JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
16 January 2014 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark MICRO – Earlier national figurative mark micro – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation No 207/2009 – Power to alter decisions)
In Case T‑149/12,
Investrónica, SA, established in Madrid (Spain), represented by E. Seijo Veiguela and J. L. Rivas Zurdo, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party in the proceedings before the Board of Appeal of OHIM intervener before the General Court, being
Olympus Imaging Corp., established in Tokyo (Japan), represented by C. Opatz, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 31 January 2012 (Case R 347/2011-4), relating to opposition proceedings between Investrónica, SA and Olympus Imaging Corp.,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva (Rapporteur) and C. Wetter, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 2 April 2012,
having regard to the response of OHIM lodged at the Court Registry on 31 August 2012,
having regard to the response of the intervener lodged at the Court Registry on 29 August 2012,
having regard to the reply lodged at the Court Registry on 4 December 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 25 June 2008, the intervener, Olympus Imaging Corp., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the following figurative sign in black and white:
3 The goods for which registration was sought fall within Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following: ‘Photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefor as far as included in Class 9’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 39/2008 of 29 September 2008.
5 On 29 December 2008 the applicant, Investrónica, SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Spanish figurative mark MICRO in light blue and dark blue, registered on 11 January 2008 under number 2736947, reproduced below:
7 The goods covered by the earlier mark fall, inter alia, within Class 9 and correspond to the following description: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers’.
8 The grounds raised in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 By decision of 16 December 2010, the Opposition Division upheld the opposition in its entirety on the basis of Article 8(1)(b) of Regulation No 207/2009 and accordingly refused the application for registration of a Community trade mark filed by the intervener.
10 On 9 February 2011, the intervener filed a notice of appeal at OHIM against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.
11 By decision of 31 January 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal in its entirety and accordingly annulled the decision of the Opposition Division, rejected the opposition and ordered the applicant to pay the fees and costs of the opposition and appeal proceedings. In essence, the Board of Appeal concluded that the identity of the goods was offset by the dissimilarity of the signs at issue, so that there was no likelihood of confusion on the part of the public in the territory of the European Union, for the purposes of Article 8(1)(b) of Regulation No 207/2009. In order to reach that conclusion, the Board of Appeal considered that, although the word element ‘micro’, common to the signs at issue, was pronounced in the same way, it was a descriptive element that could not be perceived by the relevant public from a visual point of view as the distinctive and dominant element of a composite mark. That descriptiveness, moreover, precluded the establishment of a high level of conceptual similarity between the signs at issue. Given the predominance of the visual perception of the marks for the goods concerned, the marks at issue were only slightly similar, the only link between them being the descriptive and non-distinctive word element ‘micro’.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– declare that, pursuant to Article 8(1)(b) of Regulation No 207/2009, the appeal brought by the intervener before OHIM should have been dismissed and that the decision of the Opposition Division to refuse, as a whole, registration of the Community trade mark applied for by the intervener, should have been confirmed;
– order OHIM and the intervener to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The application for annulment of the contested decision
14 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant bases its arguments, in essence, (i) on the fact that, contrary to the findings of the Board of Appeal and in accordance with the case-law, the weak distinctive character of the word element ‘micro’ does not necessarily mean that it cannot constitute a dominant element of the earlier national mark, if the validity of that mark is not to be called into question, which it is not for OHIM to do, (ii) on the fact that the visual difference resulting from the comparison of the signs at issue is low and is offset by the circumstance that the signs are phonetically identical and, (iii) on the fact that, contrary to the findings of the Board of Appeal, the signs at issue are conceptually identical in that they may have the same meaning in the language of the relevant territory. The applicant concludes from this that, because of the strong visual similarity and the phonetic and conceptual identity of the signs at issue, on the one hand, and the identity of the goods concerned, on the other, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the signs at issue.
