JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
31 January 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark SPORT – Earlier national and international word marks K2 SPORTS – Relative ground for refusal – No similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑54/12,
K2 Sports Europe GmbH, established in Penzberg (Germany), represented by J. Güell Serra, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and I. Harrington, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Karhu Sport Iberica, SL, established in Córdoba (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 29 November 2011 (Case R 986/2010‑4), concerning opposition proceedings between K2 Sports Europe GmbH and Karhu Sport Iberica, SL,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas (Rapporteur), President, V. Vadapalas and K. O’Higgins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 8 February 2012,
having regard to the response lodged at the Court Registry on 17 May 2012,
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 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 23 December 2008, Kahru Sport Iberica, SL 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 mark in respect of which registration was sought is the figurative sign reproduced below:
3        The goods in respect of which registration was sought are in Classes 18, 25 and 28 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
–        Class 25: ‘Ready-made clothing for women, men and children; footwear (except orthopaedic footwear); and head wear’;
–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees’.
4        The application for a Community trade mark was published in Community Trade Marks Bulletin No 2009/5 of 9 February 2009.
5        On 8 May 2009, the applicant, K2 Sports Europe GmbH, filed a notice of opposition, under Article 41 of Regulation No 207/2009, against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the German word mark K2 SPORTS filed on 7 March 2008 and registered on 9 June 2008 under No 302008015437, covering goods in Classes 18, 25 and 28 and corresponding, for each of those classes, to the following descriptions:
–        Class 18: ‘Leather and imitations of leather and goods made of these materials (included in this class); trunks, suitcases, travelling bags; umbrellas, parasols and walking sticks; rucksacks, day packs, rucksacks with support frames, belt bags (waist packs); kitbags, luggage bags, handbags and carryalls; all-purpose sports bags; shopping bags, sling bags, knapsacks, purses, wallets’;
–        Class 25: ‘Clothing, footwear, headgear; belts; ski boots, snowboard boots’;
–        Class 28: ‘Gymnastic and sporting articles (included in this class); inline skates, roller skates and ice skates; accessories for inline skates, roller skates and ice skates (included in this class); skis, ski poles and ski bindings; snowboards; snowboard bindings; snowshoes; snowshoe bindings; skateboards; scooters (toys); protective padding for inline skaters, protective padding for ice skaters and roller skaters; sporting articles, namely wrist protectors, knee protectors, elbow protectors, protective gloves for inline skaters, protective gloves for roller skaters and ice skaters; tennis rackets, golf clubs; surfboards; special bags adapted to sports equipment received therein, in particular snowboard bags and bags for transporting and storing ice skates, roller skates and skis; adapted containers for transporting and storing ice skates, roller skates and skis; fishing tackles; fishing poles; fishing reels’;
–        the international word mark K2 SPORTS registered on 4 July 2008 under No 982235 having effect in the Czech Republic, Denmark, Greece, Spain, France, Ireland, Italy, Austria, Poland, Portugal, Finland, Sweden and the United Kingdom and covering the same goods as those covered by the mark registered in Germany described above.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 28 April 2010, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue.
9        On 31 May 2010, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division, excluding from the scope of its appeal ‘decorations for Christmas trees’ included in Class 28 which were found by the Opposition Division to be dissimilar.
10      By decision of 29 November 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found, in essence, that even though the goods covered by the marks at issue were similar or identical, there was no likelihood of confusion between them. In that regard, the Board of Appeal found that the signs were dissimilar overall since they were identical only with regard to the word element ‘sport’, which was descriptive, or at least highly allusive, in respect of the goods covered, and that their distinctive elements, that is to say the figurative element of the mark applied for and the alphanumeric element ‘k2’ of the earlier marks, had no common characteristics.
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      In support of its action, the applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant claims, in essence, first, that the Board of Appeal failed to take account of the fact that the identical nature of the goods covered by the marks at issue reduces the differences between the marks, second, that the Board of Appeal misinterpreted how the figurative element of the mark applied for would be perceived by the relevant public and, third, that the Board of Appeal did not undertake a global assessment of the signs at issue. In that regard, the applicant claims that the Board of Appeal artificially broke down the signs at issue by merely comparing the element ‘k2’ of the earlier marks with the figurative element of the mark applied for, while ignoring their common element ‘sport’, which is not negligible, even though it may have a weak distinctive character in most of the relevant territories.
