Wall AG v OHIM

General Court of European Union, Case T‑227/11

Typology: Case Law
Tags: Trade Mark

 

For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative.

 

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

12 July 2012

(Community trade mark – Opposition proceedings – Application for Community figurative mark bluepod MEDIA – Earlier Community figurative mark blue spot and earlier international and national word marks BlueSpot – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑227/11,

Wall AG, established in Berlin (Germany), represented by A. Nordemann and T. Boddien, lawyers, applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent, defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Bluepod Media Worldwide Ltd, established in London (United Kingdom),

ACTION brought against the decision of the First Board of Appeal of OHIM of 10 February 2011 (Case R 301/2010‑1), concerning opposition proceedings between Wall AG and Bluepod Media Worldwide Ltd,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen, President, N. Wahl (Rapporteur) and S. Soldevila Fragoso, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the General Court on 26 April 2011,

having regard to the response of OHIM lodged at the Registry of the General Court on 28 July 2011,

having regard to the decision of 8 September 2011 refusing leave to lodge a reply,

further to the hearing on 2 May 2012,

gives the following

Judgment

 Background to the dispute

1        On 13 July 2007, Bluepod Media Worldwide Ltd filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now 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 trade mark in respect of which registration was sought is the figurative sign reproduced below:

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3        The goods and services in respect of which registration was sought are in Classes 9, 35, 38 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; apparatus for telemetry, telecommunications apparatus, telemeters, telephone apparatus, telephone receivers, telephone transmitters, telephone wires, telephones (portable); computer hardware and firmware, accessories for computers, display screens, switching apparatus; computer software (including software downloadable from the internet); compact discs; chips, flash drives, digital publications (downloadable)’;

–        Class 35: ‘Advertising; business management; business administration; office functions, organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the internet, advertising services provided via telemetry; production of television and radio advertisements and content; opinion polling; data processing; provision of business information’;

–        Class 38: ‘Telecommunications, access time to global computer networks (rental of), broadcasting (telecommunications), broadcasting (radio), cellular telephone communication, chatrooms (providing internet), communications by computer terminals, communications by fiber [fibre] optic networks, communications by telephone, computer aided transmission of messages and images, computer terminals (communications by), electronic bulletin board services [telecommunications services], electronic mail, facsimile transmission, information about telecommunication, mail (electronic), message sending, paging services [radio, telephone or other means of electronic communication], providing access to databases, providing internet chatrooms, providing telecommunication channels for teleshopping services, providing telecommunications connections to a global computer network, providing user access to a global computer network, [service providers], rental of access time to global computer networks, rental of facsimile apparatus, rental of message sending apparatus, rental of modems, rental of telecommunication equipment, rental of telephones, sending apparatus (rental of), sending of telecommunications, telecommunication (information about), telecommunications routing and junction services, teleconferencing services, telephone (communications by), telephone service, teleshopping services (providing telecommunication channels for), transmission (facsimile), transmission of messages and images (computer aided), transmission of telegrams, voice mail services’;

–        Class 41: ‘Entertainment; sporting and cultural activities namely amusements, arranging and conducting of colloquiums, arranging and conducting of concerts, arranging and conducting of conferences, arranging and conducting of congresses, arranging and conducting of seminars, arranging and conducting of symposiums, arranging and conducting of workshops [training], booking of seats for shows, cine‑films (rental of), cinema presentations, club services [entertainment or education], colloquiums (arranging and conducting of), competitions (organisation of) [education or entertainment], competitions (organisation of sports), conducting of concerts (arranging and), conferences (arranging and conducting of), congresses (arranging and conducting of), digital imaging services, education information, electronic desktop publishing, entertainment, entertainment information, game services provided on‑line from a computer network, gaming, information (education), information (entertainment), information (recreation), instruction services, organisation of competitions [education or entertainment], organisation of exhibitions for cultural or educational purposes, organisation of sports competitions, providing on‑line electronic publications, not downloadable, publication of books, publication of electronic books and journals on‑line, publication of texts, other than publicity texts, reporters services (news), sound recordings (rental of), texts (publication of), other than publicity texts, texts (writing of), other than publicity texts’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 67/2007 of 17 December 2007.

