JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
27 February 2008 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark WORLDLINK – Earlier national figurative mark LiNK – Relative ground for refusal – Likelihood of confusion – Restriction of services covered in the trade mark application – Identity of services – Similarity of signs – Articles 73 and 74 of Regulation (EC) No 40/94)
In Case T‑325/04,
Citigroup, Inc., formerly Citicorp, established in New York, New York (United States), represented initially by V. von Bomhard, A. Renck, A. Pohlmann, lawyers, and C. Schulte, Solicitor, and subsequently by V. von Bomhard and A. Renck,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Link Interchange Network Ltd, established in London (United Kingdom), represented by D. McFarland, Barrister, and R. Brown, Solicitor,
ACTION brought against the decision of the First Board of Appeal of OHIM of 18 May 2004 (Case R 789/2002‑1), relating to opposition proceedings between Link Interchange Network Ltd and Citigroup Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of A.W.H. Meij, acting as President, I. Pelikánová and S. Papasavvas, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court on 5 August 2004,
having regard to the response of OHIM lodged at the Registry of the Court on 22 December 2004,
having regard to the response of the intervener lodged at the Registry of the Court on 15 December 2004,
having regard to the substitution of the applicant for Citicorp,
having regard to the order of 6 February 2007 staying the proceedings pending a final decision in Case C‑29/05 P,
further to the hearing on 23 May 2007,
gives the following
Judgment
Background to the dispute
1 On 1 April 1996 Citicorp applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for the registration as a Community trade mark of the word mark WORLDLINK, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The goods and services in respect of which registration was applied for fell within, inter alia, Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and corresponded, in respect of that class, to the following description: ‘Insurance; financial affairs; monetary affairs; real estate affairs’.
3 The trade mark application was published in the Community Trade Marks Bulletin No 14/99 of 1 March 1999.
4 On 27 May 1999 the intervener filed a notice of opposition to registration of the mark applied for, based on, inter alia, the figurative mark No 1 274 743, registered in the United Kingdom on 25 July 1997 for services falling within Class 36 of the Nice Agreement, corresponding to the following description: ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’. The earlier mark is as follows:
5 The opposition was based on, inter alia, the relative ground for refusal provided for in Article 8(1)(b) of Regulation No 40/94 and, following restrictions effected before the Opposition Division, was directed against services relating to ‘financial affairs; monetary affairs’ within Class 36 of the Nice Agreement and covered by the mark applied for.
6 The Opposition Division allowed the intervener a period expiring on 16 October 2000 to submit observations, evidence and arguments in support of its opposition, which the intervener did by letter dated 13 October 2000.
7 Following several extensions of time, Citicorp submitted its observations in reply to those of the intervener, on 28 May and 26 June 2001. The intervener reacted to those observations on 13 September 2001.
8 On 28 September 2001 the Opposition Division informed the parties that no further observations could be submitted to it. Despite that communication, on 11 February 2002 Citicorp submitted further observations, in which it stated that the judgment of the High Court of Justice of England and Wales (Chancery Division) of 5 December 2001 relating to opposition proceedings between the intervener and Citicorp (‘the High Court judgment’) and the case in which it was delivered were not relevant to the opposition filed before OHIM, contrary to what the intervener claimed. The Opposition Division refused to take account of those observations on the ground that they had been filed out of time.
9 On 30 July 2002, the Opposition Division upheld the opposition and rejected the application for a Community trade mark in so far as it covered the services relating to ‘financial affairs; monetary affairs’. The Opposition Division concluded that there was a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation No 40/94, between the mark applied for and the earlier mark.
10 On 19 September 2002 Citicorp filed an appeal against the decision of the Opposition Division. On 29 November 2002 Citicorp filed a statement of the grounds of appeal, to which the intervener replied by way of observations dated 30 January 2003.
11 Citicorp submitted to the Board of Appeal, on 5 March 2003, further observations, which it maintains to have been a response to the facts and arguments submitted by the intervener for the first time before the Board of Appeal. A copy of the observations submitted by Citicorp to the Opposition Division on 11 February 2002 (see paragraph 8 above), was added to those further observations.
12 By decision of 18 May 2004 (‘the contested decision’), the First Board of Appeal dismissed Citicorp’s appeal. It refused to take into consideration certain observations of the parties, inter alia the observations submitted by Citicorp on 5 March 2003. It took the view in this respect that it was necessary to take account of the judgment of the High Court and of the applicant’s observations in relation to that judgment only in so far as that judgment had been relied on by the intervener, namely as evidence for the claim that the earlier mark was well known.