15 OHIM contends, in essence, that the word element ‘micro’, common to the signs at issue, is not just weak, but is a descriptive indication without any distinctive character. That finding is without prejudice to the validity of the earlier national mark. Accordingly, the Board of Appeal was entitled to consider that what made the earlier mark distinctive was its overall presentation and the combination of its various components. The finding that the relevant public would focus almost exclusively on the distinctive elements only of the signs at issue, namely the stylistic and colour elements, because it could find no indication as to the origin in their word element, is therefore well-founded. In the present case, the descriptiveness of the word element ‘micro’, common to the signs at issue, would have the effect of excluding that element from the visual comparison and from the conceptual comparison. Consequently, in the context of those comparisons, the dominant distinctive elements of the signs at issue to be taken into consideration are the specific combination of colours for the earlier mark and the graphic elements for the mark applied for. Given the visual and conceptual differences between the dominant and distinctive elements of the signs at issue thus determined, the only phonetic coincidence resulting from the common word element ‘micro’ does not permit a finding of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the signs at issue.
16 The Court notes that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property.
17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
18 That global assessment implies some interdependence of the factors taken into account, in particular of the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48, and GIORGIO BEVERLY HILLS, cited in paragraph 17 above, paragraph 32).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
20 The Court will examine whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue in the light of those considerations.
The relevant public
21 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
22 In the present case, the Board of Appeal found, in paragraph 10 of the contested decision, that the relevant public was composed of both professionals in the photography sector and end consumers in general and that the relevant territory was Spain.
23 The applicant submits that, as the goods covered by the marks at issue are everyday consumer goods, the relevant public in relation to which the likelihood of confusion must be considered consists of the average Spanish consumer.
24 In that regard, as the earlier mark is a Spanish trade mark, the Board of Appeal was correct to find that the relevant territory for the analysis of the likelihood of confusion was Spain.
25 Furthermore, the Board of Appeal was also correct to find, having regard to the difference in price between the different ranges of photographic apparatus and instruments, in particular cameras or video cameras and their accessories, that the relevant public was composed of both professionals in the photography sector and average consumers.
The comparison of the goods
26 According to settled case-law, in assessing the similarity between the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case‑law cited).
27 In the present case, the Board of Appeal correctly observed that the goods for which registration of the mark was sought by the intervener, namely ‘Photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefore as far as included in Class 9’ were covered by the description of the goods for which the earlier mark was registered, the latter containing all the headings in Class 9. It follows that the Board of Appeal was also correct to find that the goods in question could be considered identical, which, moreover, is not contested by the parties.
The comparison of the signs
28 According to settled case-law, two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009 when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Case T‑286/02 Oriental Kitchens v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case-law cited). As the case-law indicates, the visual, phonetic and conceptual aspects are relevant (see Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30 and the case-law cited).
29 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, their distinctive and dominant components, in particular, being borne in mind. 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 such a likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
30 Accordingly, the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, cited in paragraph 29 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
– The descriptive character of the earlier mark
31 The applicant claims that the weak distinctive character of an element of a composite mark does not necessarily mean that that element cannot constitute a dominant element of a composite mark and does not preclude a finding of a likelihood of confusion. According to the applicant, by refusing to take into account the word element ‘micro’ on the ground that it is descriptive, the Board of Appeal called into question the validity of the earlier mark. However, it is not for OHIM to rule on the validity of a trade mark in opposition proceedings but only in proceedings for annulment.
32 OHIM contends that the word element ‘micro’ is not just weakly distinctive, but is a descriptive indication. The distinctive character of the earlier mark does not result from that word element, but only from its particular overall presentation and the combination of its various elements. OHIM also submits that the Board of Appeal did not call into question the validity of the earlier mark, but merely noted the descriptiveness of the word element ‘micro’ as regards the characteristics of the goods, concluding from this that the earlier mark, taken as a whole, had an extremely weak distinctive character.
33 The intervener adds that the descriptive nature of the word element ‘micro’ is confirmed by the OHIM decision of 30 August 2010, by which OHIM refused the intervener’s application for registration of the trade mark Micro System Cameras for goods in Class 9, on the ground of its lack of distinctiveness. The intervener refers, moreover, to the decision of the Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office) to refuse registration of the trademark MICROAUDIO because the word ‘micro’ is a common and usual word in daily language, which was confirmed by the competent national court.
