JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
17 April 2008 (*)
(Community trade mark – Opposition proceedings – Application for a figurative Community trade mark depicting a pelican – Earlier Community or national figurative trade mark Pelikan – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑389/03,
Dainichiseika Colour & Chemicals Mfg. Co. Ltd, established in Tokyo (Japan), represented by J. Hofmann and B. Linstow, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Laporta Insa, 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
Pelikan Vertriebsgesellschaft mbH & Co. KG, established in Hannover (Germany), represented initially by A. Renck, V. von Bomhard and A. Pohlmann, and subsequently by A. Renck, V. von Bomhard and T. Dolde, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 September 2003 (Case R 191/2002-2) relating to opposition proceedings between Pelikan Vertriebsgesellschaft mbH & Co. KG and Dainichiseika Colour & Chemicals Mfg. Co. Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, F. Dehousse and D. Šváby, Judges,
Registrar: K. Andová, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 24 November 2003,
having regard to the response of OHIM lodged at the Registry on 19 October 2005,
having regard to the response of the intervener lodged at the Registry of the Court on 2 November 2005,
having regard to the stays of proceedings decided on 25 October 2004, 31 January 2005 and 30 May 2005,
having regard to the decision of 1 December 2005, refusing the applicant’s request for leave to lodge a statement in reply,
further to the hearing on 13 March 2007,
gives the following
Judgment
Background to the dispute
1 On 25 November 1998 the applicant filed an application for the 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The sign for which registration was sought was the following figurative trade mark:
3 The goods for which registration was sought belong to Classes 1, 2 and 17 within the meaning of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and are for each Class described as follows:
– ‘chemicals; industrial inorganic chemicals; industrial organic chemicals; surface active agents; chemical agents; unprocessed plastics’, in Class 1;
– ‘dyestuffs; pigments; painting materials; printing inks; colorants’, in Class 2;
– ‘plastics; plastic substance, semi-processed’, in Class 17.
4 That application was published in Community Trade Marks Bulletin No 69/99 of 30 August 1999.
5 On 11 October 1999 Pelikan Vertriebsgesellschaft mbH & Co. KG filed a notice of opposition against registration of the mark applied for. The opposition was based on the following earlier rights:
– figurative Community trade mark No 179226, filed on 1 April 1996 and registered on 24 November 1998 in particular for goods in Class 1 within the meaning of the Nice Agreement (‘chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire-extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’), which is as follows:
– figurative Community trade mark No 179242, filed on 1 April 1996 and registered on 24 November 1998 in particular for goods in Class 2 within the meaning of the Nice Agreement (‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists’), which looks as follows:
– German figurative trade mark No 39829244, filed on 25 May 1998 and registered on 31 May 1999 for different goods and services in Classes 1 to 22, 24 to 26, 28, 31, 34, 36, 38, 39, 41 and 42 within the meaning of the Nice Agreement, which is as follows:
– the following figurative sign used in the course of trade in Germany for ‘printed matter, office equipment and stationery, including writing utensils’:
– the company name ‘Pelikan Vertriebsgesellschaft mbH & Co. KG’ used in the course of trade in Germany.
6 The intervener based its opposition on all the goods and services covered by its registrations and earlier rights and directed the opposition against all the goods set out in the application for registration.
7 The grounds relied upon in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 40/94.
8 By decision of 20 December 2001, the Opposition Division upheld the opposition and refused to register the mark applied for in respect of all the goods referred to in the application. The Opposition Division found that there was a likelihood of confusion between the earlier Community trade marks Nos 179226 and 179242 and the mark applied for. Consequently the Opposition Division found it unnecessary to consider whether there was a likelihood of confusion between the German trade mark No 39829244 and the mark applied for, and likewise unnecessary to examine the other claims on which the opposition was based.
9 On 20 February 2002 the applicant filed a notice of appeal against the decision of the Opposition Division with OHIM.
10 By decision of 18 September 2003 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, on the part of the public in the Community, between the mark applied for and ‘the mark covered by earlier Community mark registrations Nos 179226 and 279242’. Consequently, the Board of Appeal found it unnecessary to examine the claims based on the intervener’s other earlier rights.
Forms of order sought by the parties
11 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– dismiss the opposition;
– register as a Community trade mark the sign applied for in respect of goods in Classes 1, 2 and 17 set out in the application for registration;
– order the intervener to pay the various costs incurred as a result of the opposition and the appeal procedure before OHIM;
– order the intervener to pay the costs of the present procedure.
12 OHIM and the intervener contend that the Court of First Instance should:
– dismiss the application;
– order the applicant to pay the costs.
Law
Evidence presented for the first time before the Court of First Instance
13 The applicant annexed to the application a photograph of the packaging of the goods in issue, which feature its firm name and the sign applied for, to support its argument that it used that sign as a logo with the name of its business.
14 OHIM contends that the new documents annexed to the application must be ruled inadmissible. If they were accepted by the Court, the Court would review the case on the basis of a factual context different from that presented before the Board of Appeal. There are no special circumstances justifying the production of those documents before the Court and they could have been produced during the procedure before OHIM.
15 The Court points out that, according to settled case-law, the purpose of the action before it is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (see Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25, and Case T‑194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 38, and the case-law cited there).
16 In the present case, it must be noted that the annex to the application – which consists of a photograph of the sign applied for used in conjunction with the name of the applicant’s firm – is indeed produced for the first time before the Court of First Instance. Consequently, that annex cannot be taken into consideration and must be disregarded.
