CELEX: 62002TJ0115
Community trade mark
Opposition procedure
Application for a Community figurative mark comprising the letter "a'
Earlier Community figurative mark comprising the letter "a'
Likelihood of confusion

Background to the dispute
On 5 June 1998, the applicant filed an application for 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.
The trade mark in respect of which registration was sought was the figurative sign reproduced below:
iVBORw0KGgoAAAANSUhEUgAAAHcAAABHCAMAAAAKnSgVAAAAAXNSR0IArs4c6QAAAexQTFRF
AAAAAAAABwcHAwMDERERHx8fAQEBHBwcBQUFCwsLGxsbFBQUCgoKFxcXCAgIDQ0NFRUVBAQE
Dg4OGBgYGRkZEhISDw8PHh4eNjY2Ly8vPz8/JSUlMDAwMjIyLS0tOjo6JiYmPT09Nzc3MzMz
KysrKCgoIyMjOTk5PDw8KSkpLCwsNTU1IiIiISEhXV1dREREQEBAUFBQXl5eTU1NUVFRQ0ND
WlpaVFRUX19fU1NTSkpKV1dXWFhYS0tLW1tbQUFBVVVVR0dHRkZGTk5OfHx8ZWVle3t7bGxs
cnJyc3Nzf39/ZGRka2traGhoZ2dncXFxb29veXl5eHh4fX19YWFhbm5udXV1YmJinp6el5eX
hoaGkJCQj4+Pm5ubhYWFlpaWg4ODiYmJh4eHjY2NgICAgoKCnZ2dlJSUioqKu7u7rq6uuLi4
p6enr6+vpaWlt7e3o6OjtbW1vLy8srKyq6urpKSktLS0ra2tv7+/sbGxvr6+oaGhubm539/f
wcHB19fX2trayMjIxcXF09PT0tLSzMzM3Nzc2dnZ1dXVxsbGwsLC1tbW3d3dycnJzc3N8fHx
7u7u8/Pz4+Pj4eHh6enp+vr6+/v7+Pj46urq9/f35ubm/v7+4ODg6+vr9PT05OTk7e3t8PDw
5+fn////GWjqCwAAAAF0Uk5TAEDm2GYAAAAJcEhZcwAADsQAAA7EAZUrDhsAAAAZdEVYdFNv
ZnR3YXJlAE1pY3Jvc29mdCBPZmZpY2V/7TVxAAAFgUlEQVRoQ8WZjVdTNxTASVsflNLWsjkL
A1EQ3NhWEGQibOqcgjiGijJRaBkyNuRjMpQ5dYjy4TYQhaHo0Om0/+iSvM/kvSS3T88h53Ao
TXJ/997c3JuEvOyWtLy8LcFmc+U+mrnTezxVlwwgvQWCoZLS+v0nLl5ZzcmAHLizvQ3bDJrn
Ly2/8dLoGpAO5N49UFLggGlBoQLhpr6/AWwAd6btQ5mZHn2F7aMqtIp772QkR6gxvHFOipZz
+8v8QRHCqxLpWBejJdz5zzW/VDKvCMMPpkVkIfdO+dtAib207RrzJgu449EgisXeimxOrljw
IntyHzdq74aps5ufuMle3FO2nWG/JjOhEe9zgd3cRd8xLNFxN5/HXNyMXwvl80JcJuG52xPi
DOjMlLlr9w3ja5Y7lhTJM+uP0U/yM7e7qcJirVHskBPMcCeiEjOotUUonky19fX+PHv3/h+L
VycHOkv1yC/EP1J/YE33OMBO7i8IFYvAtKO48vsFd6GbGayAhH0IIYfFDu6UYs2qBu6Lst7G
tb2ABY+jby0BNvfPKBJXVbya0b+kBSYjWyOq1HsIxdtMGTa3mjg5LlH7pKKmtsunv0+jYNYQ
YnFbFI4KBdFxBbhLIULDVpVz3HRI6mVd4mUF+ARgkU/pMgx7n+hxIS64dGMWjeuTZtOnUw1n
hq6bTjPVWQfUzkqG2wnQFA/ZMbc60Yo3hNmqONcPAcQMOOx9CkqBCQ1ZQWuEfuILxvXPACeU
Cgf3B4CegiHTDFi5mXBW+8de33wIF5v4ATcuFkf7GS5EEHU0jaslCJaEHd3ekWRzJr38YH1m
87krvqsAkr60uI4DhmJezdlfpXvpMIBbbXF3SkbjSDFP7jXdm4oNnB0GcDWLK8uOiOSTIjyi
Tn4B0DU6C+Aisjx0fWlSEDV9i0VvqEyFc8nxknK5wwSvAa7sNBYA7RzEXsvPCm4IWeXLQG/8
2NXatK+i9Ej9RwcYbboB3AKLK/UzllTHWvqi3pHIA0wfJK72AeMKoXVG9lHWJpp+zHYFYO8w
aB/hxFbFYHs50cvO3ucALr2p0bgalKRzfJ38ieF+zInOML2HcC/eeO7rlY2g4yl3Ra7lpEuy
Pl4jsqrvsYu/g/QIj6W477zNze6WgptZPzttCUz/y+2u/gA5wEnaCwd3UDoyzIoeazJGR1K/
cVDy50O580r1KcY5x3GG4KYRXz7kxc+nOy7ffOwBJV+9TCJRwtdQ8S2G2yFVskxAEH2dCfOF
2hJvHoxg57qOHMHZ0y479INRrSnIPD8Lz7Ekh4ZRUgHmatWrr1zcBH7LRFHrVGSd288rdrzM
5NFydMy+O232iPK9ds5S376nlElOz0SnUIPnw0w2O40PN2FUYzxV3d5Ft7ZphfUhhj912l5z
3AfVD4KfDK7w/l7q0uszNrH29+xipZfXTLazdDm4jwISi81kkZ9MXbq5/N/awq3JkZ5jnKpF
1oXSdbPEbPsSau9fasaaMPoVaw/pjrKXK+ad4aXa1QKXFKAYSczWauJq4mj46zCtfp7rS748
CHkxUJmXcN96tk1wgcG/I30NuGmouO7+Mxt8PLrezVZKchcrm4Ft//SqO+t4vE9+9y7BOE31
PPVIdl7voq/dWc6/Khe87xje788rZon1z6Mzi/dOCRK74N07O74HxXGIAe7RnqrpeeOIILNy
