JUDGMENT OF THE GENERAL COURT (Second Chamber)
25 September 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark BLUECO — Earlier Community word mark BLUECAR — Relative ground for refusal — Likelihood of confusion — Distinctive character of the earlier mark — Article 8(1)(b) of Regulation (EC) No 207/2009 — Application for variation made by the intervener — Article 65(4) of Regulation No 207/2009)
In Case T‑684/13,
Copernicus-Trademarks Ltd, established at Borehamwood (United Kingdom), represented by L. Pechan and S. Körber, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Bolloré SA, established at Ergué-Gabéric (France), represented initially by B. Fontaine, and then by O. Legrand, lawyers,
ACTION brought against the decision of the first Board of Appeal of OHIM of 8 October 2013 (Case R 2029/2012-1), relating to opposition proceedings between Bolloré SA and Copernicus-Trademarks Ltd,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: C. Heeren, Administrator,
having regard to the application lodged at the Court Registry on 23 December 2013,
having regard to the response of OHIM lodged at the Court Registry on 26 May 2014,
having regard to the response of the intervener lodged at the Court Registry on 23 May 2014,
having regard to the reply lodged at the Court Registry on 1 September 2014,
having regard to the rejoinder of the intervener lodged at the Court Registry on 24 November 2014,
further to the hearing on 24 March 2015, at which the applicant was not present,
gives the following
Judgment
Background to the dispute
1 On 9 February 2011, Copernicus Eood filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the word sign BLUECO.
3 The goods in respect of which registration was sought are in, inter alia, Class 12 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: ‘Vehicles and their parts and accessories’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 139/2011, of 26 July 2011.
5 On 26 October 2011, the intervener, Bolloré SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark BLUECAR, registered on 23 August 2006 under the number 4597621, covering, inter alia, goods in Class 12 corresponding to the following description: ‘vehicles; electric motors and transmission components for the aforesaid electric vehicles’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 20 August 2012, the trade mark application was transferred to the applicant, Copernicus-Trademarks Ltd.
9 By decision of 31 August 2012, the Opposition Division upheld the opposition.
10 On 30 October 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 On 10 April 2013, the applicant requested the limitation of the list of goods contained in the trade mark application to ‘vehicles, excluding parts and fittings therefor’, in Class 12. OHIM accepted the limitation and invited the intervener to decide on whether, in view of the new specification of goods, the opposition should be withdrawn. The intervener did not respond to that invitation.
12 By decision of 8 October 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that the relevant territory was the European Union, that the relevant public was made up of final consumers whose level of attention is high, since the goods at issue are highly-priced (paragraph 20 of the contested decision), and that the goods covered by the trade mark applied for were identical to the goods covered by the earlier trade mark (paragraph 21 of the contested decision). Then, it stated that the earlier trade mark was made up of the terms ‘blue’ and ‘car’, the latter directly describing the goods at issue and therefore constituting the weakest term in that trade mark (paragraph 24 of the contested decision). Next, it considered that the evidence furnished by the intervener did not make it possible to establish that the earlier trade mark had obtained enhanced distinctiveness though its use and concluded from this that the earlier trade mark had an average inherent distinctive character (paragraph 25 of the contested decision). The Board of Appeal also considered that there was a visual similarity between the signs at issue, the first five letters of which are identical and placed in the same order (paragraph 26 of the contested decision). Phonetically, it took the view that the signs at issue were very similar overall for the English-speaking public, a considerable part of the relevant public, on account of the identical pronunciation of the element ‘blue’, common to both signs, and the similar pronunciation of the elements ‘co’ and ‘car’ (paragraph 27 of the contested decision). It also considered that the signs were, in part, conceptually similar for the English-speaking public, on account of the presence of the term ‘blue’ in both signs (paragraph 28 of the contested decision). On the grounds that the signs at issue are similar overall (paragraph 29 of the contested decision), the goods at issue are identical and the case-law considers that it is sufficient that there is a likelihood of confusion only for a part of the relevant public, the Board of Appeal concluded that a likelihood of confusion between the signs at issue could not be excluded (paragraphs 30 to 33 of the contested decision).