The general reference to observations before OHIM
17 The applicant submits that its observations before OHIM of 6 June 2000, 19 April 2002 and 13 May 2003 form an integral part of the plea adduced in support of the present action.
18 In its statement in reply, in relation to its claim that it often uses the logo depicting a pelican without the word ‘Pelikan’, the intervener refers to documents and pieces of evidence submitted to OHIM, but without specifying which documents or pieces of evidence it has in mind.
19 The Court notes the settled case-law that under Article 44(1) of the Rules of Procedure of the Court of First Instance, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those same rules, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see Joined Cases T‑350/04 to T‑352/04 Bitburger Brauerei v OHIM – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II‑4255, paragraph 33, and the case-law cited there). That case-law can be transposed to the response of the other party to opposition proceedings before a Board of Appeal who intervenes before the Court of First Instance, pursuant to Article 46 of the Rules of Procedure, which applies to intellectual property matters, by virtue of the second subparagraph of Article 135(1) thereof (Case T‑115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II‑2907, paragraph 11). It is not for the Court of First Instance to take on the role of the parties by seeking to identify the relevant pleas and arguments in the document they refer to. Therefore, the originating application and the statement in reply of the intervener, inasmuch as they refer to observations which the applicant and the intervener, respectively, submitted to OHIM, are inadmissible in so far as the general references they contain do not relate to pleas and arguments developed in the application and the statement in reply, respectively.
The lawfulness of the contested decision
20 In support of its application, the applicant puts forward a single plea of infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
21 First, the applicant submits that the Board of Appeal infringed Regulation No 40/94 by failing to have regard to the specialist circles which comprise the exclusive target market.
22 According to the applicant, the goods in issue such as ‘plastics; plastic substance, semi-processed’, ‘industrial inorganic chemicals; industrial organic chemicals; surface active agents; chemical agents; unprocessed plastics’ and ‘dyestuffs; pigments; painting materials; printing inks; colorants’ are used exclusively for processing in the field of industrial finishing or manufacture and are not intended for consumer end users, but for specialists such as chemists and engineers in the processing industries who take decisions on purchasing chemical and plastic products. Such persons clearly perceive even the slightest differences between the signs.
23 According to the applicant, the goods in question are not sold in retail or wholesale outlets but direct from business to business. The applicant refers to an enquiry addressed to a dye-manufacturing company which revealed that, when such products are purchased, a selection is first made from a catalogue of pigments to be used in the manufacture of the dye, taking into account the appropriate additives and requirements. An order for samples is then placed directly with the manufacturer and a series of tests is carried out. If those tests are successful, an order for larger quantities is placed directly with the manufacturer. The dyes are selected according to their material characteristics and the colouring effect they have on the end product. Therefore professionals do not differentiate according to the trade mark in question, but take a detailed interest in the various products and distinguish between them according to their composition or a combination of figures and letters.
24 The applicant submits that specialists are more prudent in selecting products than the average consumer, particularly as they buy large quantities from a small number of chemical concerns. Consequently there is no likelihood of confusion in the field of the industrial processing of chemicals, dyes or plastics, whether semi-processed or unprocessed.
25 Second, the applicant submits that the Board of Appeal infringed Regulation No 40/94 by not making a distinction to reflect differences between the products. According to the applicant, there is only very limited similarity as between ‘plastics; plastic substance, semi-processed’ in Class 17 listed in the application for registration and ‘unprocessed plastics’ in Class 1.
26 The applicant claims that, to asses the similarity of the goods in question, account must be taken of all the material factors which characterise the relationship between the goods, in particular their nature, intended purpose and use and whether they are competing or complementary goods. It is also necessary to take account of whether the place of manufacture, the manner of use of the goods and the material and technical characteristics of the goods are the same.
27 The applicant submits that, according to the judgment in Case C-9/93 IHT Internationale Heiztechnik and Danziger [1994] ECR I-2789, paragraph 16, the question of a likelihood of confusion arises where the goods in question are sufficiently closely connected to induce users seeing the same device on those products to conclude that the products come from the same undertaking.
28 It is clear, according to the applicant, that assessment of the goods in issue on the basis of the abovementioned criteria permits the conclusion that there are significant differences.
29 The applicant submits that the target markets do not have an exact picture of the goods marketed by chemical undertakings and that, therefore, those undertakings and their names cannot be regarded as indicating centres of manufacture in the usual sense for the purpose of demonstrating the similarity of the goods. Otherwise the result would be that medicines would be similar products to glues or plastics because they are manufactured in one chemical undertaking.
30 According to the applicant, plastics have specific characteristics and uses which do not correspond to those of ‘chemicals used in industry’. The statement that ‘chemicals used in industry’ are used in the manufacture or processing of plastics is not on its own sufficient to justify the assertion that the goods are similar. Chemicals are used in various production processes for most products. If the use of chemicals in the manufacture of a product means that the finished product and the chemicals in question are similar goods, the finished products (such as a printer or computer) would have to be considered to be similar because their components (such as the casing, hard disc and processor) were made with the aid of chemicals and/or made of chemicals.
31 Consequently ‘chemicals used in industry’ cannot generally be considered to be goods similar to ‘plastics, plastic substance, semi-processed’.
32 The applicant also challenges the assertion that ‘plastics, plastic substance, semi-processed’ and ‘unprocessed plastics’ are so closely related that they are similar goods. The assessment must take account of the fact that they are goods used for industrial processing or the manufacture of goods and that the target market consists of specialists such as chemists.
