JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
6 May 2008(*)
(Community trade mark – Opposition proceedings – Application for the Community word mark REVERIE – Earlier Community figurative mark Revert – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑246/06,
Redcats SA, established in Roubaix (France), represented by A. Bertrand, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Manuel Revert & Cía, SA, established in Onteniente (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 July 2006 (Case R 171/2005-4), relating to opposition proceedings between Manuel Revert & Cía, SA, and Redcats SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of I. Wiszniewska-Białecka (Rapporteur), acting for the President, E. Moavero Milanesi and N. Wahl, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 8 September 2006,
having regard to the response lodged at the Registry of the Court of First Instance on 14 November 2006,
further to the hearing on 24 October 2007,
gives the following
Judgment
Background
1 On 26 March 2001, the applicant, proprietor of the French word mark REVERIE, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 Registration as a mark was sought for the word sign REVERIE.
3 The goods in respect of which registration was sought are in Classes 16, 20 and 24 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 descriptions:
– Class 16: ‘Paper and cardboard (untreated, semi-finished or for stationery or printing); printed matter; photographs; stationery; printers’ type; printing blocks; mail order catalogues’;
– Class 20: ‘Beds, bed bases, mattresses’;
– Class 24: ‘Sheets, blankets, duvets, pillowcases’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 85/2001 of 1 October 2001.
5 On 28 December 2001, Manuel Revert & Cía, SA brought opposition proceedings against the registration of the mark applied for in respect of all the goods in Classes 20 and 24, relying on Article 8(1)(b) of Regulation No 40/94. The opposition was based on all the goods and services covered by Community trade mark No 55061, the figurative mark reproduced below:
6 Community trade mark No 55061 was applied for on 1 April 1996 and registered on 5 May 1998 for the following goods and services:
– Class 24: ‘Textiles and textile goods, not included in other classes; bed and table covers, including blankets, bedspreads and sheets’;
– Class 25: ‘Ready-made outer and under garments; footwear; belts’;
– Class 39: ‘Services for the transport, packaging, storage and distribution of goods’.
7 By decision of 14 December 2004, the Opposition Division of OHIM partially upheld the opposition in so far as it related to the ‘sheets, blankets, duvets, pillowcases’ included in Class 24. It took the view that those goods were either identical or highly similar to the goods covered by the earlier mark which fell within the same class and that there was a certain visual and phonetic similarity between the signs at issue.
8 On 10 February 2005, the applicant filed a notice of appeal at OHIM directed against the Opposition Division’s decision.
9 By decision of 10 July 2006 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found that, first, all the goods in Class 24 designated by the mark applied for were identical to the goods in the same class covered by the earlier mark and, secondly, that the signs at issue were visually similar, phonetically similar in German and Spanish, and that while their verbal elements might have a meaning in some Member States, that was not the case in Germany, Austria and Spain. It concluded that there was a likelihood of confusion in those three States.
Forms of order sought
10 The applicant claims that the Court of First Instance should annul the contested decision.
11 OHIM contends that the Court of First Instance should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 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
13 The applicant agrees that the goods at issue are similar or even identical. However, it disputes the Board of Appeal’s analysis as regards the similarity of the signs.
14 First, in comparing the signs visually, the Board of Appeal took into account only the word element of the earlier mark. According to the case-law, it must examine the mark as a whole. It is also the settled practice of OHIM not to separate the different elements which constitute a sign. In addition, the figurative element of the earlier mark is large in size and has a strong conceptual content. Any consumer who looks at the signs at issue thus notices that figurative element first. What is more, OHIM had no right to assume that consumers do not take the figurative element into account, since that had not been established by the other party to the procedure before the Board of Appeal of OHIM.
