JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
12 November 2008 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark Ecoblue – Earlier Community word mark BLUE – Relative ground for refusal – Likelihood of confusion − Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑281/07,
ecoblue AG, established in Munich-Bogenhausen (Germany), represented by C. Osterrieth and T. Schmitz, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM having been
Banco Bilbao Vizcaya Argentaria, SA, established in Madrid (Spain),
ACTION brought against the decision of the First Board of Appeal of OHIM of 25 April 2007 (Case R 844/2006-1), concerning opposition proceedings between Banco Bilbao Vizcaya Argentaria, SA and ecoblue AG,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of V. Tiili, President, F. Dehousse and I. Wiszniewska-Białecka (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 23 July 2007,
having regard to the response lodged at the Registry on 19 December 2007,
further to the hearing on 9 July 2008,
gives the following
Judgment
Background to the case
1 On 27 September 2002, ConCapital GmbH filed an application for registration of a Community trade mark with 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). That application was thereafter transferred to the applicant, ecoblue AG.
2 The mark for which registration was sought is the word sign Ecoblue.
3 The services in respect of which registration was applied for, after the restriction made during the proceedings before OHIM, fall within Classes 35, 36 and 38 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of the classes, to the following descriptions:
– Class 35: ‘Business consultancy, organisation consultancy, professional business consultancy, arranging and concluding commercial transactions for others’;
– Class 36: ‘Financial affairs, monetary affairs, capital investment, credit consultancy, credit bureaux; real estate affairs, real estate and mortgage brokerage, real estate management, consultancy with regard to the purchasing and financing of real estate’;
– Class 38: ‘Telecommunications services, except the transmission of radio and television programmes’.
4 The application was published in Community Trade Marks Bulletin No 22/2004 of 31 May 2004.
5 On 4 August 2004, Banco Bilbao Vizcaya Argentaria, SA (‘the opponent’) filed a notice of opposition against registration of the trade mark applied for in respect of all the services referred to in the application. The ground relied on in support of the opposition was that under Article 8(1)(b) of Regulation No 40/94.
6 The opposition was based on eight earlier Community word marks containing the word ‘blue’, including in particular the mark BLUE, the only one taken into account by the Board of Appeal, which was the subject of Community registration No 1345974, applied for on 15 October 1999 and granted on 10 October 2003, for goods and services in Classes 9, 36 and 38 of the Nice Agreement and corresponding, for each of those classes, to the following description:
– Class 9: ‘Computer operating programs, recorded; magnetic cards; encoded identity cards, magnetic; cards having microprocessors (chips); smart cards having microprocessors; cards for integrated circuits or for microprocessors; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; records’;
– Class 36: ‘Insurance services; financial affairs; monetary affairs and real estate affairs’;
– Class 38: ‘Telecommunications services; services relating to communications by computer terminals; communications by fibre-optic networks; communications by worldwide computer networks’.
7 By decision of 26 April 2006, OHIM’s Opposition Division upheld the opposition.
8 On 23 June 2006, the applicant lodged an appeal with OHIM against the decision of the Opposition Division.
9 By decision of 25 April 2007 (‘the contested decision’), the First Chamber of the Board of Appeal of OHIM dismissed the appeal. As a preliminary point, it held that the relevant public was made up of both professionals and the general public in the European Union. With regard to the services in question, it found that those in respect of which registration of the mark Ecoblue is sought are in part similar and in part identical to those covered by the mark BLUE in Classes 36 and 38 of the Nice Agreement. With regard to the marks at issue, it found that the marks Ecoblue and BLUE were visually and phonetically similar to a certain extent. On a conceptual level, they both referred to the colour blue and the component ‘ECO’ was not sufficient to distinguish the two signs significantly. In the light of those findings and the fact that the term ‘eco’ can be considered to be descriptive of an essential quality of the services referred to in the application for registration of the Ecoblue mark, and therefore to have a rather low degree of distinctiveness, the likelihood of confusion was established. According to the Board of Appeal, the relevant public could perceive the mark Ecoblue as a variation of the mark BLUE and, consequently, the services at issue as having the same commercial origin.
Procedure and forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 At the hearing, the applicant withdrew its second head of claim, and the Court took formal note of that withdrawal.
Law
13 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
14 The applicant claims that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, since the mark Ecoblue and the opponent’s marks are not similar.
15 The analysis of the marks at issue should be carried out in the light of the overall impression produced by them, without it being permissible to break down each mark into individual components. In the present case, the only similarity between the Ecoblue mark and the opponent’s marks is the ‘blue’ element, positioned at the end of the Ecoblue mark. That mark consists of a single word which, in German, starts with a capital letter. The relevant public will therefore perceive it as a noun. In addition, the consumer pays particular attention to the beginning of a sign and, in that important part at the beginning, the marks Ecoblue and BLUE are totally different.