5        On 13 March 2008, the applicant, Wall AG, gave notice of opposition, pursuant to 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 and services referred to in paragraph 3 above.

6        The opposition was based on the following earlier Community figurative mark and the following earlier international and national marks.

7        First, Community figurative mark No 5660972 registered on 5 December 2007, as reproduced below:

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8        The services covered by the earlier Community figurative mark fall within Classes 35 and 38 and correspond, for each of those classes, to the following description:

–        Class 35: ‘Advertising; advertising agency services; development of advertising and marketing concepts; outdoor advertising; planning and design of advertising projects, for others, including in the form of interactive advertising; sales promotion (for others); marketing advertising space, for others; rental of advertising space, in particular on street furniture, on the internet and in other news media; exchange of advertising posters on poster pillars, illuminable poster surfaces and other street furniture; distribution and dissemination of advertising material and samples for advertising purposes; public relations; conducting, arranging, organisational project planning and organisational project management for advertising and advertising launches of businesses; making available and providing of advertising messages on data networks, on internet homepages, on data terminals and on other communications platforms, including for retrieval on mobile terminals, in particular on laptops, PDAs, smart phones and mobile telephones’;

–        Class 38: ‘Telecommunications services; sending of messages, images and data, in particular of advertising messages, by computer and via data networks and telecommunications apparatus; automatic forwarding of information, in particular of advertising messages, via telecommunications and data networks; operation of wireless LAN and internet access points and terminals with access to data networks (telecommunications); dissemination of advertising messages and information by electronic means’.

9        Second, the word mark BlueSpot, registered, first, as international trade mark No 880880 on 5 June 2005 with effect in the Benelux countries, Bulgaria, Hungary and Romania, and, second, as German trade mark No 30472373 on 2 May 2005. Those two registrations cover services in, inter alia, Classes 35 and 38 and correspond, for each of those classes, to the following description:

–        Class 35: ‘Advertising; services of an advertising agency; development of advertising and marketing concepts; poster advertising; planning and arranging of advertising for third parties, also in the form of interactive advertisements; sales promotion for third parties; arranging for the provision of poster advertising space for third parties; rental of advertising space and poster advertising surfaces, in particular on street furniture, on the internet and in other new media; updating (exchange) of advertising posters on poster advertising columns, illuminable poster advertising surfaces and other street furniture; distribution and circulation of advertising material and product samples for advertising purposes, public relations; planning and production of advertising matter, and planning and organising advertising campaigns; distribution and circulation of coupons for advertising purposes; dissemination of advertising messages and information’;

–        Class 38: ‘Telecommunication services; transmission of messages, pictures and data, by means of computers and via data networks as well as telecommunication facilities; automatic forwarding (transmission) of information, via telecommunication and data networks; providing access to data networks using wireless LAN and internet access points; transmission of information for third parties and providing access to messages in data networks, on internet homepages, on data terminals, as well as on other communication platforms, also for retrieval on mobile end devices, in particular on laptops, PDAs, smartphones and mobile telephones’.

10      The opposition was based on the services referred to in paragraphs 8 and 9 above covered by the earlier marks and was directed against all the goods and services covered by the trade mark application.

11      The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

12      On 25 February 2010, the Opposition Division rejected the opposition. It considered that, in the light of the differences between the signs at issue, there was no likelihood of confusion.

13      On 3 March 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

14      By decision of 10 February 2011 (‘the contested decision’), the First Board of Appeal of OHIM partially annulled the Opposition Division’s decision, allowing the opposition in respect of certain services. On the other hand, it dismissed the appeal as to the remainder and upheld the rejection of the opposition in respect of other services.

15      First, the Board of Appeal was of the view that the relevant public comprises the general public and the professional business public as regards the goods in Class 9 and the services in Classes 38 and 41, and the professional business public as regards the services in Class 35.