15 Secondly, the signs must be compared at a phonetic and conceptual level by assessing the mark in respect of which registration is sought in the light of the French language because it is a mark registered in France by a French company, and the earlier mark in the light of the Spanish language as it is inter alia the trading name of a company incorporated under Spanish law. The word elements of the marks at issue are therefore different. First, the mark in respect of which registration is sought is pronounced ‘rèvri’ in French and designates ‘an activity of the mind’, but is pronounced ‘rébéri’ in Spanish and has no meaning in that language. Secondly, the word element of the earlier mark is pronounced ‘ribert’ in Spanish and ‘revèr’ in French and, in French, it is phonetically similar to the term ‘revers’ which is a synonym for ‘back’. A phonetic and conceptual difference also exists in English. The word ‘reverie’ is pronounced ‘rèvri’ as in French and means a daydream, whilst the word ‘revert’ is pronounced ‘riveurt’ and means ‘to turn back’.
16 Thirdly, an assessment of the likelihood of confusion must be carried out with reference to an average reasonably well informed and reasonably observant and circumspect consumer who does not necessarily have the marks in question in front of him. Such a consumer generally has a good knowledge of English and often of another foreign language, such as French or Spanish. An assessment of the likelihood of confusion must moreover, according to the case-law, be made by comparing the two marks based on the overall impression made by each of them, by taking their distinctive characters into account and, if necessary, by taking into account the dominant and non-distinctive elements of the marks. In the present case, the marks at issue are distinctive and French, English and Spanish-speaking consumers would clearly perceive the visual, phonetic and conceptual differences which exist between them.
17 Contrary to the argument put forward by the other party to the proceedings before the Board of Appeal of OHIM, there can be no likelihood of confusion on the basis that the mark for which registration is sought is similar to the French word ‘rêverie’, which derives from the verb ‘rêver’, and ‘rêver’ is similar to the earlier mark Revert. The marks must be compared as they have been registered and not in the light of their linguistic origins or roots. Furthermore, the letter ‘t’ at the end of the word ‘revert’ gives that word an unusual appearance and precludes any likelihood of confusion for French consumers. What is more, the likelihood of confusion must be properly substantiated and genuine, and not merely hypothetical or remote. That is not the case here.
18 At the hearing, the applicant added that the way in which German-speaking consumers perceive the marks at issue is not relevant in the present case. It also added that, in any event, there is no likelihood of confusion in Germany and Austria either, in particular because German-speaking consumers know the meaning of the word ‘reverie’.
19 Finally, the applicant stated, in answer to a question asked by the Court during the hearing, that it considered both its action and its arguments relating to the way in which the marks at issue are perceived in Germany and in Austria, arguments which were submitted for the first time at the hearing, to be admissible, and the Court took formal note of that.
20 OHIM submits that the action is inadmissible because the application does not satisfy the requirements of Article 44(1)(c) of the Rules of Procedure of the Court of First Instance. As the Board of Appeal concluded that the signs at issue were similar both visually and phonetically, at least in Germany, Austria and Spain, and that it is enough that a relative ground for refusal exists in part of the Community for registration to be refused, the application should have set out the arguments of fact and of law related to establishing the erroneous nature of that conclusion by the Board of Appeal. The applicant does not submit any evidence in the application as regards the perception of the signs at issue by the relevant public in Germany and in Austria. Furthermore, according to the case-law, failure to state such matters in the application cannot be compensated for subsequently.
21 At the hearing, OHIM stated, in answer to a question asked by the Court, that, even if the action as such were to be admissible, the arguments submitted by the applicant at the hearing with regard to Germany and Austria are inadmissible and the Court took formal note of that.
22 On the substance of the case, OHIM takes the view that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 40/94.
Findings of the Court
23 Under the first paragraph of Article 21 of the Statute of the Court of Justice, which applies to the procedure before the Court of First Instance under the first paragraph of Article 53 of that statute, and under Article 44(1)(c) of the Rules of Procedure of the Court of First Instance, all applications must contain, inter alia, a brief statement of the pleas in law on which the application is based. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court of First Instance to rule on the action. The same considerations also apply to all claims, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity. Therefore, the essential facts and law on which an action is based must be apparent from the text of the application itself, at the very least summarily, provided that the statement is coherent and comprehensible (Order of the Court of First Instance in Case T-56/92 Koelman v Commission [1993] ECR II-1267, paragraph 21, and judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraphs 34 and 35).
