Judgment — ECLI:EU:T:2008:230
Date: 2008-06-26
Language of the case: English
Court formation: Sixth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for
Procedure: Action for annulment - unfounded
Origin: Spain

JUDGMENT OF THE COURT OF FIRST INSTANCE (Sixth Chamber) 26 June 2008 (*) (Community trade mark – Opposition proceedings – Application for the Community figurative mark POLARIS – Earlier Community word mark POLAR – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94) In Case T‑79/07, SHS Polar Sistemas Informáticos SL, established in Madrid (Spain), represented by C. Hernández Hernández, lawyer, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of OHIM having been Polaris Software Lab Ltd, established in Chennai (India), ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 January 2007 (Case R 658/2006‑2), relating to opposition proceedings between SHS Polar Sistemas Informáticos SL and Polaris Software Lab Ltd, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Sixth Chamber), composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and L. Truchot, Judges, Registrar: C. Kristensen, Administrator, having regard to the application lodged at the Registry of the Court of First Instance on 9 March 2007, having regard to the response lodged at the Court Registry on 15 June 2007, further to the hearing on 12 December 2007, gives the following Judgment Background to the dispute 1 On 11 July 2003, Polaris Software Lab Ltd 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. 2 Registration was sought for the figurative sign reproduced below: . 3 The goods in respect of which registration was sought fall within, inter alia, Class 9 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 (‘the Nice classification’), and correspond to the following description: ‘Computer software for enterprise-wide use in banks, insurance, credit unions and other financial institutions; computer software for use in collecting, integrating and analysing financial data, in allowing access to banking and investment accounts and insurance policies, in conducting all types of banking and financial transactions, in accessing financial information, banking records and services over computer and information networks, in foreign exchanges and domestic treasury operations and transactions, in securities trading, payments and fund transfer, in portfolio management, in audit and risk management applications, in integrating back office reporting functions, in reconciliation of banking transacting, in accounting, reporting and operational facilities management, all the above in banks and other financial institutions; computer software for performing billing and accounts receivables applications in the insurance industry, for use in the design and implementation of insurance policies; computer software for use in online securities trading, in applications for brokerage firms and custodial services relating to securities; computer software for electronic commerce for banks and other financial institutions’. 4 The trade mark application was published in Community Trade Marks Bulletin No 32/2004 of 9 August 2004. 5 On 3 November 2004, the applicant, SHS Polar Sistemas Informáticos SL, filed a notice of opposition to registration of the trade mark applied for as regards the goods in Class 9 of the Nice Agreement covered by the application for registration. 6 In support of that opposition, the applicant relied on its earlier Community word mark POLAR, No 1 595 636, registered on 12 July 2002, inter alia, for the following goods in Class 9 of the Nice Agreement: ‘Computers, computer programmes (recorded), recorded operating system programmes (for computers); the aforesaid goods not for use in the graphic trades, printing industry, print converters and similar trades’. 7 In its decision of 21 March 2006, the Opposition Division accepted that there was a likelihood of confusion and upheld the opposition. 8 On 17 May 2006, the other party to the proceedings before OHIM, Polaris Software Lab Ltd, filed a notice of appeal with the Board of Appeal of OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division. 9 By decision of 8 January 2007 (‘the contested decision’), the Second Board of Appeal annulled the decision of the Opposition Division and rejected the opposition. It considered, essentially, that, whilst they covered identical goods, namely software for use in financial institutions, the conflicting signs were conceptually different and had sufficiently distinctive visual and aural features to rule out a likelihood of confusion on the part of the relevant public, which is circumspect and very attentive and consists of the staff in financial institutions responsible for the acquisition of the specialist software in question. Procedure and forms of order sought 10 Following a change in the composition of the chambers of the Court of First Instance, the Judge-Rapporteur was assigned to the Sixth Chamber, to which the present case has thus also been assigned. 11 As Judge Tchipev was prevented from sitting in this case, the President of the Court of First Instance designated Judge Truchot to complete the Chamber pursuant to Article 32(3) of the Rules of Procedure. 