JUDGMENT OF THE GENERAL COURT (First Chamber)
10 April 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ASTALOY – Earlier Community word mark HASTELLOY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Coexistence of trade marks)
In Case T‑505/10,
Höganäs AB, established in Höganäs (Sweden), represented by L.-E. Ström, lawyer,
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, intervener before the General Court, being
Haynes International, Inc., established in Kokomo, Indiana (United States), represented by E. Armijo Chávarri and A. Castán Pérez-Gómez, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 18 August 2010 (Case R 1530/2009-4), relating to opposition proceedings between Haynes International, Inc. and Höganäs AB,
THE GENERAL COURT (First Chamber),
composed of J. Azizi (Rapporteur), President, S. Frimodt Nielsen and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 18 October 2010,
having regard to the response of OHIM lodged at the Registry of the General Court on 17 February 2011,
having regard to the response of the intervener lodged at the Registry of the General Court on 17 February 2011,
having regard to the reply lodged at the Registry of the General Court of 29 June 2011,
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 and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 17 June 2004, the applicant, Höganäs AB, 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 (now replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration was sought for the word mark ASTALOY. 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 correspond to the following description: ‘Iron-based metal powders for industrial use’.
3 The Community trade mark application was published in the Community Trade Marks Bulletin No 11/2005 of 14 March 2005.
4 On 13 June 2005, the intervener, Haynes International, Inc., filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of the mark applied for in respect of all the goods referred to at paragraph 2 above. The opposition was based on the earlier Community word mark HASTELLOY covering goods in Class 6 corresponding to the following description: ‘Unwrought and partly wrought common metals and their alloys; common metals in the form of sheets, plates, bars, rails, castings, forgings, billets, pipes and tubes; welding rods, dies, valves, cables, wires, wire powders’.
5 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
6 On 6 November 2009, the Opposition Division found that genuine use of the earlier trade mark had been shown only for ‘alloys in the form of bars, sheets, flanges, seamless tubing’ in Class 6. In addition, it rejected the application for a Community trade mark on the ground that there was a likelihood of confusion between the marks at issue.
7 On 14 December 2009 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
8 By decision of 18 August 2010 (‘the contested decision’), the Fourth Board of Appeal of OHIM rejected the applicant’s appeal. It held, in essence, that the goods covered by the marks at issue were similar, that the signs were visually similar to a medium degree and phonetically similar to a high degree and that the coexistence of the trade marks at issue, before the contested Community trade mark application was filed, had not been established. It considered therefore that a consumer of the similar goods at issue would not be in a position to distinguish safely between the marks at issue.
Forms of order sought by the parties
9 The applicant claims that the Court should:
– annul the contested decision in its entirety;
– reject the opposition;
– order OHIM and the intervener to pay the costs.
10 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
1. Preliminary observations
11 In support of its application, the applicant claims infringement of both Articles 8(1)(b) and 9 of Regulation No 207/2009.
12 Pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute and pursuant to Article 44(1)(c) of the Rules of Procedure of the General Court, an application must, inter alia, state the subject-matter of the dispute and contain a brief statement of the pleas in law on which the application is based. That information given must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars relied on be indicated, at least in summary form, coherently and intelligibly in the application itself (see, to that effect, orders in Case T‑85/92 De Hoe v Commission [1993] ECR II‑523, paragraph 20, and in Case T-154/98 Asia Motor France and Others v Commission [1999] ECR II-1703, paragraph 49; see also the judgment in Case T‑277/97 Ismeri Europa v Court of Auditors [1999] ECR II‑1825, paragraph 29). A mere abstract statement of grounds does not alone satisfy the requirements set out above, since the application must specify the nature of the grounds relied on (see, to that effect, Case T‑100/04 Giannini v Commission [2008] ECR-SC I‑A-2-9 and II‑A-2-37, paragraph 62, and the case-law cited).
13 In the present case, the applicant claims infringement of Article 9 of Regulation No 207/2009 without explaining how that provision might have been infringed by the Board of Appeal. Therefore, this plea must be declared inadmissible.
2. Infringement of Article 8(1)(b) of Regulation No 207/2009
Introduction
14 The applicant submits that the contested decision infringes Article 8(1)(b) of Regulation No 207/2009, inasmuch as the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue.
15 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and because of 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.
