CELEX: 62004TJ0022
Community trade mark
Opposition proceedings
Application for Community word mark Westlife
Earlier national trade mark West
Likelihood of confusion
Similarity of the signs

Facts
1       On 12 May 1999, BMG Music filed an application for a Community trade mark at the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trade mark (OJ 1994 L 11, p. 1), as amended.
2       The trade mark for which registration was sought is the word mark Westlife.
3       The goods and services in respect of which registration of the trade mark was sought fall within the following classes 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:
–       Class 9: ‘Sound storage media, image storage media and data storage media, all being pre-recorded; sound storage media, image
storage media and data storage media, including such for interactive use’;
–       Class 16: ‘Printed matter, newsletters, books, brochures, posters, decals, bumper stickers; musical notes and scores’;
–       Class 25: ‘Clothing including T-shirts, sweatshirts, jackets, hats, and baseball caps’;
–       Class 41: ‘Entertainment services provided by a musical band, including television programs, radio programs and electronic
publishing; providing information relating to music, concerts, artists, and entertainment services, both via the Internet
and other communications networks; organising of concerts and other performances’.
4       The application was published in
Community Trade Marks Bulletin
No 22/2000 of 20 March 2000.
5       On 20 June 2000, the applicant filed a notice of opposition against the trade mark applied for in respect of all the goods
and services to which the application related. The opposition was based on the earlier German word mark No 39 743 603, West,
and its earlier international word mark No 700 312, West. As regards the German trade mark, the opposition concerned the following
goods and services:
–       ‘photographic, cinematographic and optical apparatus and instruments; apparatus for recording, transmission or reproduction
of sound and images; magnetic data carriers, phonograph records, automatic vending machines; data processing equipment and
computers’, falling within Class 9;
–       ‘paper, cardboard and goods made from these materials (included in this class); printed matter, bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites
(except furniture);  instructional and teaching material (except apparatus); plastic materials for packaging (included in
this class); playing cards; printer’s type; printing blocks’, falling within Class 16;
–       ‘clothing, including sportswear, footwear, headgear, scarves, cravats, stockings, braces’, falling within Class 25;
–       ‘education and entertainment, especially organisation and realisation of festivals, festivities and music events’, falling
within Class 41.
6       On 1 February 2001, the other party to the proceedings before the Board of Appeal, Bluenet Ltd, became the successor in title
to BMG Music for the purposes of the trade mark application.
7       By decision of 25 January 2002, the Opposition Division of OHIM, first, refused to take the earlier international trade mark
into account on the ground that the opponent had failed to provide the evidence pertaining to it and, second, rejected the
trade mark application for the goods and services in Classes 9, 16, 25 and 41 on the ground that the two conflicting signs
as well as the goods or services in question were identical or similar.
8       On 15 March 2002, the other party to the proceedings before the Board of Appeal brought an appeal against the Opposition Division’s
decision.
9       The Second Board of Appeal of OHIM, by decision of 17 November 2003 (Case R 238/2002‑2, ‘the contested decision’), set aside
the decision of the Opposition Division and rejected the opposition.
10     The Board of Appeal held that the goods and services concerned were partly similar and partly identical (paragraph 16 of the
contested decision). However, it found that there was a low degree of visual and aural similarity between the signs at issue
and that there was only a degree of similarity between them from a conceptual point of view (paragraphs 19, 20 and 21 of the
contested decision). Thus, in making its global assessment of the two marks, it concluded that the differences between the
mark applied for and the earlier German mark were sufficiently significant to enable the marks to coexist in the market place.
It therefore found that there existed no likelihood of confusion between them, within the meaning of Article 8(1)(b) of Regulation
No 40/94, on the part of the public in the territory in which the earlier trade mark is protected (paragraph 22 of the contested
decision).