33 ‘Unprocessed plastics’ are supplied by producers, are processed to make various commercial goods such as semi-finished plastics (sheets, plastic bricks and plastic tubing) and are then sent on to undertakings that manufacture and sell finished plastic products (buckets, bin-liners, etc.). Consequently the individual plastic materials are manufactured and marketed by different undertakings, depending on the stage of production.
34 As the different manufacturers participate at different levels of the commercial process, the purchaser groups cannot coincide. However, the fact that they are different means that no likelihood of confusion exists.
35 Third, the applicant submits that there is no phonetic, visual or conceptual similarity as between the signs in issue and that therefore there is no likelihood of confusing them.
36 The applicant states that the sign applied for is a logo without a word element, which cannot be regarded as having an unambiguous meaning that could be used in trade to distinguish the goods. In the applicant’s opinion, it may be described in different ways. The predominant recognisable element in the sign applied for is ‘a bird in/on a globe’. In this connection, the applicant notes that, at paragraph 23 of the contested decision, the Board of Appeal states that the sign applied for ‘will first and foremost be perceived as a “bird in a globe” and that orally consumers will refer to it as such’.
37 According to the applicant, the description – in terms of phonetics – of the sign applied for is not similar to that of the intervener’s marks, which consist of the word ‘Pelikan’ accompanied by a pictorial element. The applicant submits that it is certain that the relevant public refers to those marks as a pelican. There is no similarity as between the word ‘pelican’ and the term ‘bird in/on a globe’. Therefore, there is no likelihood of confusion of the conflicting marks from a phonetic point of view.
38 The applicant points out that the Board of Appeal also considers that it is ‘quite difficult to avoid the perception of a pelican, and it would appear likely that consumers also refer to the mark applied for in such a way’.
39 According to the applicant, the Board of Appeal does not express a view on the proportion of consumers who will perceive a pelican in the sign applied for or who might describe it phonetically as such. In the applicant’s view, that was necessary in order to preclude any opposition to the finding that the sign ‘first and foremost will be perceived as a “bird in a globe”‘. In order to find a likelihood of confusion from the phonetic viewpoint, the Board of Appeal ought to have determined whether the number of consumers who would perceive the sign applied for as a pelican and refer to it as such is sufficiently large to justify such a finding. In that connection, the applicant submits that the Board of Appeal ought to have taken into account the fact that the relevant public is made up exclusively of specialists and ought to have considered whether the relevant products are marketed differently from ordinary consumer goods. As there are no such findings, the contested decision is vitiated by errors of law.
40 The applicant maintains that it does not necessarily follow from the Board of Appeal’s finding that it is ‘quite difficult to avoid the perception of a pelican’ in the sign applied for that a significant proportion of the target consumers may also refer to it as such. The Board of Appeal based its finding on an imaginary depiction of a pelican and considered whether there were any similarities with the depiction in the applicant’s logo. According to the applicant, that process will not be followed by the relevant trade circles. It is crucial to know whether a material number of relevant consumers perceive the sign applied for directly and exclusively as a pelican and refer to it exclusively as such.
41 According to the applicant, in any case, in the contested decision the Board of Appeal assumes that consumers will perceive different figures in the sign applied for and that they might refer to it in different ways. That is particularly likely in the case of figurative marks. In the case of purely figurative signs and the goods identified by them, it is unusual to differentiate between them according to the manner in which the figurative marks (or logos) are referred to. Orders are placed mainly with the manufacturer who is known because the name of his undertaking or an additional word mark appears with the figurative trade marks. In the present case, the applicant uses the mark applied for as a logo together with the name of its business.
42 Visually, the two conflicting signs are entirely different. The applicant points out that the sign in respect of which the intervener claims earlier rights consists of the word ‘Pelikan’ in black stylised script with a pictorial element consisting in a black circle within which a stylised swan is depicted sitting on a white semi-circle and feeding its young. The sign applied for contains no word element. It depicts a stylised globe in black lines on a white background with a North and South Pole and longitudinal and latitudinal lines. The globe contains a stylised bird also depicted in black lines. The differences between the sign applied for and the intervener’s marks are therefore attributable not only to the additional word ‘Pelikan’, but also to the clear differences in the logos. The applicant observes that the sign applied for consists of black lines on a white background, whereas the intervener’s logo consists of a black circle containing a white bird (a swan). The globe with North and South Poles and the longitudinal and latitudinal lines do not appear in the intervener’s logo. The birds depicted in the logos differ entirely from each other, both in the way the lines are drawn and in their shape. There is no similarity in the logos in the two signs. The Board of Appeal’s finding that ‘visually, the mark applied for and the mark covered by Community trade mark registrations Nos 179226 and 179242 have a low degree of similarity’ is incorrect.
43 According to the applicant, neither logo depicts a pelican in a clearly recognisable manner. The Board of Appeal does not explain why the stylised depiction of a bird in the intervener’s logo should necessarily be a pelican, particularly as it does not have a conspicuously large beak.
44 The applicant submits that specialists pay particular attention to the labels identifying the goods in question. The goods are packaged in neutral containers, so that the labels stand out. As the marks at issue are clearly different visually (which is noticed by the target specialist buyers), there can be no likelihood of confusion.
45 In order to examine the conceptual similarities of the conflicting marks, the applicant proceeds on the basis that the intervener’s marks are characterised by, on one hand, the word ‘Pelikan’ and, on the other, by the logo which depicts ‘a white bird (a swan) with a nest’. The concepts conveyed by those latter are therefore ‘pelican’ and ‘swan with nest’. By contrast, the sign applied for suggests conceptually ‘ubiquity’ because of the globe and ‘speed’ because of the bird depicted. Therefore, there is no conceptual similarity in the competing signs.