eYNVbQ4/ecgetFSu+GxEVsNE9tI53YXkQuajBSPtgv8r8PVXoNvqBVpecmvxw+qro9ReXZnr
LWzWkytROcK/LnmaBODieQsDTbXqDLqz9eKSbE0l+Vk27cGN4YaW7R7/aIkV1ib7rz2DIuk4
mL2MyDfzU7eHzPbqzeuceMC48iUTMsmHvRCxyjFbx83bmvY/QBsriIv4VyYAAAAASUVORK5C
YII=
The goods and services in respect of which registration was sought are in Classes 9, 16, 25, 35 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 corresponding, for Class 25, to the following description: ‘Clothing, footwear, headgear;
non-Japanese style outwear, coats, sweaters and the like, nightwear, underwear, swimming suits, shirts and the like, socks
and stockings, gloves, ties, bandanas, mufflers, hats and caps, shoes and boots, belts, jackets, T-shirts.’
On 4 October 1999, that application was published in
Community Trade Marks Bulletin
No 78/1999.
On 22 December 1999, the intervener filed a notice of opposition under Article 42 of Regulation No 40/94 against the mark
claimed, basing its opposition on, in particular, Community figurative mark No 270 264, applied for on 1 April 1996 and registered
on 28 February 2000, relating, in particular, to ‘suits, vests, jackets, anoraks, trousers, coats, jeans, jeanswear, shirts,
sweatshirts, T-shirts, sportswear, caps, working clothes, leisurewear’ falling within Class 25, reproduced below: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By decision of 2 May 2001, the Opposition Division of OHIM found that the conflicting signs were similar and that the goods
concerned were identical or similar. Consequently, that division rejected the application for registration of the mark applied
for.
On 2 July 2001, the applicant filed an appeal at OHIM under Article 59 of Regulation No 40/94 against the decision of the
Opposition Division.
By decision of 11 February 2002 (Case R 634/2001-1, ‘the contested decision’) the First Board of Appeal of OHIM partially
annulled the decision of the Opposition Division to the extent to which it rejected the trade mark application in respect
of the goods and services falling within Classes 9, 16, 35 and 41. However, it dismissed the appeal as regards the goods falling
within Class 25, taking the view that the signs at issue were similar and that the goods concerned, including the ‘footwear
and boots’ referred to in the trade mark application and the ‘clothing’ covered by the earlier trade mark, were identical
or similar.
Forms of order sought
At the hearing, the applicant clarified the form of order sought by it, its claim now being that the Court of First Instance
should:
–
annul the contested decision in so far as it dismisses its appeal in relation to goods in Class 25;
–
annul the contested decision in so far as it orders the applicant to pay the intervener’s costs in the opposition and appeal
proceedings;
–
order OHIM to pay the costs.
OHIM and the intervener contend that the Court of First Instance should:
–
dismiss the application as unfounded;
–
order the applicant to pay the costs.