16 Furthermore, 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).
The relevant public
17 In the contested decision, the Board of Appeal considered that, since the earlier trade mark was a Community trade mark and bearing in mind that the goods at issue were directed at a professional public, the perception of professional purchasers in the field of metallurgy in the European Union had to be taken into consideration in assessing the likelihood of confusion between the marks at issue (paragraph 14 of the contested decision).
18 Neither the applicant nor the intervener contests that assessment. OHIM states in its response that it is not contested that the relevant public is composed of purchasers in the field of metallurgy in the European Union, ‘namely’ in France, the United Kingdom and Ireland. The applicant contests the finding that the relevant public is limited to three Member States.
19 The Court holds in that regard that the Board of Appeal did not err in finding that, since the earlier trade mark is a Community trade mark and since the goods at issue are directed at a professional public, the relevant public comprises professional purchasers of the products at issue in the European Union. The General Court rejects the position defended by OHIM in its response in so far as it contends that the definition of the relevant public should be limited to that of France, the United Kingdom and Ireland. Since the earlier trade mark is a Community trade mark, the relevant public is composed of the consumers of the products covered by that trade mark in the European Union as a whole. The professional public for the products at issue, namely professionals in the field of metallurgy, will display a high degree of attentiveness given the special nature of those products.
Comparison of the products at issue
20 In the contested decision, the Board of Appeal considered that the highly similar nature and purpose of the products at issue, which are usually produced by the same producers, renders them similar products (paragraph 22 of the contested decision).
21 The parties do not contest the similarity of the products at issue. Given that the mark applied for relates to iron-based metal powders for industrial use and given that the earlier trade mark covers ‘alloys in the form of bar, sheets and seamless tubes’, the Board of Appeal’s finding that the products at issue were similar should be upheld.
Comparison of the signs
Introduction
22 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, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that 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).
23 In the present case, the Board of Appeal stated that the signs at issue were visually similar to a medium degree and phonetically similar to a high degree. Moreover, it considered that neither of the two words in dispute had a meaning in the languages of the European Union, with the result there did not exist ‘a conceptual impact of the respective marks that could have a bearing on the comparison of the two signs’ (paragraphs 17 to 21 and 25 of the contested decision).
24 The applicant contests that assessment. It claims that the signs are sufficiently different as regards the relevant public, bearing in mind that public’s high degree of expertise, the long and specialised nature of the sales process and the close link between the technical capabilities of a metal powder and the mark under which it is sold.
Conceptual comparison
25 In the contested decision, the Board of Appeal considered that, given the lack of meaning of the signs in dispute in the languages of the European Union, there did not exist ‘a conceptual impact of the … marks [at issue] that could have a bearing on [their] comparison’ (paragraph 21 of the contested decision).
26 The applicant claims that a professional purchaser will separate the endings ‘loy’ and ‘lloy’ from the rest of the signs at issue, because they will be perceived as an indication that the product at issue is an alloy. It refers in that regard to the trade marks listed in the Community Trade Mark Register which share a similar ending.
27 The Court observes, first of all, that the Board of Appeal did not err in finding that the signs at issue had no particular meaning in and of themselves.
28 Furthermore, the endings of the trade marks at issue do not correspond exactly to the English word ‘alloy’. While it is conceivable that those endings may evoke an alloy in the mind of the relevant public, the fact remains that such an evocation is present in each of the signs at issue, meaning that, rather than differentiating them, it contributes to making the trade marks at issue conceptually similar.
Visual comparison
29 In the contested decision, the Board of Appeal held that the signs at issue were visually similar to a medium degree. In particular, the Board of Appeal considered that the signs at issue were visually perceived as a whole in particular because the last four letters of the respective signs were not exactly ‘alloy’ and because the beginnings of the signs were meaningless. Moreover, the Board of Appeal considered that the verbal signs had a similar number of letters, an identical number of syllables and shared six letters combined in two groups of three situated at the beginning and at the end. It therefore considered that the differences in the marks at issue were secondary vis-à-vis the similarities (paragraphs 17 and 18 of the contested decision).
30 The applicant considers that there is a sufficiently clear visual difference between the first syllables of the marks at issue to distinguish one from the other. According to the applicant, a purchaser of the products at issue will be an expert in the field of metallurgy who is very discriminating and more attentive than professional purchasers in many other sectors. Any purchase of the products covered by the signs at issue will be preceded by extensive testing in order to determine production costs and technical performance. Accordingly, the applicant claims that a professional purchaser will separate the endings ‘loy’ and ‘lloy’ from the rest of the signs at issue, because they are perceived as an indication that the product at issue is an alloy. A comparison by the relevant public of the distinctive components ‘haste’ and ‘asta’ of marks at issue would lead, according to the applicant, to the conclusion that they were sufficiently different given the relevant public’s high degree of expertise and the length of the sales process of the products at issue.