46 According to the applicant, the Board of Appeal, in making an unsubstantiated finding that there was conceptual identity as between the conflicting signs, fails to examine in detail the globe, the bird shown in it or the meaning of either of them. The Board does not comment either on the conceptual contradictions perceptible in the intervener’s trade marks, which clearly depict a swan, but accompanied by the word ‘pelican’. Therefore the intervener’s signs cannot be regarded as having one unambiguous meaning. The Board of Appeal found that the intervener’s marks referred to a pelican without stating grounds.
47 Even if such a meaning had to be attributed to the intervener’s signs, that meaning contradicts the meaning of the mark applied for. Even if the view were taken that it is possible for the conflicting signs to be associated conceptually because of the word ‘pelican’ and the picture of a ‘bird in/on a globe’ (which the applicant denies), that is not sufficient to justify the finding of a likelihood of confusion between them. The applicant refers to the case-law which states that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 26).
48 According to the applicant, it follows from this that there is no likelihood of confusion between the conflicting marks.
49 The applicant submits that the Board of Appeal infringed Regulation No 40/94 by failing to examine the characteristics of the two conflicting signs. According to the applicant, the Board of Appeal ought to have referred to the existing phonetic and conceptual differences and should not have attached secondary importance to the manifest visual differences. This applies particularly to the goods in issue insofar as a correct mixture of substances is of the first importance to obtain a specific end product and specialists concentrate their attention on the labels designating the product. Therefore, the visual difference between the conflicting marks is particularly important. According to the applicant, if the Board of Appeal had examined the likelihood of confusion in a legally unimpeachable manner, it would have found that the signs are not liable to be confused. Consequently the Board ought to have annulled the contested decision and ordered the registration of the mark applied for.
50 OHIM, supported by the intervener, disputes the applicant’s arguments.
Findings of the Court
51 Article 8(1)(b) of Regulation No 40/94 provides that ‘[u]pon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not 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’ and that ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’.
52 According to consistent 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.
53 According to the same line of case-law, the likelihood of confusion must be assessed globally, in accordance with the perception in the mind of the relevant public of the signs and the products or the services in issue, and by taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 31 to 33, and the case-law cited there).
54 In the present case, it must be noted that, in the contested decision, the Board of Appeal found that there was a likelihood of confusion between the mark applied for and the earlier Community trade marks Nos 179226 and 179242, and that, given that result, it was not necessary to consider the intervener’s claims based on the other earlier rights (paragraphs 26 and 27 of the contested decision).
55 It must be noted that the purpose of the action before the Court of First Instance is to obtain a review of the legality of the decision of the Board of Appeal. That review must therefore be carried out with regard to the issues of law raised before the Board of Appeal (Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 22). Consequently it must be examined whether the Board of Appeal was right in finding that there was a likelihood of confusion between the mark applied for and the earlier Community trade marks Nos 179226 and 179242, and it is not necessary to take into account the other registrations and rights claimed by the intervener in support of its opposition.
– The relevant public
56 As regards the public in relation to which the likelihood of confusion between the marks at issue must be assessed, the applicant’s argument that the Board of Appeal failed to have regard to the specialists that constitute the exclusive target market of the products in issue must be dismissed as having no factual basis.
57 In this respect, it must be noted, first, that the Board of Appeal found, in paragraph 22 of the contested decision, that ‘[s]emiprocessed plastics and plastic substances are derived from “unprocessed plastics” and the goods are therefore found in various stages of the same manufacturing process’. Second, it must be noted that, in response to the applicant’s alternative request that, if the Board of Appeal were to find that there was a risk of confusion, the list of products in respect of which registration was sought had to be restricted by adding: ‘… all goods in all Classes are destined for manufacturers for further processing’, the Board of Appeal said, in paragraph 28 of the contested decision, that such an addition ‘cannot change the result’ and that ‘[t]he goods belonging to the list of goods as it stands are also, at least to a large extent, for manufacturing purposes’.
58 It follows from the foregoing that, for the Board of Appeal, the only perception that matters is the perception in the minds of the manufacturers that engage in further processing of the goods in issue. Therefore, the Board of Appeal did indeed take account of a specialised public.
59 Moreover, it also has to be noted that, in the contested decision, the Board of Appeal did not call in question the Opposition Division’s reasoning concerning products such as the applicant’s ‘plastics; plastic substance, semi-processed’ and the intervener’s ‘chemicals used in industry’ and ‘unprocessed plastics’, according to which ‘these products are all used in the manufacturing process and none of them is a final product’ and, in that sense, can have ‘the same specialised end users (manufacturing companies)’. Even though the Board of Appeal also did not react, in the contested decision, to the fact that the Opposition Division referred to the Court’s case-law concerning the definition of the average consumer, it must be held in this respect that the Board of Appeal was under no obligation to add any further details to the Opposition Division’s assessment, given that, in the proceedings before the Board of Appeal, the applicant did not challenge the Opposition Division’s assessment of the relevant public.
60 In those circumstances and in the light of the nature of the products in issue, which are described in paragraphs 3 to 5 above, the Court of First Instance considers that account should be taken of such a specialised public when comparing the marks at issue. Moreover, such a finding accords with the statements the parties made during the hearing, as recorded in the minutes of the hearing. Given that those marks are Community trade marks, account must be taken of that public throughout the entire European Union. In addition, the fact that the relevant public is specialised in the sector of the products in question implies that it is likely to take great care in the selection of those products.
