JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
16 January 2008 (*)
(Community trade mark – Invalidity proceedings – Community figurative mark ‘idea’ – Earlier Community and national figurative and word marks ‘IKEA’ – Relative ground for invalidity – No likelihood of confusion – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94)
In Case T‑112/06,
Inter-Ikea Systems BV, established in Delft (Netherlands), represented by J. Gulliksson and J. Olsson, lawyers,
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, intervener before the Court of First Instance, being
Walter Waibel, residing in Dingolfing (Germany), represented by A. Fottner and M. Müller, lawyers,
ACTION brought against the decision of the First Board of Appeal of OHIM of 10 February 2006 (Case R 80/2005‑1) relating to invalidity proceedings between Inter‑Ikea Systems BV and Walter Waibel,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President of the Chamber, V. Tiili and O. Czúcz, Judges,
Registrar: C. Kantza, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 7 April 2006,
having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 21 June 2006,
having regard to the statement in intervention of the intervener lodged at the Registry of the Court of First Instance on 11 July 2006,
further to the hearing on 18 April 2007,
gives the following
Judgment
Background to the dispute
1 On 7 May 2001 the intervener obtained from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) registration of the following Community figurative trade mark (‘the contested mark’):
2 The goods and services for which registration of the contested mark was obtained fall within Classes 16, 20 and 42 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, as to each class, to the following description:
– Class 16: ‘Paper, cardboard and goods made from these materials, included in Class 16; printed matter; photographs; stationery; artists’ materials; typewriters and office requisites; instructional and teaching materials (except apparatus); plastic materials for packaging, included in Class 16; playing cards’;
– Class 20: ‘Furniture, including furniture of metal and/or plastic and/or glass; office furniture, in particular adapted for electronic data processing equipment; parts for furniture (included in Class 20); goods, included in Class 20, of wood, cork, and/or reed, and/or cane, and/or ivory and/or plastics’;
– Class 42: ‘Architectural and construction drafting and consultancy; architecture, computer programming; surveying; technical consultancy and providing of expertise; rental of data processing installations and technical furniture therefor; rental of vending machines, material testing’.
3 On 3 June 2002 the applicant submitted to OHIM an application for annulment of the contested mark pursuant to Article 52(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
4 In support of its application the applicant submitted, first, that the contested mark created a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, with the figurative mark represented below, which was registered as a Community trade mark on 1 April 1996 (No 109 637) and as a national mark in several Member States of the European Union (‘the earlier figurative marks’):
5 The goods and services covered by the earlier Community figurative mark fall, inter alia, within Classes 16, 20 and 42, and correspond, as to each class, to the following description:
– Class 16: ‘Paper and paper articles, cardboard and cardboard articles; stationery, adhesive materials; artists’ materials, paint brushes; office requisites; playing cards’;
– Class 20: ‘Furniture (also garden and office furniture); mirrors, picture frames; blinds; articles (not included in other classes) of wood, cork, reeds, cane, wicker or plastic’;
– Class 42: ‘Interior decoration services; computer services (rental and programming); architectural consultation and construction drafting; engineering services; management and exploitation of industrial property rights; (all the above related to purchase and sale of furniture, furnishings and articles for interior decoration, home and family); restaurant and catering services; lodging and boarding services’.
6 The goods and services covered by the earlier Swedish figurative mark fall within, inter alia, Classes 16, 20 and 42. The goods and services for which the other earlier national figurative marks were registered fall within the same classes or some of them.
7 Secondly, the applicant submitted in support of its application for annulment that the contested trade mark might be confused with the earlier word mark IKEA, registered by the applicant as a Community trade mark on 1 April 1996 (No 109 652), and as a national trade mark in several Member States (‘the earlier word marks’). The goods and services covered by the earlier Community word mark fall within, inter alia, Classes 16, 20 and 42 and correspond, as to each class, to the description set out in paragraph 5 above. The earlier Swedish word mark covers in particular the goods and services falling within Classes 16 and 42, but does not include the goods in Class 20. The goods and services covered by the other earlier national word marks fall within Classes 16, 20 and 42 or some of them.