Procedure and forms of order sought
11     The other party to the proceedings before the Board of Appeal did not lodge any written observations at the Court within the
prescribed period. Having initially stated, by letter of 24 June 2004, that it intended to be present at the hearing, it subsequently
informed the Court, on 12 January 2005, that it no longer intended to do so. It must be held that that party has not participated
in the proceedings before the Court of First Instance within the meaning of Article 134(1) of the Court’s Rules of Procedure,
particularly since it has neither proposed its own form of order nor stated that it was supporting the form of order sought
by either of the other parties. It must therefore be found that it does not have the status of an intervener before the Court.
12     The applicant claims that the Court should:
–       annul the contested decision on the ground that it does not comply with Article 8(1)(b) of Regulation No 40/94;
–       declare that there is a likelihood of confusion between the trade mark applied for, Westlife, and the German trade mark, West;
–       order OHIM to pay the costs.
13     OHIM, expressly stating that it is obliged to seek the following form of order, formally requests the Court to:
–       dismiss the application;
–       order the applicant to pay the costs.

Law

Arguments of the parties
14     The applicant puts forward a single plea in law, alleging there is a likelihood of confusion between the conflicting trade
marks within the meaning of Article 8(1)(b) of Regulation No 40/94. In its submission, the Board of Appeal erred in so far
as it found that there was no likelihood of confusion in the circumstances of this case between the trade mark applied for,
Westlife, and the trade mark West, which is registered in Germany.
15     OHIM concurs, in essence, with the arguments advanced by the applicant. However, in its response it formally contends that
the application should be dismissed because, in its view, the case-law of the Court of First Instance obliges it to do so.
It refers in that regard to the judgments in Case T‑110/01
Vedial
v
OHIM
–
France Distribution (HUBERT)
[2002] ECR II‑5275, paragraph 16 et seq., and Case T‑99/01
Mystery Drinks
v
OHIM
–
Karlsberg Brauerei (MYSTERY)
[2003] ECR II‑43, paragraph 14 et seq.

