JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
24 March 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark incorporating the word eliza – Earlier Community word mark ELISE – Relative grounds for refusal – Likelihood of confusion – Refusal of registration – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑130/09,
Eliza Corporation, established in Beverly, MA (United States), represented by R. Köbbing, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
supported by
Went Computing Consultancy Group BV, established in Utrecht (Netherlands), represented by A. Meijboom, lawyer,
intervener,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 July 2008 (Case R 1244/2008-4) relating to opposition proceedings between Went Computing Consultancy Group BV and Eliza Corp,
THE GENERAL COURT (Seventh Chamber),
composed of N.J. Forwood (Rapporteur), President, E. Moavero Milanesi and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 2 April 2009,
having regard to the response lodged at the Registry by the intervener on 9 July 2009,
having regard to the response lodged at the Registry by OHIM on 15 July 2009,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the case
1        On 24 January 2005, the applicant, Eliza Corporation, filed a Community trade mark application 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark in respect of which registration was sought is the figurative sign shown below:
3        The goods in respect of which registration of the trade mark was applied for are in Classes 9, 37 and 42 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:
–        Class 9: ‘Computer programs for use in speech recognition applications, for converting speech to text, converting text to speech, speech digitization, and speech compression, and application design interfaces including scripted prompts; computer telephony software, algorithms, signal processing techniques, and related technologies to enable telephone activities to be performed through a computer; computer hardware for speech recognition applications; equipment for speech recognition applications, namely, telephones (including fixed, wireless, and mobile, as well as internet telephony), personal computers and computer servers (utilizing processors), personal digital assistants, and operating systems’.
–        Class 37: ‘Speech recognition hardware maintenance’.
–        Class 42: ‘Application service provider, namely, designing, developing, testing, and hosting speech recognition applications on behalf of customers, including application interface design, phonetic, vocabulary, and grammar additions and improvements, upgrades and deployment to new and different hardware platforms, testing and maintenance, integration with telephone and local area networks, wide area networks and the internet’.
4        The application was published in Community Trade Marks Bulletin No 2006/49 of 4 December 2006.
5        Went Computing Consultancy Group BV (‘the intervener’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the published trade mark. In support of its opposition, the intervener alleged a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was based on earlier Community trade mark No 3 142 999 registered on 7 September 2005 for the word mark ELISE, in respect of the following goods and services in Classes 9, 16, 35 and 42 of the Nice Agreement:
–        Class 9: ‘Software (pre-recorded computer programs) excluding for instructional and teaching purposes; electronic publications, excluding for instructional and teaching purposes’.
–        Class 16: ‘Documentation and manuals (excluding for instructional and teaching purposes) for software, databases and network services’.
–        Class 35: ‘Establishing and managing databases, to be used in particular to match supply and demand; setting up and management of computer files; electronic storage of data and documents; advertising; business management; business administration; administration services; provision of commercial information stored in databases, in particular on supply and demand’.
–        Class 42: ‘Computer services, namely leasing access time to electronic databases; rental and provision of electronic databases, including relating to research and reference material and/or data relating to supply and demand; technical consultancy with regard to computers and computer software; computer programming; advice on the selection of software; computer software development and consultancy thereon; rental of computer software; provision of electronic databases; providing access to electronic databases; installation and maintenance of software, as well as consultancy thereon; rental of computers and their peripheral apparatus; advice relating to the installation and maintenance of computer hardware’.
6        The intervener based its opposition on all the goods that are covered by its earlier Community registration and directed its opposition against all the goods covered by the applicant’s trade mark application.
7        By its decision of 27 June 2008, the Opposition Division upheld the opposition in its entirety.
8        On 27 August 2008, the applicant filed a notice of appeal against the decision of the Opposition Division pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
9        By decision of 28 July 2008 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal. In substance, the Board of Appeal gave the following reasons in support of its decision:
–        The relevant public is composed of both the average consumer and also professionals in the European Union. Given the nature and purpose of the goods and services, the relevant public is deemed to have a higher degree of attentiveness ;
–        The comparison of the goods and services must be based on the lists covered by the marks at issue, irrespective of whether their holders operate in specific and distinct fields of activity. It is therefore irrelevant whether the applicant specialises in the design, development and hosting of speech recognition software applications exclusively in the field of health care services;
–        Visually, the signs are similar to a medium degree. They are phonetically similar to a high degree. They are conceptually identical.