31 As regards the visual similarity between the signs at issue, the Court considers that the Board of Appeal was correct to state that the signs in question had an identical number of syllables and shared six letters (‘a’,’s’,’t’,’l’,’o’,’y’), combined in the same sequence in two groups of three letters (‘ast’ and ‘loy’) situated at the beginning and at the end of the signs at issue. The Board of Appeal did not err when it concluded that those elements create a visual similarity which is more important than the visual differences between the trade marks at issue, namely the letters ‘h’ and ‘e’ and the double ‘l’ of the earlier sign as compared with the trade mark applied for.
32 The fact that the signs in question may be perceived as evoking an alloy, given the English word in question, does not affect the above assessment. That evocation does not mean that the relevant public will limit its visual perception of the signs in question to their initial letters or that it will focus on those letters. The fact that none of the signs uses the term ‘alloy’ itself and that the signs are composed only of a single meaningless word means that the words will be visually perceived and compared as a whole. The relevant public will perceive more similarities than differences when the signs at issue are compared.
33 The applicant’s argument based on the manner in which the products at issue are purchased does not call in question the Board of Appeal’s assessment. The function of a mark as an indication of the commercial origin of a product means that a purchaser of metal powders or alloys will first see the trade mark covering those products before it tests them in order to determine their production costs and their technical performance. A similarity between a mark applied for and an earlier mark is liable to affect the indication of origin of the earlier trade mark regardless of whether the purchase of the products covered by the marks at issue requires prior testing and cost studies.
34 Consequently, the Board of Appeal did not err in considering that, even taking into account the high degree of attention paid by the relevant public inasmuch as it is composed of professionals, the marks at issue were visually similar to a medium degree.
Phonetic comparison
35 In the contested decision, the Board of Appeal considered that the signs at issue were phonetically very similar, since the same number of syllables were structured around the same vowels, with the exception of the vowel ‘a’ in the centre as against the vowel ‘e’, in the same order and because of the phonetic emphasis placed on the same syllables in the different languages of the European Union. The only differences were the sound of the letter ‘h’, which would not be pronounced in all the languages of the countries at issue, and the use of the vowel ‘a’ in the centre of the word rather than ‘e’ (paragraphs 19 and 20 of the contested decision).
36 The applicant considers that there exists a clear phonetic difference between the first syllables of each mark which is sufficient to distinguish them and to exclude any likelihood of confusion.
37 The Court finds that a clear phonetic difference between the first syllables of each mark at issue cannot be established. The pronunciation of the marks at issue, at least in a great number of the languages of the European Union, results in a phonetic similarity, as the Board of Appeal stated and for the reasons that it put forward. Accordingly, the applicant’s argument must be rejected.
Global assessment of the likelihood of confusion
Introduction
38 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. 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-39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T-81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).
39 Moreover, it should be recalled that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (see Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑89, paragraph 59 and the case-law cited).
40 In the present case, taking into account the similarity of the products at issue (see paragraph 21 above) and the visual and phonetic similarities of the signs at issue (see paragraphs 34 and 37 above), the Court finds that a likelihood of confusion between the trade marks at issue cannot be excluded at the outset. However, as has been pointed out at paragraph 16 above, the likelihood of confusion must be assessed globally, taking into account all relevant circumstances. In the present case, the applicant also relied on the coexistence of the marks at issue in support of its position that there is no likelihood of confusion between them. The Court will examine the question of coexistence before turning to the final global assessment of the likelihood of confusion.
Coexistence of the marks at issue
41 In the contested decision, the Board of Appeal found that genuine use had been shown for the earlier mark in France, the United Kingdom and Ireland. Moreover, it found that, for the mark applied for, the information on the sales made under the ASTALOY mark applied for in the European Union prior to 17 June 2004, the date of filing of the Community trade mark application, was not broken down into geographical regions. For that reason, the Board of Appeal was not convinced that, prior to the date of filing of the Community trade mark application, the two conflicting marks had coexisted in the territory of the Member States of the European Union when such coexistence would be necessary given that in all of those States the likelihood of confusion exists prima facie (paragraph 24 of the contested decision).
