JUDGMENT OF THE GENERAL COURT (Third Chamber)
19 March 2013 (*)
(Community trade mark – Opposition proceedings – International registration designating the European Community – Figurative mark ONESTO – Earlier Community figurative mark ENSTO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑624/11,
Yueqing Onesto Electric Co. Ltd, established in Zhejiang (China), represented by B. Piepenbrink, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Ensto Oy, established in Porvoo (Finland), represented by F. Teixeira Baptista, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 September 2011 (Case R 2535/2010-2), concerning opposition proceedings between Ensto Oy and Yueqing Onesto Electric Co. Ltd,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Registry of the General Court on 30 November 2011,
having regard to the response of OHIM lodged at the Registry on 30 March 2012,
having regard to the response of the intervener lodged at the Registry of the General Court on 9 April 2012,
further to the hearing on 9 January 2013,
gives the following
Judgment
Background to the dispute
1 On 6 June 2006, the applicant, Yueqing Onesto Electric Co. Ltd, obtained an international registration designating the European Community in respect of the following figurative sign:
2 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration of that sign on 11 January 2007.
3 The goods in respect of which protection of that sign has been applied for in the Community are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Signal lanterns; watt-hour metres; circuit testers; switches, electric; circuit breakers; instrument transformers; fuses; stabilised voltage power supply; relays, electric; plugs, sockets and other contacts (electric connections); distribution boxes (electricity); lightning arresters; temperature controllers’.
4 The international registration designating the Community was published in Community Trade Marks Bulletin No 2/2007 of 15 January 2007.
5 On 27 July 2007, 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), in particular pursuant to Articles 42 and 151 thereof (now Articles 41 and 156 of Regulation No 207/2009), the intervener, Ensto Oy, filed a notice of opposition to the registration of the mark applied for in respect of the goods listed in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier Community figurative mark, reproduced below, filed on 29 November 2000 and registered on 25 January 2002, under No 1980242:
7 The goods covered by the earlier Community figurative mark are in Classes 7, 9 and 11 and correspond, for each of those classes, to the following description:
– Class 7: ‘Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs’;
– Class 9: ‘Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus; electrical accessories’;
– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’.
8 The applicant asked the intervener to submit proof of use of the earlier marks on which the opposition was based. The intervener submitted documents with the aim of establishing the use of the earlier marks.
9 On 27 October 2010, the Opposition Division of OHIM rejected the opposition in its entirety.
10 On 20 December 2010, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 20 September 2011 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal, annulled the decision of the Opposition Division and rejected the mark applied for. It examined the opposition based on the earlier Community figurative mark, for that trade mark, registered for less than five years at the time of publication of the application for registration of the mark applied for, was not subject to any requirement as to use. The Board of Appeal held, in essence, that there was a likelihood of confusion between the marks at issue, at least for the French-speaking public. More specifically, it took the view that the goods covered by the marks under examination were identical, and that the marks displayed a rather low degree of visual similarity, a high degree of aural similarity for the French-speaking public and at least a low degree of similarity for the rest of the public. Lastly, conceptually, the signs were not considered to be similar for the Italian public and had no meaning for the rest of the public.
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the decision contested;
– order OHIM to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 The applicant submits, in essence, that there is no likelihood of confusion between the opposing marks and challenges, in particular, the conclusions reached by the Board of Appeal in relation to the similarity of the signs.
16 OHIM and the intervener dispute the applicant’s arguments.
17 In accordance with Article 8(1)(b) of Regulation No 207/2009, 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, the earlier trade mark and because of the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
18 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. A ccording to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 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 which they cover are identical or similar. Those conditions are cumulative (Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).
20 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
21 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
22 It is in the light of those principles that the present action must be examined.
23 In so far as concerns the relevant public, the Board of Appeal rightly considered that the goods covered by the marks were aimed, on the one hand, at professionals with a high degree of attentiveness and at the public at large, which is deemed to be reasonably well informed and reasonably observant and circumspect, on the other. The relevant territory is the European Union. The Court endorses those conclusions, which the applicant does not contest.
Comparison of the goods
24 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
25 The Board of Appeal was right to consider, in point 21 of the contested decision, that the signal lanterns covered by the mark applied for were included in the category of signalling apparatus and instruments in Class 9 and were covered by the earlier mark. Those goods are identical. In so far as concerns the other goods covered by the mark applied for and referred to in point 3 above, they are included in the category of electric apparatus and instruments in Class 9 and are covered by the earlier mark. Those goods are identical too. The conclusions of the Board of Appeal are correct and must therefore be endorsed.
26 Without expressly contesting the similarity of the goods, the applicant submits that, given that the opposition was based on the marks covering goods in Classes 7, 9 and 11, the goods at issue could not be regarded, collectively, as being identical or similar.
27 In that regard, the Court notes that the Board of Appeal examined the opposition based on the earlier Community figurative mark covering only the goods in Classes 7, 9 and 11. Moreover, the Board of Appeal found that the goods at issue in Class 9 were identical. The similarity of the goods covered by the mark applied for to the goods in Classes 7 and 11 of the earlier mark was not examined in the present case, given that the goods in Class 9 had been found to be identical. It should be noted that, for the conclusion to be reached that goods and services are similar, it is sufficient for each of the goods or services covered by the mark applied for to be similar to one of the goods or services covered by the earlier mark. For reasons of procedural economy, it cannot be required of OHIM that it compare each of the goods at issue. Consequently, the applicant’s arguments cannot succeed.