– The products in issue
61 It must be noted that, according to consistent case-law, in assessing the similarity of the products in question, all the relevant factors which characterise the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 32, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 33; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 23).
62 According to Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, the classification of goods and services under the Nice Agreement is to serve exclusively administrative purposes. Therefore, goods may not be regarded as being dissimilar from each other on the sole ground that they appear in different classes.
63 It must be noted at the outset that the applicant stated during the hearing that it did not challenge the Board of Appeal’s assessment that the products in Classes 1 and 2 listed in the application for registration were in some cases identical and in other cases similar to products in Classes 1 and 2 protected by earlier Community trade marks belonging to the intervener.
64 Therefore, the applicant only challenges the Board of Appeal’s finding regarding the similarity between ‘plastics; plastic substance, semi-processed’ in Class 17 listed in the application for registration and the products protected by the earlier trade marks in question.
65 In this respect, it must be noted that the Board of Appeal stated as follows in paragraph 22 of the contested decision:
‘The [applicant’s] goods “plastics; plastic substance, semi-processed” in Class 17 are similar to the goods covered by Community trade mark registration No 179242 in Class 2 and Community trade mark registration No 179226 in Class 1. Semi‑processed plastics and plastic substances are derived from “unprocessed plastics” and the goods are therefore found in various stages of the same manufacturing process. Furthermore, semi-processed plastics will contain or be manufactured with the aid of “chemicals used in industry”. Consequently, it appears warranted to conclude that the applicant’s goods in Class 17 are similar to goods covered by Community trade mark registrations No 179242 and 179226.’
66 Without challenging the accuracy of the Board of Appeal’s assertion that ‘semi‑processed plastics and plastic substances are derived from “unprocessed plastics”‘, the applicant submits, in essence, that the relationship between those products is not sufficiently close for them to be regarded as similar.
67 As a preliminary point, it must be noted that, given that it describes products that appear as ‘plastics’ and ‘semi‑processed plastics’ in Class 17, the definition of the products for which registration is sought – in as much as it relates to the nature of those products – is very broad. It covers a wide range of products derived from polymerisation or the chemical transformation of polymers. More particularly, it must be noted that the term ‘plastics’ is sufficiently wide to encompass ‘unprocessed plastics’ protected by the intervener’s Community trade mark No 179226 in Class 1.
68 In this respect, first it must be held, as did OHIM, that the term ‘plastics’ in Class 17 in the list of products for which registration is sought covers plastic as a raw material and not finished products made from plastic. It is not apparent from the heading of Class 17 or from the explanatory note for that class, according to which that class includes mainly ‘… plastics, being for use in manufacture in the form of sheets, blocks and rods …’, or from the word ‘plastics’ itself that it concerns finished plastic products. Finished plastic products fall within different classes for the purposes of the Nice Agreement, corresponding to the specific finished product. Moreover, the applicant itself submits that the products for which registration is sought are used exclusively for processing in the field of industrial finishing or manufacture and are not intended for consumer end users (see paragraph 22 above).
69 Second, as regards the fact that the ‘plastics’ covered by the application for registration fall into a different class for the purposes of the Nice Agreement than ‘unprocessed plastics’ protected by the intervener’s trade mark No 179226, it must be held, in the light of what was stated in paragraph 62 above, that this alone cannot invalidate the finding that the first of those terms encompasses the second. The fact remains that ‘unprocessed plastics’ and ‘plastic substance, semi-processed’ are nothing other than ‘plastics’ at different stages of the same production process. All those plastics are inherently the same, in that they are produced by polymerisation or the chemical transformation of polymers, and serve the same purpose, namely use in the process of making finished plastic products.
70 In this last respect, it must be added that neither ‘plastics; plastic substance, semi-processed’ nor ‘unprocessed plastics’ are restricted – by their wording or by their nature – to a particular category of finished plastic products. Therefore, it must be held that all those plastics can be used in the manufacture of the same finished plastic products.
71 Third, even though the applicant denies that one and the same undertaking manufactures all the products in question (‘plastics; plastic substance, semi-processed’ and ‘unprocessed plastics’), it has however not shown that this is ruled out. In this respect, it must be held that the applicant itself manufactures or intends to manufacture both ‘plastics; plastic substance, semi-processed’ and ‘unprocessed plastics’, as the application for registration shows. Moreover, the intervener stated that other undertakings, such as BASF and Dow Chemicals, manufacture plastics at the various stages of production in question. Therefore, the applicant’s claim that one and the same undertaking cannot manufacture the various plastics in issue must be dismissed.
72 Fourth, given that, as stated in paragraphs 67 to 69 above, the term ‘plastics’ encompasses the term ‘unprocessed plastics’, and that both ‘plastics; plastic substance, semi-processed’ and ‘unprocessed plastics’ can be used in the manufacture of the same finished products, it must be held that the plastics in the three categories mentioned above are complementary and competing, and might therefore be bought by the same purchasers.
73 Fifth, given that the application for registration did not mention any particular method of marketing, the products in Class 17 designated by the mark for which registration is sought may be marketed together with unprocessed plastics, which are protected by the intervener’s trade mark. Even taking into account, as submitted by the applicant, that its products are not sold in retail or wholesale outlets, but direct from business to business, in particular by catalogue, it cannot be excluded that they may be distributed using the same retail network in the same manner as the products in question protected by the intervener’s trade mark.