–        Considering that the earlier mark cited in opposition, being a female personal forename, has at least average distinctiveness for the designated goods and services; that the signs are visually similar to a medium degree, phonetically similar to a high degree, and conceptually identical, the contested decision rightly concluded that, for goods and services that are identical or similar, there is a likelihood of confusion on the part of the public of the European Community.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
11      OHIM contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
12      The intervener contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      The applicant puts forward a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94. Under that provision, 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, 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.
14      According to settled case-law, the likelihood of confusion on the part of the public, defined as 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, must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services (Case C-39/97 Canon [1998] ECR I-5507, paragraphs 16 and 17, and Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32).
Preliminary issues
15      As a preliminary point it must be observed that, on the very same day that it introduced the present application, 2 April 2009, the applicant also wrote to OHIM, purporting to amend the list of goods and services in Classes 9, 37 and 42 covered by the trade mark applied for. The change consists in the fact that the goods and services at issue are ‘exclusively for use in the field of healthcare institutions’. According to OHIM that restriction must be disregarded for the purpose of reviewing the legality of the contested decision since it is liable to alter the subject-matter of the dispute pending before the Court, within the meaning of Article 135(4) of the Court’s Rules of Procedure.
16      It should be observed that, under Article 44(1) of Regulation No 40/94 (now Article 43(1) of Regulation No 207/2009), an applicant for a Community trade mark may at any time restrict the list of goods or services covered in the trade mark application. In the present case the applicant brought about such a restriction by its letter sent to OHIM on 2 April 2009.
17      As regards the effect of that restriction on this case, it should be borne in mind that the purpose of actions before the Court under Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009) is to obtain a review of the legality of decisions of the Boards of Appeal, which must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T-57/03 SPAG v OHIM– Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 17, and Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 16). That precludes in principle taking into account elements which have come into existence after the Board of Appeal’s decision has been given, such as the restriction of the services covered by the mark applied for at issue in the present case (see, to that effect, Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, paragraph 55, and the order of 15 November 2006 in Case T-366/05 Anheuser-Busch v OHIM – Budĕjovický Budvar (BUDWEISER), not published in the ECR, paragraphs 40 to 48).
18      Therefore, while, for reasons of procedural economy, the Court may take account of a subsequent restriction of the goods and services covered in the trade mark application, this possibility must be subject to the condition that that restriction is not such as to change the factual or legal context of the Board of Appeal’s examination with regard to the goods or services not affected by that restriction.
19      Thus, a restriction carried out in accordance with Article 44(1) of Regulation No 40/94 subsequent to the adoption of the contested decision may be taken into consideration by the Court where the applicant for the trade mark limits itself strictly to reducing the subject-matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application (see, to that effect, Case T-194/01 Unilever v OHIM (ovoid tablet) [2003] ECR II-383, paragraphs 13 to 17, and Case T-289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II-2851, paragraphs 13 to 15). Since, under Article 43(5) of Regulation No 40/94 (now Article 42(5) of Regulation No 207/2009), the Board of Appeal must assess the likelihood of confusion in relation to each of the goods and services in respect of which the Community trade mark has been applied for, but is not, however, required to carry out an analysis of each of the goods or services forming part of a category included in the list (order in BUDWEISER, paragraph 35), the mere withdrawal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, capable of changing the factual context to which the Board of Appeal’s examination related as regards the goods and services not affected by that restriction.
20      Where, on the other hand, that restriction leads to a change in the subject-matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the contested decision, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (judgment of 27 February 2008 in Case T-325/04 Citigroup v OHIM (WORDLINK), not published in the ECR; see also, to that effect, Case T-164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II-1401, paragraphs 20 to 22).
