JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
14 February 2008 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark GALVALLOY – Earlier national word mark GALVALLIA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑189/05,
Usinor SA, established in Puteaux (France), represented by P. de Candé, and J. Blanchard, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Corus UK Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,
ACTION brought against the decision of the First Board of Appeal of OHIM of 10 February 2005 (Case R 411/2004-1) in respect of opposition proceedings between Usinor SA and Corus UK Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of I. Wiszniewska-Białecka, acting as President, E. Moavero Milanesi and N. Wahl, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 4 May 2005,
having regard to the response of OHIM lodged at the Registry of the Court on 6 October 2005,
having regard to the response of the intervener lodged at the Registry of the Court on 23 September 2005,
further to the hearing on 13 June 2007,
gives the following
Judgment
Background to the dispute
1 On 14 April 1998, the intervener filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The mark for which registration was sought is the word sign GALVALLOY.
3 The goods in respect of which registration was sought are in Class 6 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and are described as follows: ‘Steel sheet and strip, steel sheet and strip having a protective coating’.
4 On 21 June 1999, Sollac filed a notice of opposition to the registration of the mark applied for, relying on the earlier word mark GALVALLIA, registered in France on 13 January 1984 under No 1257354.
5 The goods in respect of which the earlier mark was registered are also in Class 6 of the Nice Agreement and are described as follows: ‘Metals, in particular steel sheets coated with an iron-zinc alloy’.
6 The opposition, based on the relative ground for refusal in Article 8(1)(b) of Regulation No 40/94, was directed against all of the goods covered by the application for registration.
7 By decision of 30 May 2000, the Opposition Division rejected the opposition on the grounds that it was not possible for OHIM to establish whether the earlier mark had actually been renewed, whether it still belonged to the original applicant or whether it had been the subject of a properly registered transfer.
8 On 20 July 2000, Sollac filed an appeal with OHIM against the decision of the Opposition Division.
9 On 2 August 2002, the Second Board of Appeal of OHIM annulled the decision of the Opposition Division and referred the case back to the Opposition Division.
10 On 20 November 2003, Sollac having been wound up, the rights and claims attached to its assets were transferred to the applicant, Usinor.
11 On 25 March 2004, the Opposition Division ruled again on the opposition and allowed it on the ground that there was a likelihood of confusion between the marks at issue on the part of French consumers in respect of all of the goods covered by the opposition.
12 On 25 May 2004, the intervener filed an appeal with OHIM against the decision of the Opposition Division.
13 By decision of 10 February 2005, the First Board of Appeal annulled the decision of the Opposition Division and, consequently, rejected the opposition (‘the contested decision’). In essence, the Board of Appeal found that, despite the identical nature of the goods designated by the marks at issue and a certain visual similarity, the signs in question differed phonetically and had no conceptual link, and therefore there was no likelihood of confusion between the marks at issue on the part of the relevant public, which is composed of particularly attentive professionals. The Board of Appeal also relied on the very low level of distinctiveness of the earlier mark and the characteristics of the international steel market, which is made up of a very limited number of manufacturers.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
15 OHIM contends that the Court should:
– uphold the action;
– order each party to bear its own costs.
16 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 In support of its application, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. OHIM disputes the admissibility of some of the matters put forward by the applicant for the first time before the Court of First Instance.
Matters of fact and of law put forward for the first time before the Court of First Instance
Arguments of the parties
18 OHIM submits that the earlier mark’s distinctiveness as a result of its use was pleaded by the applicant for the first time before the Court, and that the documents supplied in that respect were produced for the first time before the Court as Annexes 23 to 29 to the application initiating proceedings. OHIM requests that that argument and those documents therefore be declared inadmissible.
19 At the hearing, the applicant claimed that those documents would enable the Court to find that the GALVALLIA mark has been present on the automobile sheet market for over 20 years. Even if it should be considered inadmissible, the fact remains that, owing to the very restricted nature of that market, the GALVALLIA mark is widely known.