24 Accordingly, the Court of First Instance is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself. Furthermore, failure to state such matters in the application cannot be compensated for by putting them forward at the hearing (Case C‑214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 37), since that has the effect of widening the subject-matter of the dispute as set out in the application and infringes Article 48(2) of the Rules of Procedure, which provides that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which have come to light in the course of the procedure (see to that effect, Rossi v OHIM, paragraphs 38 to 40, and Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraphs 45 and 46).
25 In the present case, it is common ground that the applicant claims that the contested decision should be annulled, but that, in the application, it did not submit any argument to challenge the Board of Appeal’s assessment that, in German, the marks at issue are phonetically similar, but cannot be compared conceptually. However, the applicant submits in the application that the marks at issue are not visually similar. In the light of the case-law (see to that effect, as regards purely phonetic similarity, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 28), it is conceivable that the mere possibility that there is no visual similarity may on its own suffice to exclude any likelihood of confusion, inter alia in Germany and Austria. It follows that, contrary to what OHIM submits, the applicant did put forward arguments in support of its head of claim that the contested decision should be annulled. Therefore, the action is admissible.
26 However, it is also apparent from the case-law referred to in paragraph 24 above that the arguments submitted by the applicant at the hearing as regards the phonetic and conceptual comparison of the marks at issue in Germany and Austria are inadmissible, since they widen the subject-matter of the dispute as set out in the application and since they are not put forward in order to respond to matters of law or of fact which have come to light in the course of the procedure. Consequently, the merits of the action will be analysed solely in the light of the arguments set out in the application.
27 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must 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. Furthermore, under Article 8(2)(a)(i) of Regulation No 40/94, ‘earlier trade marks’ means 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 applied for.
28 In addition, even if Article 8 of Regulation No 40/94 does not contain a provision similar to that of Article 7(2) to the effect that an application to register a trade mark may be refused where the absolute ground for refusal obtains in only part of the Community, it must be held, in the light of the unitary character of the Community trade mark set out in Article 1(2) of Regulation No 40/94, that that principle also applies, by analogy, to a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 40/94. It follows that registration must be refused even where the relative ground for refusal obtains in only part of the Community (Case T-355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-791, paragraphs 35 and 36).
29 According to settled case-law, a likelihood of confusion arises when there is a likelihood that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. That case-law also states that the likelihood of confusion must be assessed globally, according to the perception by the relevant public of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity 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 Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II-0000, paragraphs 25 and 26).
30 For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should however be remembered 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 average 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 (Lloyd Schuhfabrik Meyer, cited in paragraph 25 above, at paragraph 26, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38).
31 In the present case, the protection afforded to the earlier mark covers the whole of the Community. What must therefore be considered is the perception which the consumer of the goods at issue has of the marks at issue within the whole of that territory. Furthermore, as the goods in question are everyday consumer goods, the relevant public with regard to which the assessment of the likelihood of confusion must be carried out consists, as the Board of Appeal rightly pointed out, of average consumers who are reasonably well informed and reasonably observant and circumspect.
32 As the parties have conceded that the goods in question are similar or identical, only the marks at issue have to be compared.
33 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 Case T-28/05 Ekabe International v OHIM – Ebro Puleva (OMEGA3) [2007] ECR II-0000, paragraph 54).
34 The global appreciation of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I-6191, paragraph 23, and OMEGA3, cited in paragraph 33 above, at paragraph 54). Furthermore, the visual and phonetic similarities between the marks at issue may be counteracted by conceptual differences. For there to be such a counteraction 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 judgment of 15 February 2007 in Case T-501/04 Bodegas Franco-Españolas v OHIM – Companhia Geral da Agricultura das Vinhas do Alto Douro (ROYAL), not published in the ECR, paragraph 46).