21      In the present case, the restriction effected by the applicant consists in reducing the scope of the list of goods and services covered by the mark applied for, in that only their use in the field of healthcare institutions is now to be covered by that trade mark. That limitation is liable to affect the definition of the relevant public and is therefore capable of influencing the comparison of the goods and services, as well as the likelihood of confusion. Consequently, it changes the factual context of the dispute as it was brought before the Board of Appeal. That clarification may not therefore be taken into consideration by the Court.
22      It should be recalled that the Board of Appeal found, reaffirming the conclusion of the Opposition Division, that the goods and services covered by the mark applied for are partly identical and partly similar to those covered by the earlier mark. The applicant criticises that finding on the basis of the list of goods and services, as amended in its letter of 2 April 2009, arguing that the limitation thus introduced makes the goods and services at issue dissimilar. However, since that limitation of the list of goods and services cannot be taken into account, for the reasons explained in the preceding paragraphs, those arguments must be rejected as being based on a factual premiss which cannot be taken into account in the present proceedings.
23      Further, as OHIM points out, the only arguments put forward by the applicant in respect of the similarity of the goods and services at issue are based on the abovementioned limitation of the list of goods and services. That being the case, the Court finds that the applicant has not put forward any relevant arguments contesting the Board of Appeal’s finding as to the identity and similarity of the goods and services at issue.
24      In the absence of any relevant arguments as to the identity and similarity of the goods and services at issue, the review of the contested decision’s legality must therefore be conducted on the basis that the Board of Appeal’s findings in that regard are not contested.
25      In the light of the foregoing, and given that the earlier mark is also a Community trade mark, it is also appropriate to endorse the Board of Appeal’s analysis to the effect that the relevant public in respect of which the likelihood of confusion falls to be assessed is composed of both the average consumer and also professionals throughout the European Union and that the relevant public is deemed to have a higher than average degree of attentiveness, given the nature and purpose of the goods and services.
The comparison of the signs
26      The Court observes that the earlier mark is a word mark made up of the 5-letter word ELISE, whereas the mark applied for is figurative and combines three elements, firstly the word element eliza, secondly a commonplace font used to write this word and thirdly three and two vertical hyphens crowning the letters ‘l’ and ‘i’ respectively.
27      Visually, the words eliza and ELISE are similar because, as the Board of Appeal correctly observed, they both begin with the same sequence of letters ‘E-L-I’ and are the same length. Contrary to the applicant’s argument that the figurative elements of the sign are ‘dominating and striking’, the Court finds that neither the font used to write the mark applied for nor the vertical hyphens over the letters ‘l’ and ‘i’ affect the relevant public’s ability to read the word eliza and thus to perceive the visual similarity between it and the word ELISE.
28      The applicant’s reference to the fact that the vertical hyphens ‘tak[e] up the stylised elements of the field of speech recognition (sound conduction)’ and that the relevant public will realise ‘the relation between the figurative elements and the use of the goods/services’ is not explained or substantiated sufficiently to affect the Court’s assessment in respect of visual similarity. It is not apparent from the arguments put forward in the application why the relevant public, particularly that part of it composed of ordinary consumers, should perceive the hyphens or the font used as constituting a reference to voice recognition software.
29      Furthermore, the particular font used in the mark applied for is irrelevant for the purposes of comparing the signs at issue. Since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for (see, to that effect, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 47).
30      It follows from the above that the graphic presentation of the mark applied for does not significantly undermine the visual similarity between the two signs. It follows that the Board of Appeal did not err in its finding of visual similarity between the signs.
31      As regards phonetic similarity, the Board of Appeal found, at paragraph 21 of the contested decision, that ‘in the large part of the European Community where the letter “Z” is pronounced as an “S”, the only noticeable difference is found at the end of the marks, the vowel “A” for the contested mark and the vowel “E” for the earlier mark’. According to the Board of Appeal, the two signs are otherwise pronounced identically and it concluded that they are phonetically similar ‘to a high degree’.
