JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
28 January 2016 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark AEROSTONE — Earlier Community word marks STONE and BRIDGESTONE — Earlier non-registered national figurative mark BRIDGESTONE — Relative ground for refusal — Partial refusal of registration)
In Case T‑194/14,
Bristol Global Co. Ltd, established in Birmingham (United Kingdom), represented by F. Bozhinova, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Bridgestone Corp., established in Tokyo (Japan), represented by M. Blair, Solicitor, and subsequently by S. Malynicz, Barrister, and C. Balme and K. Gilbert, Solicitors,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 December 2013 (Case R 916/2013-2), relating to opposition proceedings between Bridgestone Corp. and Bristol Global Co. Ltd,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva (Rapporteur) and C. Wetter, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 20 March 2014,
having regard to the response lodged at the Court Registry on 5 September 2014,
having regard to the response of the intervener lodged at the Court Registry on 5 September 2014,
having regard to the reply lodged at the Court Registry on 27 November 2014,
further to the hearing on 10 September 2015,
gives the following
Judgment
Background to the dispute
1 On 22 June 2011, the applicant, Bristol Global Co. Ltd, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of 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: ‘Vehicles; Apparatus for locomotion by land, air or water; Automobile tyres’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2011/178 of 20 September 2011.
5 On 20 December 2011, Bridgestone Corp., the intervener, 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 Community word mark BRIDGESTONE, registered on 15 March 2005 under the number 3574274;
– the Community word mark STONE, registered on 14 January 2009 under the number 6912711;
– the well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended:
– the non-registered sign used in the course of trade in the United Kingdom:
7 The goods covered by the earlier Community word mark number 3574274 are in, inter alia, Class 12 and correspond to the following description: ‘Vehicles and parts and fittings for vehicles; apparatus for vehicles and tyres; treads for vehicles; brake pads and brake linings; tracks for vehicles; rubber goods for vehicles and tyres; tyres; wheels for vehicles; inner tubes, rims and covers for vehicle wheels; inner tubes for vehicle tyres; repair materials of rubber for tyres and inner tubes; repair outfits for tyres; non-skid apparatus and devices for vehicle tyres; golf carts and golf trolleys; non-metallic hoses for use in hydraulic systems in vehicles; fenders for ships; parts and fittings for all the aforesaid goods’.
8 The goods covered by the earlier Community word mark number 6912711 are in, inter alia, Class 12 and correspond to the following description: ‘Vehicle parts, namely, shock absorbers; tires; wheels for vehicles; inner tubes, rims and covers for vehicle wheels; inner tubes for vehicle tires; bicycles; parts and fittings for all the aforesaid goods’.
9 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
10 On 14 November 2012, the Opposition Division invited the applicant to clarify its intentions in filing the application for the Community trade mark in respect of the entire Class 12 heading and asked it whether it intended to seek protection for the whole of the alphabetical list in that class.
11 On 26 March 2013, the Opposition Division found that since the application for the Community trade mark sought protection for the entire Class 12 heading, it was appropriate, in the absence of clarification by the applicant as to the scope of its application for registration and in accordance with Communication No 2/2012 of the President of OHIM of 20 June 2012 concerning applications for Community trade marks lodged before 20 June 2012, to consider that the applicant’s intention was to cover all the goods or services included in the alphabetical list of the class concerned in the edition of the Nice Classification in force at the time of filing, in the present case, the ninth edition.
12 In order to take account of the entire alphabetical list for Class 12 in the contested Community trade mark application, the Opposition Division compared the goods and services covered by the earlier marks (i) with the general indications specified in the contested Community trade mark application and (ii) with all the items in the alphabetical list which do not fall within the natural and usual meaning of those general indications.