13 As regards the substantive points at issue, the Board of Appeal considered, first of all, that the relevant public comprised average consumers within the United Kingdom and that the services in question were identical. The Board found, next, that, each taken as a whole, the mark applied for and the earlier mark were similar, the term ‘link’ being their dominant element. Similarly, the Board of Appeal found that the term ‘link’ was not directly descriptive of the services in question and in any event was more strongly distinctive than the element ‘world’. On the other hand, it found that the claim that the earlier mark was well known could not be taken into account since it had been relied on for the first time before it. In conclusion, the Board of Appeal took the view that there was a likelihood of confusion between the earlier mark and the mark applied for.
14 By letter sent to OHIM on 3 August 2004, that is to say, two days before the present action was brought, Citicorp declared that it ‘[was] restrict[ing] the specification of goods and services’ covered by the mark applied for, by replacing within Class 36 of the Nice Agreement the original description ‘financial affairs; monetary affairs’ with ‘financial affairs, namely electronic and paper-based banking services, all relating to multi-currency payment systems; all included in Class 36’. In a letter sent to Citicorp dated 8 November 2004 and headed ‘Confirmation of a restriction of goods or services in a Community trade mark application (Article 44(1) of the Regulation)’, OHIM indicated that it ‘hereby confirms that the specification of goods and/or services of the above application has been amended to read as follows …’.
15 With effect from 1 August 2005, Citicorp merged with the applicant, Citigroup, Inc., the latter thus becoming the universal successor of Citicorp. On 14 November 2005, on the application of Citigroup, Inc., the change of ownership of the Community trade mark application was registered by OHIM.
Forms of order sought
16 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
17 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
18 The applicant raises two pleas in law, alleging, first, an infringement of Articles 73 and 74 of Regulation No 40/94 and, second, an infringement of Article 8(1)(b) of that regulation.
19 The parties also disagree on the consequences to be drawn for this dispute from the restriction of the services specified in the trade mark application (see paragraph 14 above). Since the Court finds that that question is capable of influencing the examination of the pleas raised by the applicant, it is necessary to start by examining that question.
The restriction of the services specified in the trade mark application
Arguments of the parties
20 The applicant submits that, following the restriction of the services specified in the trade mark application, there is no longer any need to give judgment in this case, which should be remitted to the Board of Appeal for a fresh decision on the basis of the restricted list of services. It submits in this respect that that restriction is comparable, in terms of its procedural consequences, to the withdrawal of an opposition. The withdrawal of an opposition renders inoperative OHIM’s decision relating to the opposition. The opposite result amounts, in its view, to precluding the application of Article 44(1) of Regulation No 40/94.
21 OHIM and the intervener submit that the restriction of the services at issue cannot be taken into account, since the Court is required to examine the legality of the contested decision in the light of the factual and legal context as it existed before the Board of Appeal. They maintain in this respect that the restriction carried out by the applicant is capable of changing the subject‑matter of the dispute as regards the examination of the similarity of the services at issue.
Findings of the Court
22 It must first be observed that, contrary to what the applicant submits, it is still necessary to give judgment in this case. Since, first, the applicant did not remove from the list of goods and services covered by the mark applied for all the services covered by the opposition and since, second, the intervener maintained that opposition notwithstanding the restriction effected by the applicant, the parties remain in dispute as to the likelihood of confusion between the mark applied for and the earlier mark with regard to certain services falling within Class 36. Consequently, the contested decision, which deals with that dispute, has not been rendered inoperative and it is therefore necessary to proceed to judgment.
23 It should next be observed that, under Article 44(1) of Regulation No 40/94, an applicant for a Community trade mark may at any time restrict the list of goods or services covered in the trade mark application. In the present case the applicant carried out such a restriction by its letter sent to OHIM on 3 August 2004.
24 As regards the effect of that restriction on this case, it should be borne in mind that the purpose of actions before the Court of First Instance under Article 63(2) of Regulation No 40/94 is to obtain a review of the legality of decisions of the Boards of Appeal, which must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 17, and Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 16). That precludes in principle taking into account elements which have come into existence after the Board of Appeal’s decision has been given, such as the restriction of the services covered by the mark applied for at issue in the present case (see, to that effect, Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 55, and the order of 15 November 2006 in Case T‑366/05 Anheuser‑Busch v OHIM – Budĕjovický Budvar (BUDWEISER), not published in the ECR, paragraphs 40 to 48).