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision and reject the opposition in its entirety;
– order OHIM and the intervener to pay the costs of the present proceedings and of the proceedings before the Board of Appeal of OHIM.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– order the applicant to establish its legal interest in bringing proceedings;
– reject Annexes K 5 to K 27 produced by the applicant as inadmissible;
– uphold the contested decision, save that it should rule that the earlier trade mark benefits from increased protection on account of the recognition which it enjoys on the market;
– dismiss the action;
– order the applicant to pay the costs.
Law
The legal interest in bringing proceedings
16 In its response, the intervener contested the applicant’s legal interest in bringing proceedings, alleging that the applicant transferred the trade mark application at issue to the company Ivo-Kermartin, and asked the Court to request that the applicant furnish evidence to establish its legal interest in bringing proceedings.
17 In its reply, the applicant produced an authority granted by Ivo-Kermartin, the new owner of the trade mark application, stating that the latter authorised the applicant to pursue its action in the interest and on behalf of the new owner. The applicant considers, therefore, that it has the ‘standing to bring [its] action’ on the basis of the provisions of Article 65(4) of Regulation No 207/2009.
18 At the hearing, the intervener stated that it no longer contested the applicant’s interest in bringing proceedings and OHIM stated that it would leave it to the Court to decide whether it is necessary to resolve that question in the present case.
19 In the circumstances of the case, it is necessary to rule at the outset on the substance of the case, without there being any need to rule on whether the applicant has any legal interest in bringing proceedings (see, to that effect, judgment of 26 February 2002 in Council v Boehringer, C‑23/00 P, ECR, EU:C:2002:118, paragraphs 50 to 52, and judgment of 23 October 2007 in Poland v Council, C‑273/04, ECR, EU:C:2007:622, paragraph 33).
The admissibility of certain arguments and evidence presented for the first time before the Court
20 As a preliminary point, it should be noted, as was pointed out by OHIM and the intervener, that the applicant produced before the Court several documents, which had not been produced in the proceedings before the Board of Appeal, in support of its line of argument, presented for the first time before the Court, that the term ‘blue’ referred, in particular in the automobile sector, to respect for the environment.
21 Contrary to what the applicant maintains, it is apparent from the documents before the Court that the applicant developed no argument before the departments of OHIM seeking to establish that the term ‘blue’ referred to respect for the environment. Similarly, Annexes K 5 to K 25 were not produced by the applicant before OHIM.
22 However, it should be recalled that, according to the settled case-law, the Court, in reviewing the legality of the decisions of the Boards of Appeal of OHIM, cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraphs 136 to 144, and judgment of 10 November 2011 in LG Electronics v OHIM, C‑88/11 P, EU:C:2011:727, paragraph 25). Similarly, facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the Court (judgment in Les Éditions Albert René v OHIM, cited above, EU:C:2008:739, paragraph 137, and judgment in LG Electronics v OHIM, cited above, EU:C:2011:727, paragraph 25). Consequently, facts not submitted by the applicant before the departments of OHIM and evidence adduced for the first time before the Court must be regarded as inadmissible.
23 Similarly, Annex K 26, which contains the judgment of the Bundespatentgericht (Federal Patents Court, Germany) of 24 November 2010, which was not presented before the Board of Appeal and which is identical to Annex K 29, cannot be relied on as evidence in relation to the facts of this case. Although decisions of national courts may, in principle, be presented for the first time before the Court, those decisions cannot, however, be relied on as evidence in relation to the facts of a case brought before the Court (see, to that effect, judgment of 12 November 2008 in Lego Juris v OHIM — Mega Brands (Red Lego brick), T‑270/06, ECR, EU:T:2008:483, paragraphs 22 and 23).
