JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
1 February 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark Fitcoin – Earlier national, Community and international figurative marks coin – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑272/11,
Coin SpA, established in Venice (Italy), represented by P. Perani and G. Ghisletti, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Dynamiki Zoi AE, established in Athens (Greece),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 21 February 2011 (Case R 1836/2010‑2), relating to opposition proceedings between Coin SpA and Dynamiki Zoi AE,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka (Rapporteur) and M. Prek, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 25 May 2011,
having regard to the response lodged at the Court Registry on 20 September 2011,
having regard to the reply lodged at the Court Registry on 15 December 2011,
further to the hearing on 17 October 2012,
gives the following
Judgment
Background to the dispute
1        On 27 April 2004, Dynamiki Zoi AE filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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        Registration as a mark was sought for the word sign ‘Fitcoin’.
3        The goods and services in respect of which registration was sought are in Classes 16, 25, 28, 35, 36 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 16: ‘Paper, cardboard and goods made from those materials; pamphlets, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesives for stationery; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers’ type; printing blocks’;
–        Class 25: ‘Clothing, including footwear and slippers’;
–        Class 28: ‘Games and playthings; gymnastic and sporting articles (except clothing); playing cards’;
–        Class 35: ‘Advertising, business management, business administration, office functions, stocking a variety of goods on behalf of third parties so that customers can examine at their leisure and buy the goods’;
–        Class 36: ‘Insurance, financial affairs, monetary affairs, real estate affairs’;
–        Class 41: ‘Education, providing of training, entertainment, sporting and cultural activities, gymnasiums; providing information on the aforesaid services via the Internet’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 40/2005 of 3 October 2005.
5        On 30 December 2005, the applicant, Coin SpA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods and services covered by the application for registration.
6        The opposition was based on the following earlier rights:
–        the figurative mark which was the subject of Community registration No 109827, applied for on 1 April 1996 and granted on 26 October 1998, for goods and services in Classes 16, 25, 28 and 35, represented below:
–        the figurative mark which was the subject of Community registration No 3308401, applied for on 8 August 2003 and granted on 30 June 2009, for goods and services in Classes 16, 25, 28 and 35, represented below:
–        the figurative mark which was the subject of Community registration No 3364511, applied for on 22 September 2003 and granted on 16 November 2004, for goods and services in Classes 16, 35 and 36, represented below:
–        the figurative mark which was the subject of Italian registration No 160126, applied for on 17 April 1962 and granted on 19 September 1962, for goods in Class 25, represented below:
–        the figurative mark which was the subject of Italian registration No 169548, applied for on 23 October 1963 and granted on 14 May 1965, for goods in Classes 16 and 28, represented below:
–        the figurative mark which was the subject of Italian registration No 240286, applied for on 18 July 1969 and granted on 23 September 1969, for goods in Class 25, represented below:
–        the figurative mark which was the subject of Italian registration No 240305, applied for on 5 August 1969 and granted on 26 September 1969, for goods and services in Classes 16, 25, 28, 35, 36 and 41, represented below:
–        the figurative mark which was the subject of Italian registration No 253233, applied for on 25 May 1971 and granted on 4 August 1971, for goods and services in Classes 16, 25, 28, 35, 36 and 41, represented below:
–        the figurative mark which was the subject of international registration No 260545, applied for on 1 October 1962, valid in Benelux, Germany, France, Hungary, Austria and Portugal for goods in Class 25, represented below:
–        the figurative mark which was the subject of international registration No 299708, applied for on 8 July 1965, valid in Germany, France and Hungary, for services in Classes 35, 36 and 41, represented below:
–        the figurative mark which was the subject of international registration No 299710, applied for on 8 July 1965, valid in Benelux, Germany, France, Hungary, Austria and Portugal for goods in Classes 16 and 28, represented below:
–        the figurative mark which was the subject of international registration No 363491, applied for on 2 December 1969, valid in Benelux, France, Hungary and Austria for goods in Class 25, represented below:
–        the figurative mark which was the subject of international registration No 363492, applied for on 2 December 1969, valid in Benelux for goods in Classes 16 and 28, and in France for goods and services in Classes 16, 28, 35, 36 and 41, represented below:
–        the figurative mark which was the subject of international registration No 381015, applied for on 4 August 1971, valid in Benelux and Portugal for goods in Classes 16, 25 and 28, in Germany, Hungary and Slovenia for goods and services in Classes 16, 25, 28, 35, 36 and 41, in Spain for services in Class 36, and in Austria for services in Class 35, represented below:
7        The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        By decision of 9 July 2007, the Opposition Division found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 and rejected the opposition.