15      According to the applicant, notwithstanding the weak distinctive character of the element ‘sport’, the fact that the figurative element of the mark applied for may be perceived to be a graphic representation of the letter ‘k’ reinforces the overall similarity of the marks at issue and, accordingly, the likelihood of confusion. There is therefore a risk that the average consumer may perceive the mark applied for as a ‘sub‑brand’ belonging to the applicant, so that the earlier marks could not fulfil their essential function.
16      OHIM disputes the applicant’s arguments.
17      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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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. Moreover, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State and trade marks registered under international arrangements which have effect in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
18      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 case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, 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 the case-law cited).
19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
20      In the present case, the applicant does not dispute that the relevant territory for the assessment of the likelihood of confusion is Germany and the various Member States where the international registration has effect and that the relevant public consists of the general public, that is to say the average final consumer in those Member States, deemed to be reasonably well informed and reasonably observant and circumspect.
Comparison of the signs
21      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, their distinctive and dominant components, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services at issue plays a decisive role in the global assessment of that likelihood of confusion. In that 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).
22      It is settled case-law 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 of the visual, phonetic and conceptual aspects (see the judgment of 12 July 2012 in Case T‑61/11 Vermop Salmon v OHIM – Leifheit (Clean Twist), not published in the ECR, paragraph 26 and the case-law cited).
23      The assessment of the similarity between two trade marks means more than 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 the 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).
24      It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 17 October 2012 in Case T‑485/10 MIP Metro v OHIM – J. C. Ribeiro (MISS B), not published in the ECR, paragraph 27 and the case-law cited).
25      The Board of Appeal observed that the mark applied for is made up of the word ‘sport’, written in a common and customary font, preceded by a ‘device of two dynamic, curved brush strokes, bending towards each other in their middle, without touching’. It considered that, visually, the figurative element so described is four times bigger than the word element which it precedes and that, despite its simplicity, it is fanciful, distinctive and gives a dynamic impression to the mark and to the simple word ‘sport’ and attracts the consumer’s attention. The Board of Appeal also found that, apart from the word ‘sport’ in both of the signs at issue, which is descriptive, the signs differ in all their characteristics, and in particular in respect of their beginnings, as the figurative element of the mark applied for does not reproduce the typical elements of the letter ‘k’. In addition, the Board of Appeal found that the presence of the common element ‘sport’ in the marks at issue is not such as to render the signs phonetically and conceptually similar because it is of weak distinctive character.
26      In the present case, the applicant does not dispute the Board of Appeal’s assessment that the term ‘sport’ is a basic English word which will be understood by the average consumer in all of the relevant territories because it is found in identical or similar terms in the relevant languages. Nor does the applicant dispute that that term has a weak distinctive character.
27      By contrast, the applicant contends that the Board of Appeal’s finding that the marks at issue will not be perceived as being sufficiently similar phonetically as a result of the supposedly descriptive character of the word ‘sport’ is incorrect because (i) that word cannot be perceived as being entirely descriptive in all of the relevant territories and for all of the goods covered by the trade mark application and (ii) irrespective of the degree of distinctiveness of a term, it will always be pronounced and perceived by the relevant consumer and will contribute to the similarity of the signs. The applicant therefore claims that that element cannot be considered to be negligible and, on that ground, ignored when assessing the similarity of the marks at issue.
28      However, the applicant does not provide any information concerning the territory of a Member State where the word element ‘sport’ is allegedly distinctive or with regard to the goods of which it is not descriptive so as to rebut the Board of Appeal’s findings in the contested decision in that regard. As OHIM rightly points out, such insufficiently substantiated arguments must be rejected as inadmissible.
29      In any event, the Board of Appeal’s assessment that the element ‘sport’ is descriptive, or at least highly allusive, in respect of the goods covered by the marks at issue must be upheld. In the clothing sector, to which the goods in Class 25 covered by the marks at issue relate, the word ‘sport’ evokes the idea of sportswear or clothing which is sporting in style and is therefore descriptive of those goods (see, to that effect, 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 33). The same conclusion applies to ‘gymnastic and sporting articles’, in Class 28, as well as to leather goods, bags and clothing accessories in Class 18.
