JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
6 November 2007 (*)
(Community trade mark – Opposition proceedings – Application for the figurative and word Community trade mark Ω OMEGA – Earlier national word mark OMEGA – Relative ground for refusal – Reliance by the applicant for the Community trade mark on a national trade mark identical to that applied for and earlier than the national mark cited in opposition – Likelihood of confusion)
In Case T‑90/05,
Omega SA, established in Bienne (Switzerland), represented initially by P. González-Bueno Catalán de Ocón and E. Armijo Chávarri, and subsequently by P. González-Bueno Catalán de Ocón, 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
Omega Engineering, Inc., established in Stamford, Connecticut (United States), represented by C. Algar, solicitor,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 December 2004 (Case R 330/2002‑2) concerning opposition proceedings between Omega Engineering, Inc. and Omega SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, F. Dehousse and D. Šváby, Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 24 February 2005,
having regard to the response of OHIM lodged at the Court Registry on 31 May 2005,
having regard to the response of the intervener lodged at the Court Registry on 8 June 2005,
further to the hearing on 9 November 2006,
gives the following
Judgment
Background to the dispute
1 On 15 April 1996, Omega SA filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The figurative mark for which registration was sought is the following:
3 Registration was sought in respect of goods and services in Classes 3, 9, 14, 16, 25, 28, 35, 37, 38, 41 and 42 within the terms 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.
4 The applicant claimed seniority, inter alia, of international trade mark registration No 287840, filed on 26 August 1964 and valid, inter alia, in France, and of United Kingdom trade mark registration No 699057, filed on 15 June 1951 in respect of ‘apparatus and instruments for measuring time’ in Class 9.
5 The trade mark application was published in Community Trade Marks Bulletin No 3/1999 of 11 January 1999.
6 On 26 March 1999, Omega Engineering, Inc. filed a notice of opposition against registration of the trade mark applied for, under Article 8(1)(a) and (b) and Article 8(4) and (5) of Regulation No 40/94.
7 The opposition was based on a number of earlier rights, including the earlier registration No 1557184, carried out in the United Kingdom on 16 December 1993 for the word mark ‘OMEGA’ in respect of goods in Class 9, and the earlier registration No 96614439, carried out in France on 4 March 1996 for the word mark ‘OMEGA’ in respect of goods and services in Classes 9 and 42, among others.
8 The opposition was brought against some of the goods and services to which the trade mark application refers, namely the following goods and services in Classes 9 and 42:
– Class 9: ‘clocking device installation, installation for checking, measuring time and distance, mainly for use in sporting, scientific and industrial fields; installation for retrieving, transmitting, managing and distributing information, mainly for use in services such as transport, advertising, banking; apparatus making up such installations, namely peripheral devices for data acquisition; data transmission equipment; apparatus for measuring, calculating, processing, printing and memorising data; equipment for signalling and displaying data of every kind’;
– Class 42: ‘Creation of designs and models; scientific and industrial research; computer programming’.
9 In the notice of opposition, the intervener relied on, inter alia, the goodwill and reputation of the earlier national trade marks which it owns and the existence of an agreement with the applicant. The intervener submitted that the trade mark application was contrary to that agreement, since the applicant had undertaken not to register the trade mark in respect of apparatus industrially and/or scientifically employed for measuring variable parameters.
10 By decision of 28 February 2002, the Opposition Division upheld the opposition in its entirety in so far as it was based on Article 8(1)(b) of Regulation No 40/94. The Opposition Division considered there to be a likelihood of confusion on the part of the public, firstly, in the United Kingdom in respect of the goods in Class 9 and, secondly, in France in respect of the services in Class 42, on the basis of the intervener’s earlier registrations in the United Kingdom (registration No 1557184) and in France (registration No 96614439). The other earlier rights and the other grounds relied on in support of the opposition were not taken into account. The Opposition Division specified, inter alia, that OHIM cannot be bound or influenced by the provisions of a private agreement between the parties.
11 The Community trade mark application was allowed to proceed to registration in respect of the other goods and services in Classes 3, 14, 16, 25, 28, 35, 37, 38 and 41.