13 Accordingly, the Opposition Division identified the items in the alphabetical list covered by the contested Community trade mark application that did not fall within the natural and usual meaning of those general indications, namely:
‘Air bags [safety devices for automobiles]; air pumps [vehicle accessories]; anti-glare devices for vehicles; anti-skid chains; anti-theft alarms for vehicles; anti-theft devices for vehicles; automobile bodies; automobile chains; automobile chassis; automobile hoods; automobile tires [tyres]; axle journals; axles for vehicles; balance weights for vehicle wheels; bands for wheel hubs; baskets adapted for cycles; bicycle stands; boat hooks; bodies for vehicles; bogies for railway cars; brake linings for vehicles; brake segments for vehicles; brake shoes for vehicles; brakes for vehicles; buffers for railway rolling stock; bumpers for automobiles; caps for vehicle petrol [gas] tanks; casings for pneumatic tires [tyres]; casters for trolleys [vehicles] [carts (Am.)]; cleats [nautical]; clutches for land vehicles; connecting rods for land vehicles, other than parts of motors and engines; couplings for land vehicles; covers for vehicle steering wheels; crankcases for land vehicle components, other than for engines; cranks for cycles; cycle bells; cycle brakes; cycle chains; cycle frames; cycle handle bars; cycle hubs; cycle mudguards; cycle pumps; cycle rims; cycle saddles; cycle spokes; cycle stands; davits for boats; direction indicators for bicycles; disengaging gear for boats; doors for vehicles; dress guards for bicycles, cycles; driving chains for land vehicles; driving motors for land vehicles; ejector seats for aircraft; fenders for ships; freewheels for land vehicles; funnels for locomotives; funnels for ships; gear boxes for land vehicles; gearing for land vehicles; gears for cycles; head-rests for vehicle seats; hoods for vehicle engines; hoods for vehicles; horns for vehicles; hub caps; hubs for vehicle wheels; hydraulic circuits for vehicles; inclined ways for boats; inner tubes (adhesive rubber patches for repairing –); inner tubes for bicycles, cycles; inner tubes for pneumatic tires [tyres]; jet engines for land vehicles; luggage carriers for vehicles; luggage nets for vehicles; masts for boats; mine cart wheels; motors, electric, for land vehicles; motors for cycles; motors for land vehicles; mudguards; oars; paddles for canoes; panniers adapted for cycles; pedals for cycles; portholes; propulsion mechanisms for land vehicles; pushchair covers; pushchair hoods; railway couplings; rearview mirrors; reduction gears for land vehicles; repair outfits for inner tubes; reversing alarms for vehicles; rowlocks; rudders; saddle covers for bicycles or motorcycles; saddles for bicycles, cycles or motorcycles; safety belts for vehicle seats; safety seats for children, for vehicles; screw-propellers; screw-propellers for boats; screws [propellers] for ships, sculls; seat covers for vehicles; security harness for vehicle seats; ships’ hulls; ships’ steering gears; shock absorbers for automobiles; shock absorbing springs for vehicles; ski carriers for cars; sleeping berths for vehicles; spars for ships; spoke clips for wheels; steering wheels for vehicles; studs for tires [tyres]; sun blinds adapted for automobiles; suspension shock absorbers for vehicles; tailboard lifts [parts of land vehicles]; timbers [frames] for ships; tipping apparatus, parts of trucks and wagons; tipping bodies for lorries [trucks]; tires (flanges of railway wheel –); ties for bicycles, cycles; tires for vehicle wheels; tires (non-skid devices for vehicle –); tires, solid, for vehicle wheels; torque converters for land vehicles; torsion bars for vehicles; traction engines; trailer hitches for vehicles; transmission chains for land vehicles; transmission shafts for land vehicles; transmissions, for land vehicles; treads for retreading tires [tyres]; treads for vehicles [roller belts]; tubeless tires [tyres] for bicycles, cycles; turbines for land vehicles; turn signals for vehicles; undercarriages for vehicles; upholstery for vehicles; valves for vehicle tires [tyres]; vehicle bumpers; vehicle chassis; vehicle covers [shaped]; vehicle running boards; vehicle seats; vehicle suspension springs; vehicle wheel rims; vehicle wheel spokes; vehicle wheel tires [tyres]; vehicle wheels; wheels for bicycles, cycles; windows for vehicles; windscreen wipers; windscreens’.
14 As a result of that comparison, the Opposition Division concluded that ‘vehicles; apparatus for locomotion by land’ and ‘apparatus for locomotion by air’, on the one hand, and ‘automobile tyres’, on the other, which were specifically referred to in the contested Community trade mark application, were, respectively, similar and identical to the goods covered by the earlier Community word mark number 6912711, STONE.
15 By contrast, the Opposition Division found that the ‘apparatus for locomotion by water’ specifically referred to in the contested Community trade mark application was dissimilar to the goods covered by the earlier Community word mark number 6912711, STONE.
16 Furthermore, the Opposition Division found that there was a similarity or an identity between the goods covered by the earlier Community word mark number 6912711, STONE, and the following items in the alphabetical list for Class 12 covered by the contested Community trade mark application which did not fall within the natural and usual meaning of those general indications, namely:
‘Anti-skid chains; automobile chains; automobile tires [tyres]; balance weights for vehicle wheels; bands for wheel hubs; baskets adapted for cycles; bicycles stands; casings for pneumatic tires [tyres]; cranks for cycles; cycle bells; cycle brakes; cycle chains; cycle frames; cycle handle bars; cycle hubs; cycle mudguards; cycle pumps; cycle rims; cycle saddles; cycle spokes; cycle stands; direction indicators for bicycles; dress guards for bicycles, cycles; driving chains for land vehicles; driving motors for land vehicles; freewheels for land vehicles; gears for cycles; hub caps; hubs for vehicle wheels; inner tubes (adhesive rubber patches for repairing –); inner tubes for bicycles, cycles; inner tubes for pneumatic tires [tyres]; mine cart wheels; motors, electric, for land vehicles; motors for cycles; motors for land vehicles; mudguards; panniers adapted for cycles; pedals for cycles; rearview mirrors; repair outfits for inner tubes; saddle covers for bicycles; saddles for bicycles, cycles; shock absorbers for automobiles; shock absorbing springs for vehicles; spoke clips for wheels; studs for tires [tyres]; suspension shock absorbers for vehicles; tires (flanges of railway wheel –); ties for bicycles, cycles; tires for vehicle wheels; tires (non-skid devices for vehicle –); tires, solid, for vehicle wheels; transmission chains for land vehicles; treads for retreading tires [tyres]; treads for vehicles [roller belts]; tubeless tires [tyres] for bicycles, cycles; valves for vehicle tires [tyres]; vehicle suspension springs; vehicle wheel rims; vehicle wheel spokes; vehicle wheel tires [tyres]; vehicle wheels; wheels for bicycles, cycles’.