12 The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs. 13 OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law Arguments of the parties 14 The applicant bases its action on a single plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94. 15 First, it submits that the Board of Appeal erred in confining its analysis of the likelihood of confusion to software for use in financial institutions. The Board of Appeal thus failed to take account of the fact that the earlier trade mark protects all kinds of software. 16 According to the applicant, the Board of Appeal should have taken account of the confusion which could arise if bank employees using specialist POLARIS software came across POLAR software when choosing software for their personal computers. From the point of view of the consumer, the fact that the POLARIS sign concerns specialist software does not necessarily mean that the company developing that software does not produce other software for more general use. In view of the similarity of the signs in question, the impressions created by software used in the workplace could lead to confusion on the part of the consumer concerned when purchasing software for personal use. 17 Moreover, software for personal use may be classified as an everyday consumable, like those referred to in paragraph 21 of the contested decision. The Board of Appeal’s reasoning concerning the likelihood of confusion when specialist software is being purchased is therefore irrelevant. 18 Secondly, the applicant criticises the manner in which the Board of Appeal compared the signs in question in the contested decision. 19 According to the applicant, from a conceptual point of view, the Board of Appeal stated, incorrectly, that the relevant consumer would regard the word ‘polaris’ as fanciful. The applicant also considers that most of the relevant public does not know the meaning of that word. However, the word ‘polar’ is so common that the relevant public will think that the word ‘polaris’ relates to it. Thus, taking into account the relevant public’s general knowledge of the word ‘polar’, the word ‘polaris’ will also evoke the earth’s poles. The signs at issue are therefore conceptually similar. 20 From a visual point of view, the Board of Appeal did not give sufficient emphasis to the fact that the signs have five letters in common, that the earlier mark is entirely encompassed by the mark applied for and that the two letters ‘i’ and ‘s’, which distinguish the signs from each other, form the ending of the word ‘polaris’. As regards the image of a star on the letter ‘a’ in the trade mark applied for, it is hardly noticeable and, moreover, reinforces the conceptual link between the two signs, since it evokes the polar star. 21 From an aural point of view, the Board of Appeal exaggerated the possible difference between the signs in question on account of their number of syllables. In commerce, the trade marks in issue would be pronounced quickly, with the stress placed on the second syllable in a number of languages, such as Spanish, German, Italian or Portuguese. The difference made by the last syllable of the word ‘polaris’ aurally is therefore irrelevant. 22 Thus, according to the applicant, the signs at issue are conceptually similar and have few distinguishing visual or aural features, which are insufficient to rule out a likelihood of confusion. 23 OHIM disputes the applicant’s arguments. Findings of the Court 24 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 is not to be registered if, because of its identity or similarity to an earlier trade mark and because of the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. 25 According to settled case-law, the risk that the relevant public might believe that the goods or services designated by the conflicting marks come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services at issue and taking into account all factors relevant to the circumstances of the case (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 17 and 18, and Case T-162/01 Laboratorios RTB v OHIM – Georgio Beverly Hills (GEORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 31). 26 In the present case, as regards, first, the goods at issue, it is not disputed that the goods covered by the trade mark applied for, namely software for financial institutions, are comprised in the wider range of goods covered by the earlier mark, namely computer programmes (paragraph 18 of the contested decision). 27 With regard to the relevant consumer of the goods at issue, even if it is accepted that software can just as well constitute everyday consumer goods as goods for a professional or specialised public, it is not disputed that the goods to which the trade mark application relates must be regarded as directed solely at the staff of financial institutions who are responsible for purchasing the specialised software used in those institutions. Therefore, the public who might confuse the trade marks in question consists only of that specialised public (see, to that effect, Case T‑126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II‑2861, paragraph 81). 