25 However, for reasons of procedural economy, the Court may take account of a restriction of the goods and services covered in the trade mark application on condition that that restriction is not such as to change the factual context to which the Board of Appeal’s examination related as regards the goods or services not affected by that restriction.
26 Thus, a restriction carried out in accordance with Article 44(1) of Regulation No 40/94 subsequent to the adoption of the contested decision may be taken into consideration by the Court where the applicant for the trade mark limits itself strictly to reducing the subject‑matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application (see, to that effect, Case T‑194/01 Unilever v OHIM (ovoid tablet) [2003] ECR II‑383, paragraphs 13 to 17, and Case T‑289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II‑2851, paragraphs 13 to 15). Since, under Article 43(5) of Regulation No 40/94, the Board of Appeal must assess the likelihood of confusion in relation to each of the goods and services in respect of which the Community trade mark has been applied for, but is not, however, required to carry out an analysis of each of the goods or services forming part of a category included in the list (order in BUDWEISER, paragraph 35), the mere withdrawal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, capable of changing the factual context to which the Board of Appeal’s examination related as regards the goods and services not affected by that restriction.
27 Where, on the other hand, that restriction leads to a change in the subject‑matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the contested decision, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (see, to that effect, Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraphs 20 to 22).
28 In the present case, the restriction effected by the applicant consists, first, in the withdrawal from the list of services covered in the trade mark application of ‘monetary affairs’ and, second, in the specification of the category ‘financial affairs’ by the addition of the clarification ‘namely electronic and paper-based banking services, all relating to multi-currency payment systems; all included in Class 36’.
29 In the light of the foregoing, the withdrawal of the category ‘monetary affairs’ may be taken into consideration.
30 On the other hand, as alluded to by the parties at the hearing, the clarification made to the category ‘financial affairs’ is capable of influencing the examination of the similarity of that category of services with the services covered by the earlier mark and changes, consequently, the factual context of the dispute as it was brought before the Board of Appeal. Consequently, that clarification may not be taken into consideration by the Court.
31 In the light of all the foregoing, it must be held that, for the purposes of the present dispute, the services covered by the mark applied for, which fall within Class 36 and are concerned by the opposition, correspond to the description ‘financial affairs’.
The first plea: infringement of Articles 73 and 74 of Regulation No 40/94
32 In its first plea the applicant puts forward two complaints. It submits, first, that the Board of Appeal incorrectly refused to take into consideration certain material provided to it. Second, it submits that the Board of Appeal took into consideration certain facts which were not raised by the parties.
The first complaint: the Board of Appeal refused to take account of certain material provided by the applicant
– Arguments of the parties
33 The applicant asserts that the Board of Appeal infringed Article 74(2) of Regulation No 40/94 in refusing to exercise its discretion under that provision as to the question whether certain material provided by the parties had to be taken into consideration.
34 Thus, the Board of Appeal did not take into consideration the High Court judgment, or the analysis thereof by the applicant, sent first to the Opposition Division, on 11 February 2002, and then to the Board of Appeal. The applicant argues in this respect that the High Court judgment could not have been produced during the first exchange of observations before the Opposition Division because it was delivered only on 5 December 2001, which is subsequent to the date on which the Opposition Division informed the parties that it would not accept any further observations. Further, before the Board of Appeal, the two parties made reference to the High Court judgment, and indeed the intervener presented a copy of it to OHIM. Yet, despite this explicit reliance, the Board of Appeal refused to take the judgment into consideration, preferring to refer to the decision of the Hearing Officer of the United Kingdom Trade Marks Registry (an official of the Registry who has jurisdiction at first instance in opposition proceedings) of 4 May 2001 (‘the Hearing Officer’s decision’) which was the subject of the appeal before the High Court of Justice of England and Wales (Chancery Division).
35 The Board of Appeal also refused to take into consideration the documents annexed to the applicant’s pleadings of 29 November 2002 relating to the earlier Community and national trade marks containing the element ‘link’. Those documents, which came from easily accessible public sources, served only to complement the items of evidence already lodged during the opposition proceedings in order to demonstrate the low distinctiveness of the element ‘link’. The applicant adds in this respect that the references to those documents in the contested decision cannot lead to the conclusion that they were actually analysed and taken into account by the Board of Appeal.
36 Lastly, the Board of Appeal refused to assess, except in part, the applicant’s observations of 5 March 2003, which were, however, of a legal nature and were submitted in response to the new facts and arguments put forward by the intervener in its observations of 30 January 2003.