Findings of the Court
20 It is apparent from the documents before the Court relating to the proceedings before OHIM that the distinctive character acquired by the earlier mark as a result of its use was not pleaded before OHIM. It has consistently been held that matters of law relied on before the Court which have not been raised previously before the bodies of OHIM are inadmissible, in so far as a consideration of those matters by those bodies was not compulsory in order to resolve the dispute before them. In that regard, it must be noted that the reliance on distinctive character acquired as a result of use is a point of law which is independent of that of the intrinsic distinctive character of the mark in question. Therefore, unless one of the parties to the proceedings before OHIM relies on the distinctiveness acquired by its mark, OHIM is not obliged to consider, of its own motion, the existence of that distinctiveness (judgment of 17 October 2006 in Case T‑499/04 Hammarplast v OHIM – Steninge Slott (STENINGE SLOTT), not published in the ECR, paragraphs 20 and 21; see also, to that effect, Case T‑57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraphs 22 and 30). It follows that, in the present case, the reliance on distinctive character acquired by the earlier mark as a result of use is inadmissible before the Court.
21 Furthermore, it must be held that, of the annexes in question, only Annex 23 to the application initiating proceedings had already been produced before OHIM and that Annexes 24 to 29 were produced for the first time before the Court. The latter are therefore, and in any event, inadmissible before the Court, which is called upon to assess the legality of the decision of the Board of Appeal by reviewing its application of Community law, particularly in the light of facts which were submitted to it, and cannot carry out such a review by taking into account matters of fact newly produced before the Court (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54).
Merits
Arguments of the parties
22 While the applicant agrees with the Board of Appeal’s assessment as to the identical nature of the goods designated by the signs at issue and the visual similarity of those signs – albeit that, according to the applicant, the latter finding should have been more categorical, as the signs at issue are highly similar visually – the applicant maintains that the contested decision is vitiated by errors both as regards the phonetic and conceptual comparison of those signs and as regards the assessment of the likelihood of confusion.
23 First, as regards the Board of Appeal’s finding as to the marked phonetic difference between the signs at issue, the applicant submits that the Board of Appeal was wrong to refer, at that stage, to the phonetic perception of the signs by the relevant public, which, in the present case, is a very attentive public. In the applicant’s opinion, the phonetic comparison of the signs must be undertaken without reference to the level of attentiveness of the relevant public, which becomes a factor only in the examination of any likelihood of confusion. It observes in the present case that, from the point of view of French phonetics, the signs at issue are each composed of three syllables, the first two of which are identical while the third begins, in both cases, with the consonant ‘l’ and ends with the sound ‘a’, since the ‘oy’ group of letters in the mark applied for is pronounced ‘oua’ in French. The applicant therefore takes the view that, overall, the signs at issue are highly similar phonetically, contrary to the findings of the Board of Appeal.
24 Second, as regards the conceptual comparison of the signs at issue, the applicant observes that it is necessary to examine, in particular, whether those signs call to mind the same concepts or the same associations of ideas, irrespective of the distinctiveness of the various elements which make up those signs. However, in the present case, the Board of Appeal erred in relying on the purportedly descriptive nature of the prefix ‘galva’ – which is common to the signs at issue – in order to reduce its impact in relation to the conceptual comparison of the signs, and on the meaninglessness of the suffixes ‘llia’ in the earlier mark and ‘lloy’ in the mark applied for. Furthermore, the applicant submits that the signs at issue are constructed identically and are based on the same association of ideas, namely an interweaving of the ideas of galvanisation (‘galva’ in both signs) and of alloy (that being precisely the English term used in the mark applied for, and ‘allia’ in the earlier mark being a component of ‘alliage’, meaning ‘alloy’ in French). Accordingly, the applicant submits that the Board of Appeal was wrong to rule out the existence of a conceptual similarity between the signs at issue.
25 Third, as regards the likelihood of confusion, the applicant is of the view, first of all, that the earlier mark is not descriptive, contrary to the findings in the contested decision.
26 Next, the applicant maintains that, in the present case, contrary to the view taken by the Board of Appeal, the particularly high level of attention on the part of the relevant public relates not to the choice of trade mark but to an earlier stage, to the choice of the product required. Thus, since the trade mark is only a secondary factor in the process of determining the buyer’s choice, it is clear, in the applicant’s view, that the relevant public will be led to think that the trade mark applied for merely constitutes an English version of the neologism which forms the earlier mark, and therefore that it will necessarily think that the marks at issue come from the same undertaking or economically-linked undertakings.