17 The Opposition Division upheld the opposition in so far as it was based on the earlier Community word mark number 6912711, STONE, in respect of the goods in Class 12 referred to in paragraphs 14 and 16 above. The opposition was rejected as to the remainder.
18 On 20 May 2013, the applicant filed a notice of appeal, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
19 By decision of 12 December 2013 the Board of Appeal of OHIM upheld the Opposition Division’s decision, thus dismissing the applicant’s appeal (‘the contested decision’). The Board of Appeal found, in essence, that, given the inclusion of the word element ‘stone’ in the mark applied for and the at least equal weight of that element with regard to the element ‘aero’ in that mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 with the earlier mark in respect of the goods referred to in paragraphs 14 and 16 above.
Forms of order sought
20 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to proceed in the normal course regarding the registration of the opposed mark and issue a decision for its registration for all applied for goods;
– in the alternative, annul the contested decision in so far as it upheld the opposition with regard to the goods which were found to be highly similar and similar.
21 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
22 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
1. The admissibility of the applicant’s second head of claim
23 The intervener disputes the admissibility of the applicant’s second head of claim that the Court should order OHIM ‘to proceed in the normal course regarding the registration of the opposed mark and issue a decision for its registration for all applied for goods’.
24 In that regard, it is apparent from settled case-law that, in an action before the European Union judicature against the decision of a Board of Appeal of OHIM, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the European Union judicature. Accordingly, it is not for the Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the European Union judicature (see, by analogy, judgment of 14 January 2015 in Melt Water v OHIM (Shape of a transparent cyclindrical bottle), T‑70/14, EU:T:2015:9, paragraph 11).
25 Consequently, the applicant’s second head of claim that the Court should order OHIM to proceed in the normal course regarding the registration of the opposed mark and issue a decision for its registration for all applied for goods is inadmissible.
2. The claims for annulment
26 The applicant’s claims for annulment consist, essentially, of a principal claim, which seeks annulment of the contested decision in so far as it dismissed the appeal against the Opposition Division’s decision upholding the opposition with regard to the goods deemed to be ‘identical, highly similar and similar’, and of an alternative claim, which seeks annulment of the contested decision in so far as it dismissed the appeal against the Opposition Division’s decision upholding the opposition in relation to the goods deemed to be ‘highly similar and similar’.
The principal claim for annulment
27 In support of its principal claim, the applicant puts forward two pleas in law, the first alleging infringement of Article 75 of Regulation No 207/2009 and the second alleging infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 75 of Regulation No 207/2009
28 The applicant complains, first, that the Board of Appeal did not set out all the reasons for its conclusions. In particular, the applicant claims that the Board of Appeal did not substantiate the assertion that, although consumers generally pay more attention to a mark’s beginning than to its ending, that was not the case in the present proceedings, or explain why consumers will recall the word ‘stone’. Secondly, the applicant complains that the Board of Appeal did not address all the arguments which it put forward before it, in particular those relating to the perception of the mark applied for by the non-English-speaking public and the level of attention of the relevant public in the present case.
29 OHIM and the intervener dispute the applicant’s arguments and contend that the first plea should be rejected.
30 It must be borne in mind at the outset that, according to settled case-law, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. Whether the statement of reasons for a decision satisfies those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 16 July 2014 in Langguth Erben v OHIM (Shape of a bottle for an alcoholic beverage), T‑66/13, EU:T:2014:681, paragraph 72 and the case-law cited).
31 The Boards of Appeal cannot, however, in addition, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (judgment of 25 September 2014 in Alma-The Soul of Italian Wine v OHIM — Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑605/13, EU:T:2014:812, paragraph 19).
32 It is in the light of those principles that the applicant’s complaints must be examined.
33 As regards the applicant’s first complaint, it must be pointed out that the Board of Appeal, first of all, stated, in paragraph 25 of the contested decision, that:
‘… while it is clear that the consumer normally attaches more importance to the first part of words that consideration cannot apply in every case (see judgment of 12 November 2008, T‑281/07, “Ecoblue”, paragraph 32).’
34 It then stated the following in paragraph 26 of the contested decision:
‘In this instance, the Board notes that for English-speaking consumers, the applicant’s mark is readily perceived as the conjunction of “AERO-” and “-STONE”. The term “AERO” (meaning “air”) is a recognised prefix in English and qualifies a number of nouns, viz. “aerobatics”, “aerobics”, “aerodrome”, “aerodynamics”, “aerofoil”, “aeronautics”, “aeroplane”, “aerosol” and “aerospace” (see the Oxford Dictionary of Current English, 7th edition). The prefix “AERO-”, like all prefixes, is a “verbal element placed at the beginning of a word to qualify meaning” (ibid.) Therefore, being a recognised prefix, English-speaking consumers will be mentally led from “AERO-” to the term which it modifies, namely “-STONE”. Hence, despite the “AERO-” element being the first term in the mark, the element “-STONE” must possess at least equal weight.’