30      In the light of the foregoing, the word ‘sport’ is descriptive of the goods covered because it has a sufficiently direct and specific link to them to enable the relevant public immediately to perceive, without further thought, a description of one of the essential characteristics of the goods in question (see, to that effect, MISS B, paragraph 29 and the case-law cited). In that regard, it should be borne in mind that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark (see NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 34 and the case-law cited).
31      Consequently, contrary to the applicant’s contentions, the fact that that element is descriptive must have an effect on the relevant public’s perception of that element, because it cannot constitute the dominant element of the signs at issue.
32      Accordingly, the Board of Appeal was correct in finding that the element ‘sport’ was not decisive with regard to the overall impression created by the signs at issue, with the result that it could not be decisive with regard to their visual, phonetic and conceptual comparison and, therefore, to the assessment of the likelihood of confusion between the marks at issue.
33      Moreover, the Court rejects the applicant’s arguments that the Board of Appeal did not take account of the element ‘sport’ in its assessment. As stated in paragraph 25 above, the Board of Appeal noted, first, that it was situated after the figurative element and not at the beginning of the sign; second, it was smaller than that element; third, it was written in capital letters in a common and customary font; and, fourth, it has a certain dynamism when combined with the figurative element.
34      In addition, the applicant’s arguments that the degree of similarity between the word element ‘sport’ in the mark applied for and the element ‘sports’ in the earlier marks reinforces the similarity of the marks at issue cannot succeed since they amount to a comparison of those elements in isolation and not an overall assessment of the marks at issue.
35      The Board of Appeal’s assessment of the similarity of the signs at issue must be examined in the light of those considerations.
36      Firstly, so far as concerns the visual comparison of the signs at issue, the Board of Appeal correctly observed that the figurative element situated at the beginning of the mark applied for consists of two black strokes which bend towards each other without touching, the first of which is thicker on the top and thinner at the bottom whereas the other has the inverse characteristics. Contrary to what the applicant claims, that fanciful element looks more like two dynamic, curved brush strokes than a letter of the alphabet. The result is that the public will not associate it directly with the first letter of the earlier marks.
37      In that regard, the Court cannot accept the applicant’s argument that the average consumer tends to associate graphical elements with objects or concepts they are familiar with such as the letter ‘k’, an argument supported by an article on psychology cited in the application. The criterion on which the likelihood of confusion between the marks at issue should be assessed is that of the relevant public as defined by the Board of Appeal in the contested decision and not the alleged tendencies of consumers in general.
38      Moreover, as OHIM maintains, if the figurative element of the mark applied for were to be associated with a letter by the relevant public, it could equally have been associated with a stylised version of the capital letter ‘H’ or the letter ‘x’ and not necessarily the letter ‘k’ because the figurative element does not reproduce typical elements of the letter ‘k’. The letter ‘k’ is made up of three straight strokes: one vertical and two diagonal which have one point of contact between them. The fact remains that, as the Board of Appeal found, on the basis of a global assessment of the signs, that abstract and fanciful device, combined with the word ‘sport’, does not suggest that it is an additional letter, but rather a sign conferring dynamism to that term. In that regard, as the Board of Appeal correctly observed, as the term ‘sport’ is a word on its own, it cannot be linked phonetically with the consonant ‘k’.
39      The applicant’s arguments that such an interpretation is not in line with the average consumer’s perception or the facts of the case cannot invalidate that finding. As is apparent from paragraph 38 above, the Board of Appeal took account of the fact that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, in so far as the Board of Appeal assessed the sign at issue as a whole. Moreover, the intention of the applicant for the trade mark to associate the mark with the most distinctive part of its business name, as well as the information it gave to the examiner as to how to pronounce or to perceive the mark applied for, are irrelevant in the present case. As noted in paragraph 37 above and as the Board of Appeal correctly found, the perception of the mark by the relevant public is the correct legal test to be applied when assessing the likelihood of confusion.
40      Lastly, it should be borne in mind that, although the word elements of a mark are, in principle, more distinctive than the figurative elements, because the average consumer will more easily refer to the goods in question by quoting the name than by describing the figurative element of the mark (Case T‑312/03 Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II‑2897, paragraph 37), the fact remains that, in the light of the considerations set out in paragraphs 29 to 32 above, this is not so in the present case. The fact that the figurative element dominates visually the overall impression made by that mark weakens yet further the visual similarity of the marks at issue (see, to that effect, judgment of 12 July 2012 in Case T‑517/10 Pharmazeutische Fabrik Evers v OHIM – Ozone Laboratories Pharma (HYPOCHOL), not published in the ECR, paragraph 32 and the case-law cited).
