JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
27 February 2014 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark TEEN VOGUE – Earlier national word mark VOGUE – Relative ground for refusal – Likelihood of confusion – Identical nature of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 – Proof of genuine use of the earlier mark – Article 42(2) and (3) of Regulation No 207/2009 – Rule 22(3) of Regulation (EC) No 2868/95 – Partial refusal to register)
In Case T‑37/12,
Advance Magazine Publishers, Inc., established in New York, New York (United States of America), represented by T. Alkin, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Eduardo López Cabré, residing in Barcelona (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 22 November 2011 (case R 1763/2010‑4), concerning opposition proceedings between Mr Eduardo López Cabré and Advance Magazine Publishers, Inc.,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 January 2012,
having regard to the response lodged at the Court Registry on 3 May 2012,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 31 October 2003, the applicant, Advance Magazine Publishers, Inc., 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word sign TEEN VOGUE.
3 The goods in respect of which registration was sought are in Class 18 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Goods of leather and/or imitation leather; clothing, belts, collars and leads for animals; whips; harness and saddlery; umbrellas; parasols; walking sticks; animal skins, hides; luggage; bags; shopping bags; trunks; travelling bags; hand bags, shoulder bags, backpacks and rucksacks; bicycle bags; purses; wallets; key fobs and key cases; parts and fittings for all the aforesaid goods’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 8/2008 of 18 February 2008.
5 On 19 May 2008, Mr Eduardo López Cabré filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– Spanish word mark VOGUE, registered on 21 November 1966 under No 496371, designating goods in class 18 and corresponding to the following description: ‘All kinds of umbrellas, sunshades, handles, ribs and canes for these’;
– Spanish figurative mark registered on 20 May 1999 under No 2153619 for ‘[a]ll kinds of umbrellas, sunshades, handles, ribs and canes for these’ in Class 18, reproduced below:
– Community word mark VOGUE, registered on 6 March 2002 under No 2082287, designating goods in Class 18 and corresponding to the following description: ‘Umbrellas’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 On 22 May 2009, the applicant submitted, during the opposition proceedings, a request that Mr López Cabré furnish proof of genuine use of the earlier marks relied on in support of the opposition, in accordance with Article 42(2) and (3) of Regulation No 207/2009, following which the Opposition Division invited him to produce that proof.
9 On 29 July 2009, Mr López Cabré provided various documents in order to show that the earlier marks had been put to genuine use.
10 On 15 July 2010, the Opposition Division upheld the opposition in part and refused registration of the mark applied for in relation to ‘umbrellas; parasols; parts and fittings for all the aforesaid goods’ in Class 18 on the ground that there was, in relation to those goods, a likelihood of confusion with the earlier Spanish word mark VOGUE. It rejected the opposition for the remaining goods and ordered each party to bear its own costs.
11 On 13 September 2010, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
12 By decision of 22 November 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay Mr López Cabré the sum of EUR 550 for costs incurred in the opposition and appeal proceedings. In particular, it found that the Opposition Division had correctly upheld the opposition as regards ‘umbrellas; parasols; parts and fittings for all the aforesaid goods’, since a likelihood of confusion could not be excluded due to the identical nature of those goods and of those protected by the earlier Spanish word mark VOGUE – the use of which it considered had been sufficiently proved – and the similarity of the signs at issue.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision in so far as it concerns the opposition based on the earlier Spanish word mark VOGUE;
– order Mr López Cabré to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Preliminary considerations
15 It is necessary to note that, as is apparent from the contested decision, the Board of Appeal, like the Opposition Division, based the dismissal of the application for registration of the mark applied for in relation to ‘umbrellas; parasols; parts and fittings for all the aforesaid goods’ in Class 18 on the existence of a likelihood of confusion between the mark applied for and the earlier Spanish word mark VOGUE, the other earlier marks not having been accepted in support of that dismissal.
16 It follows that it is solely in the light of the earlier Spanish word mark VOGUE that this action must be assessed.
Infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation No 2868/95
17 The applicant disputes the merits of the Board of Appeal’s assessment of the evidential value of the proof adduced by Mr López Cabré in order to show genuine use of the earlier Spanish word mark VOGUE as regards ‘umbrellas; parasols; parts and fittings for all the aforesaid goods’ in Class 18.