8 Thirdly, the applicant submitted that there was a likelihood of confusion between the contested mark and another earlier word mark IKEA, well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, vol. 828, No 11847, p. 108), details of which were not specified in the application for annulment, as regards goods included within Classes 2, 6, 8, 9, 11, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30 and 31 and services included within Classes 35, 36, 37, 39, 41, 42 and 43.
9 Fourthly, the applicant argued that the contested mark would take unfair advantage of the distinctive character or repute, within the meaning of Article 8(5) of Regulation No 40/94, of a mark registered in Sweden, details of which were not specified in the application for annulment, or that it would be detrimental to it.
10 By decision of 25 November 2004, the Cancellation Division of OHIM declared that the contested trade mark was invalid, pursuant to Article 52(1)(a) of Regulation No 40/94 in conjunction with Article 8(1)(b) thereof, without stating any position in relation to the applicant’s arguments concerning Article 8(5) of Regulation No 40/94.
11 On 24 January 2005 the intervener filed an appeal with OHIM against the decision of the Cancellation Division.
12 By decision of 10 February 2006, the First Board of Appeal upheld the appeal and set aside the decision of the Cancellation Division, pursuant to Article 52(1)(a) of Regulation No 40/94 in conjunction with Article 8(1)(b) thereof (‘the contested decision’).
13 In essence, the Board of Appeal held that the contested mark and the earlier marks were visually and conceptually dissimilar – in other words, by reference to two out of three possible bases for comparison – and that outweighed their aural similarity. The aural aspect would prevail only if aural perception were generally the means by which the public had contact with the goods and services concerned. In the present case, however, that is not the situation, because furniture is rarely ordered orally: consumers prefer to examine furniture visually before buying, since functional and aesthetic considerations play a decisive role in their choice. In addition, consumers tend to be observant, owing to the relatively high price of furniture and because of the aesthetic considerations. It follows, according to the Board of Appeal, that the marks at issue are not similar and that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. According to the Board of Appeal, that finding cannot be affected by the fact that the earlier marks have a reputation in Sweden.
Forms of order sought by the parties
14 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM to pay the costs, including those incurred by the applicant in the invalidity proceedings before OHIM.
15 OHIM contends that the Court of First Instance should:
– declare that the second head of claim is inadmissible in so far as it concerns the costs incurred in the invalidity proceedings before OHIM;
– dismiss the action as to the remainder;
– order the applicant to pay the costs.
16 The intervener contends that the Court of First Instance should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred by the intervener in the invalidity proceedings before OHIM.
The application for annulment
17 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) and Article 52(1)(a) of Regulation No 40/94.
Arguments of the parties
18 The applicant challenges the grounds for the contested decision as regards, first, the description of the average consumer of the goods covered by the marks at issue and, secondly, the visual, aural and conceptual comparison of those marks.
19 First, as regards the perception of the marks at issue by the relevant public, the applicant takes issue with the finding by the Board of Appeal that furniture consists of goods which are expensive and which are purchased generally only after a relatively long process of comparison and reflection. The applicant argues that an item of furniture may be purchased quickly, without any comparison with other items of furniture, and that not all furniture is expensive.
20 The applicant submits also that the average consumer normally perceives a mark as a whole and does not analyse its various details. For the purposes of that global assessment, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Moreover, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and 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, paragraphs 25 and 26). Accordingly, the applicant maintains that the average consumer will remember the aural similarity of the expressions ‘idea’ and ‘ikea’, and the figurative element of the contested mark will not form part of the imperfect picture of the marks which he has retained in his mind.
21 Secondly, the applicant disputes the statement of the Board of Appeal that the visual impression conveyed by the marks at issue is radically different. The applicant argues that, since the figurative element of the contested mark is so simple, the word ‘idea’ dominates the overall impression of the mark. Accordingly, since the word ‘idea’ differs from the term ‘ikea’ by only one letter, the marks are visually very similar.
22 Thirdly, the applicant maintains that the general aural impression given by the trade marks at issue is highly similar. There is a greater aural similarity between the marks in languages in which the letters ‘ea’ are pronounced as two separate sounds, such as Dutch, German and Swedish. Moreover, the words ‘idea’ and ‘ikea’ begin with the same vowel and end with the same sequence of vowels, the sole difference between them being the presence of the letters ‘d’ and ‘k’, respectively.