12 On 17 April 2002, the applicant lodged an appeal against the decision of the Opposition Division.
13 In its statement setting out the grounds of appeal, lodged on 12 July 2002, the applicant referred to the fact that its OMEGA trade marks are well known worldwide in respect of watches and other fields of business. It stated that the earlier rights relied on by the intervener were much more recent than the applicant’s trade marks. Concerning the intervener’s United Kingdom registration No 1557184, the applicant pointed out that it had filed a cancellation action against that registration and that, therefore, the Board of Appeal should stay the proceedings. In addition, the applicant stated that its trade mark application complied with the agreement between the parties and that that agreement should be taken into consideration.
14 By decision of 10 December 2004 (‘the contested decision’), notified to the applicant on 15 December 2004, the Second Board of Appeal of OHIM dismissed the applicant’s appeal and upheld the Opposition Division’s decision.
15 The Board of Appeal stated, firstly, that it had to disregard the documents submitted by the applicant for the first time at the stage of the appeal. The Board of Appeal also considered that the effects of the agreement between the parties on the proceedings were not entirely clear. It stated that, prima facie, it appeared that the applicant had acted in breach of the agreement by including in the application ‘installation for checking, measuring time and distance, mainly for use in sporting, scientific and industrial fields’. In that regard, the Board of Appeal considered that ‘time’ and ‘distance’ were variable parameters and that it was not clear that the list of variable parameters cited in the agreement was exhaustive. The Board of Appeal stated that it was therefore doubtful whether the agreement could be relied on against the opponent.
16 Considering that the goods and services covered by the trade mark application were similar to the goods and services covered by French registration No 96614439 and by United Kingdom registration No 1557184 and that there was a high degree of similarity between the trade marks, the Board of Appeal found that there was a likelihood of confusion on the part of the public in France and the United Kingdom.
17 Finally, the Board of Appeal stated that it had taken account of the fact that United Kingdom registration No 1557184 was the subject of an invalidation action. In that regard, even if period timers in Class 9 were to fall outside the scope of protection of that registration, that would not affect the Board of Appeal’s assessment in any event.
Forms of order sought
18 The applicant claims that the Court should:
– annul the contested decision;
– allow the registration of the trade mark applied for;
– order OHIM to pay the costs.
19 OHIM contends that the Court should:
– declare inadmissible the applicant’s request for registration of the trade mark applied for;
– dismiss the action;
– order the applicant to pay the costs.
20 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The claim that registration of the trade mark applied for should be allowed
21 OHIM submits that the Court is not entitled to issue directions to it such as registration of the Community trade mark applied for. It takes the view that that claim is inadmissible.
22 The applicant has not made any submissions in that respect.
23 It should be recalled that, in accordance with Article 63(6) of Regulation No 40/94, OHIM is required to take the necessary measures to comply with the judgment of the Court of Justice. Accordingly, it is not for the Court of First Instance to issue directions to OHIM. It is for OHIM to draw the appropriate inferences from the operative part of this judgment and the grounds on which it is based (Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II‑683, paragraph 12, and Case T‑322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II‑835, paragraph 23). The present claim is therefore inadmissible on that basis.
The claim for annulment
Arguments of the parties
24 The applicant puts forward a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
25 As a preliminary point, the applicant points out that the intervener’s United Kingdom trade mark No 1557184 was partially invalidated in respect of ‘period timers’ by the decision of 15 July 2004 of the United Kingdom Patent Office, which expressly recognised the goodwill and repute which the applicant’s trade mark also enjoys as regards goods in Class 9.
26 Firstly, the applicant submits that the Board of Appeal did not give sufficient importance to the fact that its trade mark was reputed for all types of goods related to the measuring of time, as is proven by the documents which it produced before OHIM. It is therefore unthinkable that consumers in the European Union could reach the conclusion that the commercial origin of time-measuring apparatus and instruments bearing the trade mark OMEGA is anything other than the applicant. It is equally unthinkable that its clients could take unfair advantage of the intervener’s reputation since the intervener does not manufacture or sell any time-keeping apparatus or instrument.
27 Secondly, the applicant submits that it is the proprietor of a number of registrations within the European Union covering goods in Class 9. It refers, inter alia, to international registration No 287840 of 26 August 1964, which is valid in France, among other countries, and to United Kingdom registration No 699057 of 15 June 1951.