Findings of the Court
The formulation of the form of order sought by OHIM
16     It must be stated at the outset that, in proceedings concerning an action brought against a decision of an OHIM Board of Appeal
adjudicating in opposition proceedings, OHIM does not have power to alter, by the position which it adopts before the Court
of First Instance, the terms of the dispute, as delimited in the respective claims and contentions of the applicant for registration
and of the opposing party (Case C‑106/03 P
Vedial
v
OHIM
[2004] ECR I‑0000, paragraphs 26 to 38, upholding on appeal the judgment in
HUBERT
, cited at paragraph 15 above).
17     However, contrary to the assertion made by the Office in its response, it does not follow from those decisions that OHIM is
obliged to claim that an action brought against a decision of one of its Boards of Appeal should be dismissed. As the Court
of First Instance held in its judgment in Case T‑107/02
GE Betz
v
OHIM – Atofina Chemicals (BIOMATE)
[2004] ECR II‑0000, while OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal,
it cannot, however, be required to defend systematically every contested decision of a Board of Appeal or automatically to
claim that every action challenging such a decision should be dismissed (paragraph 34 of the judgment).
18     OHIM, although it cannot alter the terms of the dispute may, therefore,  claim that the form of order sought by whichever
one of the parties it may choose should be allowed and may put forward arguments in support of the pleas in law advanced by
that party. However, it cannot independently seek an order for annulment or put forward pleas for annulment which have not
been raised by the other parties (see, to that effect, the judgment in
HUBERT
, cited at paragraph 15 above, paragraph 24).
19     In this instance, OHIM stated clearly both in its response and at the hearing that it wishes to support the form of order
sought, and the pleas in law advanced, by the applicant. It expressly stated that it was formally requesting that the action
be dismissed solely because it considered itself obliged to do so in view of the case-law of the Court of First Instance.
Since, for the reasons set out in the foregoing paragraphs, that analysis does not reflect the law as it currently stands,
it is appropriate to reformulate the form of order sought by OHIM and deem OHIM to have pleaded in essence that the applicant’s
claim be allowed. Following that reformulation, there is no inconsistency between the form of order sought and the arguments
advanced in the response.
Substance
20     It must first of all be observed, that under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of
an earlier trade mark, a trade mark is not registered ‘if because of its identity with or similarity to the earlier trade
mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion
on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes
the likelihood of association with the earlier trade mark.’
21     By virtue of settled case-law, the likelihood of confusion as to the commercial origin of the goods or services must be assessed
globally, according to the perception which the relevant public has of the signs and of the goods or services in question
and taking into account all factors characterising the particular case, in particular the interdependence between the similarity
of the signs and that of the goods or services identified (see Case T‑162/01
Laboratorios RTB
v
OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)
[2003] ECR II‑2821, paragraphs 29 to 33, and the cases cited).
22     As regards the definition of the relevant public in this case, the applicant and OHIM concur that it consists, at the very
least, of average German consumers. It is apparent from the terms of the contested decision that the Board of Appeal also
used that definition.
23     Further, the finding of the Board of Appeal that the goods covered by the trade marks in question are partly identical and
partly similar has not been challenged by the parties represented before the Court.
24     However, the applicant and OHIM challenge the finding in the contested decision that the degree of similarity between the
two signs at issue was not sufficient to give rise to a likelihood of confusion. They submit that the conflicting signs are
sufficiently similar to give rise to a likelihood of confusion on the part of the relevant public, regard being had to the
identity or similarity of all the goods and services covered.
25     In the light of the foregoing, it is necessary to examine whether the mark applied for, Westlife, and the earlier mark, West,
are sufficiently similar to create a likelihood of confusion on the part of the average German consumer with regard to the
commercial origin of the goods and services concerned, in view of the fact that the latter are identical or similar.
26     It is clear from the case-law that the global assessment of the likelihood of confusion between the trade marks must, as regards
the visual, aural or conceptual similarity of the signs in question, be based on the overall impression created by them, bearing
in mind, in particular, their distinctive and dominant components (see, by analogy, Case C‑251/95
SABEL
[1997] ECR I‑6191, paragraph 23, and Case C‑342/97
Lloyd Schuhfabrik Meyer
[1999] ECR I‑3819, paragraph 25).
27     Here, the sign Westlife is composed of two words joined together, the word ‘west’ and the word ‘life’. Thus, ‘west’ is one
of two terms which alone form the mark applied for, Westlife, and the only term forming the earlier mark, West.
28     In relation to conceptual similarities, both trade marks evoke the idea of the West, since they both contain the element ‘west’.
As to the second component of the mark applied for, the Board of Appeal rightly stated that the word ‘life’ may be recognised
by the relevant public as being the English for the German word ‘Leben’ and, accordingly, as a term with an identifiable meaning
rather than a made-up name.
29     Thus, the ‘life’ component, associated with the other term comprising the mark (‘west’), may be taken by the relevant public
as a reference to a lifestyle.
30     The addition of the connotation concerning lifestyle is not sufficient to distinguish the two trade marks significantly in
conceptual terms. Since both marks will be perceived as evoking western goods or services in the case of West or as pertaining
to a western lifestyle in the case of Westlife, they both have similar connotations, which entails a degree of similarity
from the conceptual point of view.
31     As regards the aural similarities, the Board of Appeal relied on the fact, stated at paragraph 28 above, that ‘life’ is an
English word which may be recognised as such by the average German consumer. Thus, it stated that if the second component
of the mark applied for is recognised as an English word, ‘it cannot be excluded as unlikely’ that the mark as a whole, including
the term ‘west’, which exists in English as well as in German, will be pronounced in an English way by the average German