23 The applicant relies in this regard on case-law to the effect that it is possible that mere aural similarity may create a likelihood of confusion. The more similar the goods or services covered and the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (Lloyd Schuhfabrik Meyer, paragraph 20 above, paragraph 28). The applicant maintains that, in the present case, the goods and services covered by the marks are identical and similar and that the mark IKEA is highly distinctive. Furthermore, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17). The applicant’s argument, on the basis of those considerations, is that possible visual differences between the marks at issue can be disregarded.
24 Fourthly, as regards the assessment of the conceptual similarity of the marks at issue, the applicant maintains that the fact that ‘idea’ has a specific meaning in English does not mean that it is not similar to the mark IKEA, since the meaning of a word is only one of the factors to be taken into account in making the comparison. Conceptually, the marks at issue are not fundamentally different, since the term ‘ikea’ has no obvious meaning and cannot therefore trigger associations removed from those underlying the word ‘idea’.
25 Fifthly, the applicant does not accept that the aural similarity of the marks is less significant because furniture is rarely ordered orally. Further, the Board of Appeal errs in finding that if marks differ by reference to two out of three possible bases for comparison, the logical conclusion should, in principle, be that they are dissimilar overall. By following that line of reasoning, the Board of Appeal failed to take into account a number of principles. First, the applicant points out that the more distinctive the earlier trade mark, the greater the likelihood of confusion (Case C‑251/95 SABEL [1997] ECR I‑6191). The Board of Appeal expressly recognised that the earlier marks are very distinctive. Secondly, a low degree of similarity between the marks can be offset by a high degree of similarity between the goods or services covered. Thirdly, trade marks with a highly distinctive character by reason of the reputation which they possess in the market enjoy wider protection than trade marks with a less distinctive character (Canon, paragraph 23 above, paragraph 18).
26 Sixthly, in order to demonstrate the extremely high reputation of the trade mark and the trading name Ikea in Sweden, the applicant has annexed to its application two market surveys respectively dating from 1996 and 1998. Additionally, the applicant submits documents from which it concludes that, on average, every household in Sweden receives its catalogue at least once a year. Lastly, the applicant refers to documents entitled ‘Facts and figures 98/99’ and ‘Facts and figures 2002/2003’ from the IKEA Group, which contain data on the number of IKEA Group stores in Sweden, and on turnover, both global and Swedish.
27 OHIM and the intervener contend that the Board of Appeal was fully entitled to hold that the earlier marks and the contested mark were not similar and that there was no likelihood of confusion between them.
Findings of the Court
28 First, it must be pointed out that the Board of Appeal restricted its examination to goods in Class 20, the contested decision stating only that the goods and services included within Classes 16 and 42 are ancillary to furniture. That statement is not disputed by either the applicant or the intervener, who moreover confine their observations before this Court exclusively to the goods falling within Class 20, including furniture.
29 Article 52(1)(a) of Regulation No 40/94 provides that, on application to OHIM, a Community trade mark is to be declared invalid where there is an earlier trade mark as referred to in Article 8(2) of that regulation and where the conditions set out in Article 8(1)(b) are fulfilled.
30 Under Article 8(2)(a)(i) and (ii) of Regulation No 40/94, to which Article 52(1)(a) expressly refers, ‘earlier trade marks’ means, inter alia, Community trade marks and trade marks registered in a Member State or at the Benelux Trade Mark Office, provided that the date of application for registration of such a mark is earlier than the date of application for registration of the contested Community trade mark.
31 Further, the relative ground for invalidity arising under Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 8(1)(b) thereof, corresponds to the relative ground for refusal of registration laid down in the latter provision. Accordingly, the case-law relating to the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, is also relevant in the present context (Case T‑288/03 TeleTech Holdings v OHIM – Teletech International(TELETECH GLOBAL VENTURES) [2005] ECR II‑1767, paragraph 75).