27 It follows that the Board of Appeal should, in the applicant’s view, have upheld the decision of the Opposition Division and found that there was a likelihood of confusion between the marks at issue.
28 In contending that the Court should uphold the action, OHIM observes that it shares the applicant’s view and considers the action to be well founded. As regards, in the first place, the comparison of the signs at issue, OHIM observes, first of all, concerning the visual element, that the consideration set out in the contested decision – that the prefix ‘galva’ is not distinctive – did not lead the Board of Appeal to exclude that element altogether from the visual comparison of the signs at issue. OHIM notes therefore that the Board of Appeal acknowledged that there was a visual similarity between the signs at issue, which was attenuated to some extent by the differences in their suffixes.
29 Next, OHIM contests the findings of the Board of Appeal with respect to the phonetic differences between the signs at issue. Both signs end with the sound ‘a’ in French, and the intervener failed to establish during the proceedings before OHIM that the relevant public would pronounce the mark applied for in accordance with the English rules of pronunciation. OHIM considers that, in any event, the elements of phonetic similarity in the signs at issue prevail over their differences.
30 Finally, as regards the conceptual comparison of the signs at issue, OHIM maintains that the applicant failed to show that the suffix ‘allia’ in the earlier mark would be perceived as a common abbreviation of the French word ‘alliage’. Moreover, according to OHIM, the conceptual similarity must be assessed on the basis of the evocative force of a mark taken as a whole, notwithstanding the meaning of its components. In those circumstances, OHIM takes the view that the Board of Appeal was justified in concluding that a conceptual comparison of the signs at issue was inappropriate.
31 In the second place, OHIM does not agree with the Board of Appeal’s conclusion ruling out any likelihood of confusion between the signs at issue.
32 It observes, first of all, that the signs must be compared as to the overall impression which they create, having regard to their structure and overall configuration. Inasmuch as the signs at issue consist of a single word, it is impossible to determine the dominant element or elements. The Board of Appeal was therefore wrong to conclude that the relevant public would be more likely to memorise the suffixes ‘lloy’ in the mark applied for and ‘llia’ in the earlier mark.
33 Second, OHIM regards the earlier mark as having an average degree of distinctiveness and not, as the Board of Appeal held, a very low level of distinctiveness. The prefix ‘galva’ cannot be artificially separated from the other elements comprising the earlier mark. Its combination with the suffix ‘llia’ reduces the descriptive meaning of the prefix, and that would be the case even if the word ‘galvallia’ were perceived as a contracted form of the words ‘galvanisation’ and ‘alliage’. The use of the letter ‘a’ as the pivot between the two elements making up the earlier mark contributes to the originality of that mark, which cannot therefore be reduced to the combination of a non-distinctive prefix and a suffix.
34 Third, OHIM observes that the fact that the signs at issue are made up of the prefix ‘galva’, followed by a suffix containing four letters and characterised by the doubling of the letter ‘l’, results in them being recognised as having a very similar visual and phonetic configuration. While OHIM concedes that the two last letters of the signs at issue may be discerned by the relevant public, with the result that the signs will not be confused, OHIM submits that direct confusion between the signs at issue is not a condition laid down by Regulation No 40/94, which requires only that there should be a likelihood of confusion. According to OHIM, the visual and phonetic similarity of the signs at issue and the attention given by the relevant public to the structure and configuration of those signs would lead that public to believe that the same manufacturer had diversified its range and used for that purpose a mark derived from the earlier mark.
35 In those circumstances, and in view of the identical nature of the goods designated by the marks at issue, OHIM submits that the action should be upheld, essentially on the ground that there is a likelihood of confusion between the marks at issue.
36 Firstly, the intervener notes that it is common ground that the goods designated by the marks at issue are identical and that the relevant public is made up of professionals.
37 Secondly, it rejects the applicant’s argument that the presence of the prefix ‘galva’ is an important element in the visual comparison of the signs at issue. The intervener observes in that respect that the relevant public would not consider the descriptive element common to the signs at issue to be the dominant element in the overall impression created by those signs.