74 It follows that the Board of Appeal rightly found that the products are similar within the meaning of Article 8(1)(b) of Regulation No 40/94.
– The signs in issue
75 It is clear from consistent case-law that the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47, and the case-law cited there).
76 In the present case, as concerns the visual similarity, the Board of Appeal stated the following in paragraph 24 of the contested decision:
‘[T]he mark applied for and [the earlier trade marks Nos 179226 and 179242] have a low degree of similarity. This is primarily because of the word element of [the earlier trade marks Nos 179226 and 179242]. However, the marks still have the basic feature in common that they both depict a pelican.’
77 More particularly, as regards the mark applied for, the Board of Appeal states, in paragraph 23 of the contested decision, that ‘[even though] it may be that it will first and foremost be perceived as a “bird in a globe” … the Board finds it quite difficult to avoid the perception of a pelican …’.
78 That assessment by the Board of Appeal cannot be held to be vitiated by any error. On one hand, in light of the overall visual impression given by the earlier trade marks, the Board of Appeal was fully entitled to highlight that the word ‘Pelikan’, which in those marks comes before the figurative element depicting a bird in a circle, differentiates them from the mark applied for, which, for its part, comprises only a figurative sign without any word element. The word ‘Pelikan’, which takes up the greater part of the earlier trade marks, no doubt catches consumers’ attention, because of its size as well as its letters, which are italicised and easy to read.
79 On the other hand, the Board of Appeal was fully entitled to state that, none the less, the marks still have the basic feature in common that they both depict a pelican. In fact, both the mark applied for and the earlier marks depict a stylised white bird revealing a long bill with, in the bill’s lower half, the pouch in which this bird keeps fish – in other words, a bill which is characteristic of a pelican. That figurative element is clearly perceptible in the mark applied for. As regards the earlier marks, even assuming that some customers might wonder for a moment whether the figurative element depicts a pelican or a swan, any possible confusion is removed by the word ‘Pelikan’ appearing alongside it, which, in various European languages, either designates a pelican (in German, Danish and Swedish) or comes close to the word designating a pelican. Even in the latter case, the meaning of the term ‘Pelikan’ is understood by the relevant customers, given that they see the term at the same time as the logo depicting a bird displaying the characteristic features of a pelican. It follows that, contrary to what the applicant submits, there is no ambiguity as regards the bird depicted by the conflicting marks.
80 It must be added that the difference in the graphic stylisation of the pelicans in the marks at issue is a minor element that the relevant public is not likely to remember. The same is true for the presence of stylised young birds in the earlier marks. As regards the difference in background against which the image is shown (on one hand, a black background; on the other, lines that may recall the longitudinal lines of a globe), it does not in any way alter the fact that the public will perceive, both in the mark applied for and in the earlier marks, a pelican shown in left profile, in white and black, in the middle of a circle that it largely fills out. That pelican immediately comes to consumers’ minds and will be remembered.
81 More particularly, it must be stated that, given that the marks are perceived as a whole, consumers will perceive that figurative representation of a pelican also in the earlier marks, despite the fact that it is the word ‘Pelikan’ that takes up the larger part of that mark. Given that the abovementioned figurative representation is conceptually linked to the word ‘Pelikan’, it is not at all unimportant but, on the contrary, it retains its power to visually attract and will be remembered by consumers, who will make the link between the two elements making up the earlier marks and will remember both the verbal and the figurative element.
82 In view of the above, the Court of First Instance holds that the Board of Appeal correctly stated that, visually, the mark applied for and the earlier trade marks Nos 179226 and 179242 have a low degree of visual similarity.
83 In relation to conceptual and phonetic aspects, the Board of Appeal set out the following findings in paragraph 23 of the contested decision:
‘It may be that [the mark applied for] will first and foremost be perceived as a “bird in a globe” and that orally consumers will refer to it as such. However, the Board finds it quite difficult to avoid the perception of a pelican, and it would appear likely that consumers also refer to the mark applied for in such a way. In this context it must be recalled that consumers have an imperfect recollection of marks. Therefore, and for the reasons given in the decision [of the Opposition Division], the Board finds that the mark applied for and [the earlier trade marks] Nos 179226 and 179242 are conceptually identical and phonetically identical or very similar.’
84 As a preliminary point, it must be stated that the applicant has submitted the claim alleging an infringement of the obligation to state reasons (see paragraphs 39, 40 and 46 above), without drawing a clear distinction between that claim and the claim alleging an error of assessment.
85 It must, however, be remembered that, in accordance with consistent case-law, capable of being applied to the applicant’s claims, these are separate pleas, each of which may be raised in an action for annulment. The first, alleging absence of reasons or inadequacy of the reasons stated, goes to an issue of infringement of essential procedural requirements within the meaning of Article 253 EC and, involving a matter of public policy, must be raised by the Community judicature of its own motion. By contrast, the second, which goes to the substantive legality of the contested decision, can be examined by the Community judicature only if it is raised by the applicant (see Case C‑367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 67; and Case T‑285/04 Andrieu v Commission [2006] ECR-SC II‑775, paragraph 90).
86 As regards the first, it must be added that the obligation to state the reasons for OHIM’s decisions, provided for in Article 73 of Regulation No 40/94, has the same scope as the obligation under Article 253 EC. It is settled case-law that the statement of reasons required by Article 253 EC must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The purpose of that obligation is twofold: to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and to enable the Community judicature to exercise its power of review of the legality of the decision (see Case C‑447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraphs 63 to 65, and the case-law cited there).