consumer. By contrast, the mark West will be pronounced in a German way, i.e. in the same way as the word ‘vest’ would be
pronounced following the rules of English or French pronunciation.
32     The phrase ‘it cannot be excluded as unlikely’ is not at all emphatic, in fact so little so that it suggests, a contrario,
that there is also a real possibility of the average German consumer pronouncing the ‘west’ component of the mark applied
for, Westlife, in the German way, in which case there would be a real aural similarity between the two marks.
33     Although it is likely that some of the consumers making up the relevant public will pronounce the ‘west’ element of the mark
applied for, Westlife, in the English way, the fact none the less remains that other consumers will pronounce it in the German
way. In those circumstances, there is a degree of aural similarity between the two marks, despite the presence of the ‘life’
element in the mark applied for, Westlife.
34     Visually, there is no question that there is a degree of similarity between the marks at issue because the earlier trade mark,
West, is the first component of the mark applied for, Westlife. Furthermore, since the two marks are word marks, they are
both written in a non-stylised way for the purposes of any assessment of their visual similarity. Thus, the average consumer,
who must normally rely on his imperfect mental image of the trade marks (see, by analogy,
Lloyd Schuhfabrik Meyer
, paragraph 26 above, paragraph 26), could confuse the marks in question from a visual perspective.
35     It must be concluded that the conflicting signs are therefore visually similar, without, however, it being possible to say
that there is a very high degree of visual similarity between them.
36     If the two signs concerned are assessed globally, neither of the elements ‘west’ or ‘life’ emerges clearly as the dominant
element of the trade mark applied for in this instance. In that regard, it would be artificial to consider ‘west’ to be dominant
because it forms the first element of the mark applied for but there is no reason to consider the ‘life’ element to be dominant
either. Although it is true that ‘west’ is a German word as well as an English word, whilst ‘life’ is only an English word,
and thus foreign from the perspective of the relevant public, ‘west’ is not descriptive of either the goods and services in
question or even their qualities.
37     It must also be borne in mind that the Court of First Instance has already held that, on an initial analysis, where one of
the two words which alone constitute a word mark is identical, both visually and aurally, to the single word which constitutes
an earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned,
the marks at issue, each considered as a whole, are normally to be regarded as similar (Case T‑286/02
Oriental Kitchen
v
OHIM – Mou Dybfrost (KIAP MOU)
[2003] ECR II‑0000, paragraph 39).
38     In this instance one of the two words which alone constitute the word mark applied for is actually identical in appearance
to the sole word forming the earlier word mark. Aurally, there is a degree of similarity, although the pronunciation of the
word ‘west’ is not identical, at least as regards the whole of the relevant public. In this instance, the two words forming
the Westlife mark mean something to the relevant public but they do not describe either the goods or services in question
or their qualities and therefore do not have any particular connotation in relation to them.
39     Although the approach described at paragraph 37 above is not therefore directly applicable in this case, it must none the
less be stated that the only visual difference between the two word marks at issue is that one of them contains a further
element added to the first. Moreover, as stated above, there is a degree of similarity between the two marks in aural terms
and, in particular, in conceptual terms.
40     It must therefore be held, in this case, that the fact that the Westlife trade mark consists exclusively of the earlier West
trade mark, to which another word, ‘life’, has been added, is an indication that the two trade marks are similar.
41     However, the Court must reject the applicant’s argument that the Westlife sign could be perceived by the relevant public as
deriving from its trade mark West, since that argument is based on the fact that the applicant purports to be the proprietor
not only of the West mark but also of other marks composed of the word ‘west’, to which a further element is added. In fact,
the applicant based its opposition before the Opposition Division on only two earlier WEST word marks, one German and the
other international (see, to that effect, Case T‑237/01
Alcon
v
OHIM – Dr. Robert Winzer Pharma (BSS)
[2003] ECR II‑411, paragraphs 61 and 62, upheld on appeal by order of the Court of Justice of 5 October 2004 in Case C‑192/03 P
Alcon
v
OHIM
[2004] ECR I‑0000).
42     On the other hand, the existence of the earlier West trade mark may have created an association in the mind of the relevant
public between that term and the products marketed by its owner, with the result that the new trade mark consisting of ‘West’
in combination with another word might well be perceived as a variant of the earlier mark. Therefore, the relevant public
might think that the origin of the goods and services marketed under the Westlife mark is the same as that of the goods and
services marketed under the West mark, or at least that there is an economic link between the various companies or undertakings
which market them (see, to that effect, Case T‑129/01
Alejandro
v
OHIM – Anheuser-Busch (BUDMEN)
[2003] ECR II‑2251, paragraph 57).
43     In the light of all of the foregoing and in view of the fact, which is not disputed here, that the goods and services in question
are identical or similar, the Court finds that there is a likelihood of confusion between the two trade marks within the meaning
of Article 8(1)(b) of Regulation No 40/94.
44     Consequently, the contested decision must be annulled. As to the applicant’s second claim, it is sufficient to state that
it is subsumed within the claim for annulment based on infringement of Article 8(1)(b) of Regulation No 40/94.

Costs
45     Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been
applied for in the successful party’s pleadings. As OHIM has been unsuccessful, in that the Board of Appeal’s decision is
annulled, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant, nothwithstanding
the reformulation, at paragraph 19 above, of the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1.
Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and
Designs) of 17 November 2003 (Case R 238/2002‑2);
2.
Orders OHIM to bear its own costs and to pay those incurred by the applicant.
Pirrung
Forwood
Papasavvas
Delivered in open court in Luxembourg on 4 May 2005.
H. Jung

J. Pirrung
Registrar

President
*
Language of the case: English.