JUDGMENT OF THE GENERAL COURT (Third Chamber)
22 May 2012(*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark SEVEN SUMMITS – Earlier Community figurative mark Seven – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑179/11,
Sport Eybl & Sports Experts GmbH, established in Wels (Austria), represented by S. Fürst, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Seven SpA, established in Leinì (Italy), represented by D. Sindico, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 January 2011 (Case R 364/2010‑4), relating to opposition proceedings between Seven SpA and Sport Eybl & Sports Experts GmbH,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz (Rapporteur), President, I. Labucka and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 March 2011,
having regard to the response of OHIM lodged at the Court Registry on 16 June 2011,
having regard to the response of the intervener lodged at the Court Registry on 29 June 2011,
having regard to the decision of 30 August 2011 refusing to authorise the lodging of a reply,
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 25 September 2007, the applicant – Sport Eybl & Sports Experts GmbH – filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (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 trade mark in respect of which registration was sought consists of the following figurative sign:
3 The goods in respect of which registration was sought fall primarily within Class 18 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 are described as follows: ‘Sports bags and holdalls, rucksacks, rucksacks for climbers, mountaineering accessories, namely mountaineering sticks, bags for campers, cases and boxes of vulcanised fibre, umbrella cases, casings of leather for springs, walking sticks, cane handles, game bags, leather belts, leather laces, umbrellas, handles for umbrellas, rucksacks for mountaineers, walking stick seats, leather shoulder straps, packaging pouches (sleeves, bags) of leather; sling bags for carrying infants, rain covers for bags, shoulder bags.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 22/2008 of 2 June 2008.
5 On 1 September 2008, the intervener – Seven SpA – filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), with regard to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based in particular on the earlier Community figurative mark, filed on 30 October 2003 under No 3489234 and registered on 12 May 2005, reproduced below:
6 The goods covered by the earlier mark are primarily in Class 18 and correspond to the following description: ‘Goods made from leather and imitations of leather not included in other classes; knapsacks, rucksacks, school bags, bags, baby carriers, stroller bags, shopping bags, travelling bags and holdalls, sports bags and holdalls; handbags, bags for campers; bags for climbers; school satchels, portfolio bags, billfolds, purses not of precious metal; cases for keys, fanny packs, travelling bags, umbrellas and parasols; trunks, canes; whips, harness, saddlery; briefcases of plastic.’
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009).
8 On 26 January 2010, the Opposition Division, limiting its assessment in the interests of procedural economy to the earlier Community mark registered under No 3489234, upheld the opposition and rejected the Community trade mark application for all of the goods in question.
9 On 16 March 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 17 January 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. Limiting its assessment to a comparison of the mark applied for with the earlier Community trade mark registered under No 3489234, the Board of Appeal found that there was a very low degree of visual similarity, a medium degree of aural similarity and some conceptual similarity between the two marks. It concluded that, even if the figurative elements of the marks at issue differed, a likelihood of confusion between those marks could not be ruled out because, given the prominent display of the word element ‘seven’ as well as the fact that the goods covered by the marks at issue are in part identical and in part similar, the targeted public might perceive the goods as belonging to two distinct product ranges but as coming, nonetheless, from the same manufacturer.
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.
13 The intervener contends that the Court should:
– uphold the contested decision;
– reject the application for registration of the Community figurative mark SEVEN SUMMITS for the goods in Class 18;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant raises a sole plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims in essence that, given the overall impression made by the marks at issue, those marks are not visually, aurally or conceptually similar, and that there is no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 owing, in particular, to the very low distinctive character of the element ‘seven’.
15 OHIM and the intervener dispute the applicant’s arguments.
16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the two 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 is to include the likelihood of association with the earlier trade mark.
17 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 goods or services concerned and 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 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).
18 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 (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
19 Moreover, it should be noted that, for a mark to be refused registration as a Community trade mark, it is enough that, in part of the European Union, that mark is covered by a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 (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).
20 The question whether the Board of Appeal was correct in finding that there was a likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.