9        On 4 September 2007, the applicant filed a notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
10      By decision of 15 April 2008, the First Board of Appeal of OHIM dismissed the appeal. For its analysis of the similarity of the signs and the likelihood of confusion, the Board of Appeal took into account only the earlier Italian figurative trade marks ‘coin’ Nos 169548, 240305 and 253233 as earlier rights. It took the view, in essence, that the relevant public was the Italian general public, which had a varying degree of attentiveness. It concluded that, assessed globally, the signs at issue were not similar and therefore that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. The applicant brought an action before the General Court against the decision of the Board of Appeal of 15 April 2008.
11      In its judgment of 21 April 2010 in Case T-249/08 Coin v OHIM – Dynamiki Zoi (Fitcoin), not published in the ECR, the General Court upheld the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 and annulled the decision of the Board of Appeal of 15 April 2008. The General Court held that the Board of Appeal had erred in concluding that there was no likelihood of confusion by confining itself to an analysis of the similarity of the signs and the likelihood of confusion in relation solely to the Italian public, without taking account of the average consumer in the European Union with respect to the goods and services in Classes 16, 25, 28 and 35, of average German, Spanish, Hungarian and Slovenian consumers with respect to the services in Class 36, and of average German, Hungarian and Slovenian consumers with respect to the services in Class 41 (Fitcoin, paragraph 25). The General Court held that, by taking account only of earlier Italian marks and by finding that there was no likelihood of confusion on that basis alone, even though the applicant had, in support of its opposition, also invoked earlier trade marks enjoying protection outside Italy and covering goods and services which are essentially identical to those covered by the earlier Italian marks, the Board of Appeal had infringed Article 8(1)(b) of Regulation No 40/94 (Fitcoin, paragraph 26).
12      By decision of 21 February 2011 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the opposition in part. The Board of Appeal found that there was identity between the goods and services covered by the mark applied for and, at least, those covered by the earlier Community trade mark coin No 109827, earlier Italian trade marks coin Nos 169548, 240305 and 253233 and earlier international registration coin No 381015. As regards the comparison of the marks, the Board of Appeal took account of several earlier Italian and Community figurative marks coin and earlier international registrations coin. It found that the marks at issue were visually different and phonetically similar to a weak degree. Conceptually it noted that the word ‘coin’ would be understood by English‑speaking consumers as meaning ‘a metal disc used as money’ and by French‑speaking consumers as ‘place, corner’ and that the word ‘fit’ was an English word meaning ‘to be of the correct size or shape’ or ‘in good health.’ It considered that some of the relevant consumers could perceive the element ‘fitcoin’ as a juxtaposition of the words ‘fit’ and ‘coin’ whereas other consumers will perceive the mark Fitcoin as a word with the prefix ‘fit’, as a word with the suffix ‘coin’ or as an invented word lacking any meaning. As regards the likelihood of confusion, the Board of Appeal considered that the degree of phonetic similarity was of limited importance due to the way in which the goods at issue were marketed and that the degree of attentiveness of the relevant public was high for the services in Classes 35 and 36 and for the education services in Class 41.
13      The Board of Appeal found that, for the relevant consumers who did not understand the words ‘fit’ and ‘coin’, there was no likelihood of confusion even for identical goods and services. For the relevant consumers who would perceive the element ‘fitcoin’ as the juxtaposition of the words ‘fit’ and ‘coin’, it found that – as the word ‘fit’ means ‘in good health’ and is widely used in the sporting sector – that word had a limited distinctive character in relation to goods or services linked to sport and fitness activities. Consequently it found that, for those consumers, the similarity between the marks at issue due to their coincidence in the element ‘coin’ not being counteracted by the presence of the element ‘fit’ in the mark applied for nor by the figurative elements in the earlier marks, there was a likelihood of confusion as regards the ‘gymnastic and sporting articles’ in Class 28 and the ‘sporting activities, gymnasiums; providing information on the aforesaid services via the Internet’ in Class 41. However, it found that the element ‘fit’ would not be perceived as descriptive by the consumers who understood its meaning, when it is used in combination with the word ‘coin’ to refer to other goods and services covered by the mark applied for and that, therefore, there was no likelihood of confusion as regards those goods and services.