The admissibility of the intervener’s claim for variation of the contested decision
24 While seeking, like OHIM, to have the action dismissed, the intervener asks the Court to uphold the contested decision, save that it should rule that the earlier trade mark benefits from increased protection on account of the recognition which it enjoys on the market. It disputes the assessment by the Board of Appeal in paragraph 25 of the contested decision that the documents that the intervener submitted did not prove sufficiently that the earlier trade mark was used with such intensity so as to have acquired a degree of recognition amongst the relevant consumers throughout the European Union and that it therefore had only an average distinctive character. The intervener asks the Court to annul that part of the contested decision or, at least, to confirm it in that it recognised that the earlier mark had an average distinctive character.
25 Such a request must be interpreted as constituting a claim for variation of the contested decision, as the intervener also acknowledged at the hearing, when it stated that that claim was submitted in the alternative. Pursuant to the provisions of Article 134(3) of the Rules of Procedure of the Court of 2 May 1991, an intervener is, in principle, entitled to seek, in his response, an order altering the decision of the Board of Appeal on a point not raised in the application.
26 At the hearing, OHIM stated that the claim for variation of the contested decision should be rejected as inadmissible.
27 It should be recalled that the provisions of Article 65(4) of Regulation No 207/2009 provide that an action before the Court against a decision of a Board of Appeal of OHIM is to be open to any party to proceedings before the Board of Appeal ‘adversely affected by its decision’. Moreover, according to settled case-law, an applicant’s interest in bringing proceedings is an essential prerequisite for any legal proceeding (order of 31 July 1989 in S. v Commission, 206/89 R, ECR, EU:C:1989:333, paragraph 8) and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which it will be inadmissible (judgment of 7 June 2007 in Wunenburger v Commission, C‑362/05 P, ECR, EU:C:2007:322, paragraph 42). The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (judgment of 17 April 2008 in Flaherty and Others v Commission, C‑373/06 P, C‑379/06 P and C‑382/06 P, ECR, EU:C:2008:230, paragraph 25).
28 According to the case-law, a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (judgment of 14 December 2011 in Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 26; see also, to that effect, order of 14 July 2009 in Hoo Hing v OHIM — Tresplain Investments (Golden Elephant Brand), T‑300/08, EU:T:2009:275, paragraphs 29 to 37; see, by analogy, judgment of 17 September 1992 in NBV and NVB v Commission, T‑138/89, ECR, EU:T:1992:95, paragraphs 30 to 35).
29 In the present case, since the intervener’s opposition to registration of the trade mark applied for, based on Article 8(1)(b) of Regulation No 207/2009, was upheld as a whole, the contested decision must be regarded as having upheld the intervener’s claims.
30 It is true that it follows from recital 8 in the preamble to Regulation No 207/2009 that the appreciation of the likelihood of confusion depends, in particular, on the recognition of the trade mark on the market in question. Moreover, since there is a greater likelihood of confusion the more distinctive the earlier mark, marks with a highly distinctive character, either per se or because of the reputation they possess with the public, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 18, and judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
31 However, since the Board of Appeal considered that there was a likelihood of confusion between the signs at issue and it upheld the opposition, even though it did not recognise that the earlier trade mark had acquired enhanced distinctiveness though its use, any variation of the contested decision solely based on the assessment made by the Board of Appeal concerning the degree of distinctiveness and recognition of the earlier trade mark has no effect on the intervener’s rights stemming from that trade mark, which that decision has in no way affected. The intervener also stated, in support of its claim for variation of the contested decision, that it sought, at the very least, confirmation of the contested decision in that it found that that trade mark had an average distinctive character.
32 Accordingly, the intervener’s claim for variation of the contested decision must be rejected as inadmissible.
Substance
33 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
34 The applicant submits that there is no likelihood of confusion between the signs at issue. It argues, first, that the earlier trade mark has only a very weak distinctive character, since the term ‘blue’ is descriptive and frequently used by registered trade marks in the automobile sector. The applicant considers, moreover, that the Board of Appeal wrongly concluded that the signs at issue were visually similar, since the trade mark applied for should have been identified as comprising the terms ‘blue’ and ‘eco’. Phonetically, there are significant differences between the two signs. Finally, the signs are not similar on a conceptual level, in view of the divergence of their final parts.