37 OHIM submits that the Board of Appeal did not err. It maintains that the contested decision sets out the reasons why the High Court judgment and the applicant’s analysis thereof, together with the applicant’s observations of 5 March 2003, were not taken into consideration. The documents relating to the earlier Community and national trade marks containing the element ‘link’ were, by contrast, analysed by the Board of Appeal.
38 The intervener endorses the position of OHIM in observing that the Board of Appeal properly exercised its discretion under Article 74(2) of Regulation No 40/94. It adds that the material which the Board of Appeal refused to take into consideration was in any event immaterial to the outcome of the case.
– Findings of the Court
39 Under Article 74(2) of Regulation No 40/94 OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned. According to the case‑law of the Court of Justice, it results from that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the periods to which such submission is subject under the provisions of Regulation No 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 42).
40 However, a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account. Where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, paragraphs 43 and 44).
41 It is in the light of the foregoing that it is necessary to examine whether the Board of Appeal infringed Article 74(2) of Regulation No 40/94.
42 In this respect, it should be noted, first, that, at paragraph 21 of the contested decision, the Board of Appeal stated that it would take account of the High Court judgment and of the applicant’s observations relating thereto to the extent that that judgment was relied on by the intervener, that is to say, to the extent that it concerns the question whether the earlier mark was well known in the United Kingdom. However, at paragraph 39 of that decision, the Board of Appeal considered that it could not take account of the documents submitted by the intervener with a view to demonstrating the reputation of the earlier mark since those documents had been produced for the first time before the Board.
43 Thus, it appears that the reason why the Board of Appeal did not take into consideration the High Court judgment and the applicant’s observations relating thereto is connected to the fact that they had become devoid of purpose, in so far as the Board of Appeal had refused to take into consideration the items of evidence submitted by the intervener with a view to demonstrating the reputation of the earlier mark in the United Kingdom. The applicant’s observations had been submitted only in response to those of the intervener. Thus, the rejection of the applicant’s observations relating to the High Court judgment was not motivated by the late submission of that material and did not therefore result from the exercise of the power conferred on the Board of Appeal by Article 74(2) of Regulation No 40/94. Furthermore, the Board of Appeal’s approach is consistent with the position of the applicant itself, which claimed that, on account of the specific circumstances of the case in which it was delivered, the High Court judgment was not relevant in the proceedings before OHIM. It follows that the applicant’s complaint must be rejected to the extent that it concerns the High Court judgment and the observations relating thereto.
44 As regards, next, the documents relating to the earlier Community and national trade marks containing the element ‘link’, it should be noted that, at paragraph 39 of the contested decision, the Board of Appeal initially excluded them from its examination on account of their late submission, but subsequently did examine them. It follows from the last sentence of paragraph 39 of the contested decision, which states the reasons why the documents submitted by the applicant are not capable of establishing that there is no likelihood of confusion between the signs at issue, that, contrary to what the applicant claims, the Board of Appeal did in fact carry out an examination of those documents. The applicant’s complaint must therefore be rejected to the extent that it concerns those documents.
45 Lastly, as regards the applicant’s observations of 5 March 2003, the Board of Appeal stated, at paragraphs 19 to 22 of the contested decision, that, except so far as concerned the High Court judgment, these related to questions which had been argued previously by the parties, contrary to what the applicant claimed, and it concluded that they should not be taken into account. That consideration implies that the Board of Appeal took the view that the applicant’s new observations could be of only limited relevance, given the absence of new elements in the dispute, and that, accordingly, the importance of the proper conduct and efficiency of the proceedings should lead to its refusing to take those observations into consideration. It follows that the Board of Appeal exercised its discretion as regards the question whether the observations of 5 March 2003 should be taken into account, and that it stated reasons, albeit briefly, for its conclusion that that was not the case.
46 To the extent that the applicant contests the merits of that conclusion, it must be stated that the observations of 5 March 2003 are essentially limited to repeating the arguments relied on by the applicant in its earlier observations submitted to OHIM or to making reference to those arguments. It does not therefore appear that the Board of Appeal erred in taking the view that, except as regards the High Court judgment, those observations did not relate to new elements and should not therefore be taken into consideration.
47 It follows that the first complaint must be rejected.
The second complaint: the Board of Appeal took into consideration certain material not relied on by the parties
– Arguments of the parties
48 In its second complaint, the applicant submits that the Board of Appeal relied on facts which were not well known and which were neither submitted nor substantiated by either party. The Board of Appeal thus infringed Article 73 and Article 74(1) of Regulation No 40/94.