16 According to the applicant, that conclusion is borne out by the fact that the element ‘blue’, which is common to the marks at issue, is only very slightly distinctive with regard to the services at issue. The word ‘blue’ or the colour blue is widely used in the financial services sector, as demonstrated by the use of the colour blue by a large German bank, the presence of the word ‘blue’ in many marks referring to financial services and the use of the word ‘blue’ in an expression designating certain types of shares listed on the stock exchange. The component ‘blue’ cannot therefore be accorded any particular importance. On the contrary, the public will instead focus its attention on the component ‘eco’, placed at the beginning of the Ecoblue mark, and will not break the mark down into parts. Furthermore, for a single component of a trade mark to be the only one taken into account, all the other components of that mark must be negligible in the overall impression created by it, which is not the case here.
17 In the light of the foregoing, the lack of similarity between the marks at issue is clear. The marks Ecoblue and BLUE are not even partially similar phonetically and can be clearly distinguished from one another visually.
18 Considering the small degree of distinctiveness of the component ‘blue’, there is also no likelihood of confusion in the sense of a likelihood of association, even if reference is made to the principles relating to series of trade marks. There is no such series in the present case, since the configuration of the opponent’s marks is not uniform and the application of the principles relating to series of trade marks presupposes that there be a series with a uniform structure.
19 OHIM observes that the applicant does not dispute that the services at issue covered by the Ecoblue and BLUE trade marks are in part similar and in part identical and that the relevant public consists both of professionals in the relevant sectors and the general public in the European Union. In addition, OHIM maintains that certain arguments and evidence submitted by the applicant are inadmissible and that, as to the remainder, the applicant’s arguments are unfounded. The action should therefore be dismissed.
Findings of the Court
20 Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In addition, earlier trade marks are to be understood, according to Article 8(2)(a)(i) of Regulation No 40/94, as Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
21 According to settled case-law, there is a likelihood of confusion if there is a risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and of the goods or services in question, 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 (Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32, and judgment of 6 May 2008 in Case T‑246/06 Redcats v OHIM – Revert & Cía (REVERIE), not published in the ECR, paragraph 29).
22 For the purposes of that global assessment, the average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. It should however be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question and that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26, and REVERIE, cited in paragraph 21 above, at paragraph 30).
23 In the present case, the protection conferred by the earlier mark extends to the whole of the Community. It is therefore the way in which the consumer of the services in question in that territory perceives the marks at issue which should be taken into account. The application to register a Community trade mark may, however, be refused where the relative ground for refusal in the sense of Article 8(1)(b) of Regulation No 40/94 obtains in only part of the Community (Case T‑355/02 Mülhens v OHIM − Zirh International (ZIRH) [2004] ECR II‑791, paragraph 36).
24 Moreover, the applicant does not dispute the Board of Appeal’s conclusion that the relevant public, with regard to the services in question, is made up of professionals and of the general public of the European Union. The public concerned is therefore, at least in part, one which is reasonably well informed and reasonably observant and circumspect.
25 Since the similarity or identical nature of the services in question is not disputed, it is only the marks at issue which should be compared.
26 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 relevant aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30, and REVERIE, cited in paragraph 21 above, paragraph 33).
27 The global assessment of the likelihood of confusion must be based, in so far as the visual, phonetic or conceptual similarity of the marks at issue is concerned, on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23). The visual and phonetic similarities of the marks at issue may in addition be counteracted by conceptual differences. For that to be the case, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (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 93, and REVERIE, cited in paragraph 21 above, at paragraph 34).
28 The fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see, to that effect, Case T-22/04 Reemark v OHIM − Bluenet (Westlife) [2005] ECR II‑1559, paragraph 40).
29 In the present case, the marks considered by the Board of Appeal for the purposes of assessing whether the opposition was well founded are Ecoblue, the mark applied for, and the earlier mark BLUE.
30 In that regard, it should be pointed out as a preliminary point that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, Case T-256/04 Mundipharma v OHIM –Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 57, and judgment of 13 February 2008 in Case T-146/06 Sanofi-Aventis v OHIM – GD Searle (ATURION), not published in the ECR, paragraph 58). The word element ‘eco’ is a common prefix or abbreviation in many languages spoken in the Community, and the word ‘blue’ is the English term for the colour blue and is part of the basic English vocabulary known to the relevant public. Those two word elements therefore have a concrete meaning for the average consumer. It follows that the Board of Appeal did not err in finding that the mark Ecoblue is made up of the word elements ‘eco’ and ‘blue’ and in proceeding to carry out, on that basis, a comparison of the marks at issue.
31 With regard to that comparison, it must be held that the word ‘blue’, which alone constitutes the earlier mark, is one of the only two word elements of the mark applied for. It follows that, although the marks at issue are visually and phonetically different, on account of the presence of the word element ‘eco’ in the trade mark applied for, they are otherwise identical. The fact that, as the applicant claims, the mark Ecoblue is written with a capital letter in German is immaterial in that regard. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess (judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43).