34 In that regard, the Court observes that Article 8(2)(a)(ii) of Regulation No 207/2009 expressly provides, in relation to opposition proceedings, for trade marks registered in a Member State to be taken into consideration as earlier trade marks.
35 The Court also observes that, as is apparent from Articles 41 and 42 of Regulation No 207/2009, there is no need to examine the absolute grounds for refusal referred to in Article 7 of that regulation in the context of opposition proceedings. The grounds on which an opposition may be based, as laid down in Article 42(1) of Regulation No 207/2009, are merely the relative grounds for refusal in Article 8 of that regulation. Those are the terms on which OHIM is required to give a decision on the opposition under Article 42(5) of Regulation No 207/2009 (see the judgment of 13 July 2012 in Case T‑255/09 Caixa Geral de Depósitos v OHIM – Caixa d’Estalvis i Pensions de Barcelona (la Caixa), not published in the ECR, paragraph 86 and the case-law cited).
36 Moreover, the fact that a national mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) precludes registration of a mark which is devoid of distinctive character.
37 The inherent distinctive character of the registered national mark can be challenged only in cancellation proceedings brought in the Member State concerned (Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 26). It should be noted that this case-law is based on the premiss that the European Union legislature has established a system based on the coexistence of the Community trade mark with national trade marks.
38 It follows that, where OHIM must verify the way in which the relevant public perceives a sign which is identical to the earlier national trade mark on which the opposition is based, that verification may not culminate in a finding that that mark lacks distinctive character. Such a finding would be detrimental to the extent of the protection of the earlier national mark, in the form in which it is registered. Hence, such a finding would not respect the system established by Regulation No 207/2009, which is based on the coexistence of Community trade marks and national trade marks, as stated in recital 6 in the preamble to that regulation (Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR I‑0000, paragraphs 41 to 45).
39 However, that is not the case here, since, although the Board of Appeal found, in paragraph 13 of the contested decision, that the word element ‘micro’ was descriptive of the goods in question, it also noted that as the word element in question was only one component of the earlier Spanish figurative mark, it derived its distinctiveness from its ‘combination of specific colours’ (paragraph 15 of the contested decision). Consequently, the Board of Appeal complied with the case‑law according to which, in order not to infringe Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of a Community trade mark is based (Formula One Licensing v OHIM, cited in paragraph 38 above, paragraph 45).
– The visual similarity
40 At paragraph 15 of the contested decision, the Board of Appeal found that the relevant public would not consider a descriptive element forming part of a composite mark, such as the word element ‘micro’, as being the distinctive and dominant element of the overall impression given by it. In the present case, therefore, the distinctive character of the earlier mark was based solely on the combination of specific colours.
41 The Board of Appeal stated in paragraph 17 of the contested decision that the distinctive colours of the earlier mark had no similarity with the graphic characteristics of the mark applied for and that, as the word ‘micro’ was descriptive, the marks were not visually similar to a significant degree, but only to a low degree.
42 The applicant claims that the mark applied for consists of figurative elements, namely a black rectangle in which there is a small design and the word ‘micro’ in capital letters with a common font. According to the applicant, the earlier mark is a composite mark consisting only of a common font in blue, which might be regarded a quasi-word mark. That difference, which is primarily visual, is not as significant as the Board of Appeal found, since it is only perceptible if the two signs are compared simultaneously from the same angle, which does not usually happen in the market, since the consumer usually refers to them orally and the special form of the letters does not play a significant part in the overall examination of the relevant factors in the present case.
43 OHIM contends that the finding of the Board of Appeal that the public will focus almost exclusively on the stylistic and colour elements of the marks, because it will not be able to find any indication as to origin in their word element, is sufficient to justify the conclusion that the marks are visually and conceptually similar to a low degree only, since, regardless of the similarity that may be attributed to the signs by the identical verbal elements, it is effectively offset by the representation of the signs, which is different overall. According to OHIM, the different font, the arrangement of its colours, that is to say, a combination of blue and black as opposed to a monochrome representation, and the fanciful graphic element of the mark applied for, consisting of four vertical lines in the upper part and three vertical lines in the lower part, all in white, are so important, to enable the trade marks to fulfil their primary function of indicating the origin, that the consumer will do his best to keep a clear image of it and will tend to memorise the marks specifically in relation to those elements.