35 Furthermore, a complex mark and another mark which is identical or similar to one of the components of the complex mark may be regarded as being similar where that component forms the dominant element within the overall impression given by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression given by it. That approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (MATRATZEN, cited in paragraph 33 above, at paragraphs 33 and 34, and judgment of 8 February 2007 in Case T-88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 57) and it is only if all the other components of the complex mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (Case C‑334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43).
36 Furthermore, with regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (MATRATZEN, cited in paragraph 33 above, at paragraph 35, and NARS, cited in paragraph 35 above, at paragraph 58).
37 In the present case, the marks at issue are, on the one hand, a figurative mark comprising a representation of the head of a feline, probably a tiger, viewed in profile and standing out in white against a square black background, with, to its right, aligned with the top of the figurative element, the word ‘revert’, presented in a rectangular shape, underlined and printed in relatively spaced-out capital letters, both of which elements take up an equivalent amount of space, and, on the other hand, a word mark, REVERIE.
38 Thus, although the figurative element of the earlier mark occupies as large a space within that mark as the word element and stands out visually because of its contrasting black and white colours, the fact none the less remains that it is difficult to perceive. The animal represented is not easily identifiable. By contrast, the word element of the earlier mark is both immediately perceptible, because it is underlined and is clearly separate from the figurative element, and immediately comprehensible, because it is both short and written in spaced-out capital letters in a font which is very easy to read.
39 It follows that the figurative element of the earlier mark is not negligible within the meaning of the case-law cited at the end of paragraph 35 above. Consequently, the word element of that mark cannot serve as the sole point of reference for the purpose of comparing the earlier mark with the mark applied for and that comparison must therefore be made having regard to the marks at issue each considered as a whole. However, as the word element is more easily recognisable than the figurative element, it is likely to dominate the overall impression which the relevant public retains of the earlier mark. It is in the light of those findings that an evaluation as to whether the Board of Appeal erred in assessing the similarity of the marks at issue must be made.
40 As regards the visual comparison, the Board of Appeal found, in paragraph 16 of the contested decision, that the earlier mark consisted of both a word element and a figurative element, but it took the view that the consumer’s attention will focus on the word element of the earlier mark, which is ‘easier to take in and remember’ and concluded that ‘the word element … clearly overshadow[ed] the device element in the consumer’s perception’. The Board of Appeal also found that the first five letters of that word element coincided with the first five letters of the mark applied for and pointed out that ‘the beginnings of trade marks are of particular importance when determining how signs are perceived by the consumers addressed’. It concluded that ‘despite the presence of some differences, the conflicting signs [were] visually similar’.
41 Thus, contrary to the submission made by the applicant, the Board of Appeal did not carry out the visual comparison of the marks at issue in the light of only the word element of the earlier mark and therefore it did not assume that the relevant public would not take the figurative element into account. On the contrary, the Board of Appeal considered the earlier mark as a whole and found, in view of the elements of which it consists, that the overall visual impression made by the mark is, in consumers’ minds, dominated by the word element, which is similar to the mark applied for, whilst expressly acknowledging that there are certain differences between the marks at issue.
42 That analysis must be upheld. Although it was stated in paragraph 39 above that the word element of the earlier mark is not dominant in the sense that it might serve as the sole point of reference for the purpose of comparing the earlier mark with the mark applied for, the fact none the less remains that the overall visual impression made by the earlier mark is, in the present case, dominated by that word element and that the mark applied for thus has obvious visual similarities with the earlier mark.