Law
First, it must be borne in mind that, according to settled case-law, under Article 44(1) of the Rules of Procedure of the
Court of First Instance, which applies to intellectual property matters pursuant to Article 130(1) and Article 132(1) thereof,
although specific points in the text of the application can be supported and completed by references to specific passages
in the documents attached, a general reference to other documents cannot compensate for the lack of essential elements of
legal arguments which, under the provisions mentioned above, must be included in the application itself (Joined Cases T-305/94
to T-307/94, T-313/94 to T‑316/94, T-318/94, T-325/94, T-328/94, T-329/94 and T-335/94
Limburgse Vinyl Maatschappij and Others
v
Commission
[1999] ECR II-931, paragraph 39). That case-law can be transposed to the response of the other party to opposition proceedings
before a Board of Appeal who intervenes before the Court of First Instance, pursuant to Article 46 of the Rules of Procedure,
which, by virtue of the second subparagraph of Article 135(1) thereof, applies in matters of intellectual property. Accordingly,
the application and the response, in so far as they refer to documents lodged by the applicant and the intervener respectively
before OHIM, are inadmissible to the extent to which the general references in them cannot be linked to the pleas and arguments
put forward in the application and the response.
The plea that there is no likelihood of confusion
Arguments of the parties
According to the applicant, the Board of Appeal wrongly concluded that, despite the differences between the goods at issue
and between the conflicting signs, there was a likelihood of confusion between the earlier trade mark and the trade mark applied
for.
With regard to the goods, the applicant states that clothing and footwear or boots are not similar goods. Those goods are
not manufactured in the same factories, they are not intended for the same use, in so far as fashion shows that their purpose
is not merely to provide protection against the natural elements, they are not made from the same raw material and they are
not sold in the same places, except to an insignificant extent in supermarkets.
As regards the conflicting signs, the applicant states that, in principle, letters of the alphabet do not have any distinctive
character of their own in the absence of a graphic addition (decision of the second Board of Appeal of 28 May 1999 (Case R 91/1998-2)).
It is therefore their graphic representation which gives them their distinctive character. Since trade marks which are not
strongly distinctive enjoy lesser protection, the differences between the signs of which they consist acquire greater importance.
The applicant refers, in that connection, to the clear and substantial differences between the conflicting signs as regards
the shape of the black background, the position of the letter on that background, and the contrast between the bold and normal
typefaces used for the respective marks and the calligraphic form of the letter. In the case of figurative trade marks comprising
a letter, only a visual comparison of the signs is of any importance since phonetic comparison is not relevant.
OHIM and the intervener contest all the applicant’s arguments. OHIM considers, in addition, that in so far as the applicant
limited its objections concerning the similarity of the goods to a comparison of ‘clothing’ and ‘footwear and boots’, the
likelihood of confusion between the conflicting signs should be examined only to that extent.
Findings of the Court
Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied
for will not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity
of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the
territory in which the earlier trade mark is protected.
According to settled case-law, the likelihood of confusion as to the commercial origin of goods or services 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-0000, paragraphs 29 to 33 and the case-law there cited).
In this case, the earlier trade mark is a Community trade mark. Moreover, the goods in question are ordinary consumer goods.
Therefore, for the purpose of assessing the likelihood of confusion, the relevant public comprises the final consumers in
the European Community.
As regards, first, comparison of the conflicting signs, the global assessment of the likelihood of confusion, so far as concerns
visual, aural or conceptual similarity, must be based on the overall impression given by the marks, bearing in mind, inter
alia, their distinctive and dominant components (see Case T-292/01
Phillips-Van Heusen
v
OHIM – Pash Textilvertrieb und Einzelhandel (BASS)
[2003] ECR II‑0000, paragraph 47, and the case-law there cited).
As regards the visual similarity of the conflicting signs, the Board of Appeal rightly considered that, even though a single
letter is potentially devoid of distinctive character, both the marks in question include as a dominant element the lower-case
white letter ‘a’, of a commonplace typeface, on a black background (paragraph 38 of the contested decision). That dominant
element makes an immediate impression and is remembered. Conversely, the graphic differences between the trade marks in question
– namely the shape of the background (oval for the trade mark applied for and square for the earlier trade mark), the position
of the letter on that background (in the centre in the case of the trade mark applied for and in the lower right-hand corner
in the case of the earlier trade mark), the thickness of the line used to represent that letter (the trade mark applied for
uses a slightly broader line than that used in the earlier trade mark) and the calligraphic details of the letters of the
respective marks – are minor and do not constitute elements which will be remembered by the relevant public as effective distinguishing
features. Consequently, the conflicting signs are very similar from the visual point of view.