The relevant public
21 It is settled law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 In the present case, in view of the type of goods in question and the fact that the earlier mark was a Community trade mark, the Board of Appeal found that the relevant public, by reference to which likelihood of confusion fell to be assessed, was composed of average consumers in the European Union. That definition of the relevant public – which, moreover, has not been disputed by the parties – must be upheld. Furthermore, given the nature of the goods in question, it is necessary to proceed, as did the Board of Appeal, on the view that the relevant public is reasonably well informed and reasonably observant and circumspect.
Comparison of the goods
23 The Board of Appeal found, correctly, that the goods in question were in part identical and in part similar; moreover, that finding was not disputed by the parties.
Comparison of the signs
24 The global assessment of the likelihood of confusion, as regards the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 that 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).
25 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. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 40 and the case-law cited).
26 It is necessary to add that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (judgment of 12 November 2008 in Case T‑281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 28, and judgment of 28 October 2009 in Case T‑273/08 X-Technology R & D Swiss v OHIM – Ipko-Amcor (First-On-Skin), not published in the ECR, paragraph 31).
27 In the present case, the Board of Appeal stated that, visually, there was a very low degree of similarity between the signs at issue, in so far as the two marks coincide only as regards the element ‘seven’, but differ as regards their typefaces, colours, length and figurative elements. Aurally, the Board of Appeal found a medium degree of similarity between the two signs. It pointed out that the earlier mark amounted to a single word, whereas the mark applied for was composed of two words and that, even if there was a difference in length, rhythm and intonation, those marks were identical as regards the word ‘seven’. The Board of Appeal found that the signs at issue were also conceptually similar. In particular, it noted that they both referred to the number 7 and that only a very small section of the relevant consumers would associate the mark applied for with the seven highest peaks of the seven continents.
28 The applicant claims that the two marks are visually dissimilar, albeit acknowledging that the presence of the element ‘seven’ in both signs could arguably be taken to mean a very low degree of visual similarity. Similarly, the applicant asserts that there is only a very low degree of aural similarity between the signs at issue, but acknowledges that a medium degree of aural similarity could be argued for, given the fact that the two marks begin in the same way. As regards conceptual similarity, the applicant claims that there is at most a very low degree of similarity between the signs at issue, in so far as they both refer to the number 7, through the word ‘seven’. On the other hand, the applicant submits that, independently of the question whether the mark applied for will be understood by the consumer as making a reference to the seven highest peaks of the seven continents or simply to seven mountains, the first element of the sign applied for – ‘seven’ – will be perceived only as additional numerical information in connection with the mountains.
29 OHIM and the intervener dispute the applicant’s arguments.
30 In that regard, it should be noted that the earlier mark is a figurative mark containing the word ‘seven’ written in stylised font which rises to the right and which is thickly underlined. The mark applied for is a composite figurative mark composed of two words, ‘seven’ and ‘summits’, presented in blue with the exception of the two consonants ‘m’ of the element ‘summits’, which are written in red and evoke the concept of two mountains.
31 Visually, the word element ‘seven’ is the principal element of the earlier mark, its figurative elements consisting in no more than a typeface of little originality and being of lesser importance – because of their essentially ornamental function – than the word element. As a consequence, the word element is capable of holding the consumer’s attention and being kept in mind.
32 The element ‘seven’ is also the first element of the mark applied for, placed above the second element, ‘summits’. Even though ‘summits’ incorporates a figurative element, its positioning below the element ‘seven’, in typeface of identical characters and size, ensures that it does not dominate the overall impression made by the mark. This means that, in the overall impression made by the mark applied for, too, ‘seven’ is not a negligible element.
33 Accordingly, notwithstanding the differences between the marks at issue in terms of length, typeface, the colours used and the stylisation of the two letters of the second element of the mark applied for, the fact that the word element ‘seven’ is the principal element of the earlier mark and the first element of the mark applied for means that the existence of a certain degree of visual similarity between the marks in question cannot be denied (see, to that effect, judgment of 11 May 2010 in Case T‑492/08 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 47).
34 It is appropriate, therefore, to uphold the finding made by the Board of Appeal to the effect that there is, at the very least, a very low degree of visual similarity between the two signs owing to the presence of the element ‘seven’ in both. Moreover, that finding is not actually disputed by the applicant in so far as the applicant acknowledges a very low degree of visual similarity, even though it points to differences between the signs at issue which, it argues, compel a finding of visual dissimilarity.