38 Thirdly, the intervener endorses the Board of Appeal’s conclusion that there is a significant difference in the pronunciation of the signs at issue.
39 Fourthly, it maintains that the signs at issue are conceptually different, that the word ‘galva’ is descriptive of the goods designated by the marks at issue and that the relevant public would not make any connection between the meaning in English of the suffix ‘alloy’ in the mark applied for and the word ‘alliage’ in French, since the relevant public would not understand the suffix ‘allia’ in the earlier mark to be an abbreviation of the word ‘alliage’. Moreover, the intervener claims that the applicant’s contentions are inconsistent inasmuch as the applicant claims, as regards the conceptual comparison, that the relevant public is sufficiently familiar with the English language to understand that the suffix ‘alloy’ in the mark applied for is a translation of the word ‘alliage’, whereas, as regards the phonetic comparison, the applicant asks the Court to find that the relevant public would pronounce that suffix according to the French rules of pronunciation.
40 Fifthly and finally, the intervener considers that, having regard to the particularly high level of attentiveness on the part of the relevant public, made up of professionals, and to the characteristics of the market – facts which the applicant does not dispute – the Board of Appeal was justified in ruling out any likelihood of confusion between the marks at issue. As to the applicant’s contentions, the intervener rejects in particular the claim that the attention of the relevant public is focused on the goods rather than on the trade marks. According to the intervener, the potential existence of a likelihood of confusion must be examined globally.
Findings of the Court
41 As a preliminary point, it must be noted that, under Article 113 of the Rules of Procedure of the Court of First Instance, the Court may at any time, of its own motion, consider whether there exists any absolute bar to proceeding with an action.
42 According to what is now settled case-law, OHIM cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed, and there is nothing to prevent OHIM from endorsing a head of claim of the applicant or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court. On the other hand, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (Case T‑107/02 GE Betz v OHIM – Atofina Chemicals (BIOMATE) [2004] ECR II‑1845, paragraphs 34 and 36, and judgment of 16 May 2007 in Case T‑137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the ECR, paragraph 19).
43 It follows that the head of claim under which OHIM requests the Court to uphold the action, and thus endorses the applicant’s request for an order annulling the contested decision, must be declared admissible inasmuch as that head of claim and the arguments set out in its support do not go beyond the form of order sought and the pleas in law put forward by the applicant.
44 As regards the merits, according to Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to the 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
45 It has consistently been held that 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. According to that same line of case-law, the likelihood of confusion must be assessed globally, by reference to the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case (Case T‑162/01 Laboratoires RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 and 31, and judgment of 1 February 2006 in Case T‑206/04 Rodrigues Carvalhais v OHIM – Profilpas (PERFIX), not published in the ECR, paragraph 28).
46 That global assessment takes account, in particular, of awareness of the mark on the market, and of the degree of similarity between the marks and between the goods or services covered. In that respect, it implies some interdependence between the factors taken into account, so that a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (Case T‑153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II‑1677, paragraph 23; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17).
47 Further, the perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Representation of a cowhide, paragraph 24; see also, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23). For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Representation of a cowhide, paragraph 24; see also, by analogy, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).
48 Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but has to place his trust in the imperfect image of them that he has retained in his mind (Case T‑99/01 Mystery Drinks v OHIM – Karlsberg Brauerei (MYSTERY) [2003] ECR II‑43, paragraph 32).
49 It is necessary therefore to examine whether, as the applicant claims, the Board of Appeal failed to comply with Article 8(1)(b) of Regulation No 40/94 by ruling out any likelihood of confusion between the marks at issue.
50 In the present case, the dispute relates to the similarity of the signs. The identical nature of the goods designated by the marks at issue is not in dispute, given that the goods covered by the mark applied for (namely steel sheet and strip having a protective coating) are among the goods in respect of which the earlier mark was registered.
51 As regards the relevant public in the present case, it must be accepted, as the Board of Appeal found in paragraph 20 of the contested decision without being challenged in that respect, that the goods at issue are semi-finished products intended, in particular, for the automobile industry. It is, as the applicant acknowledged at the hearing, a particularly oligopolistic market, in which the number of manufacturers of sheet steel coated with a protective laminate is very small, and whose goods are destined for a limited number of customers.