35 The Board of Appeal also stated, in paragraph 27 of the contested decision, that, for non-English-speaking consumers ‘the perception of “AEROSTONE” as a combination of prefix modifying a noun will be lost’. It concluded from this that, for non-English-speaking consumers, that word would ‘be seen’, instead, ‘as a unitary and fanciful mark with no meaning’.
36 Lastly, in paragraph 28 of the contested decision, the Board of Appeal rejected the applicant’s arguments relating to the figurative elements of word element ‘aero’, stating:
‘Regarding the slight figurative “wing” effects on the initial “A” — nevertheless, they are barely visible — and the coloured font, the Board considers them negligible in the overall comparison. Consumers are accustomed to seeing marks portrayed in coloured fonts; therefore, paying little attention to them, they will focus on the verbal element embedded within.’
37 Consequently, contrary to what the applicant submits, it is apparent from merely reading paragraphs 26 to 28 of the contested decision that the Board of Appeal did indeed set out, in the contested decision, the reasons why it took the view that the principle that consumers generally pay greater attention to the beginning of a sign than to its ending did not apply with regard to the mark applied for.
38 It must also be pointed out that, contrary to what the applicant maintains, the Board of Appeal explained why consumers will recall the word ‘stone’ in the mark applied for. In addition to the finding, in paragraph 26 of contested decision, cited above, that the word element ‘stone’ will have a weight equal to that of the word element ‘aero’, the Board of Appeal also stated the following in paragraph 31 of contested decision:
‘For English speakers, the earlier mark “STONE” has a clear meaning, i.e. “a solid non-metallic material” (ibid.). With regards to the challenged mark, the verbal element is “AEROSTONE”. The Board noted above that, at least for English speakers, this element is clearly perceived as the conjunction of the prefix “AERO-” and “STONE”. Moreover, the prefix does not modify the noun “STONE” in any clear, unambiguous way. Hence, the latter term preserves a semi-independent role in the verbal element, which makes for a finding of conceptual similarity between the marks.’
39 It follows that the applicant’s first complaint, that the Board of Appeal did not, in the contested decision, set out all the reasons for its conclusions, must be rejected as unfounded.
40 As regards the applicant’s second complaint, it must be borne in mind that, in accordance with the case-law cited in paragraph 31 above, the Board of Appeal was not required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the applicant before it.
41 Moreover, it must be stated that, contrary to what the applicant submits, the Board of Appeal took account of its arguments relating to the level of attention of the relevant public. It stated in paragraph 20 of the contested decision that ‘the target consumers comprise[d] both ordinary members of the general public and specialised personnel in the European Union’ and referred to the relevant part of the Opposition Division’s decision which it moreover confirmed.
42 In that regard, it must 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 enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well-founded (judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 47, and judgment of 21 November 2013 in El Hogar Perfecto del Siglo XXI v OHIM — Wenf International Advisers (Corkscrew), T‑337/12, ECR, EU:T:2013:601, paragraph 43).
43 In the Opposition Division’s decision of 26 March 2013, it is clearly stated in the section ‘Relevant public — level of attention’ that, ‘[i]n the light of the nature of the goods in question, the attentiveness and sophistication of the average consumer will be high’.
44 It must also be stated that, contrary to what the applicant maintains, the Board of Appeal adopted a position on the perception of the mark applied for by non-English-speaking consumers, as is apparent from paragraph 27 of the contested decision, the content of which has been set out in paragraph 35 above, and from paragraph 32 of the contested decision in which it stated that, from a conceptual standpoint, ‘for non-English-speaking consumers, neither mark ha[d] any meaning’.
45 Consequently, the applicant’s second complaint, that the Board of Appeal did not address all the arguments which it put forward before it, must be rejected as unfounded.
46 The applicant’s first plea, alleging infringement of Article 75 of Regulation No 207/2009, must therefore be rejected in its entirety as unfounded.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
47 The applicant bases its arguments, in essence, first, on the fact that, contrary to the view taken by the Board of Appeal, the relevant public will pay more attention to the element ‘aero’ situated at the beginning of the trade mark applied for than to the element ‘stone’ in that same mark and, secondly, on the fact that the visual, phonetic and conceptual differences between the marks at issue are sufficient to preclude any finding of similarity between those marks. The applicant also submits that, in the context of the overall assessment of the likelihood of confusion, the Board of Appeal attributed too much importance to the inclusion of the earlier mark in the mark applied for and that, in the light of the specific features of the element ‘aero’, that element, and not the element ‘stone’, is the element in the mark applied for which will hold the public’s attention.
48 It must be noted at the outset that 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 must not 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 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.
