JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
29 October 2009 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark Agile – Earlier Community and national word marks Aygill’s – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑386/07,
Peek & Cloppenburg, established in Hamburg (Germany), represented by T. Dolde, A. Renck and V. von Bomhard, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen, and subsequently by R. Pethke, Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Redfil, SL, established in Barcelona (Spain), represented by C. Hernández Hernández, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 26 July 2007 (Case R 1324/2006-2), relating to opposition proceedings between Peek & Cloppenburg and Redfil, SL,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, M. Prek (Rapporteur) and V.M. Ciucă, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 4 October 2007,
having regard to the response of OHIM lodged at the Registry on17 January 2008,
having regard to the response of the intervener lodged at the Registry on 15 January 2008,
further to the hearing on 30 April 2009,
gives the following
Judgment
1 On 10 April 2002, the intervener Redfil, SL, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the following figurative sign:
3 The goods for which registration was sought fall within Classes 18, 25 and 28 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond to the following description:
– Class 18: ‘Bags, rucksacks’;
– Class 25: ‘Sport footwear, shirts, vests, jackets, pullovers, socks, trousers, hats, berets, visors’;
– Class 28: ‘Golfbags, golfing gloves, golf clubs, games balls’.
4 The application for registration was published in Community Trade Marks Bulletin No 34/2003 of 22 April 2003.
5 On 18 July 2003, the applicant, Peek & Cloppenburg, gave notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against the registration of the mark applied for in respect of all the goods referred to in paragraph 3 of the present judgment.
6 The opposition was based on various earlier national marks and the earlier Community word mark Aygill’s, registered on 5 August 1994, in respect of goods falling within Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28 of the Nice Agreement. That opposition was based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
7 By decision of 11 August 2006, the Opposition Division granted the opposition, holding that there was a likelihood of confusion between the earlier Community trade mark and the mark applied for.
8 On 10 October 2006, the intervener filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
9 By decision of 26 July 2007 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the Opposition Division’s decision and rejected the opposition in its entirety on the ground that the conditions of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) were not fulfilled. In the light of the fact that the earlier national registrations and the earlier Community registration were identical, the Board of Appeal based its decision exclusively on the latter. First, as regards the comparison of the goods in question, the Board of Appeal held, in essence, that the goods designated by the mark applied for, falling within Classes 18, 25 and 28 of the Nice Agreement, were identical to some of the goods designated by the earlier Community trade mark falling within the same classes. Secondly, as regards the comparison of the signs at issue, the Board of Appeal held that they were visually similar only to a low degree. Phonetically, it held that they were not similar in English, but were similar in French. Conceptually, the Board of Appeal held that there was no similarity between the signs at issue, since the word ‘aygill’s’ has no meaning either in English or French or in any other European Community language and would be understood as a reference to either a family name or a place name. Thirdly, as regards the global assessment of the likelihood of confusion, the Board of Appeal held, in essence, that, despite the inherently distinctive character of the earlier mark and the identity of the goods in question, there was no likelihood of confusion between the marks at issue inasmuch as the signs at issue, notwithstanding their phonetic similarity in French, were visually similar only to a low degree. In this regard, the Board of Appeal held that the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that the relevant public, when making a purchase, usually perceives the mark designating those goods visually.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
14 It claims that the Board of Appeal was wrong to exclude the existence of a likelihood of confusion. OHIM and the intervener contend that the Board of Appeal was correct to hold that there is no such likelihood.
15 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier mark, the mark applied for shall not be registered if because of its identity with or similarity to the earlier 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 mark is protected.
16 In the present case, the protection of the earlier mark extends to the entire Community. Therefore, it is necessary to consider the consumer’s perception of the marks at issue for the goods and services in question throughout the entire territory of the Community. With regard to the nature of the goods in question, it should be noted that they are intended for the general public and that, therefore, the relevant public consists of average consumers.
17 Furthermore, even if Article 8 of Regulation No 40/94 does not contain a provision similar to that of Article 7(2) of that regulation (now Article 7(2) of Regulation No 207/2009), to the effect that an application to register a trade mark may be refused where an absolute ground for refusal exists in part of the Community, that principle should, in view of the unitary character of the Community trade mark laid down in Article 1(2) of Regulation No 40/94 (now Article 1(2) of Regulation No 207/2009), be considered to apply, by analogy, also to the case of a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation No 40/94. It follows that the registration must be refused even if the relative ground for refusal exists only in a part of the Community (Case T-355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-791, paragraphs 35 and 36).
18 According to established case-law, the likelihood of confusion on the part of the public, which is defined as 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, must be assessed globally, taking into account all factors relevant to the circumstances of the case (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 25 and 26).
19 That global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular the similarity between the marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, cited in paragraph 18, paragraph 17, and Fifties, cited in paragraph 18, paragraph 27).
20 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25).
21 It is in the light of those considerations that it is necessary to ascertain whether the Board of Appeal was correct to hold that there is no likelihood of confusion between the earlier mark Aygill’s and the mark applied for Agile.
Comparison of the goods
22 It is not in dispute that the goods in question are identical, as the Board of Appeal found in the contested decision, and is not contested by the parties.
Comparison of the signs
23 According to established case-law, two trade marks are similar when, from the point of view of the relevant public, there is an at least partial correspondence between them with regard to one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and judgment of 26 January 2006 in Case T-317/03 Volkswagen v OHIM – Nacional Motor (Variant), not published in the ECR, paragraph 46).
