JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
13 July 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark GLÄNSA – Earlier Community word mark GLANZ – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑88/10,
Inter IKEA Systems BV, established in Delft (Netherlands), represented by J. Gulliksson, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by R. Pethke, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Meteor Controls International Ltd, established in Cookstown (United Kingdom),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 1 December 2009 (Case R 529/2009‑2) in relation to opposition proceedings between Meteor Controls International Ltd and Inter IKEA Systems BV,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and H. Kaninnen, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 15 February 2010,
having regard to the response lodged at the Court Registry on 25 May 2010,
further to the hearing on 19 January 2011,
gives the following
Judgment
Background to the dispute
1        On 22 September 2006, the applicant – Inter IKEA Systems BV – filed an application for registration of a Community trade mark with 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 for which registration was sought is the word sign GLÄNSA.
3        The goods in respect of which registration was sought are in Class 11 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 consist in the following: ‘apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 18/2007 of 7 May 2007.
5        On 7 August 2007, Meteor Controls International BV 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, on grounds of likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
6        The opposition was based on the Community word mark GLANZ, which was filed on 2 November 2005 and registered on 15 March 2007 under No 4697141 in respect of goods in Classes 6, 9 and 11 corresponding, for each of those classes, to the following description:
–        Class 6: ‘Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; cable ties, clips and accessories made of metal’;
–        Class 9: ‘Cables, switches and switch sockets; co-axial TV and telephone sockets; electrical appliance connection units; shaver sockets; plugs; electrical extension sockets; thermostats; timers and electronic time switches; smoke and heat detectors; fire detection systems; electricity and card reading meters; test equipment for electronic apparatus and equipment; conduit and trunking equipment and accessories; electricity product accessories being apparatus used in the supply and control of electricity; computer systems for controlling games, game times and game charging; apparatus and instruments for conducting, switching, transforming, accommodating, regulating or controlling electricity’;
–        Class 11: ‘Apparatus for lighting, heating, cooking, drying, ventilating, refrigerating, water supply and sanitary purposes, fans and parts thereof; storage heaters; wall-mounted bathroom heaters, infra-red wall heaters, immersion heaters, convector heaters’.
7        The opposition was based on all the goods covered by the earlier Community mark and directed against all the goods covered by the trade mark applied for.
8        By decision of 12 March 2009, the Opposition Division upheld the opposition, on the ground that there was a likelihood of confusion on the part of the relevant public, and accordingly rejected the trade mark application.
9        On 8 May 2009, Inter IKEA Systems filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 1 December 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board first held that the relevant territory was that of the European Union and that the relevant consumer was the average consumer of the goods in question, deemed to be reasonably well informed and reasonably observant and circumspect. The Board of Appeal then confirmed the decision of the Opposition Division, in so far as the latter had held that the goods in question were partially identical and partially highly similar. Lastly, in the light of the visual and phonetic similarities of the signs at issue, the Board of Appeal held that that there was a likelihood of confusion, albeit only in one part of the territory of the European Union.
Forms of order sought
11      Inter IKEA Systems claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs both of the present proceedings and of the proceedings before OHIM.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order Inter IKEA Systems to bear the costs.
Law
13      Inter IKEA Systems raises a sole plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      Inter IKEA Systems claims, in essence, that the visual differences are sufficient to prevent any likelihood of confusion, primarily because of the endings of the signs – the earlier mark ends with the letter ‘z’ and the mark applied for with the letters ‘sa’ – and the presence of the letter ‘ä’ in the mark applied for, which is particularly distinctive. Moreover, the phonetic differences are also significant. Even if the average consumer did not know how to pronounce the letter ‘ä’, he would certainly be aware that its presence affects not only pronunciation, but also meaning, which is different for each of the signs at issue.
15      At the hearing, Inter IKEA Systems withdrew the argument based on ‘Annex 6’ to its application, acknowledging that ‘Annex 6’ had neither been appended to the application nor mentioned in the list of annexes, and that it had not been produced during the proceedings before the Board of Appeal. Note was taken of that withdrawal in the minutes of the hearing.
16      Inter IKEA Systems also withdrew, at the hearing, the argument that the signs at issue were conceptually different because when put on the market, the goods bearing the mark applied for would also have a blue and yellow logo, using the colours of the Swedish national flag. Note was taken of that withdrawal in the minutes of the hearing.
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 is not to be registered if, because of its identity with, or similarity to, an 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. In addition, under Article 8(2)(a)(i) of that regulation, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
18      It is settled law that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see the judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).