49 According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account 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 (judgment of 6 March 2015 in Novomatic v OHIM — Berentzen Mally Marketing plus Services (BLACK JACK TM), T‑257/14, EU:T:2015:141, paragraph 17).
50 That 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 that 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 16 January 2014 in Investrónica v OHIM — Olympus Imaging (MICRO), T‑149/12, EU:T:2014:11, paragraph 18).
51 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 judgment of 4 March 2015 in FSA v OHIM — Motokit Veículos e Acessórios (FSA K-FORCE), T‑558/13, EU:T:2015:135, paragraph 20 and the case-law cited).
52 In the present case, the protection of the earlier trade mark extends to the entirety of the European Union. It is therefore the perception of the marks at issue by the consumer of the goods in question in that territory that must be considered. However, it must be borne in mind that, for a Community trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in only part of the European Union (judgment of 8 May 2014 in Pedro Group v OHIM — Cortefiel (PEDRO), T‑38/13, EU:T:2014:241, paragraph 79 and the case-law cited).
53 It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find that there was a likelihood of confusion between the marks at issue.
– The relevant public
54 The Board of Appeal defined the relevant public in paragraph 20 of the contested decision as comprising members of the general public and specialised personnel in the European Union. That finding, which is not disputed by the parties, must be upheld.
– The comparison of the goods
55 In paragraph 21 of the contested decision, the Board of Appeal pointed out that the Opposition Division’s findings regarding the identity, similarity and dissimilarity of the goods at issue, which are set out in paragraphs 14 to 16 above, had not been disputed by the parties. In the contested decision, the Board of Appeal confirmed those findings and referred to the relevant part of the Opposition Division’s decision. Those findings, which have not been disputed by the parties before the Court, must be upheld.
– The comparison of the signs at issue
56 According to settled case-law, two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009, where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 25 November 2003 in Oriental Kitchen v OHIM — Mou Dybfrost (KIAP MOU), T‑286/02, ECR, EU:T:2003:311, paragraph 38 and the case-law cited). As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30 and the case-law cited).
57 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of 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).
58 Assessment of the similarity between two marks thus 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, cited in paragraph 57 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, cited in paragraph 57 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 that mark which members of the relevant public retain, with the result 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).
– The distinctive and dominant elements of the mark applied for
59 In paragraphs 25 to 28 of the contested decision, the Board of Appeal stated that, although, consumers generally take more note of the beginning of a word mark than of its ending, that consideration could not apply in every case. Accordingly, the Board of Appeal found that the word element ‘aero’ would be perceived by English-speaking consumers as a prefix which qualifies the word that follows it, namely the element ‘stone’. It deduced from this that for English-speaking consumers, although the element ‘aero’ is placed at the beginning of the sign, the element ‘stone’ must have at least equal weight. By contrast, it found that non-English-speaking consumers would not perceive the mark applied for as an association of the prefix ‘aero’ with the word ‘stone’, but as a unitary and fanciful mark with no meaning. The Board of Appeal also took the view that the slight figurative ‘wing’ effect on the initial ‘a’ and the coloured font of the mark applied for were negligible in the overall comparison; since consumers were accustomed to seeing marks portrayed in coloured fonts, they would focus, according to the Board of Appeal, on the word element embedded within.
60 The applicant submits, in essence, that, contrary to what the Board of Appeal found, the element ‘aero’ is, on account of its position in the mark applied for and its figurative elements, the dominant element in that mark.
61 OHIM and the intervener dispute the applicant’s line of argument.
62 In that regard, it must be borne in mind that, as was rightly pointed out by the Board of Appeal, although the consumer normally attaches more importance to the first part of words, that consideration cannot apply in every case (see judgment of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 32 and the case-law cited).
63 The principle that the consumer attributes particular importance to the beginning of the mark applied for cannot be applied without taking into account the circumstances of the particular case and, in particular, the specific characteristics of the signs at issue (see, to that effect, judgment of 13 April 2011 in United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, EU:T:2011:170, paragraph 37).
64 It is apparent from the case-law cited in paragraph 63 above that the importance that is attached to the position of an element of a composite mark at the beginning of that mark may be offset by the characteristics of the element that follows that first element as long as that second element is not negligible in the overall impression created by the composite mark.
65 In the present case, it must be pointed out that the mark applied for consists of the terms ‘aero’ and ‘stone’. As the Board of Appeal pointed out, in English the term ‘aero’ is used as a prefix meaning ‘air’ to qualify various nouns such as ‘aerodynamics’ or ‘aeronautics’. Furthermore, as the Board of Appeal also pointed out, the term ‘stone’ is recognised in English as a common noun meaning ‘a solid non-metallic material’.
66 In addition, as the Board of Appeal rightly observed, the figurative elements of the element ‘aero’ in the mark applied for are negligible on account, as far as the stylised ‘wings’ on the initial ‘a’ are concerned, of their small size, and, as far as the colour and the font are concerned, of the fact that they are identical to those of the ‘element’ stone. At best, the view may be taken that the stylised wings on the initial ‘a’ will reinforce the English-speaking consumers’ perception that the element ‘aero’ is the prefix meaning ‘air’.