28 Consequently, the Board of Appeal correctly found that the relevant public consisted of the staff of financial institutions who were responsible for purchasing the specialised software used in those institutions. In addition, since the earlier mark is a Community trade mark, the relevant public includes all those specialised consumers throughout the European Union. 29 It must be observed in this connection that the relevant public, composed here of specialists in the area of goods concerned, is likely to evince a high degree of attentiveness when selecting those goods (see, to that effect, ALADIN, paragraph 96, and the case-law cited). 30 Moreover, as is clear from paragraph 22 of the contested decision, the purchase of the specialised software at issue, which is expensive and generally the fruit of many years of development, often in collaboration with the final consumer, requires a scrupulous selection process, during which the consumer concerned will examine various products on the market. In that regard, the Board of Appeal was right to take into account the nature, in particular the highly technical character, and the price of the goods concerned, when it found that the degree of attentiveness of the relevant public at the time of purchase would be particularly high (see, to that effect, Case T-185/02 Ruiz-Picasso and Others v OHIM – Daimler Chrysler (PICARO) [2004] ECR II-1739, paragraph 59). 31 While not disputing those considerations, the applicant claims that the Board of Appeal should have taken account of the fact that the earlier mark covers a wide range of software and encompasses in particular software for personal use. The applicant submits that the Board of Appeal thus omitted to take into account the likelihood of confusion there would be if one of the conflicting marks simply protected non-specialised software. 32 It should be pointed out in this connection that the trade mark application refers only to software for financial institutions and that that type of product is also marketed under the earlier mark. In those circumstances, the Board of Appeal correctly assessed the existence of a likelihood of confusion by taking into account the circumstances in which that specialised software, to which both the marks at issue relate, is marketed. 33 As regards the applicant’s arguments that the employee of a financial institution using the specialised software at work might confuse the marks at issue when purchasing software for his personal computer, it does not specify how such a consumer might confuse commercial origin while choosing between various types of software for personal use, in so far as that last category of software is not covered by the trade mark sought. There is a likelihood of confusion, inter alia, where the relevant consumer may be attracted by the product or service covered by the mark applied for, considering it to be a product or service with the same commercial origin as that covered by an earlier mark which is identical or similar to the mark applied for (see, to that effect, Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-711, paragraph 42). 34 Furthermore, even if the applicant’s argument were to be interpreted as meaning that the consumer concerned would notice the earlier mark when purchasing non‑specialised software and pay less attention on such an occasion, that argument does not preclude account being taken of the particularly high degree of attention paid by such a consumer when he purchases the specialised software in question. Accordingly, the Board of Appeal cannot be criticised for failing to have envisaged the possibility that the choice made between different specialised software by the professional consumer concerned could be influenced by his earlier experience acquired when purchasing software for personal use. 35 Therefore, the applicant’s argument that the Board of Appeal did not examine any likelihood of confusion as regards software for general use, covered exclusively by the earlier mark, cannot be accepted. 36 So far as concerns, next, the assessment of the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, aural and conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking into account the category of goods or services in question and the circumstances in which they are marketed (see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 27). 37 In this case, the Board of Appeal found that the trade marks at issue had some degree of similarity, given that the earlier mark was wholly incorporated in the trade mark applied for, but that there were a number of visual and phonetic differences and, moreover, there was little or no similarity from a conceptual point of view (paragraphs 19 and 20 of the contested decision). 38 The Board of Appeal drew attention in particular, on the visual level, to the unequal length of the conflicting marks and the presence of a stylised star on the letter ‘a’ in the POLARIS figurative mark and, on the phonetic level, to a difference in the number of syllables, which is significant in short words such as the conflicting marks (paragraph 20 of the contested decision). 39 In that regard, given the high degree of attentiveness of the consumer concerned, the significant nature of those differences cannot be refuted merely by the applicant’s argument that they are not very noticeable. 