19      Furthermore, the likelihood of confusion on the part of the public must be assessed globally, account being taken of all factors relevant to the circumstances of the case (see CAPIO, paragraph 18 above, paragraph 71; see also, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22; Canon, paragraph 18 above, paragraph 16, and Lloyd Schuhfabrik Meyer, paragraph 18 above, paragraph 18).
20      That global assessment implies some interdependence of the factors taken into account and, in particular, of the similarity between the marks and the similarity between the goods or services covered. 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‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48; Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 25; see also, by analogy, Canon, paragraph 18 above, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see CAPIO, paragraph 18 above, paragraph 72 and the case-law cited).
21      Furthermore, the global assessment of 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 wording of Article 8(1)(b) of Regulation No 207/2009 – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see CAPIO, paragraph 18 above, paragraph 73; see also, by analogy, SABEL, paragraph 19 above, paragraph 23).
22      For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods in question is deemed to be reasonably well informed, and reasonably observant and circumspect. Additionally, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 18 above, paragraph 26).
23      It is in the light of the foregoing considerations that the assessment made by the Board of Appeal of the likelihood of confusion between the signs at issue must be examined.
24      In the present case, the earlier mark is a Community trade mark. Accordingly, as the Board of Appeal stated in paragraph 14 of the contested decision, the relevant territory is that of the European Union. It is also common ground that the relevant public – as the Board of Appeal also correctly pointed out in paragraphs 14 and 15 of the contested decision – is the average consumer of the goods in question, who is deemed to be reasonably well informed, and reasonably observant and circumspect.
25      First, as regards the degree of similarity between the goods in question, both the Board of Appeal, in paragraph 16 of the contested decision, and OHIM, in its defence, correctly stated that the goods in question are in part identical and in part highly similar, a point which Inter IKEA Systems did not dispute.
26      Secondly, so far as the similarity between the signs at issue is concerned, it should be noted that, as has already been stated in paragraph 21 above, the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components.
27      The signs to be compared are the following:
Earlier Mark
Mark applied for
GLANZ
GLÄNSA
28      First, as regards the visual comparison, it is true that – as the Board of Appeal stated in paragraph 18 of the contested decision – the signs at issue are composed respectively of five and six letters and have the same root ‘glan/glän’, even though the ‘a’ in the mark applied for is marked by an umlaut. The signs at issue are distinguished by their different endings: ‘z’ in the case of the earlier mark and ‘sa’ in the mark applied for.
29      In that respect, Inter IKEA Systems’ argument that the attention of the average consumer will be particularly drawn to the letter ‘ä’, thereby enabling him to differentiate between the signs at issue, cannot succeed.
30      The umlaut over the ‘a’ of the mark applied for cannot be considered particularly to attract the attention of consumers in the Member States of the European Union whose languages do not use diacritics, at least on that letter, and thus it does not alter the fact that the letters ‘a’ and ‘ä’ are visually almost identical.
31      Furthermore, the different endings of the signs at issue are not enough to offset, from the point of view of those consumers, the near-identical visual impact of the root ‘glan/glän’, despite the fact that there is an extra syllable in the mark applied for.
32      It should be noted, in that connection, that the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHMI – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81).
33      Moreover, since the application for registration concerns, not a figurative mark, but a word mark, which is accordingly composed only of letters, words or word associations in printed letters of normal font, rather than of figurative elements or colours, it is impossible to accept Inter IKEA Systems’ argument relating to the fact that, when the goods at issue are marketed, the mark applied for will be written in letters of a specific type-face.
34      It should be noted that, according to settled case-law, the particular graphic or stylistic aspects that the earlier mark might adopt are irrelevant. In any event, the assessment of the similarity with the word mark applied for should not be replaced with an assessment of the similarity with a figurative element which does not form part of the protection sought for the mark applied for (see, to that effect, Case T‑211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II‑1297, paragraph 37, and the judgment of 13 February 2007 in Case T‑353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74).
35      It follows that there is visual similarity between the signs at issue.
36      Secondly, as regards the phonetic comparison, there are also similarities between the signs at issue, especially for consumers whose language does not have the letter ‘ä’ and who would pronounce the beginning of each sign – that is to say, ‘glan’ and ‘glän’ – in the same way, which is the case as regards most languages of the European Union, as the Board of Appeal observed in paragraph 20 of the contested decision.
37      Inter IKEA Systems’ argument that consumers in certain Member States of the European Union would pronounce the letter ‘ä’ like the letter ‘e’, and so create a distinction, must also be rejected.