35 OHIM and the intervener contest the applicant’s arguments.
36 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
37 According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
38 It is in light of those principles that it is appropriate to examine the assessment carried out by the Board of Appeal of the likelihood of confusion between the signs at issue.
The relevant public
39 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also 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 (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
40 In the present case, the Board of Appeal rightly found, in paragraph 20 of the contested decision, and without being contradicted on that point by the applicant, that since the goods covered by the trade marks at issue are highly-priced products, the target public consisted of final consumers exercising a high level of attention. Furthermore, since the earlier trade mark is a Community trade mark, the likelihood of confusion must be assessed in relation to the public of the entire European Union.
The comparison of the goods
41 In paragraph 21 of the contested decision, the Board of Appeal rightly considered, and without being challenged on that point by the applicant, that the goods at issue, which are all in class 12, were identical, despite the limitation of the initial list of products covered by the trade mark applied for during the appeal proceedings before OHIM.
The comparison of the signs
42 First of all, it should be recalled that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
43 In paragraphs 26 to 29 of the contested decision, the Board of Appeal found that the signs at issue were visually similar and that overall they were phonetically highly similar for English-speaking consumers and conceptually similar, as regards their initial term ‘blue’, for the English-speaking public.
– The visual similarity
44 In paragraph 26 of the contested decision, the Board of Appeal noted that the signs at issue had in common their initial five letters, placed in the same order, and that those letters formed the majority of each of the signs. Since the consumer generally pays greater attention to the beginning of a word mark, the Board of Appeal concluded that there was a visual similarity between the signs at issue.
45 The applicant considers that the signs are not visually similar. It argues that the letter ‘e’ of the trade mark applied has a dual use and that the trade mark applied for would therefore be identified as comprising the terms ‘blue’ and ‘eco’, two everyday terms in English. It is, moreover, common practice to shorten the term ‘blue’ to ‘blu’ and many trade marks accordingly include the element ‘blu’. The two signs at issue therefore clearly differ in their second part. However, since they are short signs, small differences are sufficient to create a different overall impression. Moreover, the trade mark applied for has three syllables, while the earlier trade mark has only two.
46 It should be borne in mind that what matters, rather, in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (judgment of 25 March 2009 in Kaul v OHIM — Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraph 83).
47 In the present case, it is common ground that the earlier trade mark and the trade mark applied for, consisting respectively of seven and six letters, have in common their initial five letters, namely ‘b’, ‘l’, ‘u’, ‘e’ and ‘c’, the trade mark applied for including, in addition, the letter ‘o’, and the earlier trade mark the letters ‘a’ and ‘r’. That part which is common to the signs gives rise to a visual similarity, particularly because the public generally pays more attention to the initial part of word marks (see judgment of 6 June 2013 in Celtipharm v OHIM — Alliance Healthcare France (PHARMASTREET), T‑411/12, EU:T:2013:304, paragraph 25 and the case-law cited).
48 That conclusion cannot be called into question by the applicant’s argument that the trade mark applied for is visually perceived as comprising the two terms ‘blue’ and ‘eco’ and as having three syllables. The fact remains that the trade mark applied for contains only one word, which, in its most natural pronunciation, particularly for an English speaker, comprises only two syllables (see, to that effect, judgment of 21 January 2015 in Copernicus-Trademarks v OHIM — Blue Coat Systems (BLUECO), T‑685/13, EU:T:2015:38, paragraph 35) and that the applicant has adduced no relevant evidence in support of that argument. Furthermore, although the letters ‘a’ and ‘r’ at the end of the earlier trade mark and the letter ‘o’ at the end of the trade mark applied for preclude a finding that the signs are identical, those elements do not dominate the overall impression given by those signs, contrary to what the applicant maintains.