14      In the contested decision, the Board of Appeal therefore upheld the opposition for the following goods and services:
–        Class 28: ‘Gymnastic and sporting articles (except clothing)’;
–        Class 41: ‘Sporting activities, gymnasiums; providing information on the aforesaid services via the Internet’.
15      The Board of Appeal rejected the opposition and allowed registration of the mark Fitcoin for the other goods and other services covered by the application for registration.
Forms of order sought
16      The applicant claims that the Court should:
–        principally, annul the contested decision in so far as it rejects the opposition and accept registration of the mark Fitcoin;
–        alternatively, annul the contested decision in so far as it allows registration of the mark Fitcoin for the following goods in Class 25: ‘Clothing, including footwear and slippers’;
–        order OHIM to pay the costs.
17      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
18      The applicant puts forward a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
19      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.
20      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).
21      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods and services in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, 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 76 and case-law cited).
22      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 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).
23      Furthermore, according to the case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 12 November 2008 in Case T‑281/07 Ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 30 and the case-law cited, and judgment of 28 October 2009 in Case T‑273/08 X‑Technology R & D Swiss v OHIM – Ipko‑Amcor (First‑On‑Skin), not published in the ECR, paragraph 40).
24      In the present case, it is common ground that the goods and services covered by the mark applied for, Fitcoin, are identical, at least, to those covered by the earlier Community trade mark coin No 109827, earlier Italian trade marks coin Nos 169548, 240305 and 253233 and earlier international registration coin No 381015.
25      It is also common ground that the relevant public is the average consumer in the European Union with respect to the goods and services in Classes 16, 25, 28 and 35, average Italian, German, Spanish, French, Hungarian and Slovenian consumers with respect to the services in Class 36, and average Italian, German, Spanish, French, Hungarian and Slovenian consumers with respect to the services in Class 41, whose level of attention must be regarded as high in respect of the services in Classes 35 and 36 and the ‘education’ services in Class 41.
26      Furthermore, the applicant does not put forward any argument to dispute the Board of Appeal’s finding that the marks at issue are visually different and phonetically similar only to a low degree.
27      The applicant submits that, by taking account only of one of the possible meanings of the word ‘fit’, ‘in good health’, and disregarding the other meaning referred to in the contested decision, namely ‘to be of the correct size or shape’, the Board of Appeal carried out a partial assessment of the likelihood of confusion with reference to the main part of the goods and services covered by the mark applied for and thus infringed Article 8(1)(b) of Regulation No 207/2009.
28      In that regard, it must be borne in mind that the Board of Appeal found that some of the relevant consumers, inter alia English-speaking consumers, would understand the meaning of the words ‘fit’ and ‘coin’ and would perceive the mark applied for, Fitcoin, as a juxtaposition of those two words. It stated, first, that the word ‘fit’ meant ‘in good health’ and was widely used in the sports sector. It therefore found that the word ‘fit’ had a limited distinctive character in relation to goods and services directly linked to sport and fitness activities. It stated, secondly, that the word ‘coin’, which means ‘a metal disc used as money’ in English, was not commonly used in connection with any of the goods or services at issue and therefore had distinctive character when was used in relation to any of the goods or services covered by the mark applied for. According to the Board of Appeal, the consumers who were able to understand the word ‘fit’ would perceive it as a descriptive prefix when it is used in relation to ‘gymnastic and sporting articles’ in Class 28 and ‘sporting activities; gymnasiums; providing information on the aforesaid services via the Internet’ in Class 41. It deduced from that, as regards those goods and services, that the similarity between the marks due to their coincidence in the distinctive element ‘coin’ would not be counteracted by the presence of the element ‘fit’ in the mark applied for or by the figurative elements in the earlier marks and that, consequently, there was a likelihood of confusion.
