Judgment — ECLI:EU:T:2013:336
Date: 2013-06-27
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Hungary

summary of the pleas in law on which it is based. The summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see BÜRGER, paragraph 16 and case‑law cited). 17 It should be borne in mind that, although specific points in the text of the application can be supported and supplemented by references to passages in documents annexed to the application, a general reference to other documents, even if they are annexed to the application, cannot compensate for the omission of essential elements of the legal argument which must, under the above provision, appear in the application (see, to that effect, BÜRGER, paragraph 17 and case-law cited). 18 In the present case, the applicant confined itself to stating in its application (paragraph 7): ‘We set forth that we uphold all our arguments laid down in the proceedings before [OHIM] and request the Honourable General Court to take them into account in the present procedure as well.’ 19 Thus the applicant identifies neither the specific points in its application which it wishes to supplement by that reference nor the annexes in which any such arguments might be set out. 20 Accordingly, it is not for the Court to search in the annexes for the arguments to which the applicant might be referring, or to examine them, as such arguments are inadmissible. Documents put forward for the first time before the General Court 21 In an annex to the application, the applicant produced evidence which it had not submitted in the course of the procedure before OHIM. That evidence consists of extracts from the websites of various banks and credit institutions indicating the various credit and debit cards offered, an extract from a website with an overview of the applicant and a list of international marks held by the applicant. 22 In that regard, it should be noted that, according to settled case-law, the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009 and, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBéBé) [2005] ECR II‑1401, paragraph 29, and Case T‑336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II‑4667, paragraph 16). It is thus not the Court’s function to re‑evaluate the factual circumstances in the light of evidence adduced for the first time before it (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25). Indeed, to admit such documents would be contrary to Article 135(4) of the Rules of Procedure, under which the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (judgment of 13 April 2011 in Case T‑98/09 Tubesca v OHIM – Tubos del Mediterráneo (T TUMESA TUBOS DEL MEDITERRANEO S.A.), not published in the ECR, paragraph 22). 23 It follows that the documents in question, put forward for the first time before the Court, must be declared to be inadmissible, there being no need to assess their probative value. Substance 24 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It disputes the assessment made by the Board of Appeal regarding the similarity of the services in question and the marks at issue and claims that the Board of Appeal erred in finding that there was a likelihood of confusion. 25 OHIM and the intervener contest the applicant’s arguments. 26 Under Article 151(1) of Regulation No 207/2009, an international registration designating the Community is, from the date of its registration pursuant to Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, to have the same effect as an application for a Community trade mark. Article 156(1) of Regulation No 207/2009 provides that international registration designating the Community is to be subject to opposition in the same way as published Community trade mark applications. 27 As set out 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, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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. 28 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 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, including 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 case‑law cited). 29 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 case‑law cited). 30 In the light of the foregoing considerations the Court must examine whether the Board of Appeal was right in finding that there was a likelihood of confusion between the marks at issue in respect of the origin of the services concerned. 31 In the present case, the Board of Appeal’s finding, which is not disputed by the applicant, that the relevant public in respect of which the likelihood of confusion should be assessed is, on the one hand, the specialised public with a high level of attention and, on the other, the general public whose level of attention is that of the average consumer must be endorsed. In view of the fact that, as regards the assessment of the likelihood of confusion, account should be taken of the public with the lowest level of attention (see, to that effect, judgment of 8 September 2010 in Case T‑152/08 Kido v OHIM – Amberes (SCORPIONEXO), not published in the ECR, paragraph 40), in the present case, it is the reasonably observant and circumspect general public that must be taken into account. In addition, since the earlier marks are Community trade marks, the relevant territory is the European Union as a whole. 32 By contrast, the parties disagree on whether the services and marks at issue are similar. Comparison of the services 33 It is clear from paragraphs 20 to 22 of the contested decision that the Board of Appeal concurred with the finding of the Opposition Division that the contested services in Classes 35 and 36 are included in the broader specification of services respectively covered in those classes by the earlier marks. In that regard, the Opposition Division found that the earlier marks were registered, respectively, for the class headings in classes 35 and 36 covering all the services to be included in those classes. The Board of Appeal thus confirmed that the contested services in Classes 35 and 36 and the services covered by the earlier marks in those classes were identical. 34 The applicant claims that the services covered by the earlier marks in Class 36 are to be broadly construed and cannot be considered to be identical to the specialised services in Class 36 covered by the contested mark. 35 The applicant’s argument must be rejected. It should be borne in mind that, where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 34 and case-law cited). 