49 The applicant’s claims relate to the following matters referred to in the contested decision:
– the assertion that, in the term ‘WORLDLINK’, the element ‘world’ is perceived as an adjective;
– the fact that the term ‘world’ has a given meaning in the financial services sector;
– the possibility of using geographically defined ‘sub‑ or superbrands’ in the financial services sector, with the result that the element ‘world’ in ‘worldlink’ is perceived as a geographical specification;
– the statement that the word ‘world’, meaning ‘global’, is frequently used in the financial services sector.
50 OHIM and the intervener contest the merits of the applicant’s claims.
– Findings of the Court
51 According to the case‑law, the restriction brought about by Article 74(2) of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, OHIM’s examination is restricted to the facts, evidence and arguments provided by the parties and the relief sought, does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 29).
52 In particular, the Board of Appeal may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, to that effect, Case T‑402/02 Storck v OHIM (Shape of a sweet wrapper) [2004] ECR II‑3849, paragraph 58).
53 In the present case, first, the interpretation in English of the word ‘world’, when it precedes a noun, as meaning ‘global’ and qualifying geographically the noun at issue is a fact which is likely to be known by anyone and may be learnt from sources accessible to everyone. Second, the applicability of that interpretation to the financial services sector, the frequent use of the term ‘world’ in that sector and the possibility that operators active in that area may use geographic ‘sub‑ or super‑brands’ are well‑known facts arising from practical experience generally acquired from the marketing of financial services. Consequently, the Board of Appeal did not err in taking those facts into consideration. It is therefore necessary to reject the second complaint and, therefore, that plea in its entirety.
The second plea: infringement of Article 8(1)(b) of Regulation No 40/94
54 In its second plea, the applicant submits that the Board of Appeal erred in finding that there is a likelihood of confusion between the marks at issue. Its arguments concern the similarity of the services at issue, the descriptive nature of the element ‘link’, the similarity of the signs at issue and certain factors which are such as to preclude the likelihood of confusion in the circumstance of the present case.
The similarity of the services
– Arguments of the parties
55 The applicant states that, following the restriction of services covered by the mark applied for, the services covered by the marks at issue are no longer identical, but similar.
56 OHIM and the intervener take the view that, since the restriction of services covered by the mark applied for cannot be taken into consideration, the services are identical.
– Findings of the Court
57 In the present case, the services to be compared are ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’ covered by the earlier mark and, in respect of the mark applied for, as is apparent from paragraph 31 above, ‘financial affairs’.
58 The services protected by the earlier mark are all financial services, and therefore belong to the general category ‘financial affairs’ covered by the mark applied for. Consequently, the Court finds that the services at issue are identical.
The descriptive nature of the element ‘link’
– Arguments of the parties
59 The applicant submits that the term ‘link’ is devoid of distinctive character or at least is highly allusive in respect of the services for which the earlier mark is registered. The financial services such as those covered by the earlier mark are usually provided by means of an electronic network, composed of a large number of connections between its various players. The term ‘link’, meaning ‘that which connects’, is descriptive of this aspect of the financial services. The Board of Appeal therefore erred in reaching the opposite conclusion.
60 In this respect, the applicant claims, first of all, that the Board of Appeal should have taken into consideration the judgment in Case T‑345/99 Harbinger v OHIM (TRUSTEDLINK) [2000] ECR II‑3525, which found that the term ‘link’ was descriptive and thus devoid of distinctive character. That finding, based on the ordinary meaning of ‘link’ and concerning services comparable to the services covered by the earlier mark, can be transposed to the present proceedings.
61 The applicant observes, next, that trade mark registration authorities in the Community are sceptical as to the distinctiveness of the term ‘link’.
62 The applicant argues, lastly, that there are numerous marks and applications for marks which include the element ‘link’, both in the United Kingdom Register and in that maintained by OHIM. This fact illustrates the low level of distinctiveness of that element.
63 OHIM observes that distinctiveness must be assessed in respect of the goods and services covered. It argues that the TRUSTEDLINK judgment cannot be transposed to the present case since the services concerned are not services of communication. Unlike in the case of those services, the term ‘link’ does not designate an essential characteristic of financial services, such as those covered by the earlier mark, and is therefore not directly descriptive, but at most allusive.
64 In response to the claim that it is sceptical as to the distinctiveness of the element ‘link’, OHIM states that, of the trade mark applications containing this term and submitted to it, 55 have been rejected, while it has allowed 371, 48 of those being for services included in Class 36 of the Nice Agreement.
65 The intervener endorses the arguments set out in the contested decision.
– Findings of the Court
66 According to the case‑law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see Case T-153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II-1677, paragraph 35 and the case‑law cited).