44 Moreover, OHIM submits that, according to settled case-law, even in the context of distinctive word elements, such stylistic differences cannot summarily be dismissed as negligible for the purposes of the comparison of the marks at issue, to the extent to which they can add to the differentiation between the signs or even contribute to a different overall impression, and that regardless of whether the words to which that different stylisation is applied are identical in whole or in part.
45 In that regard, the Court observes that the earlier mark consists of the word element ‘micro’, written in lower case letters in a common font. The first letter ‘m’ and the dot on the letter ‘i’ are light blue, while the other letters are dark blue.
46 The Community trade mark applied for is a composite figurative mark which contains the word element ‘micro’, written in white capital letters in a standard font on a black rectangular background. That word element is preceded by a fanciful graphic element composed of four vertical lines in the upper part and three vertical lines in the lower part, all in white. The intersection of those lines is a diagonal line slanting up to the right.
47 It should be noted that, according to the case-law, a composite trade mark may be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark where that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component 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 make a negligible contribution to the overall impression created by it (MATRATZEN, cited in paragraph 28 above, paragraph 33; Case T‑153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II‑1677, paragraph 27; Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 97; and Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 52).
48 In the present case, as regards the mark applied for, it should be noted that, first, the word element ‘micro’ is composed of large white capital letters that stand out on a black rectangle and, secondly, the fanciful element which precedes it is negligible. The word element ‘micro’ therefore constitutes the dominant element of the mark applied for.
49 That conclusion is not called into question by the argument of OHIM that the word element ‘micro’ is not only devoid of distinctive character, but is descriptive.
50 It is indeed true that it is settled case-law that the public will not generally consider a descriptive element forming part of a composite mark as its dominant element (see judgment of 22 May 2008 in Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! BizCard Reader), not published in the ECR, paragraph 56 and the case-law cited).
51 However, certain circumstances may justify that a descriptive element has a dominant character (see, to that effect, Case T‑361/08 Peek & Cloppenburg and van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk) [2010] ECR II‑1207, paragraphs 59 and 60).
52 In the present case, as was stated in paragraph 48 immediately above, the mark applied for consists of a black rectangle on which are represented, in white, a non-figurative design and the word element ‘micro’. That design covers a quarter of the surface, while the other three quarters are occupied by the word element. In that specific context, the public eye is necessarily attracted, not by the colours used or the design, but by the word element, the position of which is predominant. It can therefore only be considered as dominant, even assuming that it is descriptive, as the Board of Appeal found.
53 As regards the earlier mark, it should be noted that it is composed of the single word element ‘micro’ and that, given its standard font and the slight difference between the letters in dark blue and those in light blue, the attention of the relevant public will be drawn primarily to that word and not, as wrongly found by the Board of Appeal, to the particular combination of colours and letters that constitute it. It follows that the word element ‘micro’ must be regarded as the dominant element of the earlier national figurative mark.
54 Therefore, it should be found that the marks at issue are visually highly similar.
– The phonetic similarity
55 As the Board of Appeal correctly found, in paragraph 18 of the contested decision, given their common single word element, the marks at issue will be pronounced identically. That finding is not contested by the parties.
– The conceptual similarity
56 The Board of Appeal found, in paragraph 19 of the contested decision, that, having regard to the descriptive nature of the word element ‘micro’, it does not allow a high level of similarity to be established. Moreover, as the graphic elements do not, according to the Board of Appeal, convey any concept, the marks exhibit only a low level of conceptual similarity.
57 The applicant claims that the marks at issue are identical from a conceptual point of view, in so far as they both refer, by way of their common word element ‘micro’, to the various meanings of that word in Spanish, namely ‘microphone’, ‘very small’ or ‘a millionth part’.
58 OHIM contends that marks, such as the earlier mark, which are registered only because of the particular way the word element that constitutes them is represented, are marks that are incapable of indicating the commercial origin of the goods and services for which they are registered, either phonetically or conceptually.