40 Visually, the length of the signs at issue is different and one has a graphic on the letter ‘a’. 41 Aurally, despite their common root, the words ‘polar’ and ‘polaris’ are pronounced differently. For an attentive consumer, that difference remains significant, even if the stress is put, as the applicant submits, on the second syllable of both words, ‘lar’ and ‘la’ respectively. 42 In that context, as regards the applicant’s argument that the beginning of the marks in question is identical, it must be pointed out that while, in principle, the initial part of word marks is more likely to capture the attention, that is not true in all cases and cannot, in any event, cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them (see, to that effect, Case T-158/05 Trek Bicycle v OHIM – Audi (ALLTREK) [2007] ECR II-0000, paragraph 70, and the case-law cited). 43 So far as the conceptual comparison is concerned, the parties agree on the fact that the word ‘polar’ has, in many languages, a clear meaning linked to the poles of the earth, while the meaning of the word ‘polaris’ is generally not known by the consumer concerned. 44 In that connection, the Board of Appeal’s finding that the consumer concerned will perceive the word ‘polaris’ as fanciful and will not necessarily associate it with the poles of the earth (paragraph 20 of the contested decision) is not called into question by the applicant’s argument that the two words concerned are very close, so that one can be perceived as being derived from the other. The fact that the words have the same root does not necessarily mean that they will be associated with the same idea. That is true, in particular, where, as in the present case, one of the words in question (‘polar’) can, in some languages, have a clear conceptual meaning which the other (‘polaris’) does not have. 45 The applicant’s argument that the stylised star on the letter ‘a’ of the figurative mark POLARIS will be associated with the pole star, is inconsistent with its assertion that the relevant public does not, in general, know the meaning of the word ‘polaris’ (see paragraph 19 above). 46 In any event, even if the figurative mark POLARIS were associated with the pole star, in the case of an attentive consumer that would not mean that there was a significant conceptual similarity between that mark and the POLAR mark, since the latter word has a different specific meaning in some languages and in other languages no specific meaning. 47 Therefore, the Board of Appeal correctly found that there was little or no similarity between the marks from a conceptual point of view (paragraph 20 of the contested decision). 48 In the light of those considerations, the Board of Appeal was right to point out that, for a very attentive consumer, the significant differences between the marks at issue, each considered as a whole, overrode their similarities. 49 Lastly, as regards the global assessment of the likelihood of confusion, it should be remembered that the visual, aural or conceptual aspects of the conflicting signs do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the goods at issue and to examine the objective conditions under which the marks may appear on the market (Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE AND NLCollection) [2004] ECR II-3471, paragraph 49; see also, to that effect, Case T-129/01 Alejandro v OHIM – Anheuser Busch (BUDMEN) [2003] ECR II-2251, paragraphs 57 and 58). 50 In the present case, the Board of Appeal observed, in paragraph 22 of the contested decision, that the goods at issue were extremely specialised, expensive and often developed over many years in collaboration with the end consumer. The consumers concerned, the staff of financial institutions responsible for the acquisition of such goods, will carry out a scrupulous examination of the products on the market and very probably contact the manufacturers. In the course of that selection process, those consumers will be aware not only of the characteristics of the goods, but also of the identity of the manufacturers and the marks on the market and will therefore be very attentive to even slight differences between those marks. 51 Having regard to those particular circumstances in which the goods concerned are marketed, which have not been called into question by the applicant, the Board of Appeal rightly considered that there were sufficient differences between the marks at issue to dispel, in this case, any likelihood that the consumer concerned, who is especially attentive, might believe that the goods covered by those marks originated from the same undertaking or, as the case may be, from economically‑linked undertakings. 52 It follows from the foregoing that the single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected as unfounded. Consequently, this action must be dismissed. Costs 53 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 and OHIM has applied for costs, the applicant must pay the costs. On those grounds, THE COURT OF FIRST INSTANCE (Sixth Chamber) hereby: 1. Dismisses the application; 2. Orders SHS Polar Sistemas Informáticos SL to pay the costs. Meij Vadapalas Truchot Delivered in open court in Luxembourg on 26 June 2008. E. Coulon A.W.H. Meij Registrar President * Language of the case: English.