32 In accordance with settled case-law, one of the situations in which there is a likelihood of confusion is where there is a risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the marks and of the goods or services in question, account being taken of all factors relevant to the circumstances of the case and in particular of the interdependence between the similarity of the marks and the similarity of the goods or services covered (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).
33 In the present case, it is common ground that the goods and services covered by the marks at issue are identical.
The relevant public
34 In accordance with settled case-law, the perception in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. It should 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 (Case T‑355/02 Mülhens v OHIM – Zirh International(ZIRH) [2004] ECR II‑791, paragraph 41; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 20 above, paragraph 26).
35 In the present case, the Board of Appeal found that the relevant consumers tend to be observant, since the purchase of furniture is for the most part expensive, and that the majority of consumers buy only after a relatively long process of comparison and reflection.
36 The applicant disputes those assertions, arguing that not all furniture is expensive and that an item of furniture can sometimes by purchased quickly.
37 The applicant’s arguments are not sufficient, however, to call into question OHIM’s assertion that, even when buying an inexpensive item of furniture, the average consumer makes his choice on the basis of a number of functional and aesthetic considerations, in order to ensure that it is in keeping with other furniture already in his possession. While the actual act of purchase may be completed quickly in the case of certain items of furniture, the process of comparison and reflection before the choice is made requires, by definition, a high level of attention. Moreover, where the average consumer does not regularly buy certain goods, as is the situation in the present case, his level of attention when buying those goods must, as a general rule, be taken to be higher than his normal level of attention (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART(QUANTUM) [2006] ECR II‑11, paragraph 63).
38 Consequently, it must be concluded that the Board of Appeal was correct in finding that the average consumer displays a high level of attention when buying goods falling within Class 20.
Comparison of the marks
39 As regards the comparison of the marks, it is clear from the case-law that the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, account being taken, in particular, of their distinctive and dominant components (GIORGIO BEVERLY HILLS, paragraph 32 above, paragraph 39, and Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole(KINJI by SPA) [2005] ECR II‑4837, paragraph 38; see also, by analogy, SABEL, paragraph 25 above, paragraph 23).
40 A comparison of the signs at issue in the present case must therefore be made at the visual, the aural and the conceptual level.
– Visual comparison
41 As regards the visual comparison, the Board of Appeal held that the marks at issue were totally different, whichever of the earlier marks – word or figurative – were taken into consideration.
42 The applicant challenges that finding, arguing that since the figurative element of the contested mark is negligible, the verbal element ‘idea’ dominates the general impression made by the mark. Since that verbal element differs from the term ‘ikea’ by a single letter, the marks at issue are visually very similar.
43 First, it must be determined whether the contested mark and the earlier word marks resemble one another at the visual level.
44 The contested mark is a complex mark composed of the verbal element ‘idea’ and a figurative element, whereas the sole component of the earlier word marks is the term ‘ikea’.
45 According to the case‑law, where a mark consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant (KINJI by SPA, paragraph 39 above, paragraph 45).
46 A complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark that the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany(MATRATZEN) [2002] ECR II‑4335, paragraph 33, and KINJI by SPA, paragraph 39 above, paragraph 46).
47 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 the 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, paragraph 46 above, paragraph 35).
48 In a complex mark, the figurative element may occupy a position equivalent to the verbal element (KINJI by SPA, paragraph 39 above, paragraph 47; see also, to that effect, Case T‑110/01 Vedial v OHIM – France Distribution(HUBERT) [2002] ECR II‑5275, paragraph 53).
49 As regards the present case, it is appropriate therefore to examine the intrinsic qualities of the figurative and the verbal element of the contested mark, as well as the respective positions of those elements, in order to identify the dominant component.
50 The figurative element of the contested mark takes the form of a grid with rounded corners which is made up of 15 small squares: 14 white squares and one black square, presented diagonally, in the upper left corner. Those small squares are regularly aligned, which may evoke a sense of order or modularity, with the exception of the black square in the upper left corner, which is out of alignment. The Court considers that that representation is unusual and that it possesses a degree of intrinsic distinctiveness which is relatively high.