49 Therefore, the Board of Appeal rightly concluded that the two signs were visually similar.
– The phonetic similarity
50 The Board of Appeal considered, in paragraph 27 of the contested decision, that the signs at issue were phonetically very similar overall for English-speaking consumers, for whom the element ‘blue’, common to both signs, would be pronounced identically and the elements ‘co’ and ‘car’ would be pronounced in a similar way. It also considered that the possibility that the trade mark applied for could be pronounced as ‘blu-eco’ in certain languages did not prevent the aforementioned phonetic similarity for a considerable part of relevant consumers.
51 The applicant submits that there are significant phonetic differences between the two signs, the trade mark applied for having three syllables, whereas the earlier trade mark has only two syllables. In the alternative, it argued that the succession and combination of syllables of the two signs are very different, since there is a pause between the vowels ‘u’ and ‘e’ of the trade mark applied for. It points out, finally, that the final syllables of the signs at issue are not pronounced in a similar manner.
52 As a preliminary point, it is important to recall that it suffices, in order for registration of a trade mark to be refused, that a likelihood of confusion exists only for a part of the relevant public (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 52 and the case-law cited).
53 However, as regards the English-speaking public, it should be pointed out that, contrary to what the applicant maintains, that public will not double the central vowel of the trade mark applied for, since the word ‘blue’ is part of everyday vocabulary. Therefore, that public will not consider that the trade mark applied for has three syllables, but consider that it has two syllables, and will not pause between the vowels ‘u’ and ‘e’ of the trade mark applied for (see, to that effect, judgment in BLUECO, see paragraph 48 cited above, EU:T:2015:38, paragraph 40).
54 Furthermore, the presence of the common element ‘blue’ in the initial part of the signs at issue suggests that they are phonetically very similar. In addition, even if the Board of Appeal noted, wrongly, that English-speaking consumers would pronounce the elements ‘car’ and ‘co’ in a similar manner, those endings are not very far removed for the English-speaking public, which stresses the pronunciation of the letter ‘c’ and drops the pronunciation of the final ‘r’ of the element ‘car’. Finally, the applicant cannot validly maintain that the letter ‘o’ in the last syllable of the trade mark applied for dominates its overall phonetic impression.
55 The Board of Appeal therefore correctly concluded that the two signs were very similar phonetically for a considerable part of the relevant public.
– The conceptual similarity
56 The applicant submits that the signs at issue are not conceptually similar, since the earlier trade mark is understood by the relevant public as a descriptive indication and because there are significant differences in the final parts of the two signs.
57 As was pointed out by the Board of Appeal in paragraph 28 of the contested decision, and as the applicant also acknowledges, the English-speaking public will perceive the presence of the term ‘blue’ in the two signs as an indication of the colour blue. On the other hand, the same public will perceive the word ‘car’ of the earlier mark as meaning ‘car’ and will distinguish it from the ‘co’ ending of the trade mark applied for which will either have no meaning or be understood as an abbreviation of the word ‘company’. Contrary to what the applicant maintains, however, the relevant public will not perceive the trade mark applied for as being divided into two terms, ‘blue’ and ‘eco’.
58 The Board of Appeal was therefore correct to consider that, for part of the relevant public, the signs at issue are conceptually similar as regards their initial part, the differences between the signs in their final part not making it possible to exclude the existence of some conceptual similarity.
The global assessment of the likelihood of confusion
59 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 that of the goods or services covered. 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 (judgment in Canon, see paragraph 30 above, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
60 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (judgments of 14 October 2003 in Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, ECR, EU:T:2003:264, paragraph 47, and judgment of 7 September 2006 in L & D v OHIM — Sämann (Aire Limpio), T‑168/04, ECR, EU:T:2006:245, paragraph 98).