59 In that regard, the Court observes that the Board of Appeal was correct to find that the graphic elements of the mark applied for, namely the fanciful graphic and the black rectangle, did not refer to any particular concept.
60 However, as the Board of Appeal itself noted in paragraph 13 of the contested decision, the word element ‘micro’ will be perceived by the relevant public as referring to the idea of something ‘small’ or to a ‘microphone’. In so far as the word element ‘micro’ is the dominant visual element of the mark applied for, it is clear that, notwithstanding the descriptiveness of the word element and contrary to the view of the Board of Appeal, there is a large degree of conceptual similarity between the signs at issue.
The likelihood of confusion
61 The position of the Board of Appeal as to the likelihood of confusion is set out in paragraph 22 of the contested decision, as follows:
‘The level of attention of professional consumers is above average. Final consumers in the general public have an average level of attention. Likewise, the marks do not show similarities in terms of their distinctive graphic features. Therefore, even in the case of identical products, the differences between the marks are such that, given the low degree of inherent distinctiveness of the earlier mark, any likelihood of confusion can be excluded with certainty.’
62 However, given, first, the finding made by the Court as to the conceptual and phonetic identity of the signs at issue and their strong visual similarity and, secondly, the identity of the goods in question, the Board of Appeal was wrong to find that there was no likelihood of confusion between the earlier mark and the Community trade mark for which registration was sought, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
63 In the light of the above, the single plea in law raised by the applicant must be accepted and, consequently, the contested decision annulled.
The application to allow the opposition
64 OHIM maintains that the second head of claim is inadmissible on the ground that it goes beyond the jurisdiction of the Court.
65 By that head of claim, the applicant requests the Court to declare that, under Article 8(1)(b) of Regulation No 207/2009, the appeal brought by the intervener before OHIM should have been dismissed and that the decision of the Opposition Division to refuse, as a whole, registration of the Community trade mark applied for by the intervener, should have been confirmed. In so doing, the applicant requests the Court, in essence, to adopt a decision that, according to the applicant, OHIM should have taken, namely a decision finding that the opposition conditions have been satisfied. Consequently, the applicant seeks the alteration of the contested decision, as provided for in Article 65(3) of Regulation No 207/2009. That claim is therefore admissible and the plea of inadmissibility raised by OHIM must be rejected (judgment of 6 June 2013 in Case T‑411/12 Celtipharm v OHIM – Alliance Healthcare France (PHARMASTREET), not published in the ECR, paragraph 44).
66 In that regard, it should be recalled that the power to alter decisions does not have the effect of conferring on the General Court the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by that Board, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Case C‑263/09 P Edwin v OHIM [2011] ECR I‑5853, paragraph 72; PHARMASTREET, cited in paragraph 65 above, paragraph 45).
67 In the present case, the conditions for exercising the Court’s power to alter decisions, as they are set out in Edwin v OHIM, cited in paragraph 66 above, are met. It follows from the considerations set out in paragraph 62 above that the Board of Appeal was required to find that, in accordance with the view taken by the Opposition Division, there was a likelihood of confusion for goods in Class 9 and corresponding to the following description: ‘Photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefor as far as included in Class 9’.
68 Consequently, it is appropriate, by altering the contested decision, to dismiss the appeal brought against the decision of the Opposition Division and to allow the opposition as regards the abovementioned goods.
Costs
69 In accordance with Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Where there are several unsuccessful parties the General Court shall decide how the costs are to be shared. In the circumstances of the present case, as OHIM and the intervener have failed in their pleas, it must be decided that they are to bear their own costs and those of the applicant, each of them bearing one half.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Annuls the decision of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 31 January 2012 (Case R 347/2011-4).
2. Allows the opposition with regard to the goods covered by Class 9 and corresponding to the following description: ‘Photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefor as far as included in Class 9’.
3. Orders OHIM to bear its own costs, together with half of the costs incurred by Investrónica, SA.
4. Orders Olympus Imaging Corp. to bear its own costs, together with half of the costs incurred by Investrónica, SA.
Delivered in open court in Luxembourg on 16 January 2014.
[Signatures]