42 The applicant claims that it demonstrated that the marks coexisted, meaning that there is no likelihood of confusion in the present case. OHIM and the intervener contest that assessment.
43 In the first place, the applicant claims that the Board of Appeal was wrong to have rejected the evidence of coexistence adduced on the basis that the evidence did not encompass all Member States. According to the applicant, the coexistence of the two marks provided guidance to OHIM that in the market place, over time, there was in fact no likelihood of confusion. The evidence of ‘co-use’ could therefore have an indicative value, even if that use did not cover all Member States.
44 In the second place, the applicant claims to have fulfilled each of the conditions proving coexistence on the market of the marks at issue. Accordingly, it claims to have demonstrated use of the intervener’s mark HASTELLOY on the market prior to the opposition procedure. It relies, in that regard, on the brochures of the products distributed throughout Europe. The European market is serviced by three European centres.
45 In addition, it claims to have demonstrated that the ASTALOY mark applied for has been used on the European market as a trade mark registered in many national registers. In contrast to the approach adopted by the Board of Appeal, it claims that it is possible to demonstrate such use on the basis of evidence other than that provided by sales statistics. According to the applicant, given the extreme sophistication of the relevant public and the close link between the mark and the products’ technical performance, brand awareness can be established through scientific articles and presentations at specialised conferences and exhibitions. The applicant cites, in support of this, a certain number of publications and presentations given at exhibitions and conferences at which the relevant public could reasonably have been expected to be in attendance, all of which refer to the ASTALOY mark applied for. It goes on to submit statistics of the quantities of powders sold under the ASTALOY name which, for 1979 to 1990 and 1996 to 2003, are not divided by geographic region and, for 2004 to 2007, are so divided. The applicant has also provided invoices, advertising leaflets and product labels and indicates that, aside from its seat in Sweden, it has offices in Belgium, France, Germany, Italy, Spain and the United Kingdom.
46 Lastly, in respect of the requirement that there be no likelihood of confusion in the mind of the relevant public, the applicant relies on several documents. Thus, the applicant refers first to an affidavit signed by Mr Olle Grinder, Associate Professor of the Division of Material Science and Engineering of the Royal Institute of Technology in Stockholm (Sweden) and a consultant in the field of powder metallurgy. In that affidavit, he testifies that the applicant’s mark (ASTALOY) and that of the intervener (HASTELLOY) have been used on the international market for some decades and that it is his firm opinion that, due to the differences in the application and in the spelling of the marks, there has not been any likelihood of confusion at that time and that there is no likelihood of confusion in the future. Second, the applicant relies on an affidavit of Mr Sten-Ake Kvist, a former member and long‑serving director of the applicant, who was involved in the introduction of the ASTALOY mark in the 1970s. He states in his affidavit that he is not aware of any there having been an instance of confusion between the ASTALOY and HASTELLOY marks on any occasion in the European Community or worldwide. The applicant claims that it is inherently impossible to produce absolute evidence of what has not been. The applicant further claims that, given that evidence, if there has been any instance of actual confusion in the market place without its knowledge or if there is any other reason that can explain the period of at least 15 years of peaceful coexistence in the Community market place, it would be reasonable to expect the intervener to be required to present that evidence, given the adversarial nature of the present case. The intervener has not, however, provided that evidence.
47 Having regard to those arguments, this Court notes that the Court of Justice has held that the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public. The absence of a likelihood of confusion may, in particular, be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 82). The General Court has, furthermore, held that the coexistence of two marks must be sufficiently long for it to be able to influence the perception of relevant consumer (see, to that effect, Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II‑715, paragraph 64).
48 Moreover, the General Court has already held that the possibility that the coexistence of earlier marks on the market could reduce the likelihood of confusion found to exist can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark has demonstrated to the requisite legal standard that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see, to that effect, Case T-31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 86; Case T-57/06 NV Marly v OHIM – Erdal (Top iX) [2007], not published in the ECR, paragraph 97; see also, to that effect, LIFE BLOG, cited in paragraph 39 above, paragraph 68).
49 It follows that, in the first place, as regards the geographic scope of coexistence, where the opposition to the registration of a Community trade mark is based on an earlier Community trade mark and the coexistence of that earlier trade mark with a trade mark identical to the trade mark applied for is relied on in support of there being no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union (see, to that effect, Case T‑103/06 Esotrade v OHIM – Segura Sánchez (YoKaNa) [2010], not published in the ECR, paragraphs 47 and 48). If the likelihood of confusion exists potentially throughout the European Union due to the Community-wide scope of the earlier trade mark, the absence of the likelihood of confusion as a result of the coexistence of the marks identical to the marks at issue must, in turn, be proven throughout the European Union.