18 According to the applicant, that assessment is vitiated by unlawfulness, in that it constitutes an infringement, by the Board of Appeal, of ‘Article 43(2)’ of Regulation No 207/2009 ‘and/or’ Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended.
19 First, it should be stated that it is due to a clerical error that the applicant refers to Article 43 of Regulation No 207/2009, since the question of proof of genuine use is governed by Article 42 thereof. Next, by having referred explicitly only to the second paragraph of that article, relating to proof of genuine use of an earlier Community mark, when, as was noted at paragraphs 15 and 16 above, it is only the lawfulness of the Board of Appeal’s assessment relating to proof of genuine use of an earlier national mark which it relates to, the applicant must be regarded as having, implicitly, but necessarily, also alleged infringement of the provisions of Article 42(3) of Regulation No 207/2009, in the words of which ‘paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community’. Lastly, since Rule 22(3) of Regulation No 2868/95 specifies the provisions of Article 42(2) and (3) of Regulation No 207/2009 through indications concerning the place, time, extent and nature of use (see, to that effect, judgment of 19 April 2013 in case T‑454/11 Luna v OHIM – Asteris (Al bustan), not published in the ECR, paragraph 35), it must be held in the present case that, by use of the expression ‘and/or’, reiterated at paragraph 18 above, the applicant intends to rely on infringement of both Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95.
20 In support of the first plea in law thus defined, the applicant claims, first, that the Board of Appeal erred in law by estimating that the 47 documents submitted by Mr López Cabré, ‘considered as a whole’, proved that the earlier Spanish word mark VOGUE had been put to genuine use, whereas such use should have been shown by each of those documents.
21 It claims, secondly, that the mandatory nature of Rule 22(3) of Regulation No 2868/95 requires the Board of Appeal to determine whether each item of evidence submitted includes indications concerning the place, time, extent and nature of the use which had been made of the earlier national mark. It alleges that this had not been done in the present case, since the Board of Appeal did not compare the references in the invoices, in particular those addressed to customers residing in Spain, with any other document, such as the catalogues, to prove that the goods mentioned in those invoices bore the earlier Spanish word mark VOGUE. According to the applicant, the fact that the goods in the catalogues bore that mark does not prove that the same is true of the goods invoiced. It notes, furthermore, that the label produced before the Opposition Division did not indicate the place, the time, or the extent of use of the word ‘vogue’, that the extracts from the website of the company having exclusive use of that mark did not show any indication concerning the time or the extent of use which had been made of it, that the catalogues also did not give any indication of time or show the extent of use and that the invoices, for their part, gave only insufficient information concerning the nature of that use.
22 Third, it complains that the Board of Appeal accepted, then used, an item of evidence submitted after the time-limit for such submission, in this instance a declaration filed by the director of the company using the mark stating, first, that the catalogues submitted had been distributed in Spain and, second, that the capital letter ‘V’, mentioned on the invoices, designated the goods bearing the earlier Spanish word mark VOGUE.
23 OHIM disputes the applicant’s arguments.
24 First, in accordance with settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, and from Rule 22(3) of Regulation No 2868/95 that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, unless there is good commercial justification for the lack of genuine use of the earlier mark deriving from active functioning of it on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013 in Case T‑355/09 Reber v OHIM – Wedl & Hofmann (Walzer Traum), not published in the ECR, paragraph 25 and the case-law cited).
25 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (Walzer Traum, paragraph 26; see also, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (Walzer Traum, paragraph 26; see also, to that effect and by analogy, Ansul, paragraph 43).
26 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 40, see also, by analogy, Ansul, paragraph 43).
27 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
28 To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (see, to that effect, VITAFRUIT, paragraph 42, and HIPOVITON, paragraph 36).
29 Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 47, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 28).
