JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
13 November 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark tesa TACK – Earlier national figurative mark TACK Ceys – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑555/11,
tesa SE, established in Hamburg (Germany), represented by F. Schwab, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
La Superquímica, SA, established in L’Hospitalet de Llobregat (Spain), represented by A. Canela Giménez, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 5 July 2011 (Case R 866/2010‑1), relating to opposition proceedings between La Superquímica, SA and tesa SE,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 26 October 2011,
having regard to the response of OHIM lodged at the Court Registry on 3 February 2012,
having regard to the response of the intervener lodged at the Court Registry on 14 February 2012,
further to the hearing on 11 September 2012,
gives the following
Judgment
Background to the dispute
1        On 13 August 2007, the applicant – tesa SE – filed an application for registration of a Community trade mark at 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 (‘Regulation No 40/94’) (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 for which registration was sought is the following figurative sign:
3        The goods in respect of which registration was sought fall within Class 16 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 to the following description: ‘Self-adhesive products for office and household purposes’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 5/2008 of 4 February 2008.
5        On 4 April 2008, the intervener – La Superquímica, SA – filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based, inter alia, on the following earlier figurative mark, filed and registered in Spain on 16 July 2003 under reference M2515958:
7        The earlier mark was registered for goods in Class 16 corresponding to the following description: ‘Bands, strips, sheets and adhesive matters for stationery or the household. Plastic sheets for packaging’.
8        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).
9        On 25 March 2010, the Opposition Division of OHIM upheld the opposition, since it found that there was a likelihood of confusion between the earlier mark and the mark applied for.
10      On 17 May 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11      By decision of 5 July 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal in its entirety. First, it found that the relevant public included, on the one hand, the average, reasonably well-informed and reasonably observant and circumspect Spanish consumer and, on the other, Spanish professionals with a high level of attention. Next, it found that the goods covered by the marks at issue were identical. As regards the comparison of the signs, the Board of Appeal found, in paragraphs 20 and 21 of the contested decision, that there was a certain degree of visual and aural similarity, in particular owing to the presence of the word ‘tack’ in both marks at issue. On the other hand, the Board of Appeal pointed out in paragraph 22 of the contested decision that a comparison of the conceptual aspect of the two marks was irrelevant since the signs at issue have no meaning in Spanish. Having regard to the facts that the goods covered by the marks at issue are identical, that the marks at issue are to a certain extent similar and that the earlier mark has an inherent distinctive character, the Board of Appeal concluded that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        annul the decision of the Opposition Division;
–        order OHIM to pay the costs.
13      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the documents produced for the first time before the Court
14      OHIM contended, at the hearing, that the documents appended to the application as Annex 8 had not been produced during the procedure before OHIM and that, accordingly, they must be declared inadmissible.
15      It should be noted that the applicant produced those documents – the results of an internet search – for the first time before the Court. According to settled case-law, the purpose of actions before the Court is to secure review of the legality of decisions of the Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009. Accordingly, the role of the Court is not to re-evaluate the factual circumstances in the light of evidence which has been produced for the first time before it (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and the case-law cited). It follows that the documents produced in Annex 8 to the application are inadmissible.
Substance
16      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
17      The applicant claims in essence that the Board of Appeal was wrong in finding that there was a likelihood of confusion between the marks at issue. The Board of Appeal incorrectly assessed their visual and aural similarity, in particular by overestimating the importance of the common element ‘tack’.
18      OHIM and the intervener dispute the applicant’s arguments.
19      As set out in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered 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.
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 line of authority, the likelihood of confusion must be assessed globally, on the basis of the relevant public’s perception of the signs and goods in question, account being taken of all relevant factors, including the interdependence between similarity of the signs and similarity 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      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 the marks 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).
22      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 at issue by the consumer of the goods in question in that territory. However, it should be noted that, in order for the registration of a Community trade mark to be refused, 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 the case-law cited).