50 As a result, given that the earlier trade mark is, in the present case, a Community trade mark, the applicant is wrong to claim that evidence of coexistence can have an indicative value even if the coexistence did not cover all Member States, on the ground that the purpose of the coexistence of trade marks seeks only to ‘guide’ the assessment of the likelihood of confusion or to provide guidance that in the market place over time there has in fact been no likelihood of confusion.
51 In the second place, it must be observed that, in order for two marks to co-exist, it is essential that they be present together on the market at issue over a sufficiently long period before the date of filing of the application for registration of the Community trade mark.
52 In the present case, the Board of Appeal rejected the argument that the trade marks at issue coexisted on the ground that the information provided on sales achieved under the mark applied for in the European Union prior to 17 June 2004, the date of the filing of the application for registration of the Community trade mark, had not been broken down by geographical region (paragraph 24 of the contested decision).
53 In that regard, the Court notes that the applicant provided a table setting out, for each of the years between 1996 and 2004, the number of tonnes of metal powder sold under the ASTALOY mark applied for. The applicant states that, before 2004, its sales statistics were not divided by country, but only by geographical region. The Court finds that although that table does indeed set out sales in Europe, it fails to show sales in each of the Member States.
54 The other document provided by the applicant attesting to the sales of products under the ASTALOY mark applied for before 2004 sets out the tonnes of those products sold per year worldwide without breaking them down by country in order to allow the sales figures of those products within the European Community to be known. While the possibility cannot be ruled out that those worldwide sales include sales in certain Member States, it cannot be established on the basis of such a document that that mark was in use in each one of the Member States.
55 It should however be noted that evidence of the presence and the use of a mark in a particular geographical market can be adduced by other evidence besides sales information. Other evidence may show such presence and use in the absence of evidence of sales.
56 In the present case, it is apparent from the documents before OHIM and the applicant’s arguments before the Court that the applicant has presented other evidence showing the presence of the ASTALOY mark applied for on the European Community market. Indeed, besides evidence of the quantity of products sold under the ASTALOY mark prior to 2004 in Europe, the applicant has also submitted articles and a large number of extracts from technical and scientific articles in which the ASTALOY mark applied for is referred to along with references and extracts of presentations at conferences and exhibitions in which that mark is mentioned.
57 Contrary to what the intervener submits, those articles and those presentations are capable of demonstrating the presence of that mark on the market for the products at issue. Given that the products at issue are highly specialised and destined for professional purchasers from the metallurgy sector, those articles and presentations could assist in establishing that mark’s presence on the market at issue.
58 In that regard, it must be possible that each potential purchaser of metal powders present in the Member States prior to 2004 will have inquired about the properties of those powders for the purposes of establishing the use which that purchaser intended to make of them prior to purchasing those powders. Indeed, considering the technical nature of the products at issue and the fact that those products are reserved for industrial use, the consumer of those products will not have purchased them without prior information concerning their specific properties. Information concerning the specific features of metal powders will be made available in particular in scientific and technical articles published in the field of metal powders and through participation at specialised events.
59 Prior to 2004, a number of specialised articles relating to certain properties or certain uses of metal powders placed on the market under the ASTALOY mark applied for were published, as the extracts of articles provided by the applicant from research in the Cambridge Scientific Abstract show. Moreover, the applicant provided OHIM with a copy of four of those specialised articles. Contrary to what the intervener submits, the date of publication of those articles can be established with certainty from the Cambridge Scientific Abstract. In addition, conferences have been organised in which the ASTALOY mark applied for has been used.
60 Moreover, the applicant has provided five invoices from before 2004 showing the product sales achieved under the ASTALOY mark applied for in Austria, Spain, Italy and Sweden.
61 Given that it has been shown that there were product sales under the ASTALOY mark applied for prior to 2004 in several Member States, namely in Austria, Spain, Italy and Sweden, that that mark has been referred to in a number of scientific and technical articles relating to metal powders published prior to 2004 and that the products covered by the ASTALOY mark applied for are very specialised products in a limited product market in which professionals make a purchase only after having analysed the technical specifications of the powders and alloys in question, the Court finds that the applicant has, in the present case, shown to the requisite legal standard that the ASTALOY mark applied for was present in all Member States.