30 Second, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing, that rule does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely, the place, time, nature and extent of use (Case T‑308/06 Buffalo Milke Automotive Polishing Products v OHIM – Werner & Mertz (BUFFALO MILKE Automotive Polishing Products) [2011] ECR II‑7881, paragraph 61, and Al bustan, paragraph 35).
31 Moreover, it is established case law that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraph 36, and Al bustan, paragraph 36).
32 Third, pursuant to Article 15(2) of Regulation No 207/2009, in conjunction with Article 42(3) thereof, use of an earlier national trade mark by a third party with the consent of the proprietor is deemed to constitute use by the proprietor (VITAFRUIT, paragraph 20).
33 It is in the light of those considerations that it must be examined whether the Board of Appeal did not infringe Article 42(2) and (3) of Regulation No 207/2009 or Rule 22(3) of Regulation No 2868/95 by finding that the documents submitted by Mr López Cabré were sufficient to prove genuine use of the earlier Spanish word mark VOGUE.
34 It should be noted that Mr López Cabré, in the course of the administrative procedure, produced, inter alia, the following items of evidence for the purpose of proving genuine use of the earlier Spanish word mark VOGUE:
– on 29 July 2009, in reply to the request for proof of genuine use of that mark, a declaration, dated 18 September 2002, signed by Mr López Cabré and Mr Eduardo López Sampedro, Manager of Parimex, SA, according to which that company was granted exclusive use of the three marks relied on in support of the opposition and mentioned at paragraph 6 above, including the earlier Spanish word mark VOGUE;
– extracts from the website www.parimex.com consisting of information regarding the umbrellas bearing the earlier Spanish word mark VOGUE and tracing the history of that company;
– extracts from catalogues of goods sold by Parimex (years 2003 to 2008);
– copies of invoices issued by Parimex;
– a copy of the label bearing the earlier Spanish figurative mark reproduced at paragraph 6 above;
– on 27 January 2011, annexed to Mr López Cabré’s observations in reply to the action taken by the applicant before the Board of Appeal, a declaration of Mr López Sampedro stating, first, that the catalogues in the case-file had indeed been distributed to Spanish customers and to potential customers and, second, that the codes on the invoices including a capital letter ‘V’ referred to goods bearing the earlier Spanish word mark VOGUE.
35 As a preliminary point, it is necessary, first, to state that it is apparent from the documents in the case-file that, by contract concluded before a notary on 25 July 2002, Mr López Cabré authorised Parimex to use the earlier Spanish word mark VOGUE, confirmed by the declaration of 18 September 2002, made in tempore non suspecto and referred to in the first indent of the preceding paragraph. It follows that, in accordance with the case-law referred to at paragraph 32 above, the use of that mark by Parimex must be regarded as having been made by Mr López Cabré. Second, among the arguments that it puts forward to establish lack of evidential value of the documents produced by Mr López Cabré during the administrative procedure, the applicant states that ‘[t]he label neither gave nor was accompanied by any indication of the place, time or extent of use of the word [“vogue”]’. However, it is not disputed that that label bears the earlier Spanish figurative mark reproduced at paragraph 6 above, which was not chosen by the Opposition Division or by the Board of Appeal to support the upholding in part of the opposition. That argument must therefore be rejected as being irrelevant.
36 As regards the merits of the Board of Appeal’s assessment concerning the evidential value of the documents submitted by Mr López Cabré during the administrative procedure, it is necessary, first, for the applicant’s first two complaints to be rejected, concerning the alleged prohibition of assessing the evidence as a whole and the supposed requirement to examine each item of evidence with regard to the four criteria laid down by Rule 22(3) of Regulation No 2868/95, relating to the place, time, nature and extent of the use at issue. It follows from the settled case-law referred to at paragraphs 28, 30 and 31 above that, on the contrary, a global assessment, taking into account all the factors relevant to the present case, must be carried out, since Rule 22(3) of that regulation in no way implies that each item of evidence must necessarily contain information on each of the abovementioned criteria, because either one of those items of evidence, considered alone, may not be able to adduce the proof of genuine use which nevertheless will result from an overall assessment of all of the evidence in the case-file.