16      Next, the Board of Appeal considered that the earlier word mark and the mark applied for may be regarded as visually and aurally similar, whereas there are significant differences between the earlier figurative mark and the mark applied for.

17      Next, with regard to the similarity of the goods and services, the Board of Appeal was of the view that the services covered by the marks at issue in Class 35 were identical or highly similar, with the exception of ‘business administration’ and ‘office functions’. Similarly, the services covered by the mark applied for were identical to certain services covered by the earlier mark in Class 38, all of which also take the form of telecommunications, communications and the transmission of data or information. As regards Class 41, it considered that only part of the services in that class were similar. Moreover, it was of the view that the goods in Class 9 and the services in Class 38 were highly similar.

18      Lastly, in view of, first, the similarity between the earlier word mark and the mark applied for and, second, the fact that part of the goods and services covered by those marks were identical or highly similar, the Board of Appeal concluded that there was a likelihood of confusion.

 Forms of order sought by the parties

19      The applicant claims that the Court should:

–        annul the contested decision in part, in so far as it rejected the appeal against the Opposition Division’s decision;

–        order OHIM to pay the costs.

20      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

21      The applicant relies on a sole plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it submits that the Board of Appeal was wrong to find that there was no likelihood of confusion between the marks at issue.

22      As provided in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and, 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.

23      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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (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).

24      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 which 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).

25      It is in the light of those considerations that the sole plea in law relied on by the applicant must be examined.

 The relevant public

26      The Board of Appeal found, at paragraphs 15 and 21 of the contested decision, that the relevant public consisted of the public at large as well as the professional business public, as far as concerns the goods in Class 9 and the services in Classes 38 and 41, and, with respect to the services in Class 35, the professional business public. Given that the earlier word mark is protected by a registration in Germany and by an international registration with effect in the Benelux countries, Bulgaria, Hungary and Romania, the relevant public is to be found in those countries. As the earlier figurative mark is a Community trade mark, the relevant public is that of the European Union.

27      The applicant confirmed at the hearing that it did not dispute those findings.

 Comparison of the signs as between the mark applied for and the earlier word mark

28      The applicant submits that there is at least an average degree of visual and aural similarity between the mark applied for and the earlier word mark, not a ‘certain degree’ of similarity. In its view, the word ‘media’ is not particularly noticeable and is descriptive with respect to the services in question.

29      In that regard, it should be noted that the Board of Appeal correctly found, at paragraph 18 of the contested decision, that since the word ‘blue’ is a separate element in both the signs at issue, there is some aural similarity between the signs, even though the letter ‘s’ cannot be disregarded in the pronunciation of the second word element of the earlier mark. Moreover, the applicant has not disputed that finding.

30      Similarly, the Board of Appeal was correct to find, at paragraph 19 of the contested decision, that neither of the marks at issue conveys any specific meaning, so that, in conceptual terms, the overall impression given by them is not meaningful. The applicant has not disputed that finding.

31      As regards visual similarity, the Board of Appeal considered that the fanciful feature of the mark applied for is the letter ‘o’, the inner part of which is shaded in blue, between the letters ‘p’ and ‘d’ in black. However, it considered that that feature does not prevent the mark applied for being perceived as the word ‘bluepod’. Next, it was of the view that the word ‘media’, written in script that is significantly smaller than the word element ‘bluepod’, is not particularly noticeable. Lastly, it pointed out that the principal word of the mark applied for, namely ‘bluepod’, reproduces six of the eight letters of the earlier mark and that the word ‘blue’ is a separate element at the beginning of both the signs at issue.

32      The Court therefore finds that the Board of Appeal correctly concluded that the signs at issue are similar to a certain degree and that, in so far as concerns the overall impression given, the conflicting marks may be considered similar.