35 Aurally, even though the earlier mark comprises a single word (‘seven’), while the mark applied for is composed of two words (‘seven’ and ‘summits’), so that the two marks differ in length, rhythm and intonation, it cannot be disputed that the word elements ‘seven’ and ‘seven summits’ present a certain similarity, in so far as the word ‘seven’, common to both, is pronounced in the same way in both cases – a fact, moreover, which the applicant concedes.
36 It should also be pointed out that the word ‘seven’ is placed at the beginning of the sign applied for and that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and aurally, than the final part (see, to that effect, Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51, and Case T‑472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑0000, paragraph 62 and the case-law cited).
37 Furthermore, the fact that the figurative components are left out of account when the aural aspects of the signs at issue are compared makes the similarities between the signs stand out more clearly than in the visual comparison (see, to that effect, Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 40).
38 The Board of Appeal was therefore right in finding that there was a medium degree of aural similarity between the marks at issue, particularly as the word element ‘seven’ is placed at the beginning of the mark applied for, lending it greater impact. Moreover, while the applicant asserts that there is only a low degree of aural similarity between the marks at issue, it acknowledges that a medium degree of similarity is arguable, given that the mark applied for and the earlier mark begin in the same way.
39 Conceptually, the marks in question are composed of English word elements: ‘seven’ and ‘summits’.
40 As the Board of Appeal acknowledged in paragraph 18 of the contested decision, part of the relevant public will associate the word ‘seven’ with the number 7. Furthermore, the word ‘summits’ may be understood by part of the relevant public as referring to a mountain peak. As the Opposition Division had argued, that perception is reinforced by the red figurative elements representing mountains.
41 It is possible that a very small part of the relevant public with sufficient knowledge of English to understand the meaning of the words ‘seven’ and ‘summits’ may associate the mark applied for with the seven highest peaks of the seven continents. Nevertheless, for a very large part of the relevant public with sufficient knowledge of English to understand the meaning of those words, the mark applied for will simply be perceived as referring to seven mountains, with no specific location or identity. For that part of the relevant public, the marks at issue present some conceptual similarity in so far as they both refer to the number 7.
42 That conclusion remains relevant even if the addition of the word ‘summits’ in the mark applied for detracts somewhat from that similarity, as the applicant claims, arguing, in particular, that the word ‘seven’ will be perceived merely as additional numerical information related to the mountains, so that the conceptual similarity between the marks at issue is only very limited. As was found in paragraph 41 above, it will be for only a very small section of the relevant public with sufficient knowledge of English to understand the meaning of the words ‘seven’ and ‘summits’ that the combination of those two words will convey an original and unusual message evoking the seven highest peaks of the seven continents. As regards the perception of the larger section of the relevant public with a sufficient knowledge of English, the applicant adduces no evidence to show that the word ‘summits’ will not be perceived simply as a reference to the type of goods covered. There are no grounds, therefore, for finding that that word is capable of playing a decisive role in the conceptual differentiation of the signs at issue.
43 Lastly, it is not necessary to consider the arguments put forward by OHIM before the Court alleging that it follows implicitly from the contested decision that a part of the relevant public with a low degree of familiarity with the English language will not understand the meaning of the word ‘summits’. Apart from the fact that the contested decision does not address that point, it is apparent from paragraph 40 above, read in conjunction with the case-law referred to in paragraph 19 above – according to which it is sufficient for a relative ground for refusal to exist in part of the European Union for registration as a Community trade mark to be refused – that the Board of Appeal was entitled to base its findings concerning the existence of a conceptual similarity between the signs at issue on assessments relating to the section of the relevant public which has a sufficient knowledge of English.
44 It follows from the foregoing that the Board of Appeal was right in finding that there is some overall similarity between the marks at issue, principally owing to the presence in those marks of the word element ‘seven’, which is not a negligible element in the overall impression made by either of the two marks.
The likelihood of confusion
45 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 covered. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater 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).