37 Next, it should be determined whether the Board of Appeal was correct to regard the documents submitted by Mr López Cabré as establishing genuine use of the earlier Spanish word mark VOGUE.
38 In this respect, it is necessary to state that Mr López Cabré submitted extracts from catalogues concerning, without interruption, the years 2003 to 2008 and relating to the goods sold by Parimex. It is apparent from examining those extracts, first, that those goods bore the word ‘vogue’ written in capital letters, second, that they contained a code designating a specific product and, third, that the catalogues were written in Spanish.
39 Mr López Cabré also submitted invoices, relating to the years 2004 to 2008, issued to many buyers of goods sold by Parimex, the majority of which were located in Spain. Those invoices also contain, in their heading, the word ‘vogue’ written in capital letters, they are written in Spanish and denominated in euros, and include product codes corresponding, for many of them, to those appearing in the catalogues, followed by the capital letter ‘V’. The place of purchase (most often large or medium-sized Spanish towns) also appears on those invoices.
40 Consequently, the Board of Appeal did not err in law in finding that that evidence, considered as a whole, established, as regards its place, time, extent and nature, genuine use of the earlier Spanish word mark VOGUE, that is to say, aimed at guaranteeing the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services excluding token use for the sole purpose of preserving the rights conferred by the mark (see, to that effect, judgment of 27 September 2007 in Case T‑418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 54 and the case-law cited).
41 Lastly, it is necessary to reject the applicant’s third complaint, alleging that evidence produced out of time was accepted and used, that evidence being namely, Mr López Sampedro’s declaration indicating, first, that the catalogues in the case-file had indeed been distributed to Spanish customers and to potential customers and, second, that the codes on those invoices including the capital letter ‘V’ referred to goods bearing the earlier Spanish word mark VOGUE.
42 First, that declaration must not be regarded as new evidence, but as an explanation of evidence previously provided within the time-limit, in this case the catalogues and invoices.
43 Second, even if, quod non, it were additional evidence, it must be noted that, although Article 42(2) of Regulation No 207/2009 provides that, if the applicant for registration so requests, the proprietor of a mark who has given notice of opposition is to furnish proof of genuine use of the mark, in the absence of which the opposition is to be rejected, that regulation does not contain a provision specifying the time-limit within which such proof must be adduced. On the other hand, Rule 22(2) of Regulation No 2868/95 provides, in this regard, that, where such an application is made, OHIM is to invite the proprietor of the earlier mark to furnish proof of use of the mark or show that there are proper reasons for non-use within such period as it may specify (Case C‑621/11 P New Yorker SHK Jeans v OHIM [2013] ECR, paragraphs 24 and 25).
44 In this case, OHIM’s Opposition Division applied Rule 22(2) and set a period within which Mr López Cabré could submit such proof. In addition, it is not disputed that Mr López Cabré submitted, as is set out at paragraph 34 above, various items of evidence of use of the earlier Spanish word mark VOGUE within that period.
45 Next, it should be noted that the second sentence of Rule 22(2) of Regulation No 2868/95 also states that if proof of use of the mark is not provided within the time-limit set by OHIM, the opposition will be rejected (New Yorker SHK Jeans v OHIM, paragraph 27).
46 However, again according to the case-law, although, admittedly, it follows from the wording of Rule 22(2) of Regulation No 2868/95 that, when no proof of use of the mark concerned is submitted within the period set by OHIM, the opposition must automatically be rejected by OHIM, such a conclusion is not, on the other hand, inevitable when proof of use has indeed been submitted within that period. In such a case, and unless it appears that that evidence is irrelevant for the purposes of establishing genuine use of the mark, the proceedings are to run their course. Accordingly, OHIM is, inter alia, called upon, as provided by Article 42(1) of Regulation No 207/2009, to invite the parties, as often as necessary, to file their observations on the notifications it has sent to them or on the communications from the other parties. In such a situation, if the opposition is subsequently rejected owing to lack of sufficient proof of genuine use of the earlier mark, that rejection does not result from application of Rule 22(2) of Regulation No 2868/95, a provision that is essentially procedural, but exclusively from the application of the substantive provision in Article 42(2) of Regulation No 207/2009 (New Yorker SHK Jeans v OHIM, paragraphs 28 and 29).
