overall impression, the signs at issue may be considered to have a low degree of phonetic similarity.
38 Conceptually, it should be noted that the Board of Appeal did not rule out the possibility that, as the applicant submits, part of the relevant public perceives the signs at issue as meaningless, hence totally fanciful, and that, accordingly, the conceptual comparison does not influence the assessment of the similarity of those signs. However, the applicant has not adduced any evidence to support a finding that all members of the relevant public would perceive those signs in that manner. Also, the applicant has failed effectively to challenge the findings of the Board of Appeal that those signs are likely to be distinguished by a large part of that public, because only the earlier Spanish mark could be associated with the concept of ‘advantage, benefit; in favour of’, and that yet another part of that public would distinguish the signs, because only the earlier Spanish mark could be associated with the concept of ‘professional’. In addition, it should be noted that the element ‘by Boomerang’ in the mark applied for is likely to accentuate the conceptual difference between the signs at issue, since the relevant public will perceive that element as an indication of the origin of the goods at issue (see, to that effect, judgment of 30 November 2006 in Camper v OHIM — JC (BROTHERS by CAMPER), T‑43/05, EU:T:2006:370, paragraph 79, and GREEN by missako, paragraph 28 above, EU:T:2009:432, paragraph 50) and, in the present case, as an indication of their commercial origin, that is to say, an origin identical to those of the goods marketed under the Boomerang mark, which, according to OHIM, is a trade mark known in the field of clothing and sporting goods (an assertion uncontested by the applicant).
39 As regards the applicant’s argument that the Board of Appeal was wrong to separate out the word elements of the signs at issue in order to attribute to them a meaning which does not exist, that argument must be rejected. Although the visual, phonetic or conceptual similarity of those signs must be examined on the basis of the overall impression created by the signs, the fact remains that that examination may initially be based on an analysis of their various components. In the present case, the Board of Appeal found that the sign applied for would be perceived as a unity and did not break down that sign for the purposes of the conceptual comparison. As for the earlier Spanish mark, the Board of Appeal was right to examine its conceptual implications by distinguishing between the components ‘b’ and ‘pro’, on the one hand, and the element ‘b-pro’, on the other. In that mark, in fact, those two components are separate from one another, and linked by a hyphen. Although the function of the hyphen is admittedly to unite words, as the applicant argues, its presence nevertheless confirms the fact that the element ‘b-pro’ is composed of two separate components connected by the hyphen. The Board of Appeal was therefore entitled to examine the conceptual implications that the relevant public might infer from the component ‘pro’ of the element ‘b-pro’ in the earlier Spanish mark. In that regard, it should be noted that the applicant has not adduced any evidence to challenge the fact that part of that public would associate that component with the concept of advantage or profit, and that another part might perceive it as referring to the concept of ‘professional’.
40 In those circumstances, it must be held that the Board of Appeal was right, in essence, to find that the signs at issue would be perceived as conceptually different; or that they would be perceived as totally fanciful, with the result that the conceptual comparison would not influence the assessment of their similarity.
41 It follows that, on the basis of an overall impression, the signs at issue may be considered to have a low degree of similarity.
The likelihood of confusion
42 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 marks and the similarity of the goods or services covered. 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 (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
43 The Board of Appeal found that, particularly in view of the low visual and phonetic similarity of the signs at issue and the higher than average degree of attention of the relevant public when purchasing the goods concerned, the Spanish consumers, including those who would perceive no conceptual difference between those signs, would not be likely to believe that the goods covered by those signs come from the same undertaking or from economically related undertakings, despite the identity or similarity of those goods.
44 The applicant argues that, given the fact that the signs at issue are very similar and that the goods in question are identical, there is a likelihood of confusion.
45 In the present case, given the fact that the relevant public has a higher level of attention than normal and the fact that the similarity between the signs at issue is weak, it is clear that the Board of Appeal was right to find that there was no likelihood of confusion between the mark applied for and the earlier Spanish mark, despite the identity or similarity of the goods respectively covered.
46 That conclusion is borne out by the presence, in the earlier Spanish mark, of the element ‘by Boomerang’, which may be perceived, as was stated in paragraph 38 above, as an indication of the commercial origin of the goods and, specifically, of an origin identical to those of clothing and sporting goods marketed under the Boomerang mark.
The likelihood of confusion between the mark applied for and the other rights relied on in support of the opposition
47 As was pointed out in paragraph 10 above, the Board of Appeal found, in essence, that the same conclusion as that reached in relation to the likelihood of confusion between the mark applied for and the earlier Spanish mark applied to the likelihood of confusion between the mark applied for and the other earlier rights relied on in support of the opposition.
48 It is clear, however, that the applicant adduces no evidence specifically to challenge that conclusion and the assessments made by the Board of Appeal which support it.
49 That conclusion must, in any event, be endorsed. In the first place, as the earlier rights at issue are a Community trade mark and Community trade mark applications, the relevant public is the EU consumer. As for the level of attention of that public, it must be found, given the nature of the goods at issue, that, for the same reasons as those stated in paragraph 21 above, it will be higher than average. In the second place, as regards the comparison of the goods, it should be noted that the ‘bicycles’, the ‘folding bike’ and the ‘electric bicycle’ covered by the mark applied for are among the goods covered by the earlier rights and that, accordingly, all of those goods are identical. It should also be noted that the other goods covered by the mark applied for are bicycle parts or accessories, which fall within the field of locomotion and are intended for goods among those covered by the earlier rights and that, accordingly, all of those goods are similar. In the third place, as regards the comparison of the signs, it should be noted first that, as regards the figurative Community trade mark application referred to in paragraph 6 above, the conclusion must be the same as the finding made in relation to the earlier Spanish mark, as those signs are identical. Second, it must be found that, visually and phonetically, there are very considerable differences between, on the one hand, the Community word mark PRO MOUNTAIN and the Community word mark application PRO OUTDOOR and, on the other, the mark applied for, owing to the presence, respectively, of the elements ‘mountain’ and ‘outdoor’. Conceptually, those earlier rights can be understood — in particular by the English-speaking part of the relevant public as well as by those members of the public with a basic knowledge of the English language — as referring to the professional domain of the mountains or the outdoors, such a perception being out of the question in the case of the mark applied for. For the rest of the relevant public, no conceptual implications will be associated with those rights and, accordingly, the conceptual comparison will be neutral. In those circumstances, it must be found that, on the basis of an overall impression, the similarity between the signs at issue is either weak or very weak. In the light of all those considerations, the Board of Appeal was right to rule out the existence of a likelihood of confusion between the mark applied for and the other rights relied on in support of the opposition.
50 It follows from all the foregoing that the single plea in law must be rejected and, in consequence, the action must be dismissed in its entirety.
Costs
51 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs and the applicant has been unsuccessful, the latter must be ordered to bear its own costs and to pay those incurred by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders El Corte Inglés, SA, to pay the costs.
Papasavvas | Forwood | Bieliūnas |
Delivered in open court in Luxembourg on 4 February 2015.
[Signatures]