46 In paragraph 20 of the contested decision, the Board of Appeal found that the figurative elements of the two marks differed, but that the word element ‘seven’ was prominently displayed. In that regard, it noted that that word element constituted the whole of the earlier sign, which was entirely reproduced in the sign applied for, as its first element, positioned in the upper part of that sign. The Board of Appeal also pointed out that the goods in question were in part identical and in part similar. Next, in arguing that it was not rare in the sports items field for it to be possible to configure a single mark in various ways, depending on the type of product covered, the Board of Appeal found that the target public may perceive the goods covered by the marks at issue as belonging to two distinct product ranges but as coming nonetheless from the same manufacturer and, accordingly, that there was a likelihood of confusion between the two marks.
47 The applicant claims that the Board of Appeal did not take account of the very low inherent distinctive character of the element ‘seven’ which comprises the earlier mark. According to the applicant, the Boards of Appeal and the Opposition Divisions have found on a number of occasions that, in themselves, numbers generally have a very low distinctive character, even where the number is represented entirely in letters. Numbers are generally used to indicate, in particular, the quantity, weight and serial number of goods and the public is not used to perceiving them as marks. The applicant also claims that, if the contested decision is upheld, an earlier mark consisting exclusively of a number – whether as a numeral or written in words – could hinder the registration of all other later marks containing the same number, if that number is combined with other elements. Moreover, the applicant takes issue with the finding made by the Board of Appeal to the effect that the element ‘seven’ is prominently displayed in each of the marks at issue, because, it argues, it does not emerge from the assessment of the mark applied for that the element ‘seven’ is dominant and the element ‘summits’ insignificant. Lastly, the applicant disputes the finding made by the Board of Appeal to the effect that the consumer might assume, when examining the marks at issue, that there are two distinct product ranges coming from the same manufacturer.
48 OHIM and the intervener dispute the applicant’s arguments.
49 It is necessary, first, to consider the applicant’s argument that the Board of Appeal did not take into account as part of its analysis the inherent distinctive character of the earlier mark, with the result that its global assessment of the likelihood of confusion was incorrect.
50 It should be borne in mind that when the Board of Appeal confirms a lower-level decision of OHIM in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and which enables the Court to exercise in full its jurisdiction to review legality as regards the question whether the assessment made by the Board of Appeal was well founded (see Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 47 and the case-law cited).
51 In the present case, OHIM correctly noted that, even if the Board of Appeal made no explicit statement as to the inherent distinctive character of the earlier mark, it is nevertheless clear from the proceedings before OHIM, as described in the contested decision upholding the decision of the Opposition Division, that the Board of Appeal approved the position taken by the Opposition Division in that regard. In particular – as is apparent from the seventh indent of paragraph 5 of the contested decision – the Opposition Division found, in the course of its global assessment of the likelihood of confusion, that the earlier mark had a normal distinctive character. Since that implies that the adjudicatory bodies of OHIM regarded the distinctive character of the earlier mark as a neutral factor, it was not necessary for the Board of Appeal to make an explicit reference to this in paragraph 20 of the contested decision, in relation to its global assessment of the likelihood of confusion.
52 That is all the more so as, although it is true that the distinctive character of the earlier mark must be taken into account when the likelihood of confusion is assessed, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark with a low distinctive character, there may be a likelihood of confusion, in particular on account of a similarity between the signs and between the goods or services covered (see, to that effect, Case T‑313/10 Three-N-Products Private v OHIM – Shah (AYUURI NATURAL) [2011] ECR I‑0000, paragraph 64).
53 Secondly, as regards the applicant’s arguments alleging that the element ‘seven’ of the earlier mark is of very low distinctive character because that mark is composed of a word denoting a number and numbers normally indicate the quantity, weight or serial number of the goods and the public is not used to perceiving them as exclusive signs of the undertaking, that is to say, as trade marks, apart from the fact that, as is apparent from the case-law referred to in paragraph 52 above, this does not mean that no likelihood of confusion can be found to exist in the present case, it must be held that the assertions made by the applicant concerning the nature of the word element ‘seven’ are not sufficient to establish that that element is of very low distinctive character in relation to all of the goods in question taken as a whole.