Comparison of the signs
28 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 assessment of such a 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
29 The sign applied for, ONESTO, is composed of six letters, of which the letter ‘n’ is written in white and leans slightly to the right. The earlier mark is composed of five letters and is stylised in a slightly rounded font. However, it must be found that the fonts used, both for the sign applied for and the earlier sign, differ only slightly from standard font.
30 As regards the visual comparison, the Board of Appeal considered, in point 18 of the contested decision, that the degree of similarity was rather low.
31 The applicant submits that the opposing signs coincide in the last syllable ‘sto’, but contain a different number of syllables and are different in terms of the number of letters they contain and their first syllables. Thus, when faced with the signs at issue, the public would be able to separate them clearly.
32 Like the applicant, the Court finds that the signs differ in relation to their first letters, namely ‘o-n-e’ in the sign applied for and ‘e-n’ in the earlier sign. However, it should also be noted that the letters ‘e’ and ‘n’ are reversed in the sign applied for as compared with the earlier mark and, thus, the only noticeable difference, on a visual level, is that the sign applied for begins with an ‘o’. Similarly, the difference in length of the signs, six letters in the sign applied for as compared with five in the earlier sign, is not important enough to be decisive in the present case. Consequently, the Board of Appeal was right to consider that, as a whole, the similarity of the signs is rather low.
33 So far as concerns the aural comparison, the sign applied for will be pronounced in three syllables, whereas the earlier sign will be pronounced in two. They will be pronounced, respectively, as ‘o-nes-to’ and ‘ens-to’ or ‘en-sto’.
34 In point 19 of the contested decision, the Board of Appeal considered that the signs were similar at least to a low degree for the French‑speaking public as a result of the pronunciation in French of the sound ‘o’ and of the nasal sound ‘en’.
35 The applicant considers that the difference in the number of syllables is also clear from an aural point of view, even for the French‑speaking public. It adds that the pronunciation of the sounds ‘o’ and ‘en’ is not identical in French.
36 In that regard, it must be found that, although the pronunciation of the letters ‘o’ and ‘en’, situated at the beginning of the respective signs, is not identical in French, it may none the less be very similar. Thus, for the French‑speaking public, the only noticeable difference between the signs, from an aural point of view, resides in the third letter of the sign applied for, namely ‘e’, which does not feature in the earlier sign. Moreover, it should be noted, as did the Board of Appeal, that the ending ‘sto’, common to both signs, is quite unusual for the French‑speaking public, with the result that the fact that those endings coincide will be noticed easily. Consequently, the Board of Appeal was right to find there to be a high level of aural similarity for the French‑speaking public. In so far as concerns the non‑French‑speaking public, the signs have only a low degree of aural similarity since only the final syllable is the same in the two signs, as was also found by the Board of Appeal.
37 Finally, as regards the conceptual comparison, in point 20 of the contested decision, the Board of Appeal was right to consider that the signs have no meaning, except for the Italian‑speaking public, for whom the word ‘onesto’ means ‘honest’.
38 The applicant submits that the signs are conceptually different, since ‘onesto’ means ‘honest’ in Italian, whereas the word which constitutes the earlier sign, namely ‘ensto’, has its roots in Finnish.
39 In that regard, the Court notes that, in order to make a conceptual comparison of the signs, it is necessary for them to mean something to the relevant public. In the present case, however, the term which constitutes the sign applied for, namely ‘onesto’, has a clear meaning only in Italian. Similarly, it is not apparent from the file that the sign ‘ensto’ would mean anything in Finnish. Thus, other than in relation to the Italian‑speaking public, for whom the signs are indeed different, no comparison can be made in the present case of their conceptual similarity.
The likelihood of confusion
40 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and VENADO with frame and Others, paragraph 74).
41 In the present case, as has been stated above, the goods covered by the opposing marks are identical. The signs are both visually and aurally similar. For French‑speaking consumers, the signs are highly similar from an aural point of view. A conceptual comparison is not relevant in this case, given that the sign applied for has a meaning only for the Italian‑speaking public, whereas it does not in any of the other languages of the European Union. Therefore, it must be found that there is a likelihood of confusion between the opposing marks.
42 The applicant also relies on a certain number of other Community or national trade marks, registered for good in Class 9, which it regards as similar and the existence of which weakens, in its view, the protection of the earlier mark.
43 In that regard, the Court finds, as did OHIM, that the fact that other marks exist which are supposedly similar to the earlier mark cannot prove that the earlier mark has a low degree of distinctiveness.
44 The Court also notes, so far as may be relevant, that the finding of a weak distinctive character for the earlier trade mark does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited).
45 In view of all of the foregoing, the applicant’s single plea in law and the action in its entirety must be dismissed.
Costs
46 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.
47 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by the OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Yueqing Onesto Electric Co. Ltd to pay the costs.
Delivered in open court in Luxembourg on 19 March 2013.
[Signatures]