29      The applicant submits that, taking into account the other meaning of the word ‘fit’, namely ‘to be of the correct size or shape’, that reasoning should also apply to the other goods covered by the mark applied for.
30      In that regard, it must be pointed out that the Board of Appeal itself stated in the contested decision that the word ‘fit’ meant both ‘in good health’ and ‘to be of the correct size or shape’.
31      As the applicant states, the word ‘fit’ is frequently used in the clothing sector. The consumer is used to seeing the word ‘fit’, on its own or with other words (‘slim fit’), associated with clothing or footwear. Furthermore, the word ‘fit’, in the sense of ‘to be of the correct size or shape’, suggests a positive quality of those goods and may be perceived as laudatory given the importance that such a quality may have in the clothing sector. The word ‘fit’ must therefore be regarded as having a weak distinctive character in respect of the ‘clothing, including footwear and slippers’ in Class 25, covered by the mark applied for.
32      The Board of Appeal therefore erred in finding that none of the meanings of the English word ‘fit’ other than ‘in good health’ were in direct relation to any of the goods and services covered by the mark applied for.
33      Contrary to what OHIM submits, the fact that the word ‘fit’ is a verb in the sense of ‘to be of the correct size or shape’, whereas it is an adjective in the sense of ‘in good health’, does not prove that there is a difference as regards the distinctive character of the element ‘fit’ when it is applied to the various goods and services covered by the mark applied for.
34      It follows that the Board of Appeal should have found that the word ‘fit’, in the sense of ‘to be of the correct size or shape’, has a limited distinctive character as regards the ‘clothing, including footwear and slippers’ in Class 25 and that, consequently, the similarity between the marks at issue due to their common element ‘coin’ is not counteracted by the presence of the element ‘fit’ in the mark applied for.
35      The Board of Appeal therefore erred in finding that there is no likelihood of confusion, for English consumers, as regards the ‘clothing, including footwear and slippers’ in Class 25, covered by the mark applied for.
36      Furthermore, the applicant submits that the word ‘fit’, in the sense of ‘to be of the correct size or shape’, may refer to any kind of goods or services, that it will be perceived as a descriptive prefix and that, as the element ‘fit’ has no distinctive character, there is a likelihood of confusion in respect of all the goods and services covered by the mark applied for.
37      However, in contrast to the position regarding clothing and footwear, the word ‘fit’ cannot be regarded as frequently used in relation to the other goods and services, in Classes 16, 28, 35, 36 and 41, covered by the mark applied for. Furthermore, the strong positive connotation which the word ‘fit’ has when it is used in the clothing sector does not apply in the sectors to which the other goods and services relate. In addition, the applicant does not put forward any argument to show that the fact of being of the correct size or shape is a fundamental characteristic of those other goods and services and that it is therefore a descriptive prefix. Consequently, it must be held that the word ‘fit’ has distinctive character when it is used in relation to those other goods and services covered by the mark applied for.
38      The Board of Appeal was therefore correct in finding that, as regards the goods and services in Classes 16, 28, 35, 36 and 41, the differences between the marks at issue introduced by the presence of the letters ‘f’, ‘i’, ‘t’ at the beginning of the mark applied for outweighed the similarity limited to their coinciding in four letters, and that there was no likelihood of confusion.
39      It follows from all of the foregoing that, first, the Board of Appeal erred in rejecting the opposition as regards the ‘clothing, including footwear and slippers’ in Class 25 and that, secondly, it was correct to reject the opposition as to the remainder. Consequent, the action must be upheld in part and the contested decision annulled in part.
Costs
40      Under Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared. In the present case, since the applicant’s action was successful only in respect of some of the goods at issue, it must be decided that OHIM will bear its own costs and pay a third of the costs incurred by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 21 February 2011 (Case R 1836/2010‑2) in so far as it rejected the opposition as regards the ‘Clothing, including footwear and slippers’ in Class 25;
2.      Dismisses the action as to the remainder;
3.      Orders OHIM to bear its own costs and to pay a third of the costs incurred by Coin SpA;
4.      Orders Coin to bear two-thirds of its own costs.
Dittrich
Wiszniewska-Białecka
Prek
Delivered in open court in Luxembourg on 1 February 2013.
[Signatures]
* Language of the case: English.