47 It follows that, when, as in the present case, proof considered to be relevant in order to establish use of the mark at issue has been submitted within the time-limit set by OHIM under Rule 22(2) of Regulation No 2868/95, the submission of additional proof of such use remains possible after the expiry of that period, without however granting that party an unconditional right to have such evidence taken into consideration by OHIM (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 43).
48 Where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (OHIM v Kaul, paragraph 44; New Yorker SHK Jeans v OHIM, paragraph 33; and Case C‑120/12 P Rintisch v OHIM [2013] ECR, paragraph 38).
49 In such a case, OHIM is in no way prohibited, contrary to what the applicant claims, from taking account of evidence which is submitted late through exercising the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (New Yorker SHK Jeans v OHIM, paragraphs 21, 22 and 30, and Rintisch v OHIM, paragraphs 21 and 22).
50 Third, it is apparent from the examination of both the contested decision and the documents on which it was based that the explanatory declaration in question was not, in reality, essential, since the content of the catalogues and the invoices was sufficient, of itself, to establish both the distribution in Spain of those catalogues and the reference to the articles bearing the earlier Spanish word mark VOGUE. It is necessary, in addition, to note that the fact that the earlier mark does not appear in those invoices cannot prove that the latter are irrelevant for the purposes of proving genuine use of that mark (LA MER, paragraph 65, and judgment of 24 May 2012 in Case T‑152/11 TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM – Comercial Jacinto Parera (MAD), not published in the ECR, paragraph 60).
51 In the present case, not only did the invoices, in their heading, contain the earlier Spanish word mark VOGUE, but the capital letter ‘V’ referred without possible ambiguity to that mark, particularly because that letter was preceded by a code corresponding to the goods sold, many of which appeared with the same code in the catalogues submitted during the administrative procedure.
52 The applicant was therefore wrong to criticise OHIM for accepting, then using, Mr López Sampedro’s declaration, notwithstanding its lateness.
53 In the light of the foregoing, it must be found that the Board of Appeal did not infringe Article 42(2) and (3) of Regulation No 207/2009 or Rule 22(3) of Regulation No 2868/95. The first plea in law must therefore be rejected.
Infringement of Article 8(1)(b) of Regulation No 207/2009
54 By its second plea in law, the applicant claims that there is no likelihood of confusion between the mark applied for and the earlier Spanish word mark VOGUE. It maintains that the Board of Appeal erred in its comparison of the overall impression given, first, by the mark applied for and, second, by the earlier Spanish word mark VOGUE, by not giving consideration, or giving inadequate consideration, to the element ‘teen’. According to the applicant, that element makes a significant contribution to the visual and aural impressions given by the mark applied for, since it appears before the word ‘vogue’ and is not descriptive, that word having no meaning in Spanish. What is more, the element ‘teen’ produces a hard sound, in contrast to the softer sound of the word ‘vogue’, which makes that element the dominant and more distinctive component of the mark applied for. Finally, the Board of Appeal failed to identify, in the contested decision, the relevant average consumer, merely stating that the goods at issue were destined for the public at large. The applicant claims that the consumer’s level of attention is, when purchasing those goods, relatively high, which allows him to perceive the differences between the mark applied for and the earlier Spanish word mark VOGUE, thus avoiding any likelihood of confusion.
55 OHIM disputes the applicant’s arguments.
56 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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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.
57 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. 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 the goods or services concerned and account being taken of 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 Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
58 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
59 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined.
Relevant public
60 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
61 First, it is apparent from the contested decision that the Board of Appeal considered that the relevant goods were directed ‘at the public at large’ (paragraph [24] of the contested decision) and that, consequently, the likelihood of confusion must ‘be assessed on the basis of the perception of the general public in [Spain]’ (same paragraph). It is settled case-law that, when the goods are intended for the general public, or for the benefit thereof, the relevant public is comprised of average consumers in the territory concerned, deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 13 April 2011 in Case T‑159/10 Air France v OHIM (Representation of a parallelogram), not published in the ECR, paragraph 17; judgment of 25 May 2012 in Case T‑233/10 Nike International v OHIM – Intermar Simanto Nahmias (JUMPMAN), not published in the ECR, paragraphs 19 to 22; Case T‑278/10 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (WESTERN GOLD) [2012] ECR, paragraphs 24 and 25). Consequently, the applicant was wrong to claim that the Board of Appeal did not identify, in the present case, the relevant average consumer.
