Judgment — ECLI:EU:T:2005:289
Date: 2005-07-14
Language of the case: English
Court formation: Third Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks applied for;General
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: United Kingdom

summary of all the factors. 34 In that regard, it should be noted, first, that, contrary to the applicant’s allegations, the Board of Appeal ignored neither the effect of the word ‘spezial’, nor the separation of the letters A, C, E by dashes, nor the figurative element of the earlier trade mark. 35 The Board of Appeal correctly took the view that the word ‘spezial’ corresponds to a German adjective which means ‘special’ and which is likely to be understood by the consumers in the reference territory as a descriptive indication of a particular range of goods. 36 Moreover, the Board of Appeal also examined the effect of the group of letters ‘ACE’. It took the view that the relevant public would probably understand those letters as a reference to other substances commonly contained in nutritional supplements, such as, for example, vitamins. Furthermore, it considered that the fact that those letters are represented with or without dashes makes no difference, the absence of the separating dash being unlikely, on the facts of the case, significantly to change the perception which the consumer may have of those three letters placed in the same order. 37 Finally, with regard to the figurative element, the Board of Appeal observed, in the contested decision, that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. It correctly takes the view that that general line of reasoning could reasonably be applied in the present case. According to the Board of Appeal, it is reasonable to assume that the average consumer will perceive the verbal element as the trade mark and the figurative element as a decorative element. Moreover, the figurative element is placed below the verbal elements, i.e. in a less visible position. 38 It follows that the applicant’s arguments that the Board of Appeal failed to take into consideration elements other than the word ‘selenium’ must be rejected. 39 Secondly, it should be noted that in the contested decision the Board of Appeal correctly took the view that the word ‘selenium’ constituted the dominant element of the earlier trade mark. 40 Since the earlier trade mark is composed of verbal elements (the words ‘selenium’, ‘spezial’ and the group of letters ‘ACE’) and of a figurative element, the Board of Appeal rightly considered that the verbal part is more distinctive than the figurative part. Moreover, the word ‘selenium’ is an English word corresponding to the German noun ‘Selen’ which denotes a chemical element. In that regard, it should be observed that, if the reference consumers are not capable of understanding that the word ‘selenium’ denotes an ingredient of the product which they wish to buy, that word will be particularly distinctive, since it will be perceived as the name of the product and not as an indication describing its contents. Furthermore, even if, as the Board of Appeal notes, it is possible that the consumers might identify that element as an ingredient of the goods marketed and sold under the earlier trade mark, the fact remains that, because of its position in the earlier trade mark and compared to the other elements of the earlier sign, the word ‘selenium’ plays a preponderant role when the relevant public identifies the sign and recalls it. 41 The word ‘selenium’ plays an important role in the visual and aural assessment of the earlier trade mark, given its initial position, i.e. in the most visible place. For that reason, it is the first to be noticed. In addition, the German word ‘spezial’ means ‘special’. The Board of Appeal was therefore able correctly to take the view that the relevant public would perceive it as a purely laudatory and descriptive element. Finally, the combination of letters ‘ACE’ may be perceived by the consumers as referring to certain substances commonly contained in nutritional supplements, such as vitamins. 42 It follows that the applicant’s argument alleging an error on the part of the Board of Appeal in that it considered the word ‘selenium’ to be the most distinctive element of the earlier trade mark must be rejected. 43 Thirdly, it should be noted that the Board of Appeal carried out a global assessment on the basis of a summary of all the factors which emerged from its evaluations. It was thus able correctly to take the view that the sign applied for and the earlier sign were very similar, in that the former reproduces almost entirely the verbal element of the latter. 44 The Board of Appeal was fully entitled to hold that the conflicting signs, taken as a whole, were similar, their similarities being greater than their differences. Indeed, the earlier sign is reproduced almost identically in the Community trade mark application, the two signs differing only in the less distinctive elements of the earlier sign, namely the word ‘spezial’, the figurative element and the two dashes separating the three letters ‘A’, ‘C’ and ‘E’, placed, however, in an identical order in the sign for which registration is sought. Furthermore, since the trade mark applied for is a word mark, it may be used by the party applying for it in any typography, including that used in the earlier trade mark. The Court therefore finds that the signs in question give an overall impression of similarity at a visual, aural and conceptual level. 45 It follows that the argument alleging that the Board of Appeal did not carry out a global assessment of the trade marks in question must also be rejected. 46 With regard to the applicant’s argument that the Board of Appeal ignored the decision of the German Patent and Trade Mark Office regarding the same trade marks and the same goods, despite the fact that the Federal Republic of Germany was the country concerned by the opposition proceedings, it is sufficient to note that, according to case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47). Consequently, although the Board of Appeal may take account of decisions of national authorities, the power to do so cannot relieve the Board of Appeal of its obligation to carry out its own assessment on the basis of the relevant Community legislation alone. Consequently, neither OHIM nor, where relevant, the Community Court is bound by decisions adopted at Member State level. It follows that the applicant’s argument cannot succeed. 47 With regard to the applicant’s claim that the Board of Appeal incorrectly placed on the applicant the burden of proof as to the absence of a likelihood of confusion, it is appropriate to note that, pursuant to Article 74(1), in fine, of Regulation No 40/94, in proceedings relating to relative grounds for refusal of registration, the examination to be carried out by OHIM is to be limited to the facts, evidence and arguments provided by the parties. It follows from that provision that both the opponent and the applicant must provide OHIM with facts, evidence and arguments in support of their respective claims. In that regard, it is apparent from the decision of the Opposition Division that the opponent submitted that there was a likelihood of confusion between the trade marks in question because of the identity of their distinctive elements and because the goods covered by the trade mark applied for, namely goods included in Classes 3 and 5, are identical to those covered by the earlier trade mark and similar thereto respectively. It follows that the opponent submitted a plea in support of its opposition, i.e. the existence of the likelihood of confusion, in support of which it put forward several arguments which, moreover, were taken into account by OHIM. It follows that the latter’s decision is not based on the applicant’s submissions alone. Consequently, the applicant’s argument must be rejected. 48 In the light of the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that there existed a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 because, firstly, of the similarity of the signs in question, assessed globally, and, secondly, of the identical nature and similarity of the goods covered by the trade marks in question. In that regard, it should be noted that a lesser degree of similarity between the trade marks may be offset by a greater degree of similarity between the goods or services covered, and vice versa (see Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 19). In the present case, the goods are partly identical and partly similar. It follows from that identity and that similarity that the differences between the signs in question are attenuated in a global assessment of the likelihood of confusion. 49 Accordingly, the sole plea advanced by the applicant must be rejected and the action dismissed in its entirety without it being necessary for the Court to rule on the admissibility of the applicant’s action for annulment of the decision of the Opposition Division. Costs 50 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM in accordance with the form of order sought by the latter. On those grounds, THE COURT OF FIRST INSTANCE (Third Chamber) hereby: 1. Dismisses the action; 2. Orders the applicant to pay the costs. Jaeger Tiili Czúcz Delivered in open court in Luxembourg on 14 July 2005. H. Jung M. Jaeger Registrar President * Language of the case: English.