33      It should also be noted that at paragraph 17 of the contested decision the Board of Appeal took account of the fact that the word ‘media’ is not particularly noticeable, it being significantly smaller than the word element ‘bluepod’. Furthermore, it is established case-law that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 40 and the case-law cited). Thus, even though the word ‘media’ was not considered to be particularly noticeable, that does not mean that it is negligible. Moreover, as already pointed out above, the Board of Appeal concluded that the marks at issue are similar and, accordingly, the applicant’s argument is irrelevant in that regard.

34      Moreover, as pointed out by OHIM in its response, the word ‘media’ is not descriptive in relation to certain services in Class 41, such as ‘entertainment; organisation of sports events, arranging and conducting of conferences, congresses or conferences’.

 Comparison of the signs as between the mark applied for and the earlier figurative mark

35      As regards the comparison of the figurative marks at issue from an aural and conceptual perspective, the Board of Appeal considered, on grounds more or less the same as those set out at paragraphs 29 and 30 above, that there is some aural similarity but no conceptual similarity. The applicant has not disputed those findings.

36      On the visual level, the Board of Appeal took the view that, although both the figurative marks at issue contain the word ‘blue’, shaded in blue, the visual differences outweigh any similarity based on the word ‘blue’.

37      That conclusion must be upheld.

38      It should be noted, as observed by the Board of Appeal, that, first, the figure in red, which appears to be moving towards a blue square, occupies a substantial part and is a striking element of the earlier mark. Second, the main fanciful feature of the mark applied for is the letter ‘o’, the inner part of which is shaded blue, between the letters ‘p’ and ‘d’ in black, below which appears the word ‘media’. Furthermore, whereas the ‘bluepod’ word element of the mark applied for is presented on one line, the word ‘blue’ appears above the word ‘spot’ in the earlier figurative mark. Moreover, the curved segment of the letters ‘p’ and ‘d’ is circular, which means that the visual impact of the mark applied for derives from the fact that the letters ‘p’ and ‘d’ are the inverse of each other. In the earlier mark, the letters ‘s’ and ‘p’ are not the inverse of the letter ‘t’.

39      The applicant’s argument that the impression given by the earlier figurative mark is based on the word element ‘bluspot’, which is similar to the core element of the mark applied for – ‘bluepod’ – does not affect that conclusion. The word element of the earlier figurative mark is ‘blue spot’ – two words which are clearly separate as they appear on two different lines – not ‘bluespot’. Furthermore, the word element of the mark applied for is ‘bluepod media’, notwithstanding the fact that the word ‘media’ is less noticeable – not ‘bluepod’.

40      It follows that the Board of Appeal did not err in considering that there are significant differences in the overall impression created by the figurative marks at issue.

 Comparison of the services

41      According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors pertaining to the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see, by analogy, Case C‑39/97 Canon[1998] ECR I‑5507, paragraph 23, and Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).

42      It must be borne in mind that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 32 and 33, and Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE)[2005] ECR II-4891, paragraph 34).

43      In the present case, it is apparent from paragraphs 28 to 40 of the contested decision that the Board of Appeal considered that all the goods in Class 9, all the services in Class 38, the majority of the services in Class 35 and some of the services in Class 41 covered by the mark applied for are similar to some of the services covered by the applicant’s earlier trade marks.

44      With regard in particular to Class 41, the Board of Appeal considered, first, that the following services – ‘digital imaging services, electronic desktop publishing, game services provided on‑line from a computer network, providing on‑line electronic publications, not downloadable, publication of books, publication of electronic books and journals on‑line, publication of texts, other than publicity texts’ – must be regarded as similar to the services designated by the applicant’s trade marks in Class 38.

45      It considered, second, that the other services in Class 41 covered by the mark applied for are not similar to the services designated by the applicant’s trade marks in Class 38.

46      The applicant contests the Board of Appeal’s finding and submits, in essence, that the services covered by the mark applied for in Class 41, namely ‘entertainment; sporting and cultural activities namely amusements, booking of seats for shows, cine-films (rental of), education information, entertainment information, information (education), information (entertainment), information (recreation), sound recording (rental of)’, and the services in Classes 35 and 38 protected by the earlier marks are highly similar. In the applicant’s view, information in the field of education, entertainment and recreation is essentially provided by means of telecommunication and data networks, wireless local area networks and the internet. Similarly, films and music recordings are usually rented via telecommunications networks and the internet. Moreover, providers of telecommunications services also offer entertainment and sporting and cultural activities.