51 The verbal element ‘idea’ is an international expression of Greek origin, which has identical or very similar equivalents in almost all the languages of the European Union (in Greek: ‘ιδέα’; in Swedish and Danish: ‘idé’; in Italian, Spanish, Finnish, Czech, Hungarian and Polish: ‘idea’; in German and Dutch: ‘idee’; in French: ‘idée’; in Portuguese: ‘idéia’; in Slovenian: ‘ideja’; in Lithuanian: ‘idėja’; and so on) and is part of the basic vocabulary of the English language. In addition, that expression conveys implied praise, in that it alludes to the original and innovative character of the goods in question. It follows that the distinctiveness of the expression ‘idea’ is not intrinsically high.
52 As regards the respective positions of the various components, it must be observed that each of the letters of the expression ‘idea’ is placed inside one of the small squares making up the figurative element of the contested mark. That manner of presentation reinforces the dependence of the verbal element on the figurative element.
53 In light of the foregoing, the Court holds that the verbal element ‘idea’ is not the dominant element of the contested mark, but has at most an importance equal to that of the figurative element in the mark in question.
54 As regards the visual comparison between the verbal element of the contested mark and the earlier word marks, the applicant claims that the only difference between them is the presence of the letter ‘d’ in the contested mark and the letter ‘k’ in the earlier word marks. However, the Court has already held in Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler(PICARO) [2004] ECR II‑1739, paragraph 54) that, in the case of word marks which are relatively short, even if two marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them.
55 Accordingly, the degree of visual similarity of the earlier word marks and the verbal element of the contested mark must be described as low.
56 According to the case-law, even in circumstances where two marks contain highly similar verbal elements – which is not the case here – that fact does not, by itself, support the inference that there is a visual similarity between the marks at issue. The presence, in one of the marks, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each mark is different (KINJI by SPA, paragraph 39 above, paragraph 48; see also, to that effect, Case T‑156/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills(GIORGIO AIRE) [2003] ECR II‑2789, paragraph 74).
57 In the present case, given, first, that there is only a low degree of visual similarity between the earlier word marks and the verbal element of the contested mark, secondly, that the figurative element of the contested mark is individual and original and, thirdly, that the distinctiveness of the figurative component of the contested mark is at least as strong as that of the verbal element (with the consequence that the latter cannot be regarded as the dominant element), the conclusion of the Court is that the earlier word marks and the contested mark are visually dissimilar.
58 Secondly, it is appropriate to examine whether there is a visual resemblance between the contested mark and the earlier figurative marks.
59 It must be pointed out that the applicant does not challenge the assessment by the Board of Appeal that the figurative element of the contested mark and that of the earlier figurative marks are totally different.
60 The Court considers that assessment to be well-founded, since, as was stated in paragraph 50 above, the figurative component of the contested mark consists of a grid with rounded corners – made up of 15 small squares, 14 white squares and 1 black square, presented diagonally, in the upper left corner – whereas the figurative component of the earlier figurative marks is a black frame, with a rectangular exterior contour and an ellipsoidal interior contour.
61 It is appropriate to recall the conclusion, stated in paragraph 57 above, that the contested mark taken as a whole is visually dissimilar to the verbal element ‘ikea’ taken by itself. Given that the figurative components of the marks at issue are different, the effect of adding the figurative component of the earlier marks is to accentuate even further the existing visual difference between the contested mark and the verbal element ‘ikea’.
62 In light of the foregoing, the Court concludes that the Board of Appeal rightly determined that the conflicting signs were visually dissimilar.
– Aural comparison
63 The Board of Appeal acknowledged that the signs at issue were aurally similar, a finding that is not challenged by the applicant. The intervener contends that the signs in question are aurally dissimilar.
64 While it is true that the expressions ‘idea’ and ‘ikea’ consist of the same number of letters and contain the same sequence of vowels, it must be held that the sound of the consonants ‘d’ and ‘k’ is very different, since the former is a voiced apical consonant, while the latter is a voiceless dorsal consonant.