24 First, with regard to the visual comparison of the signs at issue, the Board of Appeal found only a low degree of similarity between the earlier word mark and the mark applied for. The Board of Appeal reached that conclusion because of the differences resulting, from (i) the greater length of the earlier mark, (ii) the existence of elements in the earlier mark, but not in the mark applied for, which are likely to attract the attention of consumers, namely the letter ‘y’, the double ‘ll’ and the apostrophe followed by ‘s’, and, (iii) the particular stylisation of the mark applied for.
25 However, it should be noted that the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore, it should be noted that the mark applied for has only five letters and that the earlier mark has only seven and that, therefore, they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard, it should be recalled that, according to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end (Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 51 and the case-law cited).
26 The difference owing to the fact that the letter ‘y’ is present only in the earlier mark, is not sufficiently significant to put that similarity in question. Perception of that difference by the average consumer would require a detailed comparison of the signs at issue. However, that consumer is deemed only rarely to have a chance to make a direct comparison between the different marks, and must place his trust in the imperfect picture of them that he has kept in his mind (Lloyd Schuhfabrik Meyer, cited in paragraph 20, paragraph 26).
27 Furthermore, the Board of Appeal was wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. As the applicant is correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for (see, to that effect, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 47).
28 It follows from all of the foregoing that the Board of Appeal’s analysis of the visual comparison of the signs at issue was incorrect in so far as it concluded that there was only a low degree of similarity there, there being, at least, an average degree of visual similarity between them.
29 Second, with regard to the phonetic comparison of the signs at issue, the Board of Appeal found that they were, in that respect, similar in French, but different in English. In order to reach that conclusion, the Board of Appeal applied the phonetic rules of each of those languages to the earlier mark.
30 OHIM does not contest the phonetic similarity which could exist in French. The intervener merely notes that ‘the pronunciation of a fancy word like aygill’s is bound to bring doubts to the average French person, which will take it for a foreign name’.
31 It is true that the average French-speaking consumer is likely to associate the use of the apostrophe followed by the letter ‘s’ in the earlier mark with the English language. However, it cannot be deduced from that that he would be able to pronounce the earlier mark in accordance with the rules of English pronunciation. Therefore, the Board of Appeal was correct to compare the two marks at issue by applying the rules of French pronunciation to both of them, and was able to deduce the existence of a phonetic similarity.
32 Third, with regard to the conceptual comparison of the signs at issue, the Board of Appeal held that there was no similarity between them in that respect.
33 The Board of Appeal was correct to point out, in paragraph 30 of the contested decision, that the word ‘agile’ constituting the mark applied for has a clear meaning in several Community languages, including French, in which it means ‘physically or mentally quick’, whereas the same consumer would see in the earlier mark, which is entirely devoid of meaning, reference either to a family name or a place name. It necessarily follows that the signs at issue are conceptually different.
34 It follows from the above that the signs at issue are visually and phonetically similar, but conceptually different.
35 It should be noted that, according to established case-law, conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (see Case T-336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II-4667, paragraph 80 and the case-law cited).
36 However, it must be noted that the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.
37 It should be noted that the goods at issue are sports equipment and clothing and that the word ‘agile’ clearly has a laudatory character with regard to them, either with regard to the characteristics of the goods themselves or to an element connected with the sporting activity for which they are acquired, and therefore have limited distinctiveness in that regard. However, in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for.
38 Therefore, in the circumstances of the present case, it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them.
39 It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them.
Likelihood of confusion
40 The Board of Appeal concluded that there was no likelihood of confusion by holding that, in light of the manner in which the goods in question are marketed, the visual aspect of the marks was decisive at the time of their acquisition, and by finding that there was only a low degree of similarity between the signs in that respect. The Board of Appeal also noted that the conclusion that there is no likelihood of confusion was strengthened in the language territories, where the word ‘agile’ constituting the mark applied for has a conceptual content.
41 It must be held that that conclusion is incorrect.
42 First, it is not certain, contrary to the assertion of the Board of Appeal, in paragraph 39 of the contested decision, that the visual aspect plays a greater role, since the goods in question are marketed in such a way that, normally, when making their purchase, the relevant public’s perception of the mark designating those goods is visual. In that regard, it should be noted that the goods in question in the present case are not all of the same nature as those in question in the case-law cited by the Board of Appeal in support of its analysis, namely Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, and Case T-194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445).
43 Second, and in any event, as is apparent from paragraphs 26 to 28 above, the Board of Appeal was wrong to describe the visual similarity between the signs at issue as being of a low degree.
44 Third, although, for the reasons referred to in paragraphs 34 to 39 above, the signs at issue are globally similar only to a low degree, the Board of Appeal was still wrong to exclude, in paragraph 41 of the contested decision, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, on the part of the relevant public, between the earlier mark and the mark applied for. In light of the case-law cited in paragraphs 17 to 19 above, the fact that the goods in question are identical offsets the low degree of similarity between the signs at issue.
45 The applicant’s single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must therefore be upheld.
46 It follows from all the foregoing that the action must be upheld and the contested decision annulled.
Costs
47 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 OHIM has been unsuccessful, it must be ordered to pay its own as well as the applicant’s costs, in accordance with the form of order sought by the applicant. Since the intervener has been unsuccessful, it must be ordered to bear its own costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 July 2007 (Case R 1324/2006‑2);
2. Orders OHIM to pay the costs incurred by Peek & Cloppenburg;
3. Orders Redfil, SL to bear its own costs.
Delivered in open court in Luxembourg on 29 October 2009.
[Signatures]