67 As regards the question whether the element ‘link’ in relation to ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’ may be descriptive in nature, it is not contested in the present case that ‘link’ will be perceived by the relevant public as meaning ‘that which connects’. Further, it does in fact appear, as the applicant submits, that financial services are usually provided by means of an electronic network which connects the various players and consists of a series of connections.
68 However, on the part of the relevant consumers, namely all consumers in the United Kingdom, the purpose of the financial services covered by the earlier mark is to enable them to manage their financial resources, to dispose of them and to obtain information in relation thereto, and not to create and maintain connections. Consequently, that public will not perceive the term ‘link’ as being directly descriptive of one of the aspects of the financial services at issue, but at most as being allusive, given that communication links are used in the provision of those services.
69 Further, as regards the applicant’s reliance on TRUSTEDLINK, it must be pointed out that that judgment concerned information technology goods and electronic commerce and electronic communications services. Thus, the purpose of those goods and services was to make possible an electronic transaction or communication, by ensuring the creation and maintenance of communication links, which justifies the element ‘link’ being found to be descriptive in relation to them. However, as noted in the previous paragraph, in the perception of the relevant public, the purpose of the services covered by the earlier mark is not to create communication links, thus rendering the reliance on TRUSTEDLINK irrelevant in the present case.
70 As regards the allegedly sceptical approach of the trade mark registration authorities in relation to the distinctive nature of the element ‘link’, it must be recalled, as a preliminary point, that OHIM and, as the case may be, the Community judicature are not bound by decisions taken at Member State level, which may however be taken into consideration in the assessment of an application for registration of a Community trade mark (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47, and Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 52). Similarly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous decision‑making practice of those boards (STREAMSERVE, paragraph 66).
71 Further, the material submitted by the applicant is not sufficient to establish that the national authorities and OHIM would systematically refuse to recognise the distinctive character of the element ‘link’ in respect of financial services such as those at issue in the present case. Thus, in the United Kingdom, the earlier mark was described as a ‘valid allusional mark’ in the Hearing Officer’s decision which gave rise to the High Court judgment, which demonstrates a nuanced approach by the Trade Marks Registry. As regards the Community system, the figures submitted by OHIM, the accuracy of which has not been disputed, show that OHIM does not generally consider the element ‘link’ to be devoid of distinctive character, including in relation to services in Class 36 of the Nice Agreement.
72 As regards the claim that there is a large number of national and Community marks containing the element ‘link’, the material submitted by the applicant, which consists of extracts from trade mark databases, does not make it possible to verify whether that fact means that that element would in fact be perceived by the relevant public as being devoid of distinctive character in relation to the services covered by the earlier mark. The extracts submitted do not generally contain descriptions of the goods and services covered by the various marks listed, those extracts merely indicating the class numbers in the Nice Agreement. Since the distinctive character of an element is capable of varying according to the goods and services, and even within one class of the Nice Agreement, that information is not sufficient. Similarly, in the absence of further information, the marks containing elements other than ‘link’ included in the extracts are not relevant, given that those other elements are capable of contributing in significant measure to the overall distinctive character of the mark. Lastly, the extracts do not indicate whether the marks at issue were registered on account of their intrinsic distinctive character or on account of the distinctive character acquired by their use.
73 In the light of all the foregoing, it must be concluded that the Board of Appeal did not err in finding, at paragraph 51 of the contested decision, that the element ‘link’ is not immediately descriptive of the services covered by the earlier mark but merely allusive in relation to them.
The similarity of the signs
– Arguments of the parties
74 The applicant first challenges the conclusion that the term ‘link’ is the element of the earlier mark and of the mark applied for which is distinctive and dominant. The Board of Appeal, in its analysis of the earlier mark, disregarded both its figurative element and the fact that the element ‘link’ was only slightly distinctive. In the case of the mark applied for, the Board incorrectly found that that element was dominant solely because the distinctive character of the other element, ‘world’, was even less significant.
75 The applicant submits next that the sign WORDLINK will be perceived by the relevant public as a whole and will not be dissected into two elements ‘world’ and ‘link’. On that premiss, the applicant submits that the mark applied for and the earlier mark display significant visual and phonetic differences. On this point, contrary to what OHIM had assumed, the usual pronunciation of ‘worldlink’ places the stress on the first syllable. Consequently, the sole similarity between the signs at issue consists of a slight conceptual similarity, which is, however, counterbalanced by the descriptive character of the element ‘link’. The applicant concludes from this that the signs at issue in the present case cannot be confused or associated by consumers.