62 However, it is possible to take into account the coexistence of two marks in the assessment of the likelihood of confusion only in so far as the evidence produced indicates clearly that such coexistence was based upon the absence of any likelihood of confusion between those marks. Accordingly, it was for the applicant, in the present case, to adduce conclusive evidence that the consumers of the products covered by each of the marks at issue did not confuse them prior to the filing of the application for registration of the ASTALOY mark as a Community trade mark.
63 On this point, the applicant has submitted two affidavits. In the first, a former executive of the applicant states that, during his career in the marketing division of the applicant, and then subsequently in a more important management role, he did not come across a single case of confusion between the ASTALOY and the HASTELLOY marks. He states that there was not one request or order for products covered by HASTELLOY mark. That may be explained, first, by the fact that the product sold under the ASTALOY mark is sold only in powder form whereas the products sold under HASTELLOY trade mark are only in a solid form, second, by the fact that the product sold under the ASTALOY mark is composed of iron with small quantities of additives and is therefore a bottom of the range product in comparison to the products sold under the HASTELLOY mark, which use more precious metals and, third, by the fact that the powder sold under the ASTALOY mark is purchased in bulk and the purchase is preceded by extensive testing, the purpose of which is to assess its cost and its technical performance. It follows that the users of the product sold under the ASTALOY mark are very familiar with the product ordered. Finally, fourth, production using the product sold under the ASTALOY mark as an input is much larger in scale than and differs significantly from the production for which metal sold under the HASTELLOY mark is used.
64 In the second affidavit, a professor and consultant in the field of powder metallurgy states that there is no likelihood of confusion between the marks because of the different fields of application of the marks at issue, the difference in their spelling and their technical designation.
65 However, those affidavits do not constitute sufficient evidence of the fact that the coexistence of the marks at issue was based on the absence of any likelihood of confusion between the marks for the products in question. There are only two such affidavits, neither of which come from one of the consumers of the products at issue.
66 That said, the Court further observes that, even if such coexistence between the trade marks at issue were to be established, it would not in itself be sufficient to establish an absence of a likelihood of confusion. The assessment of whether a likelihood of confusion exists or does not exist requires that all relevant factors be taken into account, factors which include not only the coexistence of the marks at issue, but also the similarity of the marks and the products.
Global assessment of the likelihood of confusion
67 The applicant considers that there exists a clear visual and phonetic difference between the first syllables of the marks at issue which is sufficient to distinguish them and thus exclude any likelihood of confusion. That conclusion is supported by the fact that the ASTALOY mark applied for and the earlier mark HASTELLOY have coexisted peacefully in the market place for at least 15 years without any instances of confusion being reported. It states that, even if the Court were to find that ‘co-use’ has not been established in all Member States, such use in several Member States is a strong indication that there is no likelihood of confusion.
68 Even if coexistence without the likelihood of confusion of the trade marks at issue were to be established on the basis of the affidavits provided by the applicant, the Court finds that the Board of Appeal did not err in finding that there was a likelihood of confusion between those marks given the visual and phonetic similarities of the marks at issue, the relevant public and the similarity of the products.
69 Indeed, even for a professional public which is active in the field of metallurgy and which pays a high degree of attention, it cannot be ruled out that the trade marks at issue could create an association or even confusion as to the commercial origins of the products sold under each of those marks, given the small visual and phonetic differences between the marks at issue and the possibility that they both evoke an alloy.
70 That conclusion is not called into question by the applicant’s argument based on the fact that it is also the owner of the ASTALOY CrM trade mark, which covers the same geographic area and the same products as those covered by the contested application. As the intervener has pointed out, it was only before the Court that the applicant raised that argument for the first time. In addition, the applicant has provided no proof in support of its claim. Finally, that trade mark is not identical to either the mark applied for or the earlier mark invoked. The likelihood of confusion must be assessed on the basis of the mark applied for and of earlier mark forming the basis of the opposition.
71 Therefore, the Court finds that, for all the foregoing reasons, the applicant’s application must be rejected in its entirety without there being any need to give a ruling on the admissibility of the applicant’s action to dismiss the opposition.
Costs
72 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.
73 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by the OHIM and by the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action.
2. Orders Höganäs AB to pay the costs.
Azizi | Frimodt Nielsen | Buttigieg |
Delivered in open court in Luxembourg on 10 April 2013.
[Signatures]