65 It is clear from PICARO, paragraph 54 above (paragraph 54), that even where there is an identical sequence of five sounds, the only difference being the presence of the double consonant ‘ss’ in one case and the presence of the consonant ‘r’ in the other, the fact that the sounds corresponding, respectively, to those consonants are very dissimilar is sufficient ground for holding that there is only a low degree of aural similarity between the marks in question.
66 In view of the fact that the consonants ‘d’ and ‘k’ have sounds which are entirely different and that, otherwise, the expressions concerned contain an identical sequence of at most three matching sounds, the Court concludes that there is only a low degree of aural similarity between the marks in question.
– Conceptual comparison
67 The Board of Appeal held that the conceptual content of the marks at issue was entirely different, since the expression ‘idea’ is a word generally understood by the European public, whereas the expression ‘ikea’ is a neologism.
68 The applicant does not dispute the finding by the Board of Appeal that the expression ‘idea’ has a real meaning for the European public whereas the expression ‘ikea’ is a neologism. None the less, the applicant submits that, conceptually, the expressions at issue are not appreciably different since the term ‘ikea’ has no obvious meaning and cannot therefore trigger associations removed from the meaning of the word ‘idea’.
69 As stated in paragraph 51 above, the expression ‘idea’ – or corresponding, phonetically similar, expressions – exists in almost all the official languages of the European Union, including Swedish. Furthermore, ‘idea’ is a basic expression in English, the meaning of which is generally known even to the non-English-speaking public. Accordingly, the finding by the Board of Appeal that the expression ‘idea’ can generally be understood by the relevant public must be upheld.
70 It should be pointed out in that regard that, according to the case-law, there can be no conceptual similarity between a mark which conveys no clear meaning in any of the official languages of the European Union and another mark of which the verbal element generally carries actual meaning for the public of the Community (see, to that effect, ZIRH, paragraph 34 above, paragraph 46, and KINJI by SPA, paragraph 39 above, paragraph 53).
71 Accordingly, it must be held that the conflicting signs are conceptually dissimilar.
72 In the light of all of the foregoing, the Court holds that the marks at issue are visually and conceptually dissimilar, with only a low degree of aural similarity.
The likelihood of confusion
73 As regards the likelihood of confusion between the marks at issue, the Board of Appeal held that the visual and conceptual differences between the marks in question counteracted their aural similarity, so that consumers, who tend to be observant, could not confuse them, despite the identical nature of the goods and the reputation of the earlier marks in Sweden.
74 The applicant none the less maintains that, according to the case-law, it cannot be ruled out that aural similarity alone may create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 20 above, paragraph 28).
75 However, the Court of Justice ruled in Case C‑206/04 P Mülhens v OHIM [2006] ECR I‑2717, paragraphs 21 and 22, that it cannot be inferred from paragraph 28 of Lloyd Schuhfabrik Meyer, paragraph 20 above, that there is necessarily a likelihood of confusion every time that mere aural similarity between two marks is established. In addition, the Court of First Instance held in Joined Cases T‑350/04 to T‑352/04 Bitburger Brauerei v OHIM – Anheuser-Busch(BUD, American BudandAnheuser Busch Bud) [2006] ECR II‑4255, paragraph 113, that the approach taken by the Court of Justice in paragraph 28 of Lloyd Schuhfabrik Meyer, paragraph 20 above, is a mere possibility which must not lead to the other relevant factors in the case in question being disregarded.
76 In addition, aural similarities may be counteracted by conceptual differences which distinguish the marks in question. For there to be such a counteraction, at least one of the marks in question 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 (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel(BASS) [2003] ECR II‑4335, paragraph 54; ZIRH, paragraph 34 above, paragraph 49; and QUANTUM, paragraph 37 above, paragraph 98).
77 As was stated in paragraphs 51 and 69 above, the verbal element ‘idea’ possesses, for the relevant public, a clear and specific semantic content, which the public is capable of grasping immediately. It follows that the conceptual difference which distinguishes the signs in question is sufficient, in the present case, to counteract their aural similarity (see, to that effect, PICARO, paragraph 54 above, paragraphs 57 and 58).