61 In the present case, the Board of Appeal stated at the outset, in paragraph 24 of the contested decision, that the earlier trade mark comprised the terms ‘blue’ and ‘car’, the latter directly describing the goods at issue and constituting, therefore, the weakest term in that trade mark. Next, it considered, in paragraph 25 of the contested decision, that the evidence adduced by the intervener did not establish that the earlier trade mark had obtained enhanced distinctiveness though its use. It concluded from this that the earlier trade mark had an average inherent distinctive character.
62 Then, as regards the global assessment of the likelihood of confusion, the Board of Appeal stated, in paragraphs 30 to 33 of the contested decision, that the goods at issue were identical and that the signs at issue were visually, phonetically and conceptually similar for the English-speaking public, which represents a considerable part of the relevant public. It stated that the English-speaking public would recognise the term ‘car’ of the earlier trade mark as descriptive of the goods at issue and would give it, therefore, less weight in the overall appreciation of the signs. Accordingly, the term ‘blue’ would attract English-speaking consumers’ attention the most, thereby leading to a likelihood of confusion.
63 In the first place, the applicant submits that the Board of Appeal wrongly considered that the earlier trade mark had an average distinctive character, since the element ‘blue’ is descriptive in nature and many trade marks in the automobile sector contain that element.
64 As a preliminary point, it is necessary to reject the applicant’s arguments that the intervener sought to rely on the particular reputation of the earlier trade mark, which was not put forward before OHIM. It is apparent from the documents before the Court that the intervener merely stated, before the Court, that the Board of Appeal should have recognised that the earlier trade mark had a highly distinctive character on account of its use, an argument that it had already put forward before OHIM and which was rejected by the Board of Appeal in the contested decision. In any event, the intervener’s claim for variation of the contested decision, relating to the assessment by the Board of Appeal of the distinctiveness that the earlier trade mark had acquired through use, was rejected as inadmissible (see paragraphs 24 to 32 above).
65 Next, it must be borne in mind that a finding that the earlier mark has a weak distinctive character does not in itself preclude a finding that there is a likelihood of confusion (see, in that regard, order of 27 April 2006 in L’Oréal v OHIM, C‑235/05 P, EU:C:2006:271, paragraphs 42 to 45). Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraph 61 and the case-law cited, and judgment of 13 December 2007 in Xentral v OHMI - Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited).
66 In any event, as the Board of Appeal has pointed out, although it is true that the English-speaking public will recognise the word ‘car’ of the earlier trade mark as descriptive of the goods at issue, the applicant adduced in the proceedings before OHIM no evidence to establish that the term ‘blue’ will be perceived as having a meaning with respect to the products concerned. Moreover, the mere fact that other registered trade marks in the automobile sector also contain the term ‘blue’, were it to be established, cannot suffice for a finding that that term could be perceived by the relevant public as exclusively descriptive of the characteristics of the goods at issue. Therefore, the Board of Appeal was right to consider that the earlier trade mark had, as a whole, an average distinctive character.
67 In the second place, the applicant considers that there is no likelihood of confusion between the signs at issue, taking into account, inter alia, the high level of attention of the relevant public.
68 As a preliminary point, it is important to recall that it suffices, in order for registration of a trade mark to be refused, that a likelihood of confusion exists only for a part of the relevant public (see paragraph 52 above).
69 However, it follows from the foregoing that, first, the goods at issue are identical and that, secondly, the signs at issue are visually similar for the relevant public as a whole, phonetically very similar for the English-speaking public and conceptually similar, as regards their initial part, for the English-speaking public. Accordingly, it is necessary to hold that there is, in the present case, in spite of the high level of attention of the relevant public, a likelihood of confusion for the English-speaking public.
70 Having regard to all those considerations, the Board of Appeal did not fail correctly to apply Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion between the signs at issue.
71 For all of those reasons, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s request, set out in its first head of claim, that the Court reject the opposition in its entirety (see, to that effect, judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 70, and judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 35 and 67).
Costs
72 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful in the essential part, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Dismisses Bolloré SA’s claim for variation of the contested decision;
3. Orders Copernicus-Trademarks Ltd to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 25 September 2015.
[Signatures]