87 In the present case, as regards the claim alleging an infringement of the obligation to state reasons, it must be held, first, that the Board of Appeal supplemented its reasoning by referring, explicitly, to the grounds of the decision of the Opposition Division, which it adopted as its own.
88 Second, as regards the fact that, according to the applicant, the Board of Appeal did not indicate in sufficiently clear terms the proportion of intended consumers who would perceive a ‘pelican’ in the mark applied for or who might describe it phonetically as such, and not as a ‘bird in a globe’, it must be noted that, in paragraph 23 of the contested decision, the Board of Appeal states that it is ‘quite difficult to avoid the perception of a pelican’ in the mark applied for. It is reasonable to infer from this that, for the Board of Appeal, the amount of relevant customers who might refer to it by using the word ‘pelican’ was sufficiently large. Therefore, the Board of Appeal indicated the proportion in issue in sufficiently clear terms.
89 Consequently, it must be concluded that the reasoning of the contested decision cannot be regarded as insufficient in the light of the case-law cited in paragraph 86 above.
90 As regards the claim alleging an error of assessment, it must be held that, as regards conceptual similarities, the Opposition Division stated, in essence, that the word ‘Pelikan’ means ‘pelican’ in German, in Danish and in Swedish, and is very close to the corresponding words in the other languages of the European Union (‘pelikaan’ in Dutch, ‘pelikaani’ in Finnish, ‘pélican’ in French, ‘pelícano’ in Spanish, ‘pellicano’ in Italian, ‘pelicano’ in Portuguese and ‘pelekanos’ in Greek). Therefore, according to the Opposition Division, the relevant consumers can link the word ‘Pelikan’ to the corresponding word meaning ‘pelican’ in their native language, especially since the logo in the earlier marks encourages that interpretation. Likewise, according to the Opposition Division, the public can clearly see a pelican in the sign applied for, because of its characteristic bill. On those grounds, the Board of Appeal found that the conflicting marks were conceptually identical.
91 The Court of First Instance finds this analysis to be correct. As regards the earlier trade marks, it must be held that the word element ‘Pelikan’ will be understood by consumers as a direct reference to the figurative element. Each of those two elements, appearing side by side, reinforces the other, so that consumers more easily understand one because of the other. Taken together, the two elements clearly call to mind the idea of a pelican. It follows that, contrary to what the applicant submits, there is no contradiction in meaning between the verbal and the figurative element of the earlier trade marks.
92 Moreover, this finding is not invalidated by the applicant’s claim that the sense conveyed by the mark applied for is one of ‘ubiquity’ or ‘speed’. It is enough in this respect to hold that, as regards consumers’ perception of the mark applied for, this sense is rather remote, even on the assumption that some customers might see in it a bird in a globe.
93 As regards phonetic similarity, the Opposition Division found, essentially, that the earlier trade marks would be pronounced ‘pe‑li‑kan’. As regards the mark applied for, the Opposition Division stated that it would be pronounced using the corresponding word meaning ‘pelican’ in the different Member States. The Opposition Division explained that, in some Member States, the term is phonetically identical or almost identical to the earlier trade marks (in Germany, Austria, Denmark, Sweden, France and the Netherlands) and that, in the other Member States, it would in any case also be phonetically very similar to the word ‘Pelikan’, since those terms are mainly composed of the same letters and follow the same structure. According to the Opposition Division, the marks in question may be phonetically very similar, if not identical.
94 The Court of First Instance holds that, to the extent that the Board of Appeal refers, in its decision, to the grounds of the Opposition Division, the analysis in the previous paragraph is correct. On the one hand, the earlier trade marks comprise the word ‘Pelikan’ which, undoubtedly, the relevant public would associate phonetically with the figurative part of those trade marks. On the other, it has been found in paragraphs 79 and 80 above that the mark applied for will be perceived as depicting a pelican. Consequently, consumers will in actual fact refer to it by using the term in their native language corresponding to the term ‘pelican’. The applicant has not claimed that, in the languages of the Member States set out in the previous paragraph, pronunciation of the word corresponding to the word ‘pelican’ is substantially different from pronunciation of the earlier trade marks (‘pe‑li‑kan’).
95 In view of all those elements, the claims alleging infringement of the obligation to state reasons and an error of appreciation must be rejected.
96 In those circumstances, in order to assess the likelihood of confusion between the marks at issue, it must be taken into consideration that those marks have a low degree of visual similarity, are conceptually identical and phonetically identical or very similar.
– Likelihood of confusion
97 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, aural and conceptual aspects (see PAM‑PIM’S BABY‑PROP, paragraph 55 above, paragraph 40, and the case-law cited there).
98 In the present case, in the light of what has been stated in paragraph 96 above, and, more particularly, taking into account the fact that the marks at issue are conceptually identical and phonetically identical or very similar, it must be held that, in the minds of the relevant public, those trade marks are similar. Moreover, it must be recalled that the products covered by the marks at issue are either identical or very similar. The corollary of that identity or similarity is that the effect of any differences between the marks in question is reduced (see, to that effect, PAM‑PIM’S BABY‑PROP, paragraph 55 above, paragraph 74).