32 In addition, while it is clear that the consumer normally attaches more importance to the first part of words (MUNDICOR, cited at paragraph 27 above, at paragraph 81), that consideration cannot apply in every case (judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70). The applicant’s argument relating to the particular importance attached by the consumer to the beginning of a sign is therefore not conclusive. It should also be pointed out that, as stated above, the word element ‘eco’ is an abbreviation or a prefix which is relatively common in several languages spoken in the relevant territory and, to the extent that it refers to the economy, is descriptive of at least a part of the services in respect of which the registration of the mark Ecoblue is sought. Therefore, it is not particularly distinctive and, contrary to what is contended by the applicant, it cannot be regarded as dominating the overall impression made by the mark Ecoblue or the imperfect picture which the relevant consumer will keep in mind.
33 The argument that the word ‘blue’ cannot be accorded particular importance, because it has only a slightly distinctive character with regard to the services in question, also cannot be accepted. Even if that argument and the evidence submitted in support of it are admissible, which is partially contested by OHIM, it should be pointed out that, in any case, the component ‘blue’, to the extent that it constitutes in itself the earlier mark, still has an independent distinctive role in the mark Ecoblue (see, to that effect, Case C-120/04 Medion [2005] ECR I‑8551, paragraph 30). Therefore, even if the component ‘blue’ cannot be considered as dominating the overall impression created by the mark Ecoblue, it must be taken into account in the assessment of the similarity of the marks at issue and of the likelihood of confusion.
34 It follows that the dissimilarity between the marks at issue which is relied on by the applicant, resulting from the presence of the word element ‘eco’ in the mark applied for, is not sufficient to counteract, on a visual and phonetic level, the similarity deriving from the identical nature of the most important part in terms of the number of letters of the mark applied for and the sole word element of the earlier mark. Therefore, the Board of Appeal was correct to hold that the marks Ecoblue and BLUE were visually and phonetically similar to a certain extent.
35 On a conceptual level, it should be pointed out that, as stated in paragraph 30 above, the average consumer, when perceiving a word sign, will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him, in the present case the word elements ‘eco’ and ‘blue’, the meanings of which have already been stated above. The Board of Appeal did not therefore err in finding that the marks at issue were conceptually similar to the extent that they both refer to the colour blue.
36 Finally, contrary to what is claimed by the applicant, the Board of Appeal did not compare the marks at issue by taking into account their only common element ‘blue’. On the contrary, the contested decision makes it clear that the Board of Appeal observed in particular that the marks Ecoblue and BLUE have a different number of letters, but are also similar on account of the presence of the word ‘blue’ in the second part of the mark Ecoblue, that the presence of the word element ‘eco’ is not sufficient to rule out the phonetic similarity displayed by the marks at issue resulting from their common element ‘blue’ and that, on a conceptual level, the addition of the abbreviation ‘eco’ is not sufficient to distinguish the marks at issue in a significant way. Therefore, it is not established that the Board of Appeal did not carry out an overall assessment of the marks at issue.
37 With regard to the existence of a likelihood of confusion, it follows from the foregoing that the services in question are partly identical and partly similar, that the marks at issue display visual, phonetic and conceptual similarities, since they are partially identical on account of the fact that the earlier mark is entirely included in the mark applied for, that the earlier mark still has an independent distinctive role in the mark applied for and that at least a part of the relevant public – which the applicant has not shown to be an insignificant part – does not display a level of attention which is greater than the average. It follows that, even if the distinctive character of the mark BLUE is limited, the Board of Appeal did not err in finding that a likelihood of confusion had been established.
38 The applicant’s argument regarding the supposed impossibility of applying to this case the legal principles relating to series of marks is irrelevant in that regard. As OHIM observes, the contested decision does not indicate that the Board of Appeal based its decision on the fact that the opponent is proprietor of several marks containing the word ‘blue’ in order to conclude that the likelihood of confusion was established. It found merely that the mark Ecoblue could be perceived as a variant of the mark BLUE, in particular because the word element ‘eco’ could be considered as descriptive of an essential quality of the services in question, which have an economic, business-oriented purpose, and that the relevant public might therefore associate the mark Ecoblue with the mark BLUE. It follows from the foregoing that that finding of the Board of Appeal was correct. Moreover, according to Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion includes the likelihood of association. The applicant’s argument that in the present case there can be no likelihood of confusion in the sense of a likelihood of association under that article cannot therefore succeed.
39 It follows from all of the foregoing that the infringement of Article 8(1)(b) of Regulation No 40/94 is not established. Therefore, the sole plea in law must be dismissed, together with the action as a whole.
Costs
40 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it should be ordered to pay the costs, as applied for in OHIM’s pleadings.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Dismisses the action;
2. Orders ecoblue AG to pay the costs.
Tiili | Dehousse | Wiszniewska-Białecka |
Delivered in open court in Luxembourg on 12 November 2008.
[Signatures]