28 In that context, the applicant asserts that OHIM did not follow its own decision-making practice and, in particular, did not apply the solution adopted by the First Board of Appeal on 12 September 2000 in Case R 415/1999‑1. In that case it took account of the fact that the applicants for the Community trade mark at issue already owned identical non-Community trade marks in the relevant territories.
29 Thirdly, the applicant submits that the statement made by the Second Board of Appeal with regard to time and distance is inaccurate and quotes, in this respect, extracts from a judgment of the High Court of Justice of England and Wales, Chancery Division, of 28 November 2002.
30 OHIM disputes, firstly, the relevance of the applicant’s observations with regard to the partial cancellation of the intervener’s earlier United Kingdom registration No 1557184, since the Board of Appeal established that the goods at issue in Class 9 were similar without taking ‘period timers’ into account.
31 OHIM then asserts that the mere existence of non-Community trade mark registrations predating earlier rights relied on in support of the opposition is not sufficient per se to prove that there is no likelihood of confusion. The applicant has not proven that the opponent’s earlier marks already coexisted, without likelihood of confusion, on the United Kingdom and French markets, with its own even earlier national and international marks.
32 As regards the alleged reputation of the sign applied for in the United Kingdom and France, OHIM submits that the applicant does not dispute the finding of the Board of Appeal that the documentary evidence which it produced was inadmissible because it was filed out of time. OHIM points out that, in any event, in the context of opposition proceedings, it is the scope of protection of the earlier mark which is decisive. Furthermore, likelihood of confusion exists where the relevant public relates the goods and services in question to a single origin, be it that of the applicant or that of the proprietor of the earlier rights. However, OHIM concedes that where coexistence on the market is established, the proof of the reputation of the earlier mark may be a relevant argument supporting the finding that there is no likelihood of confusion. With regard to the applicant’s argument that the earlier marks do not enjoy a reputation in the field of time-measuring apparatus and instruments, OHIM submits that this is irrelevant for a finding of likelihood of confusion based on Article 8(1)(b) of Regulation No 40/94.
33 With regard to the agreement between the parties, OHIM disputes the applicant’s assertion that that agreement authorises it to register the trade mark applied for. OHIM observes that the terms of the coexistence agreement are ambiguous, which is corroborated by the different interpretation given by the parties in the course of the opposition proceedings as well as in actions before the national courts. OHIM takes the view that it cannot be bound by the provisions of a private agreement, whatever the correct interpretation of it may be. Furthermore, according to OHIM, whatever may be the legal rules governing such agreements in the United Kingdom, it is significant that the United Kingdom authorities reached their decisions without taking account of the agreement between the parties.
34 OHIM states, in conclusion, that the applicant has not shown that circumstances external to the marks themselves justify a finding that there was no likelihood of confusion.
35 The intervener disputes the relevance of the applicant’s claims as regards the cancellation of United Kingdom trade mark No 1557184, since, in its view, it is the status of the register at the time the application for registration is made which is key. Furthermore, the trade mark’s cancellation as regards ‘period timers’ does not matter since those goods were not relevant to the Board of Appeal’s reasoning.
36 With regard to the alleged reputation of the applicant’s trade mark, the idea that the more famous the mark, the easier it ought to be for its proprietor to obtain additional rights, has no basis in law. As to whether time is a variable parameter, it is not for this Court to decide between the interpretations of the Board of Appeal and the High Court of Justice.
Findings of the Court
37 Under 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; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 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.
38 In the present case, the Board of Appeal held, in the light of the intervener’s earlier United Kingdom and French registrations, that there was a likelihood of confusion between the marks in question, first, in the United Kingdom in respect of goods in Class 9 and, second, in France in respect of services in Class 42.
39 With regard to the comparison of the goods and services in question, the Board of Appeal found in paragraphs 26 to 30 of the contested decision that, firstly, the goods in Class 9 included in the trade mark application and those covered by the intervener’s earlier United Kingdom trade mark were very similar and, secondly, that the services in Class 42 included in the trade mark application and those covered by the intervener’s earlier French trade mark were identical or similar.
40 With regard to the comparison of the conflicting signs, the Board of Appeal held in paragraphs 32 to 34 of the contested decision, without its being disputed by the applicant, that the signs had a high degree of visual similarity and that they were identical on the phonetic and conceptual levels.