99 However, the applicant submits, first, that, taking into account the fact that the products in issue are marketed direct from business to business, that is to say to specialists paying particular attention to the labels designating the product, the visual aspect of the comparison between the marks in issue is decisive (see paragraphs 44 to 49 above). The applicant submits, second, that professionals do not differentiate according to the trade marks in question, but take a detailed interest in the various products and distinguish between them according to their composition or a combination of figures and letters (see paragraph 23 above). The applicant submits that the Board of Appeal erred in law by failing to take into account the manner in which the products in issue are marketed (see paragraph 39 above). Moreover, the applicant submits that, in the relevant product markets, there can be no likelihood of confusion, since specialist consumers are more prudent in selecting products than the average consumer, particularly as they buy large quantities from a small number of chemical concerns (see paragraph 24 above). Finally, the applicant disputes that a likelihood of confusion could result from the conflicting marks being associated conceptually (see paragraph 47 above).
100 First, the Court cannot accept the applicant’s claim that the relevant consumers ‘do not differentiate according to the trade mark in question, but take a detailed interest in the various products and distinguish between them according to their composition or a combination of figures and letters’. Even though it is not disputed that the relevant public in the present case is specialised in the field of the products in issue, and that it pays a high level of attention when choosing those products, which are not in common use, to accept the argument that the relevant public takes the decision to purchase solely in the light of the products and their technical specifications, and not of their trade mark, would amount to stating that, in the area of products intended for specialists, trade marks are of no use whatsoever. In this respect, even assuming that it could be shown, as the applicant submits, that the relevant consumer makes his choice on the basis of catalogues displaying the products in issue, that fact is not relevant.
101 Second, as regards the applicant’s claim that the Board of Appeal failed to take account of the manner in which the products in question are marketed, the Court points out that, according to the case-law, OHIM’s adjudicating bodies are permitted to take into account the objective conditions under which the goods are marketed, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks. Thus, if the goods covered by a given mark are only sold on oral request, the phonetic aspects of the sign in question are bound to have greater significance for the relevant public than the visual aspects (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 105). On the other hand, the degree of phonetic similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (BASS, paragraph 75 above, paragraph 55).
102 Nevertheless, in the present case, it must be held that the degree of similarity between the marks in issue is such (see paragraphs 96 and 98 above) that it must be found that a likelihood of confusion exists regardless of whether or not the visual aspect is more important than the other aspects.
103 Some visual differences between the conflicting marks are rendered neutral by the fact that the marks are conceptually identical and phonetically identical or very similar, and by the identical nature of, or strong similarity between, the products in issue. Therefore, the differences between the marks are not sufficient to remove a likelihood of confusion in the minds of the relevant public.
104 In this respect, it is appropriate to dismiss the applicant’s claim that, even if the mark applied for and the earlier trade marks were to be associated conceptually by reason of the word ‘pelican’ and the image of a ‘bird in/on a globe’, this would not be enough to justify a finding that there is a likelihood of confusion between the marks at issue.
105 It is true that in SABEL (paragraph 47 above), to which the applicant refers, the Court of Justice held that the mere association which the public might make between two trade marks as a result of their analogous semantic content was not in itself a sufficient ground for concluding that there was a likelihood of confusion in the case of two marks, one of which consisted in the combination of a word and a picture, whilst the other was composed of a picture and was not especially well known to the public (SABEL, paragraph 47 above, paragraphs 11 and 25). The Court of Justice held that such a likelihood is only found where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (SABEL, paragraph 47 above, paragraph 24). It must be stated that in the present case, the word element included in the earlier trade marks (‘Pelikan’) constitutes a direct reference to the image in those marks, whilst in SABEL (paragraph 47 above), the word ‘sabèl’, which formed part of the mark applied for in that case, had no semantic link with the image of a leaping cheetah which it accompanied (see, by way of analogy, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame) [2006] ECR II‑5409, paragraph 111). Furthermore, in SABEL, paragraph 47 above, the semantic analogy between the figurative parts of the two conflicting marks was limited to the fact that the animals in the marks, a cheetah and a puma, both belonged to the feline family and were represented in a bounding movement, a pose which is typical of that type of animal (Opinion of Advocate General Jacobs in SABEL, paragraph 47 above, [1997] ECR I‑6193, paragraphs 3, 4 and 13). By contrast, as observed above, the similarities between the signs at issue in the present case are numerous and go beyond mere concordance of elements which are derived from nature and, therefore, not very fanciful. It must be borne in mind, in particular, that the signs all contain the image of the same bird (a pelican) and that, both in the mark applied for and the earlier trade marks, that pelican is shown in left profile, as a white silhouette with a black outline, inside a circle, sitting on a white base with a black outline (see, by way of analogy, VENADO with frame, paragraph 111).
106 It follows from all the foregoing considerations that the relevant public, even though it takes great care in the selection of the products designated by the marks at issue, might assume that they come from the same undertaking or economically connected undertakings.
107 That finding cannot be undermined by the applicant’s claim that the mark applied for is used as a logo with the name of its business and that, in the case of figurative marks, orders are placed with the manufacturer known by the name of his company or by a word mark normally placed alongside the logo. In so far as the applicant alludes to its intention always to use the mark applied for in combination with the business name, and even another word mark, it suffices to point out that its application for a Community trade mark only refers to the graphic sign shown in paragraph 2 above, without any other element, so that that alleged intention is immaterial (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 104).
108 It follows that the Board of Appeal was right to take the view that, between the marks at issue, there exists a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
109 It follows from the above that the plea put forward by the applicant is not well founded and must be dismissed, as must the entire action.
Costs
110 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and the intervener, as applied for by them.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Dainichiseika Colour & Chemicals Mfg. Co. Ltd to pay the costs.
Delivered in open court in Luxembourg on 17 April 2008.