JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
6 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark BLAST – Earlier Community and Benelux word marks BLAST – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Council Regulation (EC) No 207/2009 – Weak distinctive character of the earlier marks)
In Case T‑425/09,
Honda Motor Co. Ltd, established in Tokyo (Japan), represented by M. Graf, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Ahlgren, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Hendrik Blok, residing at Oudenaarde (Belgium),
ACTION brought against the decision of the First Board of Appeal of OHIM of 16 July 2009 (Case R 1097/2008-1), relating to opposition proceedings between Mr Hendrik Blok and Honda Motor Co. Ltd,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich (Rapporteur), President, I. Wiszniewska‑Białecka and M. Prek, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 14 October 2009,
having regard to the response lodged at the Registry of the General Court on 27 January 2010,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 18 April 2006, the applicant, Honda Motor Co. Ltd, filed an application for registration of 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark in respect of which registration was sought is the word sign BLAST.
3        The goods in respect of which registration was sought are in Classes 7 and 12 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 correspond, for each of those classes, to the following description:
–        Class 7: ‘Outboard engines; and structural parts and fittings thereof’;
–        Class 12: ‘Boats; and structural parts and fittings thereof’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 40/2006 of 2 October 2006.
5        On 29 December 2006, Mr Hendrik Blok filed a notice of opposition to the registration of the mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of some of the goods covered by that mark, namely ‘outboard engines; and structural parts and fittings thereof’ in Class 7.
6        The opposition was based on the following earlier rights:
–        Community registration No 4706644 of the word mark BLAST designating, in particular, goods in Class 7 corresponding to the following description: ‘Exhaust systems and exhaust system trim parts for cars and motorcycles’;
–        Benelux registration No 785875 of the word mark BLAST designating, in particular, goods in Class 7 corresponding to the following description: ‘Exhaust systems and exhaust system trim parts for cars and motorcycles’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        On 28 May 2008, the Opposition Division upheld the opposition.
9        On 24 July 2008, the applicant filed an appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
10      By decision of 16 July 2009 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that the identical nature of the marks at issue combined with the similarity of the goods concerned was sufficient to create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public, even though the relevant public’s level of attention is high.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant submits that the goods covered by the marks at issue are dissimilar and that the degree of distinctiveness of the earlier marks and, accordingly, the degree of protection which they enjoy, are only minimal, which does not support the conclusion that there is a likelihood of confusion.
15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must 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. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks means Community trade marks and trade marks registered at the Benelux Office for Intellectual Property, the date of application for registration of which is earlier than the date of application for registration of the Community trade mark.
16      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 the same line of case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
17      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 the case‑law cited).
18      In the present case, the applicant does not dispute the assessment of the relevant public made by OHIM in the contested decision, to the effect that outboard engines and structural parts and fittings thereof, covered by the mark applied for, and exhaust systems and exhaust system trim parts for cars and motorcycles, covered by the earlier marks, are directed not only at professionals but also at the general public. Whether the purchaser is a professional or a private individual, the goods at issue require that the purchaser have a more or less detailed knowledge of the goods concerned and, consequently, a high level of attention. Furthermore, since the earlier marks are a Community trade mark and a Benelux trade mark, the relevant public resides in the Benelux.
Comparison of the goods
19      According to settled case-law, in order to assess the similarity between the goods or services concerned, all the relevant factors which characterise the relationship between them should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case‑law cited).
20      The applicant claims that the goods covered by the mark applied for, namely ‘outboard engines; and structural parts and fittings thereof’, are dissimilar to those covered by the earlier marks, namely ‘exhaust systems and exhaust system trim parts for cars and motorcycles’, because, firstly, an exhaust system is not part of an engine and, secondly, unlike boats, cars and motorcycles do not use outboard engines. The goods covered by the earlier marks are therefore conceived for cars and motorcycles, while the goods covered by the mark applied for are intended for boats.