67 Consequently, in spite of the position of the element ‘aero’ at the beginning of the mark applied for, at least part of the relevant public, namely the English-speaking consumers, will perceive it as the association of the prefix ‘aero’ with the noun ‘stone’.
68 The applicant’s argument that the term ‘aerostone’ is an invented noun which, like the term ‘aerosmith’, has no meaning is not relevant inasmuch as the term ‘aerosmith’ will be perceived as the association of the prefix ‘aero’ with the proper noun ‘Smith’, whereas, in the present case, the prefix ‘aero’ is associated with the common noun ‘stone’ which it qualifies, irrespective of the ambiguous semantic content of the term ‘aerostone’.
69 The Board of Appeal did not therefore err in finding that, in spite of the fact that the element ‘aero’ is situated at the beginning of the mark applied for, the element ‘stone’ in that mark had to have at least equal weight.
– The visual comparison
70 In paragraph 29 of the contested decision, the Board of Appeal found that, visually, the marks at issue differed in their colour and the type of font, the presence of a pair of wings in the sign AEROSTONE and the addition of the prefix ‘aero’, but that they were similar to the extent that the earlier mark was entirely reproduced in the mark applied for.
71 The applicant complains that the Board of Appeal did not draw the appropriate conclusions from the visual differences between the marks at issue which it had itself established and concluded that those marks were visually similar on the sole ground that the earlier mark STONE was completely reproduced in the mark applied for AEROSTONE.
72 OHIM and the intervener dispute the applicant’s arguments.
73 In that regard, it must be borne in mind that an at least partial identity between two marks may be an indication of their visual similarity. As is apparent from the case-law, the fact that a mark that is applied for consists exclusively of the earlier mark, to which another word has been added, is an indication that those two trade marks are similar (judgment of 21 March 2011 in Visti Beheer v OHIM — Meister (GOLD MEISTER), T‑372/09, EU:T:2011:97, paragraph 27, and judgment of 7 March 2013 in FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, EU:T:2013:112, paragraph 31).
74 In the present case, it must be pointed out that the term ‘aerostone’ is longer than the term ‘stone’. However, the fact that the word ‘stone’ is also included in the term ‘aerostone’ is an indication that the earlier mark and the mark applied for are similar. That similarity cannot be called into question by the mere fact that the mark applied for is longer than the earlier mark.
75 It is true that the mark applied for differs visually from the earlier mark in its colour, font, the presence of a pair of wings on the initial ‘a’ and the element ‘aero’.
76 However, as has been stated in paragraph 66 above, the stylised wings on the first letter of the element ‘aero’ are small in size. Furthermore, as the Board of Appeal pointed out, since consumers are accustomed to seeing marks portrayed in coloured fonts, they will pay little attention to the colour of the mark applied for. Similarly, since the font of the mark applied for is commonplace, it will not particularly hold the attention of the relevant public.
77 Consequently, the mere presence of the word element ‘aero’ in the mark applied for cannot preclude the relevant public from perceiving the similarity between the marks at issue which results from the identity of the word element that they have in common, ‘stone’, which is also longer than the word element ‘aero’.
78 The Board of Appeal did not therefore err in finding that the marks at issue were visually similar.
– The phonetic comparison
79 In paragraph 30 of the contested decision, the Board of Appeal found that, phonetically, the mark applied for consisted of three or more syllables, ‘ae’, ‘ro’, ‘stone’ or ‘ae’, ‘ro’, ‘ston’, ‘e’, whilst the earlier mark consisted of one or two syllables, ‘stone’ or ‘ston’, ‘e’. It concluded from this that, phonetically, the mark applied for was similar to the earlier mark due to the identity between the second word element of the mark applied for and the earlier mark.
80 The applicant submits, in essence, that the mark applied for can be distinguished phonetically from the earlier mark on account of a significantly greater number of syllables, the stress on the first letter, ‘a’, and the particular sound of the element ‘aero’.
81 OHIM and the intervener dispute the applicant’s arguments.
82 In that regard, it is sufficient to point out that an at least partial identity between two marks may be an indication of their phonetic similarity. As is apparent from the case-law of the Court, the fact that the earlier mark is included in its entirety in the mark applied for is an indication that those two marks are phonetically similar (judgment of 2 February 2012 in Almunia Textil v OHIM — FIBA-Europe (EuroBasket), T‑596/10, EU:T:2012:52, paragraph 38).
83 In the present case, it must be stated that the mark applied for consists of three syllables or more, ‘ae’, ‘ro’, ‘stone’ or ‘ae’, ‘ro’, ‘ston’, ‘e’, whereas the earlier mark consists of one or two syllables, ‘stone’ or ‘ston’, ‘e’. The applicant’s claim that the mark applied for has twice the number of syllables of the earlier mark, namely eight syllables with regard to the mark AEROSTONE as against four syllables with regard to the mark STONE, must therefore be rejected at the outset.