43 First, the first five letters of the word element of the earlier mark are identical to the first five letters comprised in the mark applied for. In addition, the letter ‘t’, which is the last letter in that word element, is not markedly visually different from the letter ‘i’, which is the sixth letter of the mark applied for. Furthermore, the mark applied for contains only one letter more than the word element of the earlier mark. Secondly, as was stated above, although the figurative element of the earlier mark unquestionably produces a certain visual impression, that element is too difficult to perceive to dominate the image of that mark which the relevant public will keep in mind. That element alone is not sufficient to establish the existence of differences capable of counterbalancing the visual similarity of the marks at issue which stems from the very great similarity between the word element of the earlier mark and the mark applied for.
44 It follows that the Board of Appeal was right to find that ‘despite the presence of some differences, the conflicting signs are visually similar’.
45 As regards the phonetic and conceptual comparisons of the marks at issue, it must be stated at the outset, that, contrary to what the applicant submits, those comparisons must be made with regard to all the languages spoken by the relevant public, that is to say, in the present case, all the Community languages (see paragraph 31 above), and not with regard only to French and English. It must also be borne in mind that, as is apparent from paragraph 38 above, the figurative element of the earlier mark is difficult to identify. Consequently, it does not have a clear and specific meaning which may be grasped immediately by the relevant public and, therefore, it is not capable of affecting the conceptual comparison of the marks at issue, each considered as a whole.
46 The Board of Appeal found, in paragraphs 17 and 18 respectively of the contested decision, that the marks at issue were phonetically similar in German and Spanish and could not be compared conceptually in those two languages. However, although the applicant put forward arguments in the application which sought to call in question that assessment by the Board of Appeal in so far as it related to Spanish and put forward arguments concerning those comparisons as regards French, it did not properly challenge that assessment as regards German (see paragraph 26 above). Consequently, even if those arguments could be upheld, they would have no impact on the findings of the Board of Appeal as regards the German-speaking public. They must therefore be rejected as irrelevant and, consequently, it must be held to have been established that the marks at issue are phonetically similar in German and that there is no possibility of comparing those marks conceptually in that language. Any possibility of counteracting the visual and phonetic similarities is accordingly precluded.
47 Lastly, as regards the likelihood of confusion, the Board of Appeal found, in paragraphs 22 to 24 of the contested decision, that the marks at issue, ‘each considered as a whole’, were ‘similar both visually and phonetically, at least in Germany, Austria and Spain’ and that, considering the identity of the goods at issue, there was a likelihood of confusion in Germany, Austria and Spain.
48 It follows from the above that the Board of Appeal was right to find that the marks at issue were visually similar and that the applicant has disputed neither the similarity or identity of the goods at issue nor the phonetic similarity and the absence of a possibility of conceptually comparing the marks at issue in German, the relevant public’s knowledge of which was not called in question by the Board of Appeal. Furthermore, the applicant has not disputed that the relevant public has an average level of attention. Therefore, the Board of Appeal did not err in finding that there was a likelihood of confusion inter alia in Germany and Austria.
49 Furthermore, contrary to what the applicant submits, OHIM is not required to provide specific evidence of the existence of a likelihood of confusion in the minds of the relevant public as the examination of the likelihood of confusion which the OHIM authorities are called upon to carry out is a prospective and objective examination, which pursues an aim in the general interest (see, to that effect, judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v Devinlec and OHIM, not published in the ECR, paragraph 59, and Case T-147/03 Devinlec v OHIM – T.I.M.E. ART (QUANTUM) [2006] ECR II-11, paragraphs 104 and 105).
50 In view of the foregoing, the alleged infringement of Article 8(1)(b) of Regulation No 40/94 has not been proved. Therefore, the single plea in law must be rejected and the action must be dismissed in its entirety.
Costs
51 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, and OHIM has applied for costs, the applicant must be ordered to pay the costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Redcats SA to pay the costs.
Wiszniewska-Białecka | Moavero Milanesi | Wahl |
Delivered in open court in Luxembourg on 6 May 2008.
E. Coulon | | I. Wiszniewska-Białecka |
Registrar | | Acting President |