JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 January 2016 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark TVR ENGINEERING — Earlier Community figurative mark TVR — Relative ground for refusal — No similarity between the signs — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑781/14,
TVR Automotive Ltd, established in Whiteley (United Kingdom), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Fabio Cardoni, residing in Milan (Italy),
ACTION against the decision of the Fourth Board of Appeal of OHIM of 8 September 2014 (Case R 2532/2013-4) relating to opposition proceedings between TVR Automotive Ltd and Fabio Cardoni,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 20 November 2014,
having regard to the response lodged at the Court Registry on 30 March 2015,
further to the hearing on 18 November 2015,
gives the following
Judgment
Background to the dispute
1 On 3 August 2012, Mr Fabio Cardoni filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign in black and white:
3 The goods in respect of which registration was sought are in, inter alia, Classes 18 and 25 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, for each of those classes, to the following description:
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks, whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 183/2012 of 25 September 2012.
5 On 21 December 2012, the applicant, TVR Automotive Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for, inter alia, in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier Community figurative mark No 10352318, registered on 22 March 2012 and reproduced below:
7 The earlier mark designates, inter alia, goods in Class 25 of the Nice Agreement and corresponding to the following description: ‘Clothing, footwear, headgear’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 16 October 2013, the Opposition Division partially upheld the opposition as regards goods other than those set out in paragraph 3 above and on the basis of an earlier mark other than that referred to in paragraphs 6 and 7 above. It rejected the opposition in so far as it was based on the earlier mark No 10352318.
10 On 16 December 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division, seeking that the opposition based on the earlier mark No 10352318 be upheld in respect of all the goods covered by the mark applied for in Class 25 and those in Class 18 which were similar to those designated by that earlier mark.
11 By decision of 8 September 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the action, noting that, visually, phonetically and conceptually, there were no similarities between the signs at issue in the eyes of the relevant public, comprising the general public, so that one of conditions required for a finding of a likelihood of confusion was not met. In that regard, the Board of Appeal stressed, first, the importance of the figurative elements which differentiated those signs and which did not allow the common word element ‘tvr’, relied on by the applicant, to be identified easily within them and, secondly, the presence, only in the mark applied for, of the element ‘engineering’. Furthermore, the Board of Appeal observed that, even if the relevant public recognised an identical sequence of letters in the signs at issue, the degree of stylisation of those letters was such that there was no basis for a finding of a likelihood of confusion, even for identical goods, given the importance of the visual aspect for the goods concerned.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and Mr Cardoni to pay the costs, if he intervenes in the present proceedings.
13 OHIM contends that the Court should:
– dismiss the action ;
– order the applicant to pay the costs.
Law
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.
15 The applicant argues that, both in the mark applied for and in the earlier mark, the letters ‘t’, ‘v’, and ‘r’ are clearly recognisable, as confirmed by the descriptions of those marks in OHIM’s database, which refer to the presence of the word element ‘tvr’. At the very least, it should be considered that the letters ‘t’ and ‘r’ are clearly visible and dominate the signs at issue. On the contrary, the element ‘engineering’ in the mark applied for, while not negligible, is descriptive of most of the goods covered by that mark and does not dominate it.
16 According to the applicant, it follows that the signs at issue are very similar visually and phonetically, while a conceptual comparison is not possible.
17 OHIM disputes the applicant’s arguments.
Preliminary observations
18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19 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 economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
21 Since, in the present case, the Board of Appeal found that there was no likelihood of confusion on the ground that the signs were different, it must be assessed whether that finding is correct.
22 However, it must first be confirmed that, as the Board of Appeal correctly noted in paragraph 13 of the contested decision, which the applicant does not dispute, the relevant goods (see paragraphs 3 and 7 above) are targeted at the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect, in the whole of the European Union, since the earlier mark is a Community trade mark.
The comparison of the signs
23 It should be noted that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
24 The assessment of similarity between two marks means more that taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 23 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 23 above, EU:C:2007:333, paragraph 42, and 20 September 2007 Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
The visual comparison
25 It should be observed that, in paragraph 15 of the contested decision, the Board of Appeal noted that the earlier mark was composed of a double-framed, black triangular shape with rounded corners and a highly stylised central element imitating wings placed in front of an ellipse joined by the letters ‘t’ and ‘r’, all in white. According to the Board of Appeal, the letter combination ‘tvr’ cannot be recognised in that mark at first glance because it is only after an in-depth examination — which, however, the relevant consumer will not perform — that that consumer might perceive that the letters ‘t’ and ‘r’, both at the front, are joined by the letter ‘v’, which is at the back and is part of the figurative element of that mark, in particular its wings.
26 In paragraph 16 of the contested decision, the Board of Appeal observed that the mark applied for was made up of a highly stylised figurative element which is horizontally shaded in black and white and placed on top of the word ‘ENGINEERING’. In the Board of Appeal’s view, the high degree of stylisation of that figurative element does not allow any conclusions to be drawn regarding the letters or numbers of which it is composed, which could be perceived as representing the alphanumerical characters ‘lvr’, ‘nr’, ‘ar’ or ‘tvr’, or just as a fanciful combination of black and white stripes.