78 The impact of the conceptual difference in terms of counteracting the aural similarity is reinforced by the fact that there are also visual differences between the marks at issue. In that context, it must be pointed out that the degree of aural similarity of 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 76 above, paragraph 55, and ZIRH, paragraph 34 above, paragraph 51).
79 That is the case of goods in Class 20, contrary to the applicant’s submission. On that point, it is sufficient to note that the applicant does not dispute the assertion made in the contested decision that furniture is rarely ordered orally. Nor does the applicant dispute that the process of choosing furniture consists above all in making a visual comparison of the various goods, a process in the course of which, as a rule, the consumer recognises, by its visual appearance, the mark attached to the goods.
80 In conclusion, in view of the fact that, first, the marks at issue are visually and conceptually different, secondly, the significance of those differences is increased by the fact that perception of the marks at issue by the average consumer, who tends to be observant, is overwhelmingly visual and conceptual, and thirdly, any aural similarity is low, it must be held that the marks at issue are different overall.
81 Since one of the necessary conditions for finding that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 – that is, that the marks at issue must be identical or similar – is thus not satisfied, it must be held that the Board of Appeal was fully entitled to decide that there was no likelihood of confusion between those marks.
82 That finding is not affected by the applicant’s arguments that the goods in question are identical and that the earlier marks have a reputation in Sweden.
83 First, it is clear from well-established case‑law that dissimilarity of the marks at issue cannot, in the context of a global assessment of the likelihood of confusion, be offset by the fact that the goods covered are identical and that they belong to the same production or marketing sector, since the fact that the goods are identical is not sufficient to support the finding that there is a likelihood of confusion (see, to that effect, judgment of 12 October 2004 in Case T‑35/03 Aventis CropScience v OHIM – BASF(CARPO), not published in the ECR, paragraph 29, and Case T‑423/04 Bunker & BKR v OHIM – Marine Stock(B.K.R.) [2005] ECR II‑4035, paragraph 76).
84 Second, while there is settled case‑law that the greater the distinctiveness of the earlier mark, the greater the likelihood of confusion (Case T‑85/02 Díaz v OHIM – GranjasCastelló(CASTILLO) [2003] ECR II‑4835, paragraph 44; see also, by analogy, SABEL, paragraph 25 above, paragraph 24), it must be made clear that a likelihood of confusion presupposes that the marks in question are identical or similar. Thus, although for the purposes of assessing whether there is sufficient similarity between the signs or between the goods and services to give rise to a likelihood of confusion, account must be taken of the fact that a mark is well known or has a reputation, that fact has no bearing on the assessment of the likelihood of confusion where the marks at issue are globally different (see, to that effect, HUBERT, paragraph 48 above, paragraph 65; see also, to that effect and by analogy, Canon, paragraph 23 above, paragraph 19).
85 In the light of all the foregoing considerations, it must be held that the Board of Appeal correctly determined that the marks at issue were different and that there was no likelihood of confusion between them.
86 Consequently, the applicant’s sole plea in law cannot be upheld, and the action must therefore be dismissed.
Costs
87 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. In the present case, the applicant has been unsuccessful, and the action must be dismissed, in accordance with the forms of order sought by OHIM and the intervener.
88 The intervener contended that the Court should order the applicant to pay the costs of the entire proceedings, including the proceedings before the Cancellation Division of OHIM and the First Board of Appeal of OHIM. It must be pointed out that, under Article 136(2) of the Rules of Procedure, ‘[c]osts necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal … shall be regarded as recoverable costs’. It follows that expenses incurred in relation to the invalidity proceedings before the Cancellation Division of OHIM cannot be regarded as recoverable costs. Consequently, the form of order sought by the intervener to the effect that the applicant be ordered to pay the costs must be dismissed as inadmissible to the extent that reference is made to expenses incurred in proceedings before the Cancellation Division of OHIM.
89 In those circumstances, the applicant must be ordered to bear, in addition to its own costs, the costs of OHIM as well as those of the intervener, with the exception of costs incurred by the latter in the proceedings before the Cancellation Division of OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Inter-Ikea Systems BV to pay the costs, including those incurred by Walter Waibel in the proceedings before the Board of Appeal.
Delivered in open court in Luxembourg on 16 January 2008.