76 OHIM and the intervener endorse the Board of Appeal’s finding that the element ‘link’ is the dominant element and the main element making it possible to identify the earlier mark and the mark applied for. Accordingly, they take the view that the two signs at issue are similar.
– Findings of the Court
77 According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case‑law cited).
78 In this respect, an element of a mark may be considered dominant if it is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 33). When assessing the dominant character of one or more components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (MATRATZEN, paragraph 35).
79 As regards the existence of dominant elements in the two signs at issue, it must be pointed out that the element ‘link’ is the only word element of the earlier mark, in which it occupies a central position and is represented in large characters. In addition, the figurative element, positioned to the right of the word element of the earlier mark, to which the applicant refers, represents, in a stylised manner, two intertwined circles forming a link. Accordingly, that element will be perceived by the relevant public only as an illustration of the conceptual content of the word element ‘link’. From this it must be concluded, as the Board of Appeal did, that the earlier mark is dominated by the element ‘link’.
80 As regards the mark applied for, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25) the fact remains that, when perceiving a word sign, the consumer will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 51).
81 Consequently, contrary to what the applicant claims, the relevant public, which is English‑speaking, will break down the mark applied for into two elements, ‘world’ and ‘link’, which are common words in the English language.
82 Visually and phonetically, the weight of the two elements cited above in the perception of the relevant public is comparable, since the impact of the element ‘world’ is slightly more pronounced on account of its position at the beginning of the mark applied for. Conceptually, however, in accordance with the rules of English grammar, the element ‘world’ will be perceived by the relevant consumers, on account of its position at the beginning, as an adjective meaning ‘global’ and qualifying the element ‘link’. Thus, the conceptual weight of the element ‘world’ will be less than that of the element ‘link’, since the first element is subordinate to the second one. Moreover, on account of its meaning, the element ‘world’ will be perceived as being descriptive of one aspect of the services covered, since financial services are often provided at a global level, whilst the element ‘link’ is at most allusive in relation to those services, as was found at paragraph 68 above. It follows that, conceptually, the element ‘link’ is significantly more important in the overall impression given by the mark applied for. However, its distinctive character is not sufficient to render the other element negligible, which means that it cannot be regarded as the dominant element of that mark.
83 In the light of the foregoing, it must be noted that, visually and phonetically, the signs at issue display a certain degree of similarity on account of their common element ‘link’. That finding is not called in question by the applicant’s argument that the pronunciation of ‘worldlink’ places the stress on the first syllable. That fact is not such as to render the element ‘link’ imperceptible for the relevant consumer. However, the visual and phonetic similarity owing to the common element ‘link’ is weakened, without being completely neutralised, by the presence of the element ‘world’ positioned at the beginning of the mark applied for. Consequently, the signs at issue are slightly similar visually and phonetically.
84 Conceptually, the earlier mark will be perceived by the relevant public as meaning a ‘link’, whilst the mark applied for will be perceived as meaning ‘global link’. Those two interpretations are very close in so far as they are based on the same concept and in so far as they are distinguished only by the addition of a geographical qualifier, which will be perceived as describing the fact that the relevant services are provided at a global level. The two marks at issue are therefore very similar conceptually.
85 Given, first, their slight visual and phonetic similarity and, second, their strong conceptual similarity, the Board of Appeal did not err in finding in essence, at paragraph 46 of the contested decision, that the signs at issue, assessed as a whole, display a certain degree of similarity.
The likelihood of confusion
– Arguments of the parties
86 In the applicant’s submission, the low similarity between the signs at issue cannot lead to a likelihood of confusion. The finding of such a likelihood unfairly grants the intervener a monopoly of use of the word ‘link’.
87 The existence of a likelihood of confusion in this case is even less probable when, for several years, the marks LiNK and WORLDLINK have peacefully coexisted in the United Kingdom Trade Marks Registry and on the United Kingdom market, without engendering any confusion among consumers or any legal dispute.
88 The applicant further observes that the fact that the Trade Marks Registry, which examines ex officio whether there are relative grounds for refusal, did not consider that there was a similarity between the marks LiNK and WORLDLINK which was capable of causing a likelihood of confusion, is highly relevant evidence which militates against OHIM’s acceptance of such a likelihood. The Board of Appeal did not take that matter into consideration, despite the fact that the case examined by the Trade Marks Registry and the present dispute relate to the same marks, the same parties and the same territory.