62 Second, the applicant claims, notwithstanding the foregoing, that the level of attention of that public is, in the present case, ‘relatively high’, given the nature of the goods at issue, namely ‘umbrellas, parasols, and parts and fittings for those goods’ in Class 18. That argument cannot be accepted. Such goods are everyday consumer goods, frequently bought and used, and are therefore destined for the average consumer in the territory concerned, in the present case the average Spanish consumer, deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, as regards, inter alia, umbrellas and umbrella handles, judgment of 22 May 2012 in Case T‑179/11 Sport Eybl & Sports Experts v OHIM – Seven (SEVEN SUMMITS), not published in the ECR, paragraph 22; and, in relation, in particular, to umbrellas, parasols and walking sticks, judgments of 10 November 2011 in Case T‑22/10 Esprit International v OHIM – Marc O’Polo International (Representation of a letter on a pocket), not published in the ECR, paragraphs 33 and 45, and of 31 January 2013 in Case T‑54/12 K2 Sports Europe v OHIM – Karhu Sport Iberica (SPORT), not published in the ECR, paragraph 20). Consequently, contrary to what the applicant claims, the level of attention of the relevant public is not, in the present case, above average (see, to that effect, Representation of a letter on a pocket, paragraph 45 and the case-law cited). It follows that the contested decision is not unlawful in that regard.
Comparison of the goods
63 It is necessary to state that the Board of Appeal correctly found, at paragraph [25] of the contested decision, that the ‘umbrellas, parasols, parts and fittings for all the aforesaid goods’ for which the Community trade mark application had been rejected, and the goods covered by the earlier Spanish word mark ‘VOGUE’, namely, ‘all kinds of umbrellas sunshades, handles, ribs and cane for these’, were identical, with which, moreover, the parties agree.
Comparison of the signs
64 The signs at issue form word marks, the earlier Spanish word mark consisting of the word ‘vogue’, while the mark applied for consists of the words ‘teen’ and ‘vogue’.
65 It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression made by the signs, their distinctive and dominant components, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services at issue plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
66 In the present case, the Board of Appeal found that the signs at issue have an average degree of visual and phonetic similarity, while excluding conceptual similarity, on the ground that none of the words at issue has any meaning in Spanish.
67 The applicant disputes the Board of Appeal’s assessment and claims that there is no visual and phonetic similarity between the signs at issue, since the element ‘teen’ makes a ‘significant contribution to the visual and aural impressions made’ by the mark applied for. In its view, that impression will be all the greater because the first word is not descriptive and the sound produced by the two words differentiates them, the word ‘teen’ producing a hard sound, in contrast to the word ‘vogue’ which produces a soft sound.
68 OHIM disputes the applicant’s arguments.
– Visual comparison
69 First, it is necessary to state, as the Board of Appeal did at paragraph [27] of the contested decision, that, although it is true that the mark applied for consists of two words compared to the earlier Spanish word mark which consists of only one, the fact remains that the earlier Spanish word mark is entirely included in the mark applied for. The word ‘vogue’, present in the signs at issue, is, in the case of the earlier Spanish word mark, the only word the public can read and, in the case of the mark applied for, the last word it will read. In addition, while the word ‘teen’ has four letters, five letters make up the word ‘vogue’. It follows from the foregoing that, in respect of the mark applied for, as regards the visual comparison, the element ‘teen’ is not more important than the element ‘vogue’.