That conclusion is not undermined by the argument that there may be a divergence between the contested decision and the decision
of the Second Board of Appeal of 28 May 1999 (Case R 91/1998-2) on registration of the earlier trade mark. Whilst that board
found in its decision that the graphic presentation of the letter ‘a’ was of particular importance for analysis of the distinctive
character of that trade mark, it need merely be pointed out that, in this case, the graphic presentation of the trade mark
applied for is very close to that adopted for the earlier trade mark.
As regards aural and conceptual comparison of the conflicting signs, the parties coincide in the view that it is of little
relevance in this case. Be that as it may, the signs are, from those points of view, clearly identical.
Accordingly, the overall impressions produced by each of the conflicting signs are very similar.
Next, as regards comparison of the goods, it must be borne in mind that, according to settled case-law, in order to assess
the similarity of the goods concerned, all the relevant factors which characterise the relationship between those goods should
be taken into account, those factors including, inter alia, their nature, their intended purpose, their use and whether they
are in competition with each other or are complementary (Case T-85/02
Pedro Díaz
v
OHIM – Granjas Castelló (CASTILLO)
[2003] ECR II-0000, paragraph 32 and the case-law there cited).
It must first be pointed out that at the hearing the applicant did not seriously dispute the fact that the various types of
clothing covered by each of the trade marks at issue are, at the very least, similar. In any event, such a finding is correct.
As regards, more particularly, the relationship between the ‘clothing’ covered by the earlier trade mark and the ‘footwear
and boots’ covered by the trade mark applied for, the Board of Appeal took the view that those goods were similar because
they have the same purpose, they are often sold in the same places and several manufacturers and designers deal with both
those types of goods (paragraph 32 of the contested decision). The generality of that assessment may be called in question
in the light of the lack of substitutability of those goods and the absence of evidence to support the assessment. However,
in view of the sufficiently close links between the respective purposes of those goods, which are identifiable in particular
in the fact that they belong to the same class, and the specific possibility that they can be produced by the same operators
or sold together, it may be concluded that those goods may be linked in the mind of the relevant public. In that connection,
the various Community and national decisions concerning trade marks on which the applicant relies do not detract from that
conclusion in so far as the factual background to those decisions, as regards the signs and goods at issue, displays significant
differences from the present case. The goods at issue must therefore be regarded as similar within the meaning of Article
8(1)(b) of Regulation No 40/94 even if they are so in only a limited way.
Consequently, having regard, first, to the strong similarity between the conflicting signs and, second, to the similarity
between the goods concerned, limited though it may be in the case of footwear and clothing, the Board of Appeal rightly concluded
that there was a likelihood of confusion on the part of the relevant public. The relevant public is likely to believe, in
particular, that the commercial origin of footwear bearing the trade mark applied for is the same as that of clothing bearing
the earlier trade mark. Accordingly, the present plea must be rejected.
The plea as to the necessity of oral proceedings before the Board of Appeal
The applicant states that it expressly requested that oral proceedings be held before the Board of Appeal under Article 75(1)
of Regulation No 40/94. A hearing could have contributed to the adoption of a decision founded in law since the applicant
could have provided information on the German case-law dealing with the issue of the similarity of the goods in question.
By refusing to hold oral proceedings, the Board of Appeal, in the applicant’s view, exceeded the bounds of its discretion.
The Court notes that, under Article 75(1) of Regulation No 40/94, ‘[i]f [OHIM] considers that oral proceedings would be expedient
they shall be held either at the instance of [OHIM] or at the request of any party to the proceedings.’
The Court finds that the Board of Appeal enjoys a discretion as to whether, where a party requests that they be held, oral
proceedings before it are really necessary. In this case, it is clear from the contested decision that the Board of Appeal
had before it all the information needed as a basis for the operative part of the contested decision. In that connection,
the applicant has not shown in what way oral clarifications concerning the German case-law, supplementing those already given
in its submissions to the Board of Appeal, would have led to the operative part not being adopted in those terms. In any event,
it is settled case-law that the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation
No 40/94, as interpreted by the Community Courts, and not on the basis of national case-law, even where the latter is based
on provisions analogous to those of that regulation (see
GIORGIO BEVERLY HILLS
, paragraph 53, and
CASTILLO
, paragraph 37). Thus, the Board of Appeal did not overstep the bounds of its discretion by not acceding to the applicant’s
request for oral proceedings.
The second head of claim
Since the applicant has not put forward any specific reasoning to support its claim for the annulment of paragraph 2 of the
operative part of the contested decision concerning the costs of the proceedings before OHIM, the foregoing considerations
suffice for that head of claim to be rejected.
In view of all the foregoing, the application must be dismissed.
Costs
Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they are applied
for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in
accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1.
Dismisses the application;
2.
Orders the applicant to pay the costs.
Pirrung
Meij
Forwood
Delivered in open court in Luxembourg on 13 July 2004.
H. Jung
J. Pirrung
Registrar
President
–
Language of the case: German.