23      As a preliminary point, before examining in the light of those principles the arguments put forward by the parties, it should first be observed that the applicant does not dispute the definition of the relevant public adopted by the Board of Appeal in paragraph 14 of the contested decision, according to which the target public, with respect to which the analysis of the likelihood of confusion must be carried out, corresponds, on the one hand, to the average Spanish consumer, reasonably well informed and reasonably observant and circumspect, and, on the other, to the professional Spanish user, who has a high degree of attention. In so far as that finding is not vitiated by error, it must be taken into account when the present action is examined.
24      Secondly, it should be stated that the Board of Appeal was right to find, in paragraph 18 of the contested decision, that the goods at issue were identical, a point which is also not disputed by the applicant.
Comparison of the signs
25      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of 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 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 the case-law cited).
Visual similarity
26      The Board of Appeal found, in paragraph 20 of the contested decision, that the marks at issue were visually similar to a certain degree since, in both cases, they were figurative marks composed of two words, one of which was the word ‘tack’. By reason of its position at the beginning of the sign, its bright red colour and the size of its characters, the attention of the consumer perceiving the earlier mark was drawn to that word. The Board of Appeal found that the word ‘tack’ also had an important visual impact in the mark applied for, even though it was not positioned at the beginning of the sign.
27      The applicant disputes those findings. In the first place, it claims that, visually, the two marks are dominated by the distinctive elements ‘tesa’ and ‘ceys’ which are lent prominence by a brightly coloured background, and not by the common element ‘tack’, which the relevant public will believe to be descriptive of the goods at issue since it is an English word which refers to their adhesive properties. In that regard, the applicant points out that, according to a European Commission survey carried out in 2005 entitled ‘Europeans and their languages’, English is the most widely-spoken foreign language throughout the European Union. The relevant public is therefore able to understand the meaning of the word ‘tack’. In the second place, the applicant claims that the Board of Appeal misunderstood the importance of the fact that the common word element ‘tack’ does not have the same position in the marks at issue, which means that the beginning of the marks is different. In the third place, the marks at issue differ as regards the way in which the common element ‘tack’ is written, and as regards the colours used (red/white/blue as opposed to red/yellow/black) and the figurative elements (arrow, peel-off label).
28      OHIM and the intervener dispute the applicant’s arguments.
29      In the first place, it must be held that, contrary to the assertions made by the applicant, the common word element ‘tack’ is important in the perception of the marks at issue both because of its visual characteristics and because of its distinctive nature.
30      As regards, first, the visual characteristics, it should be noted that, as OHIM observed, the relevant consumer will, in his perception of the earlier mark, consider the word ‘tack’ to be particularly important because of its size, its red colour, its typefont and its position at the beginning of the sign. By contrast, the word ‘ceys’ is smaller and is positioned within a black rectangular arrow which points towards the word ‘tack’. Similarly, it should be noted that the word ‘tack’ is important in the perception of the mark applied for, in view of its typefont, its colour and the size of its letters. The fact – emphasised by the applicant – that the words ‘tesa’ and ‘ceys’ appear on a strikingly coloured background does not call those findings into question.
31      As regards, secondly, the distinctive character of the word ‘tack’, it is necessary to reject the applicant’s argument that that word is considered by the relevant public to be descriptive of the goods at issue.
32      It should be noted that, as OHIM points out, according to the Commission survey referred to by the applicant, knowledge of English is less widespread in Spain than in other EU countries. According to that survey, only 27% of the Spanish population has sufficient skills in English to have a conversation in that language. It follows that a large part of the relevant public does not have significant knowledge of that language.
33      Moreover, the fact that the word ‘tack’ is used for adhesive products in other national or Community marks or on internet sites in no way proves that the relevant public, in so far as it understands English, understands the meaning of that word. The applicant has failed to demonstrate that ‘tack’ is part of the basic English vocabulary with which the relevant public is likely to be familiar. It should also be noted in that regard that, as the intervener contends, the word ‘tack’ has several meanings in English and that most of those meanings do not concern adhesive properties, as is apparent from the dictionary extracts appended as Annex 1 to the application lodged with OHIM by the applicant.