36 The Board of Appeal was therefore correct to find that the services in question were identical. Comparison of the signs 37 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 given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such a likelihood of confusion. In this 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 case-law cited). 38 It has been held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say visual, phonetic and conceptual aspects (see Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30 and case-law cited). 39 The assessment of the similarity between two marks means more than merely taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and case-law cited). 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 (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43). 40 At issue in the present case are the following word marks: Earlier marks Contested marks BLUE BLUE BBVA TARJETA BLUE BBVA MOL Blue Card 41 It should thus be observed that one of the earlier marks consists of one word – ‘blue’ – whereas the other two combine that word with one or two additional words – ‘bbva’ and ‘tarjeta bbva’ – respectively. The contested mark consists of a combination of three words: ‘mol blue card’. 42 First, the Board of Appeal rightly observed that the word ‘blue’ is a basic English word which refers to that primary colour and that, as such, it will probably be understood by the relevant public in non‑English‑speaking countries in the European Union (paragraphs 26, 29 and 34 of the contested decision). Second, the Board of Appeal also rightly found that the word ‘card’ will be understood by the majority of the relevant public of the European Union since it is a basic English word, in particular, with regard to financial services, and it will be considered to have weak distinctive character in connection with the services covered by the contested mark. So far as concerns the relevant Spanish-speaking public, the same conclusion applies to the word ‘tarjeta’, a Spanish word meaning ‘card’ (paragraphs 26 and 28 of the contested decision). Third, the terms ‘bbva’ and ‘mol’ seem to have no meaning apart from being acronyms of the names of the intervener and the applicant (paragraphs 26 and 27 of the contested decision). The applicant does not challenge those findings. 43 On the other hand, the applicant argues that the marks at issue are completely different visually, in particular so far as concerns their length, the number of additional words – ‘bbva’ and ‘tarjeta’ – and the position of the term ‘blue’. Phonetically, the dissimilarity is even clearer since the pronunciation of those marks is clearly different, in particular in respect of the element ‘bbva’ of the earlier marks. Lastly, from a conceptual point of view, the consumers will focus on the differences, in particular the elements ‘mol’ and ‘bbva’. 44 In that regard, it should be noted that it is apparent from paragraphs 32 to 35 of the contested decision that the Board of Appeal did take account of those particular differences in the elements of the marks at issue. Precisely on the basis of those dissimilarities, the Board of Appeal found the marks at issue to be visually similar in that they contain an identical word, ‘blue’, phonetically similar to a very low degree and conceptually similar to a certain extent, in particular in so far as the English phrase ‘blue card’ could be perceived as having the same meaning as the words ‘tarjeta blue’ by the Spanish-speaking portion of the relevant public. That finding of similarity was essentially based on the element common to the marks: the word ‘blue’. According to the Board of Appeal, the dissimilarity between the marks at issue, due to the presence of the word elements ‘mol’ and ‘card’ in the mark applied for, is not sufficient to counteract the aforementioned similarities (paragraphs 32 and 37 of the contested decision). The applicant does not put forward any arguments or evidence to establish that the Board of Appeal’s findings are incorrect. Those findings must therefore be endorsed. 45 In addition, the applicant claims that the elements ‘blue’ and ‘card’ should be regarded as having weak distinctive character. In accordance with the case-law, the element ‘mol’ is claimed to be dominant because of its position in the contested mark, because it has no meaning with regard to the services in question and because it may be perceived as a fanciful term or well‑known business name. 46 That argument cannot be upheld. With regard to the significance to be attached to the element ‘mol’, that cannot be the dominant element in the overall impression created by the contested mark. It must be found, as the Board of Appeal did in paragraph 28 of the contested decision, that, visually, there are no dominant elements in the marks at issue such as to render the other elements of those marks negligible. So far as concerns the alleged reputation of the acronym of the applicant’s business name – ‘mol’ – it must be noted that the applicant has not put forward any arguments or evidence to prove such a reputation. Moreover, the applicant refers to the reputation of its business name but not to any reputation of the mark which contains that business name. 47 Admittedly, as the applicant submits, the first component of word marks may be more likely to catch the consumer’s attention than the following components (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65). Nevertheless, that consideration cannot call into question the general rule that it is necessary to take account of the overall impression given by the marks at issue when examining their similarity, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, judgment of 10 December 2008 in Case T‑228/06 Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), not published in the ECR, paragraph 28 and case-law cited). 48 However, even if the element ‘mol’ may be considered to be more distinctive than the two other elements of the contested mark, it cannot be regarded as dominating the overall impression produced by the mark MOL Blue Card or the imperfect picture which the relevant consumer will keep in his mind. That element will be perceived by the relevant public as either an acronym of the applicant’s business name or a fanciful term. The Board of Appeal was therefore correct to take account of the overall impression given by the marks at issue and, moreover, to conclude that they are similar. In that regard, it should be noted that the marks in question, although composed of a different number of words, have in common the word element ‘blue’, which leads to the conclusion that they are at least partially identical. 