52 As the earlier mark was registered in France, the relevant public to be taken into consideration for the purposes of assessing the likelihood of confusion is composed of average French consumers of special steels.
53 It follows that the relevant public is made up of a limited number of professionals specialising in the French special steels industry market, who have a high level of knowledge of the market and who pay particular attention to the choice of products offered by each manufacturer.
– The similarity of the signs
54 According to the case-law, the global assessment of the likelihood of confusion, so far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (Case T‑423/04 Bunker & BKR v OHIM – Marine Stock (BKR) [2005] ECR II‑4035, paragraph 57; see also, by analogy, SABEL, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25).
55 Consequently, the signs in question must be compared visually, phonetically and conceptually, in order to examine whether the degree of similarity between the signs is sufficient, bearing in mind the identical nature of the goods concerned, to conclude that there is a likelihood of confusion in the mind of the relevant public, as defined in paragraph 53 above.
56 The signs to be compared are the word marks GALVALLOY and GALVALLIA.
57 In the first place, as regards the visual comparison, and as the Board of Appeal correctly observed, the signs at issue are each composed of nine letters. Moreover, with the exception of the last two letters – ‘i’ and ‘a’ in the earlier mark, and ‘o’ and ‘y’ in the mark applied for – they are identical, inasmuch as the first seven letters are the same and appear in the same order: ‘g’, ‘a’, ‘l’, ‘v’, ‘a’, ‘l’ and ‘l’. It follows that, as the applicant submits, visually, the marks at issue are globally very similar.
58 In the second place, as regards the phonetic comparison, the Board of Appeal’s analysis was undertaken solely on the basis of the French rules of pronunciation.
59 In that respect, it must be noted first of all that the consumer concerned in the present case is operating in a market – the market for special steels intended in particular for the automobile industry – which is highly international and in which the English language is commonly used. Consequently, the word ‘alloy’ in English will be familiar to the relevant public, which will recognise in it a reference to the French ‘alliage’ (alloy). It follows that the relevant public may pronounce the mark applied for as if it were an English neologism, bearing in mind that ‘galva’ could equally be perceived as an abbreviation of the English word ‘galvanisation’. In any event, even on the assumption that the relevant public would pronounce the word ‘galvalloy’ in accordance with the rhythm of the French language, with three syllables: ‘gal‑va‑loy’, the presence of the English word ‘alloy’ in the mark applied for would not escape its notice and it would therefore tend to pronounce the ending as ‘oï’ in English, rather than, as the applicant incorrectly maintains and the Board of Appeal stated in paragraph 34 of the contested decision, as the French sound ‘oua’.
60 Furthermore, the signs at issue are of the same length and are pronounced with the same rhythm, whether according to the French or English rules of pronunciation. In addition, they are identical phonetically so far as their prefixes are concerned. The prefix in the earlier mark is pronounced ‘galva’. The prefix in the mark applied for, whether pronounced in whole or in part according to the English rules of pronunciation, is no different from the prefix ‘galva’ pronounced in accordance with the French rules of pronunciation, since the letters ‘a’ are pronounced as the letter ‘a’ in the English word ‘cat’. In addition, in both of the signs at issue, the two letters ‘l’ are pronounced ‘el’. It follows that the first two syllables of the signs at issue (‘galva’) sound identical, and that the last syllable in each of the signs at issue (‘llia’ and ‘lloy’) sounds similar.
61 It follows from the foregoing that, as the applicant claims, phonetically, the signs at issue are globally similar.
62 In the third place, as regards the conceptual comparison, it must be noted that while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Lloyd Schuhfabrik Meyer, paragraph 25), he will nevertheless, perceiving a verbal sign, break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him (Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 51, and Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑0000, paragraph 57).
63 In the present case, the Board of Appeal correctly found that the signs at issue have a common prefix, ‘galva’, which evokes the technique of galvanisation, that is, the act of fixing an electrolytic layer to a metal to protect it from oxidation.
64 By contrast, the Board of Appeal incorrectly took the view that a conceptual comparison of the second part of the signs was not possible, because the suffixes ‘llia’ and ‘lloy’ were meaningless.