54 It is clear from the wording of Article 4 of Regulation No 207/2009 that numbers may be registered as Community trade marks. However, in order to be registered, any sign must meet the conditions laid down in Article 7 of Regulation No 207/2009, under which signs are not to be registered if they cannot fulfil the function of indicating to the consumer the commercial origin of the goods and services covered by the application for registration. Accordingly, a number may be registered as a Community trade mark only if it is distinctive in relation to the goods and services covered by the application for registration and is not merely a description (see, to that effect, judgment of 19 November 2009 in Case T‑298/06 Agencja Wydawnicza Technopol v OHIM (1000), not published in the ECR, paragraphs 14 and 15 and the case-law cited).
55 It follows that, in order to assess the inherent distinctive character of the element ‘seven’, it is necessary to analyse that element with reference to the goods in question, in order to examine to what extent it is able to assist in identifying them as coming from a particular undertaking, and thus to distinguish them from those of other undertakings (see, to that effect, Case T‑153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II‑1677, paragraph 35 and the case-law cited, and judgment of 13 December 2007 in Case T‑242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 51).
56 In the present case, the intervener rightly contends that, if the number chosen – whether presented wholly in words or in its numerical form – does not indicate the quantity, weight, serial number or other specific characteristics of the goods or services, it cannot automatically be concluded that the mark at issue is not distinctive or that it has a very low distinctive character.
57 It should be noted that – as the Opposition Division held – the word ‘seven’ has no particular meaning in relation to the goods in question. It has no particular link with those goods. In addition, the applicant does not explain in what respect the number 7 indicates a characteristic of the goods in Class 18 or otherwise displays a low distinctive character, as OHIM correctly argued. Accordingly, the finding made by the Opposition Division and upheld by the Board of Appeal, according to which the word ‘seven’ has a normal inherent distinctive character in relation to the goods in question, is not incorrect. As regards the argument put forward by OHIM before the Court to the effect that it is extremely unusual for operators to express numbers in words in a descriptive context, it should be noted that the case-law referred to in paragraph 54 above does not, moreover, distinguish between the various forms in which a number is expressed.
58 Thirdly, as regards the applicant’s arguments alleging that the Board of Appeal erred in its global assessment of the likelihood of confusion, in so far as it found that the word element ‘seven’ was presented prominently in the mark applied for, it should be noted that – contrary to the assertions made by the applicant – the Board of Appeal did not find that the first element, ‘seven’, was dominant in the mark applied for or that the second element, ‘summits’, was insignificant in that context.
59 It is clear from paragraph 20 of the contested decision that the Board of Appeal found that the position of the element ‘seven’ at the beginning and in the upper part of the sign SEVEN SUMMITS gave that element prominence. On the other hand, the Board of Appeal did not infer from that prominence that the element in question is, for that reason, dominant in relation to the element ‘summits’; nor, a fortiori, did it infer that the element ‘summits’ is insignificant. That approach is consistent with the case-law to the effect that the existence of a similarity between two marks does not presuppose that their common component forms the dominant element within the overall impression created by the mark applied for; rather, it is sufficient in that connection that the common component not be negligible (see, to that effect, Case C‑254/09 P Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 56 and the case-law cited).
60 In that regard, the applicant’s argument that the two elements of the mark applied for are equally important, but that the element ‘seven’ will not be kept in mind by consumers because it is numerical information with a very low distinctive character, cannot succeed, for the reasons mentioned in paragraphs 53 to 57 above.
61 Similarly, the applicant’s argument that the comparison of the signs at issue must be based on their particular overall appearance, by means of which the applicant appears to be claiming that the Board of Appeal did not take account of the overall impression produced by the mark applied for, must be rejected. It is apparent, in particular, from paragraph 20 of the contested decision that the Board of Appeal compared the overall impression made by the two marks by noting, first, the figurative elements which differentiate them, but by observing, secondly, that the word element ‘seven’, which constitutes the principal element of the earlier mark, is reproduced in its entirety in the mark applied for as the first element positioned above the second element, As regards, lastly, that second element, ‘summits’, the applicant does not put forward any argument capable of proving that it may have a particular distinctive character in relation to the goods covered by the mark applied for, that is to say, to sports bags and holdalls and accessories, articles belonging, in particular, to the mountain sports and leisure sector.