49 The applicant claims that the Board of Appeal erred in finding, in paragraph 35 of the contested decision, that the similarity caused by the fact that the earlier mark BLUE is reproduced in its entirety in the contested mark can neither be offset by the mere addition of another word nor removed by simply replacing the name of one bank with another. That argument cannot be upheld. It is apparent from paragraphs 24 to 34 of the contested decision that, in order to assess the degree of similarity, the Board of Appeal did take account of the two other elements of the contested mark – ‘mol’ and ‘card’ – as well as the weak distinctiveness of the element ‘card’. 50 According to the applicant, the Board of Appeal failed to take account of the fact that the only element common to the marks at issue – ‘blue’ – which is placed in a ‘non-emphatic position’, has weak distinctiveness and cannot in any case form the dominant element of the contested mark. In that regard, it should be observed at the outset that, unlike the Opposition Division, the Board of Appeal considered that, in so far as no direct relation with the services in question was established, the earlier mark ‘blue’ had normal distinctiveness and that that same element in the two other marks had average distinctiveness (paragraph 36 of the contested decision). The applicant does not put forward any arguments or evidence capable of establishing that the Board of Appeal’s conclusion is incorrect. 51 In particular, the argument that, in an earlier decision, OHIM found that the word ‘blue’ cannot have high or even average distinctiveness cannot be upheld. 52 Admittedly, pursuant to the principle of sound administration, the bodies of OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether the decision should or should not be the same (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 and 74; see also, by analogy, order of 12 February 2009 in Joined Cases C‑39/08 and C‑43/08 Bild digital and ZVS, not published in the ECR, paragraph 17). 53 However, according to settled case-law, the decisions which the Boards of Appeal of OHIM are required to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. The legality of decisions of the Boards of Appeal must therefore be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65, and ARTHUR ET FELICIE, paragraph 71). 54 Moreover, in the event that the applicant’s argument should be construed as being directed at an infringement of the principle of equal treatment by the Board of Appeal, it must also be rejected since that principle must be reconciled with respect for the principle of legality. Consequently, no one can rely, to his own advantage, on an unlawful act committed in favour of a third party in order to obtain an identical decision (order in Bild digital and ZVS, paragraph 52 above, paragraph 18, and Agencja Wydawnicza Technopol v OHIM, paragraph 52 above, paragraph 76). 55 The argument that the term ‘blue’ is generally used in the banking and financial sector to refer to the services associated with offers of certain types of debit and credit cards must be rejected. Without it being necessary to rule on the admissibility of that argument, the applicant has failed to establish the descriptive character of the element ‘blue’ in respect of the services in question, given that the only evidence adduced in support of its argument has been declared to be inadmissible for the reasons set out in paragraphs 21 to 23 above. 56 Lastly, the Court rejects the applicant’s argument that the contested mark is one of a family of marks which comprises the business name ‘MOL’, a colour referring to the type of card in question and the term ‘card’. The applicant fails to state how that circumstance, if it were established, would show that, in the contested mark, the term ‘blue’ is descriptive and that the dominant element of that mark is the term ‘mol’. 57 In any event, it should be borne in mind that, in accordance with the case-law, it is quite possible that in a particular case, an earlier mark used by a third party in a composite mark, including the name of that third party’s company or the acronym thereof, should still have an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (see, to that effect, Case C‑51/09 P Becker v Harman International Industries [2010] ECR I‑5805, paragraph 34). 58 In the present case, the Board of Appeal rightly found, in paragraph 38 of the contested decision, that the element ‘blue’, to the extent that it constitutes in itself the earlier mark, still has an independent distinctive role in the mark MOL Blue Card, without necessarily constituting the element dominating the overall impression created by that mark (see, to that effect, judgment of 12 November 2008 in Case T‑281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 33). The element ‘blue’ must accordingly be taken into account when assessing the similarity of the marks at issue and the likelihood of confusion. The applicant contests that conclusion, without however putting forward arguments or evidence capable of calling it into question in the present case. 59 It follows that the dissimilarity between the marks at issue which is asserted by the applicant is not sufficient to counteract the similarity deriving from the identity of the element ‘blue’ in the marks at issue. The Board of Appeal therefore rightly found that the marks at issue were similar. 60 In the light of the foregoing, with regard to the comparison of the marks, the Board of Appeal’s findings must be endorsed. The likelihood of confusion 61 A global assessment of the likelihood of confusion 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) [2006] ECR II‑5409, paragraph 74). 62 In the present case, it follows from the foregoing that the services in question are identical, the marks at issue are visually similar in that they contain an identical word, ‘blue’, phonetically similar to a very low degree and conceptually similar to a certain extent, that the common element ‘blue’ still has an independent distinctive role in the contested mark and that the relevant public is made up of the average consumer who is reasonably well informed and reasonably observant and circumspect. Accordingly, the Board of Appeal did not err in finding that there was a likelihood of confusion. 63 In the light of all the foregoing, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected. Accordingly, the action must be dismissed. Costs 64 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. 65 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 GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders MOL Magyar Olaj- és Gázipari Nyrt. to pay the costs. Dittrich Wiszniewska-Białecka Prek Delivered in open court in Luxembourg on 27 June 2013. [Signatures] * Language of the case: English.