41 The applicant does not put forward any argument to challenge the Board of Appeal’s finding with regard to the similarity existing between the goods and services in question, first, and the conflicting trade marks, second. However, firstly, it argues that the fact that its trade mark is reputed for all types of goods connected with the measurement of time, in particular in the field of sporting activities, means that a likelihood of confusion can be excluded.
42 In order to reach its conclusion that there was a likelihood of confusion on the part of the United Kingdom and French public because of the established similarity between the trade marks and between the goods and services, the Board of Appeal took into consideration the goods and services as described in the trade mark application, which are not limited to goods and services connected with the measurement of time. In those circumstances, the applicant’s argument that its trade mark is reputed for all types of goods connected with the measurement of time cannot invalidate the conclusion of the Board of Appeal that there is a likelihood of confusion in the relevant territories.
43 In any event, even if the Board of Appeal should have examined specifically whether there was a likelihood of confusion in the light of the goods connected with the measurement of time, and even if it were established that the applicant’s trade mark is reputed for the goods thus described, the applicant’s argument cannot succeed. The fact that the relevant public may possibly associate the trade mark OMEGA with the applicant because it is allegedly well known cannot in any way exclude the existence of a likelihood of confusion in the present case, since the relevant public could be led to believe that the goods covered by the earlier mark are produced by the applicant.
44 Secondly, the applicant submits that it is the proprietor, within the European Union, of an international registration and a number of national registrations identical to the Community trade mark applied for in respect of goods in Class 9.
45 In that regard, the Court notes that the mere fact that the applicant is already the proprietor of a national trade mark, assuming it to be identical to the Community trade mark applied for, cannot provide a basis for rejecting the opposition, even if the intervener’s earlier mark was registered on a date later than that of the registration relied on by the applicant.
46 It is evident from the case-law that the validity of a national trade mark, in this case the intervener’s, may not be called in question in proceedings for registration of a Community trade mark, but only in cancellation proceedings brought in the Member State concerned. Moreover, although it is for OHIM to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of the national authorities (see Case T‑269/02 PepsiCo v OHIM – Intersnack Knabber-Gebäck (RUFFLES) [2005] ECR II‑1341, paragraph 26, and the case-law cited).
47 The Court notes that, in the present case, the intervener’s earlier United Kingdom trade mark was cancelled in respect of some of the goods concerned, that is to say ‘period timers’. However, as OHIM rightly points out, that fact is irrelevant since the Board of Appeal found that the goods at issue were similar without taking account of period timers.
48 In support of its argument relating to the relevance of the earlier registrations of which it is the proprietor, the applicant refers to the decision of the First Board of Appeal of OHIM of 12 September 2000 (Case R 415/1999‑1) concerning opposition proceedings. In that regard, it should be observed that the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those boards (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 66, and Case T‑36/01 Glaverbel v OHIM (Surface of glass) [2002] ECR II‑3887, paragraph 35). That reference is therefore irrelevant. In any event, it concerns a case completely different from the present case. In Case R 415/1999‑1, the applicant for the Community trade mark, far from relying, as in the present case, on the mere existence of a right to an earlier national trade mark, had proved that right and its actual and peaceful coexistence with the opponent’s trade mark in the national territory. It was, in particular, on that ground that the Board of Appeal found that there was no likelihood of confusion and rejected the opposition (see RUFFLES, paragraph 30). In the present case, however, the applicant has merely claimed that it was the proprietor of a number of registrations of its trade mark in respect of goods in Class 9.
49 With regard, thirdly, to the agreement between the parties, it must be noted that by that agreement the applicant undertook, inter alia, not to seek registration of the trade mark OMEGA in respect of apparatus industrially or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow. However, it is not apparent from the provisions of that agreement that the intervener undertook not to oppose registration of the trade mark OMEGA by the applicant. In any event, without its being necessary to consider the consequences of the agreement for the parties, the fact remains that the agreement is irrelevant to the assessment of the likelihood of confusion in the present case.
50 In the light of the foregoing considerations, since it has been found that the goods and services at issue are similar and that there is a high degree of similarity between the trade marks, there is no reason to vary the finding of the Board of Appeal that there is a likelihood of confusion on the part of the United Kingdom and French public.
51 Having regard to all the foregoing considerations, the present action must be dismissed.
Costs
52 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Omega SA to pay the costs.
Delivered in open court in Luxembourg on 6 November 2007.