70 Second, concerning the applicant’s reliance on the case-law according to which the beginning of a sign is significant in the overall impression given by that sign (Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65, and judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM – Editorial Planeta (FOCUS Radio), not published in the ECR, paragraph 36), it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (see judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70 and the case-law cited). Thus, despite the presence of a first element differentiating the mark applied for from the earlier mark, those marks may show a certain visual similarity due to the presence of a common element (Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraphs 39 to 44; judgment of 8 March 2005 in Case T‑32/03 Leder & Schuh v OHIM – Schuhpark Fascies (JELLO Schuhpark), not published in the ECR, paragraphs 38 to 47; and Case T‑466/08 Lancôme v OHIM – Focus Magazin Verlag (ACNO FOCUS) [2011] ECR II‑1831, paragraphs 56 to 63).
71 Therefore, the Board of Appeal was correct to conclude that the signs are visually similar to an average degree, due to the presence of the element ‘vogue’, common to those signs.
– Phonetic comparison
72 The Board of Appeal also concluded that the signs at issue are phonetically similar to an average degree, since their common element ‘vogue’ is pronounced the same in both cases.
73 It is necessary, first, to state that the presence of the element ‘teen’ in the mark applied for undoubtedly contributes to differentiating the two marks at issue phonetically. Nevertheless, it should be noted, as the Opposition Division did (paragraph 8 of the contested decision), that, for the average Spanish consumer, each of the two elements of the mark applied for has two syllables (‘te’ and ‘en’, ‘vo’ and ‘gue’), so that it cannot be accepted that the element ‘teen’ outweighs, in that respect, the element ‘vogue’. Furthermore, the applicant’s claim that the element ‘teen’ has a harder sound than the element ‘vogue’, even if established, which is not the case, is not of such significance as to exclude the fact that, because the word ‘vogue’ is pronounced the same in both trade marks, a certain phonetic similarity can be found to exist between the two signs taken as a whole (see, to that effect, judgment of 11 December 2008 in Case T‑90/06 Tomorrow Focus v OHIM – Information Builders (Tomorrow Focus), not published in the ECR, paragraph 34, and ACNO FOCUS, paragraph 64). Therefore, the applicant is wrong to claim that the Board of Appeal made an error of assessment in finding that, phonetically, the signs at issue are similar to an average degree.
– Conceptual comparison
74 The Board of Appeal noted, at paragraph [29] of the contested decision, that neither of the two elements at issue (‘teen’ and ‘vogue’) has a meaning in Spanish, with which, moreover, the parties agree.
75 It was therefore not possible to undertake a conceptual comparison of the signs (see judgment of 16 September 2013 in Case T‑569/11 Gitana v OHIM – Teddy (GITANA), not published in the ECR, paragraph 67 and the case-law cited).
– Conclusion on the comparison of the signs
76 Therefore, the Board of Appeal was fully entitled to hold that, from the point of view of the relevant public, there was a visual and phonetic similarity between the signs at issue. Furthermore, since no conceptual difference between the earlier Spanish word mark and the mark applied for could be found, given the lack of meaning in Spanish of the elements comprising those marks, the applicant is not justified in arguing that the signs at issue were incorrectly regarded as being similar. It is settled case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards the visual, phonetic and conceptual aspects (see, to that effect, Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30 and the case-law cited).
Likelihood of confusion
77 The global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
78 In light of the visual and phonetic similarities of the signs at issue and having regard to the fact that the goods designated by the earlier Spanish word mark VOGUE, on the one hand, and the mark applied for, on the other, are identical, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion between those marks. The applicant’s argument that the absence of the element ‘teen’ in the earlier Spanish word mark VOGUE suffices to avoid all likelihood of confusion must be rejected, since it was held at paragraphs 67 to 71 above that the presence of that element in the mark applied for does not introduce such a dissimilarity between the signs at issue as would lead to erasing their similarities. Thus, the Board of Appeal was correct to confirm the Opposition Division’s decision refusing registration of the mark applied for as regards ‘umbrellas, parasols, parts and fittings for all the aforesaid goods’ in Class 18.
79 Therefore, the applicant’s second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected as unfounded.
80 Consequently, the applicant’s action must be dismissed in its entirety.
Costs
81 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Advance Magazine Publishers, Inc., to pay the costs.
Delivered in open court in Luxembourg on 27 February 2014.
[Signatures]