89 OHIM submits, first, that the Board of Appeal’s conclusion that there is a likelihood of confusion is justified by the similarity which exists, on the one hand, between the services at issue, and on the other, between the signs at issue. It goes on to observe that, because of its construction, ‘worldlink’ is so closely related to ‘link’ that the relevant public is likely to attribute a common origin to identical or similar services covered by the two marks at issue, notwithstanding the allusive character of the element ‘link’.
90 OHIM submits, next, that the argument based on the coexistence between LiNK and WORLDLINK cannot be decisive, since, first, the coexistence of two marks on a national market does not, a priori, exclude the possibility of a likelihood of confusion and since, second, such coexistence between the earlier mark and the national mark WORLDLINK has not been sufficiently established in the present case. Further, there is a difference between the services covered by the mark applied for and those covered by the national mark WORLDLINK.
91 Lastly, as regards the fact that the Trade Marks Registry took the view that there was no likelihood of confusion between the national mark WORLDLINK and the earlier mark, OHIM points out that it is not bound by the decisions of national authorities.
92 The intervener endorses OHIM’s arguments, stating that no opposition was brought by the intervener before the Trade Marks Registry in the proceedings to which the applicant refers and that, as a result, the Registry was not invited to make any finding as to the existence of a likelihood of confusion raised by a third party. The intervener also states that, when the decision relied on by the applicant was adopted, the intervener was not the holder of any earlier rights which could have been taken into consideration by the Trade Marks Registry, whereas the intervener is currently the holder of a number of common law rights and earlier trade marks which were taken into account in recent proceedings.
– Findings of the Court
93 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.
94 According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHMI – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and PICARO, paragraphs 49 and 50 and the case‑law cited).
95 In the present case, it follows from the examination carried out above that the relevant services are identical and that the signs at issue display a certain degree of similarity, since the mark applied for differs from the dominant element in the earlier mark only through the addition of an element which will be perceived by relevant consumers as a descriptive geographical qualifier.
96 Accordingly, it must be held that there is a likelihood of confusion, notwithstanding the fact that the earlier mark is to a certain extent allusive. Although that fact means, as the applicant submits, that the intrinsic distinctive character of the earlier mark is limited, and although it is, consequently, likely to reduce that likelihood (see, to that effect, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24), it is not such as to preclude it in the circumstances of the present case.
97 That finding is not called in question by the arguments relied on by the applicant.
98 Thus, in the first place, the finding that there is a likelihood of confusion in the present case does not amount to conferring on the intervener a monopoly on the use of the element ‘link’. This case concerns only, first the earlier mark LiNK and the mark applied for WORLDLINK and, second, the services covered by those two marks. Given that the likelihood of confusion must be assessed by reference to all factors relevant to the circumstances of the case, the finding that there is a likelihood of confusion in this case does not prejudge the outcome of other cases involving other trade mark applications or other financial services.
99 In the second place, it should be noted that, in its application, the applicant did not set out in detail the argument relating to the alleged peaceful coexistence between the earlier mark and the applicant’s national mark WORLDLINK, and nor did it submit to the Court evidence establishing, to the requisite standard, that coexistence. In addition, as OHIM stated, the peaceful coexistence of two marks may result from reasons other than the absence of likelihood of confusion between them (see, to that effect, Case T-31/03 Grupo Sada v OHMI – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86), which means that that fact is not such as to preclude, of itself, such a likelihood. Lastly, it must be pointed out that the applicant’s national mark WORLDLINK is registered for ‘electronic and paper‑based banking services, all relating to multi-currency payment systems’. Although those services fall within the category ‘financial affairs’ covered by the mark applied for and against which the opposition is directed, they are none the less considerably more specific than the services included in that category as a whole, since that category also includes services displaying different characteristics. Since those other services are not covered by the national mark WORLDLINK, the coexistence of that mark with the earlier mark is not relevant in itself for assessing, to the extent that those services are concerned, the likelihood of confusion between the mark applied for and the earlier mark.
100 In the third place, and lastly, the difference between the services covered by the mark applied for and those covered by the national mark WORLDLINK, established in the previous paragraph, renders irrelevant for this case the alleged position of the Trade Marks Registry in relation to that mark.
101 In the light of all the foregoing, it must be held that the Board of Appeal did not err in finding that there is a likelihood of confusion between the mark applied for and the earlier mark. It is therefore necessary to reject the second plea and thus to dismiss the action in its entirety.
Costs
102 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Citigroup, Inc. to pay the costs.
Meij | Pelikánová | Papasavvas |
Delivered in open court in Luxembourg on 27 February 2008.
Registrar | | Acting President |