84 It is true that the mark applied for contains two additional syllables at the beginning, ‘ae’, ‘ro’, and, in principle, the consumer will tend to attach more importance to the first element in a mark. However, that principle cannot be applied without taking into account the circumstances of the particular case and the position of an element of a composite mark at the beginning of that mark may be offset by the characteristics of the element that follows as long as the latter element is not negligible in the overall impression created by the composite mark (see paragraphs 62 to 64 above).
85 It must be pointed out that, contrary to what the applicant maintains, the stress in the mark applied for does not fall solely on the first letter, ‘a’, but on the first syllable, ‘ae’, of the element ‘aero’ and on the first syllable of the element ‘stone’. It follows that the mark applied for will be pronounced by putting the stress on both the element ‘aero’ and the element ‘stone’.
86 Furthermore, it must be pointed out that the element ‘stone’ will be pronounced in the same way in the mark applied for and in the earlier mark.
87 Accordingly, in the light of the phonetic identity between the second element of the mark applied for and the whole of the earlier mark, the Board of Appeal did not err in finding that those marks are phonetically similar, notwithstanding the particular sound of the element ‘aero’.
– The conceptual comparison
88 In paragraphs 31 to 32 of the contested decision, the Board of Appeal found that, for English-speaking consumers, the earlier mark had a clear meaning, namely ‘a solid non-metallic material’. It took the view that, in the mark applied for, the prefix ‘aero’ did not modify the word ‘stone’ in any clear, unambiguous way, with the result that that word retained a semi-independent role. The Board of Appeal concluded from this that there was a conceptual similarity between the marks for English-speaking consumers. By contrast, it found that for non-English-speaking consumers, neither of the marks at issue had any meaning, with the result that a conceptual comparison could not be made.
89 The applicant submits that there is no conceptual similarity between the marks at issue because the term ‘aerostone’ is an invented word with no meaning in itself; according to the applicant, the element ‘aero’, however, has greater conceptual weight because of its position in the mark applied for and the figurative element representing two ‘wings’ on the first letter thereof. Furthermore, the applicant complains that the Board of Appeal did not consider the fact that non-English-speaking consumers will understand the word ‘aero’ because it is popular due to aviation, airlines, and air travel in general.
90 OHIM and the intervener dispute the applicant’s arguments.
91 In that regard, it must be borne in mind that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 18 September 2014 in Società Italiana Calzature v OHIM, C‑308/13 P and C‑309/13 P, EU:C:2014:2234, paragraph 41). The fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 51, and judgment of 10 February 2015 in Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, EU:T:2015:81, paragraph 82).
92 In the present case, as has already been stated in paragraph 67 above, English-speaking consumers will perceive the mark applied for as the association of the prefix ‘aero’ meaning ‘air’ with the noun ‘stone’ meaning ‘a solid non-metallic material’. As the Board of Appeal rightly pointed out, in the light of the ambiguous nature of such an association, the element ‘stone’ will retain a semi-independent role for English-speaking consumers.
93 The applicant’s argument that, in the mark applied for, the element ‘aero’ has greater weight than the element ‘stone’ because of the representation of two stylised wings on the letter ‘a’, which refers to the semantic content of that element, only confirms that the element ‘aero’ will be perceived by the English-speaking part of the relevant public as a prefix meaning ‘air’.
94 It follows that the Board of Appeal did not err in finding that there was a conceptual similarity between the mark applied for AEROSTONE and the earlier mark STONE for part of the relevant public, namely the English-speaking consumers.
95 Furthermore, the applicant’s argument relating to the perception of the mark applied for by the part of the relevant public that does not speak English must be rejected as irrelevant.
96 It is sufficient to point out that it follows from the unitary character of the Community trade mark laid down in Article 1(2) of Regulation No 207/2009 that an earlier Community trade mark is protected in the same way in all Member States. Earlier Community trade marks may therefore be pleaded in opposition to any subsequent trade mark application which infringes their protection, even if it does so only in relation to the perception of consumers in part of the Community. It follows that the principle laid down in Article 7(2) of Regulation No 207/2009, which provides that it is sufficient, for a mark to be refused registration, that an absolute ground for refusal obtains in only part of the Community, applies, by analogy, also to a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 (judgment of 15 November 2011 in El Coto De Rioja v OHIM — Álvarez Serrano (COTO DE GOMARIZ), T‑276/10, EU:T:2011:661, paragraph 20; judgment of 27 February 2014 in Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, ECR, EU:T:2014:89, paragraph 46, and judgment of 16 July 2014 in Endoceutics v OHIM — Merck (FEMIVIA), T‑324/13, EU:T:2014:672, paragraph 27).
97 Accordingly, it is sufficient for registration to be refused that a relative ground for refusal obtains for only part of the relevant public in the European Union, in the present case the English-speaking consumers, and it is not necessary to examine whether a relative ground for refusal also obtains in respect of the non-English-speaking remainder of the relevant public in the European Union.