41      It follows that the signs at issue, considered as a whole, are not visually similar because the term ‘sport’ at the end of the mark applied for is not decisive and will not attract the attention of consumers who, according to settled case-law, only rarely have the chance to make a direct comparison between the different marks and must rely on an imperfect recollection of them (see, to that effect, judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 28 and the case‑law cited).
42      Secondly, so far as concerns the phonetic comparison of the signs, it is apparent from the considerations set out in paragraphs 37 and 38 above that as the figurative element does not resemble a letter of the alphabet, it will not be pronounced. The mark applied for will thus be pronounced ‘sport’ and the earlier marks will be pronounced in accordance with national linguistic habits in the relevant territories, that is to say inter alia ‘ka-tsvaï chports’, in German, and ‘keï‑tu sports’, in English.
43      It follows that, as the Board of Appeal correctly held, the marks at issue are phonetically identical only in respect of their final component ‘sport’, which will be pronounced identically in the relevant languages, differing slightly as a result of the sound made by the final letter ‘s’ of the earlier marks in some languages such as English and German. However, it should be borne in mind that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY‑PROP) [2006] ECR II‑2737, paragraph 51).
44      Moreover, although the words ‘sport’ and ‘sports’ are pronounced almost identically, a phonetic similarity between the signs as a whole cannot be established on the basis of that element alone. The Board of Appeal correctly held that the alphanumeric combination ‘K2’ at the beginning of the earlier marks, which is absent from the mark applied for, has an impact on the rhythm, number of syllables and intonation of the marks at issue. The term ‘sport’ in the earlier marks will accordingly be pronounced last and with less emphasis in relation to the element ‘k2’, whereas it will be the only element to be pronounced in the mark applied for.
45      It follows that the marks at issue are not phonetically similar.
46      Thirdly, so far as concerns the conceptual similarity of the signs, for the reasons set out in paragraphs 37 and 38 above, the Court rejects at the outset the applicant’s argument that there is a conceptual resemblance on account of the letter ‘k’ in the marks at issue, as the figurative element of the mark applied for is not a representation of any letter of the alphabet. Thus, there is no need to rule on the concept allegedly conveyed by the letter ‘k’, and the Court’s assessment of the conceptual similarity of the signs at issue is restricted to a comparison of the descriptive term ‘sport’ common to the marks at issue and of the alphanumeric combination ‘k2’ in the earlier marks.
47      As regards the element ‘k2’ in the earlier marks, the assumption put forward by the Board of Appeal that it may be perceived by some consumers as referring to the world’s second highest mountain cannot be ruled out, particularly because a major part of the goods relate to mountain sports. In that regard, it must be noted that the applicant disputes that assumption without adducing any evidence in support of its arguments.
48      In respect of the term ‘sport’ common to the marks at issue, it must be observed, contrary to the view of the Board of Appeal, that, notwithstanding its descriptive character, it refers to the same concept and leads to the conclusion that there is a degree of conceptual similarity. Nevertheless, that similarity is weak in the context of the overall impression created by those marks, having regard, in particular, to the weak, or even very weak, distinctive character of the term in question (see, to that effect, MISS B, paragraph 27 and the case-law cited).
49      Furthermore, that weak conceptual similarity does not offset the significant visual and phonetic differences between the signs. The fact that the Board of Appeal held that there was no conceptual similarity is of no relevance to the legality of the contested decision.
50      The Board of Appeal correctly found, the overall impression created by the marks at issue is different, as they do not display sufficient visual, phonetic or conceptual similarities to be regarded as being similar.
51      Given that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not fulfilled, there is no need to examine the applicant’s arguments relating to the degree of similarity between the goods covered by the marks or to assess globally the likelihood of confusion and the related arguments.
52      It follows from all of the foregoing that the single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009, is unfounded. Consequently, the action must be dismissed.
Costs
53      Under Article 87(2) of the Rules of Procedure of the Court, 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, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders K2 Sports Europe GmbH to pay the costs.
Papasavvas
Vadapalas
O’Higgins
Delivered in open court in Luxembourg on 31 January 2013.
[Signatures]
* Language of the case: English.