27 The Board of Appeal concluded, in paragraph 17 of the contested decision, that, even if it were assumed that the sequence of letters ‘tvr’ can be recognised in each of the signs at issue, their figurative elements are so different that no similarity between those signs could be perceived by the relevant public.
28 That finding must be endorsed.
29 In the first place, it should be noted that, although, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter because the average consumer will more easily refer to the goods by quoting their name than by describing the figurative element of a mark, it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In that context, it is necessary to take into account, inter alia, the shape, size, colour and position of the figurative element within the sign (see, to that effect, judgment of 3 June 2015 in Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraphs 60 and 61 and the case-law cited).
30 In the present case, the figurative elements of the signs at issue are very distinctive, on account in particular of their size, their position, and the lack of any link between those elements and the goods covered (see, to that effect and by analogy, judgment in GIOVANNI GALLI, cited in paragraph 29 above, EU:T:2015:353, paragraphs 62 and 63).
31 Moreover, within the earlier mark, the letters ‘t’ and ‘r’ are relatively small.
32 In the second place, it must be observed that the presence solely in the mark applied for of the word ‘engineering’, in smaller letters but still legible, also in view of the absence of figurative elements which might hinder its perception, is not insignificant and accordingly serves to differentiate further the signs at issue. This is particularly so in the light of the fact that that word has no link with the goods covered and accordingly has normal distinctive character.
33 In the third place, it is immaterial that, in the description of the signs at issue which appear in OHIM’s database, reference is made, for each of the signs, to the presence of the letters ‘t’, ‘v’ and ‘r’. As OHIM correctly observed, the existence of visual similarity depends on the comparison of the signs as they are perceived by the relevant public, and not as they were described at the time of filing a Community trade mark application. In that respect, it follows from case-law that the descriptions of marks contained in OHIM’s databases have exclusively administrative purposes (see, to that effect, judgment of 21 May 2015 in Evyap v OHIM — Megusta Trading (nuru), T‑56/14, EU:T:2015:304, paragraph 22 and the case-law cited).
The phonetic comparison
34 In paragraph 18 of the contested decision, the Board of Appeal considered that there was no phonetic similarity between the signs at issue. According to the Board of Appeal, the earlier mark is pronounced as ‘tr’ or ‘tvr’, depending on whether the letter ‘v’ is recognised or not, while, as regards the mark applied for, the only legible element is the word ‘engineering’.
35 In that regard, it is not certain that the relevant public would refer to the mark applied for by using that word which, although not insignificant, is nevertheless secondary. It is only the section of the public which sees no alphanumeric character in the first element of the mark applied for which might pronounce it using the word ‘engineering’. However, that section of the public is small, in so far as most consumers recognise certain letters, in some circumstances preceded by the digit ‘1’, within the mark applied for.
36 Consequently, it must be concluded that, contrary to the finding of the Board of Appeal, there is a low degree of phonetic similarity for the relevant public which recognises in each of the signs at issue a sequence of letters which coincides at least partially.
The conceptual comparison
37 In paragraph 19 of the contested decision, the Board of Appeal considered that the signs at issue were not conceptually similar, since the combination of the letters ‘t’ and ‘r’ has no meaning and the word ‘engineering’, which has meaning for the public that understands English, only appeared in the mark applied for.
38 That assessment must be endorsed, particularly since the applicant does not dispute it. Moreover, it should be noted that the lack of conceptual similarity remains the case even in the event that it could be considered that the relevant public perceives alphanumerical characters in the first element of the mark applied for and the letter ‘v’ in the earlier mark.
Likelihood of confusion
39 It should be noted that, in paragraph 21 of the contested decision, the Board of Appeal found that there was no likelihood of confusion in the present case on the ground that the signs at issue were not similar.
40 That finding of the Board of Appeal must be endorsed, including as regards the relevant public for which those signs, whilst not visually and conceptually similar, nonetheless display a low degree of phonetic similarity (see paragraphs 35 and 36 above).
41 It should be noted that, as regards that section of the relevant public, the low degree of phonetic similarity between the signs at issue is cancelled out by the very significant visual differences between those signs, particularly because the marks in question are both figurative and not word marks (see, to that effect, judgment of 13 May 2015 in easyGroup IP Licensing v OHIM — Tui (easyAir-tours), T‑608/13, EU:T:2015:282, paragraph 60).
42 Accordingly, despite the fact that the Board of Appeal erred in its assessment of phonetic similarity, it was justified in finding that one of the cumulative conditions required in order to establish a likelihood of confusion (see paragraph 7 above) was not met in the present case.
43 In the light of all the foregoing considerations, it must be held that the applicant’s single plea in law is not well founded and therefore the present action must be rejected.
Costs
44 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Ninth Chamber),
hereby:
1. Dismisses the action;
2. Orders TVR Automotive Ltd to pay the costs.
Delivered in open court in Luxembourg on 28 January 2016.
[Signatures]