38      In that connection, it should be borne in mind that, where – as in the present case – the earlier mark upon which the opposition is founded is a Community mark, it does not follow from Article 8(1)(b) of Regulation No 207/2009 that, for a sign to be refused registration as a Community trade mark under that provision, the likelihood of confusion must exist in all Member States and in all linguistic areas of the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied upon in opposition proceedings against any application for registration of a Community trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008 in Case C‑514/06 P Armacell v OHIM, not published in the ECR, paragraphs 56 and 57, and the order of 16 September 2010 in Case C‑459/09 P Dominio de la Vega v OHIM, not published in the ECR, paragraphs 29 and 30).
39      In consequence, given that the relevant territory is that of the European Union (as stated in paragraph 24 above), it is sufficient, in order for there to be a phonetic similarity between the signs at issue, that in one part of the European Union the average consumer perceives the letter ‘ä’ as the letter ‘a’ and that the first syllable of both signs is pronounced there in the same way.
40      That is precisely the case in part of the European Union, notably as regards English-, French- and Spanish-speakers, where the effect of the umlaut over the third letter of the mark applied for will not alter the overall phonetic impression produced by the mark on the average consumer, since the languages in question do not have the letter ‘ä’ (see, to that effect, Case T‑35/04 Athinaiki Oikogeniaki Artopoiia v OHIM – Ferrero (FERRÓ) [2006] ECR II‑785, paragraph 61).
41      Furthermore, it must be held that the pronunciation of the endings ‘z’ and ‘sa’ are not so different from each other as to offset the identical pronunciation of the first four letters in the languages of the European Union which do not have the umlaut and in which the letter ‘ä’ would be pronounced in the same way as the letter ‘a’.
42      It follows that there is also phonetic similarity between the signs at issue.
43      Thirdly, as regards the conceptual comparison, it must be held that, as the Board of Appeal rightly observed in paragraph 21 of the contested decision, in the great majority of Member States of the European Union, the signs at issue have no meaning and so the conceptual comparison will not influence the assessment of the likelihood of confusion.
44      The fact that the signs at issue have a particular meaning in some languages of the European Union is – contrary to the assertions made by Inter IKEA Systems – irrelevant for the purposes of the conceptual comparison, in so far as, in the present case, the relevant territory is that of the European Union and not that of Germany or Sweden. Thus, the reference made by Inter IKEA Systems to Case T‑149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [2007] ECR II‑4755 is not germane because, in that case, the relevant public was the German public and the signs at issue had been found to be conceptually different, since, because of the nature of the goods at issue – namely, wines – that public would distinguish the mark CASTELLANI from the mark CASTELLUCA.
45      It follows from all of the above that the signs at issue are similar overall.
46      Thirdly, as regards the likelihood of confusion, it should be borne in mind that such a likelihood exists, if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 20 above, paragraph 45).
47      In the present case, it was held, in paragraph 25 above, that the goods in question are in part identical and in part highly similar and, in paragraph 45 above, that the signs at issue are similar overall.
48      It follows that, considered cumulatively, the degree of similarity between the trade marks at issue and the degree of similarity between the goods covered by those marks are sufficiently high. The Board of Appeal was therefore correct in holding that there was a likelihood of confusion between the signs at issue.
49      The argument put forward by Inter IKEA Systems that the earlier mark has a weak distinctive character because it would be understood as meaning ‘gloss, lustre, radiance, brilliance, etc’ does not weaken that conclusion.
50      In that connection, it must be observed that, even if it were proved that the earlier mark has a weak distinctive character, that would concern only the German-speaking part of the European Union.
51      As it is, it should be borne in mind that, according to the line of authority referred to in paragraph 38 above, where the earlier mark upon which the opposition is founded is a Community mark, it does not follow from Article 8(1)(b) of Regulation No 207/2009 that, for a mark to be refused registration as a Community trade mark under that provision, the likelihood of confusion must exist in all Member States and in all linguistic areas of the European Union.
52      In addition, although the distinctive character of the earlier mark must be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, there may be a likelihood of confusion even where an earlier mark has a weak distinctive character, especially where the signs at issue, and the goods or services in question, are similar (see, to that effect, Case T-130/03 Alcon v OHIM – Biofarma (TRAVATAN) [2005] ECR II-3859, paragraph 78, and Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70). In any event, that is clearly the position in the present case.
53      The sole plea in law put forward by Inter IKEA Systems must therefore be rejected and, in consequence, the action must be dismissed in its entirety.
Costs
54      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. Since Inter IKEA Systems 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 (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Inter IKEA Systems BV to pay the costs.
Truchot
Martins Ribeiro
Kanninen
Delivered in open court in Luxembourg on 13 July 2011.
[Signatures]
* Language of the case: English.