65 That conclusion is based on an artificial division of the signs at issue, which fails to have regard to the overall perception of those signs. As stated in paragraph 59 above, the relevant public, which is French-speaking but has knowledge of the English language, will recognise in the mark applied for the presence of the English word ‘alloy’, corresponding to ‘alliage’ in French, even if the first letter of that word (‘a’) has merged with the last letter of the prefix ‘galva’, according to the usual process of haplology. That mark will therefore be perceived as referring to the concepts of galvanisation and alloy.
66 As far as the earlier mark is concerned, the suffix ‘allia’ is combined with the prefix ‘galva’ in the same way. The evocative force of the suffix ‘allia’ will enable the relevant public – on account of its knowledge and experience – to understand that that is a reference to the word ‘alliage’. That process of identification is facilitated still further by the association of the idea of ‘alliage’ (alloy) with that of galvanisation, the suffix ‘allia’ being attached to the prefix ‘galva’.
67 By breaking down the signs at issue, the relevant public will therefore interpret both signs as referring to the concepts of galvanisation and alloy.
68 Consequently, the conclusion to be drawn is, as the applicant correctly maintains, that the signs at issue are conceptually very similar, inasmuch as they both evoke the idea of galvanisation and of an alloy of metals, although that idea is conveyed more directly by the mark applied for than by the earlier mark.
– Likelihood of confusion
69 As is apparent from the examination of the conceptual similarity of the signs at issue, their common prefix ‘galva’ is likely, as regards the relevant public, to carry a suggestive connotation in respect of the goods concerned, to the effect that they have undergone a process of galvanisation. The same applies in respect of the suffixes ‘alloy’ and ‘allia’, which are likely to carry a connotation that is descriptive of the alloy process so far as the former is concerned and suggestive of that process so far as the latter is concerned. Given that the concepts conveyed by the two marks at issue refer to the characteristics of the goods concerned, their ability to contribute to the identification of the designated goods as coming from a specific undertaking, and therefore their ability to distinguish those goods from those of other undertakings, may be weakened as a result.
70 Nevertheless, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (Canon, paragraph 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark sought to be registered which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61), particularly where the mark sought to be registered includes elements which are even less distinctive than the element that is common to the marks at issue (see, to that effect, order of 27 April 2006 in Case C‑235/05 P L’Oréal v OHIM, not published in the ECR, paragraph 45). Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 110). The fact that the earlier mark has weak distinctive character does not therefore mean that the similarity of the marks at issue may be disregarded; otherwise there would be a failure to comply with the obligation under Article 8(1)(b) of Regulation No 40/94 to make a global assessment of the likelihood of confusion (see, to that effect, Case C‑171/06 P TIME ART v Devinlec and OHIM [2007] ECR I‑0000, paragraph 41).
71 In the present case, since the goods in question are identical and there are significant visual, phonetic and conceptual similarities between the marks at issue, it cannot be ruled out that even an attentive public, such as the relevant public in this case, could be led to believe that the goods in question come from the same undertaking or economically-linked undertakings, despite the limited distinctiveness of the earlier mark. That is particularly so as the mark applied for contains an element, ‘alloy’, which is even less distinctive than the element that is common to the marks at issue, ‘galva’; the market is oligopolistic; and the mark applied for may appear to be a simple translation of the earlier mark.
72 It follows that, contrary to the findings of the Board of Appeal, there is a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 40/94. Consequently, the plea alleging infringement of Article 8(1)(b) must be upheld and the contested decision annulled.
Costs
73 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
74 Since the decision of the Board of Appeal is annulled and OHIM must accordingly be regarded as having been unsuccessful, notwithstanding the form of order sought, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant 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 (Fourth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 February 2005 (Case R 411/2004‑1);
2. Orders OHIM to bear its own costs and to pay those incurred by Usinor SA;
3. Orders Corus UK Ltd to bear its own costs.
Wiszniewska-Białecka | Moavero Milanesi | Wahl |
Delivered in open court in Luxembourg on 14 February 2008.
E. Coulon | | I. Wiszniewska-Białecka |
Registrar | | Acting President |