34      In those circumstances, the Board of Appeal was right to find, in paragraph 22 of the contested decision, that the marks at issue have no meaning in Spanish and that the word ‘tack’ cannot be considered by the relevant public to be descriptive.
35      It follows that the applicant’s argument that the two marks are dominated, from a visual point of view, by the distinctive elements ‘tesa’ and ‘ceys’ respectively must be rejected.
36      In the second place, contrary to the assertions made by the applicant, the fact that the relative positioning of the word ‘tack’ in one of the signs is reversed in the other does not call into question the existence of a certain degree of visual similarity between the two marks, account being taken of the importance of the common word element ‘tack’.
37      In the third place, it should be noted that – as the Board of Appeal observed in paragraph 20 of the contested decision – in both signs, the word ‘tack’ is written in bold, coloured upper-case letters and that, in addition to the common word element ‘tack’, the marks at issue also share other similar visual elements. The two signs have a similar structure in that they are both composed of two words, one in upper-case letters and the other in lower-case letters placed within a frame. Each of those words consists of four letters and, as OHIM and the intervener note, the most important element of the earlier mark is wholly present in the mark applied for. Moreover, both signs begin with a red element, and those red elements are of comparable length.
38      It follows that, despite the differences pointed out by the applicant – as regards, in particular, the choice of colours, the typeface used and the fact that the common element does not occupy the same position in both signs – the marks at issue have a certain visual similarity.
39      In the light of those factors and given that the average consumer must, as a general rule, place his trust in the imperfect picture of the marks that he has kept in his mind (see, to that effect, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26), it is appropriate to confirm the assessment made by the Board of Appeal, in paragraph 20 of the contested decision, concerning the existence of a certain degree of visual similarity between the marks at issue.
Aural similarity
40      In paragraph 21 of the contested decision, the Board of Appeal stated that there was a certain degree of aural similarity between the marks at issue since their pronunciation followed a similar rhythm, they had the word ‘tack’ in common, in comparison with which the pronunciation of the words ‘ceys’ and ‘tesa’, respectively, was softer and less perceptible.
41      The applicant challenges that argument. It claims that the word ‘tack’ does not occupy the same position in both marks and that the marks are pronounced differently. Moreover, the words ‘ceys’ and ‘tesa’ do not have the same pronunciation, ‘tesa’ also having an extra syllable. Lastly, the applicant points out that, unlike the earlier mark, the mark applied for does not have a melodic rhythm.
42      OHIM disputes the applicant’s arguments.
43      Although it is true that the marks at issue are different as regards the sequence of vowels and the number of syllables, it should be noted that the word ‘tack’ is present in both marks. Although the relative positioning of the common word element ‘tack’ in one of the signs is reversed in the other, the Board of Appeal correctly notes that that word constitutes an important element from an aural point of view as compared with the words ‘tesa’ and ‘ceys’, which are pronounced more softly. Moreover, the word ‘tack’ is pronounced in the same way in both marks. It cannot be concluded, therefore, that the marks at issue are in no way aurally similar.
44      In those circumstances, it is appropriate to confirm the assessment made by the Board of Appeal, in paragraph 21 of the contested decision, concerning the existence of a certain degree of aural similarity between the marks at issue.
Conceptual similarity
45      The Board of Appeal found, in paragraph 22 of the contested decision, that the conceptual similarity of the marks at issue is irrelevant, given that neither of the signs has any meaning in Spanish. In consequence, it is unlikely that the Spanish public understands the meaning of the English word ‘tack’.
46      The applicant disputes the Board of Appeal’s finding that, in the mind of the relevant public, the word ‘tack’ is not descriptive of the goods at issue.