47      The applicant’s arguments to the effect that the services in Class 38 protected by the earlier rights and the services in Class 41 referred to at paragraph 46 above are similar are not such as to call into question the Board of Appeal’s findings.

48      It should be noted that, while the services in Class 41 referred to at paragraph 46 above may be provided by means of telecommunications equipment, the service provider is generally a supplier specialising in entertainment services, sporting or cultural activities and the organisation of conferences, congresses, seminars, colloquiums etc. The fact that some telecommunications operators may – in very specific circumstances and often using a specialist subsidiary – supply some of the goods in contention does not undermine the Board of Appeal’s conclusion (paragraph 37 of the contested opinion) that the consumer will not usually expect there to be a link between the supply of those entertainment services, sporting and cultural activities or the organisation of cultural events, on the one hand, and services connected with the transmission of data by computer and data networks on the other.

49      Moreover, as pointed out by OHIM, the simple fact that a telecommunications operator might own a theatre or stadium does not mean that telecommunications services are necessarily similar to theatres, stadiums, cultural services or sports services. The public interested in cultural or sports services will generally obtain them from providers of specific services rather than from a telecommunications operator.

50      Similarly, consumers who buy a film or a music album from iTunes will not say they have bought it on Orange, BT, O2 or from another telecommunications provider, but that they bought it on iTunes, which is the provider of entertainment, music and films, not the provider of telecommunications networks. Most of the time, consumers do not know through which telecommunications operator they are downloading the content in question.

51      It follows from the foregoing that the Board of Appeal did not err in its assessment as to the comparison of the services in Class 41 covered by the mark applied for and the services in Classes 35 and 38 covered by the earlier marks.

 The likelihood of confusion

52      The applicant claims, in essence, that the Board of Appeal should have considered whether the marks at issue are similar to such a degree as to give rise to confusion in so far as, first, they disclose an average degree of similarity and, second, there is an average degree of similarity between the services in Class 41 covered by the mark applied for and the services in Class 38 and, in part, the services in Class 35 covered by the earlier marks.

53      There is a likelihood of confusion if, cumulatively, the degree of similarity of the trade marks in question and the degree of similarity of the goods or services designated by those marks are sufficiently high (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 45).

54      In that regard, it is sufficient to point out (see paragraph 32 above) that the earlier word mark and the mark applied for may be regarded as similar. However, as found at paragraphs 47 to 51 above, that is not the case as regards the services covered by the mark applied for in Class 41, namely ‘entertainment; sporting and cultural activities, namely amusements, booking of seats for shows, cine films (rental of), education information, entertainment information, information (education), information (entertainment), information (recreation), sound recording (rental of)’. Therefore, one of the requirements of Article 8(1)(b) of Regulation No 207/2009, namely that the goods or services must be identical or similar, is not met. It follows that the Board of Appeal was entitled to conclude that there is no likelihood of confusion between the mark applied for and the earlier word mark as regards the goods in Class 41 referred to above.

55      As regards the figurative marks at issue, it has already been pointed out (see paragraph 40 above) that the Board of Appeal was correct to find that there are significant differences between them. Moreover, as is apparent from paragraph 54 above, the services in Class 41 covered by the mark applied for, as set out in that paragraph, and the services in Classes 35 and 38 covered by the earlier figurative mark are not similar. The Court therefore finds that the Board of Appeal was correct in its decision that there is no likelihood of confusion between the mark applied for and the earlier figurative mark in so far as concerns the goods in Class 41 referred to at paragraph 54 above.

56      Having regard to all the foregoing considerations, the single plea in law must be rejected and, consequently, the action dismissed in its entirety.

 Costs

57      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay OHIM’s costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Wall AG to pay the costs.

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