The likelihood of confusion
98 In paragraph 33 of the contested decision, the Board of Appeal found that, in view of the visual, phonetic and conceptual similarity between the marks at issue — at least for English-speaking consumers — as a result of the fact that the mark applied for AEROSTONE contains the earlier mark STONE in its entirety and the fact that, in spite of the slight figurative effect of the mark applied for, consumers would tend to retain the word element ‘STONE’ because it evokes a concept, there was a likelihood of confusion between the marks at issue, which the element ‘aero’ did not serve to resolve. The Board of Appeal also pointed out that there was a risk that consumers would believe that ‘the “house mark” of the [intervener] is “STONE”, while “AEROSTONE” denotes a particular or specialised range of goods produced by the same trader, or a specialised branch of the same trader’.
99 The applicant submits that the Board of Appeal gave too much importance to the inclusion of the earlier mark in the mark applied for, it having already been accepted in the case-law, to which the OHIM Guidelines refer, in a number of cases that a different element at the beginning of a mark is sufficient to distinguish that mark from another mark in spite of a word element which they have in common. It maintains that the Board of Appeal was also wrong in finding that the element ‘stone’ would be the element that consumers would retain in their minds because it evokes a concrete concept when the element ‘aero’ also evokes a concrete concept and is placed in front of the element ‘stone’. The applicant also claims that, contrary to what the Board of Appeal found, the relevant public will not perceive the mark applied for as a trade mark for a product manufactured by the intervener but as a new trade mark which has no connection with the intervener.
100 OHIM and the intervener dispute the applicant’s arguments.
101 In that regard, it must be borne in mind that, according to settled case-law, 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 that 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).
102 In the present case, having regard, first, to the similarity or identity of the goods at issue, and, secondly, at least for English-speaking consumers, to the visual, phonetic and conceptual similarities between the signs at issue, which have been established above, the Board of Appeal was right to find that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the earlier mark and the mark applied for in respect of the goods at issue.
103 That finding cannot be called into question by the arguments put forward by the applicant.
104 As regards, in the first place, the applicant’s argument that the Courts of the European Union have already held that a different element at the beginning of a mark is sufficient to distinguish that mark from another mark in spite of a word element which they have in common, it must be stated that the applicant, in fact, refers to the OHIM Guidelines of 2004 regarding opposition proceedings, which do not refer to the case-law of the Courts of the European Union, but to decisions taken by OHIM.
105 First, in accordance with the case-law, the OHIM Guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012 in Leno Merken, C‑149/11, ECR, EU:C:2012:816, paragraph 48).
106 Secondly, it is apparent from the case-law that OHIM is under a duty to exercise its powers in accordance with the general principles of EU 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 must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 26 March 2015 in Bateaux mouches v OHIM (BATEAUX MOUCHES), T‑72/14, EU:T:2015:194, paragraph 80 and the case-law cited).
107 In the present case, as is apparent from the considerations set out above, the Board of Appeal was right to find that the relative ground for refusal laid down in Article 8(1)(b) of Regulation No 207/2009 applied to the trade mark applied for and thus the applicant cannot reasonably rely, for the purpose of casting doubt on that finding, on the previous decisions of OHIM.
108 As regards, in the second place, the applicant’s argument that the Board of Appeal did not take into account the point that, since the term ‘aero’ evokes a concrete concept and is placed at the beginning of the mark applied for, it is the element that consumers will retain in their minds, it must be pointed out that, as has been stated above, first, the element ‘aero’ does not evoke a concrete concept, but is a prefix meaning ‘air’ the function of which is to qualify the common noun that follows it and, secondly, the fact that it is at the beginning of the mark applied for is not capable of precluding the relevant public from noticing the similarity resulting from the inclusion of the earlier mark in the mark applied for.
109 As regards, in the third place and lastly, the applicant’s argument that the mark applied for will be perceived by the relevant public as a mark which has no connection with the intervener, it is sufficient to point out that a likelihood of confusion implies that the relevant public thinks that goods come from the same undertaking or from economically-linked undertakings, in particular where the marks are affixed to identical or similar goods, as is the case here.
110 It follows that the second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded and that the principal claim for annulment must be rejected in its entirety.
2. The alternative claim for annulment
111 The applicant requests that if the claim for annulment of the contested decision is dismissed with regard to the goods which the Opposition Division found to be ‘identical’, then it should at least be upheld with regard to the goods which the Opposition Division found to be ‘highly similar and similar’.
112 In so far as that claim may be interpreted as based, implicitly, on the same pleas as the principal claim for annulment, the applicant does not even explain how the Board of Appeal’s findings relating to the existence of a likelihood of confusion between the marks at issue would be unfounded as regards the goods which are not identical, but only highly similar or similar, with the result that such a claim does not satisfy the requirements of Article 44(1) of the Rules of Procedure of the General Court of 2 May 1991 which were applicable at the time when the action was brought.
113 It follows that the alternative claim for annulment is inadmissible.
Costs
114 Under Article 134(1) 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Bristol Global Co. Ltd to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Bridgestone Corp.
Delivered in open court in Luxembourg on 28 January 2016.
[Signatures]