47      As was established in paragraphs 31 to 34 above, it must be held that the word ‘tack’ cannot be considered to be descriptive of the goods at issue. Accordingly, the Board of Appeal’s assessment, in paragraph 22 of the contested decision, that the conceptual similarity between the marks at issue is irrelevant in the present case must be confirmed.
48      In the light of the foregoing, it must be concluded that the applicant’s arguments concerning the comparison of the signs must be rejected as unfounded.
The likelihood of confusion
49      While accepting the existence of some differences between the marks at issue, the Board of Appeal found, in paragraphs 24 to 35 of the contested decision, that there is a likelihood of confusion, referring in particular to the similar structure of the two marks, the presence in each of the word element ‘tack’, the fact that the goods concerned are identical, and the fact that both marks at issue have an average degree of distinctiveness.
50      The applicant disputes that finding. It points out the aural and, in particular, the visual differences between the signs at issue. According to the applicant, the visual differences are particularly important, in so far as the manner in which the goods covered by those marks are marketed (through supermarkets, self-service shops, the internet) encourages the relevant public primarily to perceive those goods visually. The applicant also refers to a decision of the Spanish Trademarks Office holding that the national word mark TESA TAC and the national figurative mark TACKCEYS were so different that the likelihood of confusion in the mind of the Spanish public could be excluded. Moreover, the General Court has held, in several cases, that two marks which coincide only in one of their elements are not so similar as to be likely to bring about a likelihood of confusion.
51      OHIM and the intervener dispute the applicant’s arguments.
52      As was stated in paragraph 20 above, the likelihood of confusion must be assessed globally, on the basis of the relevant public’s perception of the signs and the goods or services in question, account being taken of all relevant factors, including the interdependence between similarity of the signs and similarity of the goods or services covered (see GIORGIO BEVERLY HILLS, paragraphs 30 to 33 and the case-law cited). Accordingly, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and VENADO with frame and Others, paragraph 74).
53      In the present case, it should be noted that – as the Board of Appeal observed – the goods covered by the marks at issue are identical. That finding implies, according to the case-law cited in paragraph 52 above, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high. As it is, contrary to the assertions made by the applicant, there is a certain visual and aural similarity between the marks at issue, as emerges from paragraphs 39 to 44 above.
54      Moreover, the applicant’s argument that the General Court has sometimes held that there is no likelihood of confusion in the case of marks sharing a common element cannot succeed. The question whether two marks give rise to a likelihood of confusion goes to the facts and the answer depends on the assessment of the individual circumstances of each case (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 31). In the present case, however, the applicant does no more than list a series of judgments of the General Court in an abstract manner, without giving precise details as to the specific guidance that those judgments could provide for the purposes of settling the present case.
55      As for the decision of the Spanish Trademarks Office, also relied on by the applicant, it should be noted that it cannot, as such, decisively affect the assessment of the present case. The Community trade mark scheme is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Accordingly, decisions given in the Member States are not binding upon OHIM or, as the case may be, the Courts of the European Union (see, to that effect, Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47 and the case-law cited), such decisions being a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark (see Case T‑122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II‑265, paragraph 61, and Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II‑2597, paragraph 58).
56      In the present case, it should be pointed out that the marks at issue are different from the marks examined by the Spanish Trademarks Office. The question addressed in that context was whether there was a likelihood of confusion between the word mark TESA TAC, written without the letter ‘k’ (‘tac’), and the figurative mark TACKCEYS. It follows that the analysis carried out by the Spanish Trademarks Office is not transposable and that the likelihood of confusion, in the present case, must be assessed only in the light of the individual circumstances of the case.
57      In the light of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in concluding that there was a likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue.
58      It follows from all the foregoing considerations that the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded. The action must therefore be dismissed, without there being any need to give a ruling on the applicant’s second head of claim.
Costs
59      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
60      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and by the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders tesa SE to pay the costs.
Pelikánová
Jürimäe
Van der Woude
Delivered in open court in Luxembourg on 13 November 2012.
[Signatures]
* Language of the case: English.