62 Taking into account the interdependence between, on the one hand, the fact that there is some overall similarity between the signs at issue (see paragraph 44 above) and, on the other, the fact that the goods in question are in part identical and in part similar (see paragraph 23 above), the Board of Appeal was able to uphold, correctly, in paragraph 20 of the contested decision, that a likelihood of association, which is encompassed by the likelihood of confusion, could not be ruled out between the two signs. Since the common element ‘seven’ constitutes the principal element of the earlier mark and has a distinctive autonomous position in the mark applied for, the overall impression made by the mark applied for may lead the relevant public to believe that the goods at issue, at the very least, come from economically linked undertakings. That conclusion holds true even if the goods in question were to be considered as being generally on display to the consumer, since the impression of an overall similarity between the signs at issue still remains apparent for the latter.
63 The possibility cannot therefore be ruled out that the relevant public will perceive the goods covered by the marks at issue as belonging to two distinct product ranges, but as coming from the same manufacturer, or that it will think that there is at the very least an economic link between the applicant and the intervener. It follows that the Board of Appeal applied Article 8(1)(b) of Regulation No 207/2009 correctly.
64 That conclusion is not called into question by the applicant’s argument that a likelihood of confusion could exist only if the marks at issue were, for example, the mark SEVEN SUMMITS and the mark FIVE SUMMITS, that is to say, if the word which the applicant classes as significant were the same in both marks and that word was in each case supplemented by numerical information.
65 That argument on the part of the applicant amounts to no more than a general statement, wholly unsubstantiated, and does not affect the finding made by the Board of Appeal that it is not rare in the sports items field for the same mark to be configured in various ways according to the type of product covered. As OHIM points out, it is clear from the case-law that, in the clothing sector, it is common for the same mark to be configured in various ways according to the type of product covered. It is also common for a single manufacturer to use sub-brands – that is to say, signs which derive from a principal mark and which share with it a common dominant element – in order to distinguish its various product lines one from the other (women’s, men’s, youth) (see First-On-Skin, paragraph 43 and the case-law cited). In the present case, it is not inappropriate to apply the same reasoning to the goods in question, which include, in particular, bags and accessories, that is to say, goods very close to the clothing sector.
66 Nor is it possible to accept the applicant’s argument that the Board of Appeal’s finding implies that all marks which have the same number as one of their elements and which cover goods in the same class are linked, in so far as that argument also disregards the finding set out above, to the effect that a number may be registered as a Community trade mark.
67 Lastly, the Board of Appeal’s finding referred to in paragraph 62 above is not affected by the applicant’s argument alleging contradictions between the contested decision and OHIM’s previous decision-making practice, even if those decisions relate to comparable circumstances and are representative of OHIM’s decision‑making practice in such circumstances, a point which OHIM disputes. The applicant relies, in particular, on a decision of the Second Board of Appeal of 12 February 2010 (Case R 929/2009‑2) concerning opposition proceedings in respect of an application to register the Community trade mark SEVENLANDS and a decision of the Opposition Division of 30 November 2010 (Case B 1 080 300) in opposition proceedings in respect of an application to register the Community trade mark SEVEN POINT. In those cases, the intervener in the present case filed a notice of opposition, relying on its figurative Community trade mark No 3489234 containing the word element ‘seven’ as a basis for challenging registration of marks reproducing that same element.
68 In that regard, it should be noted that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the application of those principles must always be consistent with respect for legality (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑0000, paragraphs 73 to 75).
69 Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and exhaustive, in order to prevent trade marks from being improperly registered. An examination of that nature must be undertaken in each individual case (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraph 77).
70 In the present case, contrary to what may have been the case in some of OHIM’s earlier decisions, the Board of Appeal found that the ground for refusal laid down in Article 8(1)(b) of Regulation No 207/2009 applied to the trade mark applied for, given the signs at issue, the goods for which registration was sought and the perception of the relevant consumers. Accordingly, since the Board of Appeal rightly concluded that there was a likelihood of confusion between the signs at issue, the applicant cannot reasonably rely on OHIM’s earlier decisions – allegedly contrary to the contested decision – for the purposes of showing that that finding was unsound.
71 Accordingly, it follows from all the foregoing that the applicant’s sole plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and in consequence the action must be dismissed in its entirety.
Costs
72 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, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Sport Eybl & Sports Experts GmbH to pay its own costs and to bear those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Seven SpA.
Delivered in open court in Luxembourg on 22 May 2012.
[Signatures]