21      As a preliminary point, it should be noted that, due to their technical nature, the goods at issue are to some extent connected in functional terms, since both outboard engines and exhaust systems are directly involved in the functioning of an internal combustion engine and, thereby, in the propulsion of a vehicle. In that regard, it is necessary to point out that outboard engines are necessarily equipped with an exhaust system.
22      The fact that the outboard engines covered by the mark applied for and exhaust systems relate to different categories of vehicle, and that there is, therefore, no direct complementary relationship between them, does not result in the exclusion of similarity between those goods, but only reduces the degree of that similarity.
23      The similarity between those goods is, however, strengthened by the proximity of their channels of distribution and, more particularly, by the well-known fact, which was correctly pointed out by the Board of Appeal in paragraph 24 of the contested decision and which is not disputed by the applicant, that some companies which produce cars and motorcycles also manufacture outboard engines for boats.
24      Consequently, the Board of Appeal’s conclusion that there is some similarity between the goods covered by the mark applied for and those covered by the earlier marks, even if the degree of such similarity is low, must be upheld.
Comparison of the signs
25      The parties agree that the signs at issue are identical, as correctly found by the Board of Appeal.
Likelihood of confusion
26      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 low degree of similarity between those goods or services may be offset by a high 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 and Others) [2006] ECR II‑5409, paragraph 74).
27      In the present case, the signs at issue are identical.
28      The applicant claims, however, that the earlier marks have only a limited degree of distinctiveness, and that they are descriptive for the goods concerned, in so far as the word ‘blast’, as a noun, means in English ‘an explosion, or the destructive wave of highly compressed air spreading outwards from it’ and, in relation to the goods concerned, it may be understood to mean simply that the burned exhaust is ejected into the environment through the exhaust system ‘with a blast’. Consequently, according to the applicant, because of the interdependence of the factors which must be taken into consideration, it can only be concluded that there is no likelihood of confusion.
29      In that regard, it must be noted, firstly, as correctly stated by the Board of Appeal at paragraph 31 of the contested decision, that there is no evidence to support a finding that the relevant public, in countries where English is not an official language, would understand the meaning of the word ‘blast’ and the link between that concept and exhaust systems. It follows that the claim intended to establish the descriptive character of that word in relation to the goods concerned is not substantiated. That finding cannot be undermined by the applicant’s mere assertion that the word ‘blast’ is part of the basic vocabulary of the English language, which is spoken and understood throughout the European Union including the Benelux. Such an assertion is not based on any concrete evidence capable of demonstrating, in a clear and convincing manner, the understanding of the conceptual link between the word ‘blast’ and the functioning of exhaust systems, by the relevant public in the Benelux and in other Member States of the European Union where English is not an official language.
30      Further, even if it were accepted that the earlier mark has a low degree of distinctiveness, that does not preclude a finding of a likelihood of confusion in the present case. Indeed, if the distinctiveness of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others in that assessment. Thus, even in a case involving an earlier mark with a low degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of the identity of the signs and the similarity of the goods or services covered.
31      In the present case, it is necessary to recall, firstly, that the signs at issue are identical and that the Board of Appeal was right to conclude that there is some similarity between the goods covered by the mark applied for and those covered by the earlier marks (see paragraph 24 above). Secondly, it must be held that, in the context of the interdependence of the factors taken into account, the low degree of similarity between the goods concerned is, in the present case, offset by the identity of the signs at issue.
32      In those circumstances, it must be concluded, in accordance with the case-law cited at paragraph 26 above, that there is a likelihood of confusion, in the present case, between the mark applied for and the earlier marks.
33      It follows from all the foregoing that the applicant’s single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected, and the action in its entirety must accordingly be dismissed.
Costs
34      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must 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 in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Honda Motor Co. Ltd to pay the costs.
Dittrich
Wiszniewska-Białecka
Prek
Delivered in open court in Luxembourg on 6 October 2011.
[Signatures]
* Language of the case: English.