32      The applicant argues that the graphic presentation of the mark applied for influences its pronunciation but, as OHIM correctly pointed out, it failed to explain in which respect the pronunciation of the figurative sign applied for would differ from that of the word eliza. Like OHIM, the Court considers that this argument is unconvincing. As has been noted at paragraph 27 above, neither the font used to write the mark applied for nor the vertical hyphens over the letters ‘l’ and ‘i’ affect the relevant public’s ability to read the word eliza. That being so, there is no reason to believe that either of those figurative elements should affect the pronunciation of the word eliza.
33      It is therefore appropriate to compare the two words eliza and ELISE directly in order to assess phonetic similarity. The Court finds that the Board of Appeal failed to consider one difference in pronunciation of the two words in addition to those mentioned at paragraph 31 above. In certain languages, notably in English, the letter ‘i’ in the word eliza will be pronounced in the same way as the word EYE whereas in the word ELISE that same letter will be pronounced in the same way as the letter combination ‘ee’. Moreover, although the Board of Appeal stated that in a large part of the European Community the letter ‘Z’ is pronounced as an ‘S’, it must nevertheless be observed that in certain parts of the European Union, notably in those countries where German is spoken, those two letters are, in principle, pronounced differently.
34      In the light of the observations made in the previous paragraph, the Court concludes that the Board of Appeal slightly overstated the phonetic similarity between the two marks in finding that the level of phonetic similarity was ‘high’, when in fact the two signs were merely similar in this respect.
35      Conceptually, the Board of Appeal considered that the mark applied for and the earlier mark are conceptually identical to the extent that they will both be perceived as diminutive forms of the female name ‘Elizabeth’. The applicant argues that both eliza and ELISE are sufficiently distinctive for the relevant public not to perceive them as diminutives of the name ‘Elizabeth’.
36      The Court considers that, even if it is not certain that the relevant public throughout the European Union will necessarily perceive the signs at issue as being specifically diminutives of the name ‘Elizabeth’, the relevant public will certainly regard them as highly similar female names derived from the same root. In certain Member States, notably the United Kingdom, Ireland, Germany and Austria, they will certainly be perceived by the relevant public as being diminutives of the full forename Elizabeth.
37      The applicant further argues that there may be a perception of similarity. ‘Regarding goods [such] as perfumery, cosmetics, hair lotions etc. it might be obvious that the relevant public might’ perceive the signs as female names, ‘but not in the field of computer highly specialised hard[ware] and software’.
38      That contention must be rejected. As OHIM correctly points out, words do not lose their semantic content just because they are used in respect of goods to which that content has no obvious conceptual relationship.
39      The fact that it may be more usual to create trade marks based on a first name in certain sectors, as in the fields of clothing and cosmetics for instance, than in others, such as the fields of computer software and hardware products and services which are at issue in the present case, does not therefore affect the perception of the signs at issue as being related female forenames. In any event, the applicant’s argument does not assist its position since the fact that the use of forenames in relation to highly specialised products is less usual would only serve to increase the likelihood of confusion where two marks derived from the same name are used on the same or adjacent product markets.
40      In the light of the above the Court considers that the two signs at issue will be perceived as conceptually identical in certain parts of the European Union, as the Board of Appeal found, and that they will be considered to be at least highly similar throughout the European Union.
41      In conclusion the Board of Appeal correctly found that the signs at issue displayed visual similarity and that they will be perceived as conceptually identical, at least in certain parts of the European Union. While the Board of Appeal slightly overstated the phonetic similarity between the two marks in finding that the level of phonetic similarity was ‘high’, when in fact the two signs were only similar, this error does not, in the opinion of the Court, vitiate the Board’s overall assessment that the two marks, taken globally, have a high degree of similarity.
The likelihood of confusion
42      The applicant has not contested the Board of Appeal’s finding that the earlier mark, being a female personal forename, has at least average distinctiveness for the goods and services it covers. That finding must therefore be held to be correct for the purposes of the present proceedings.
43      That being so, and in the light of the considerations set out above, the Court observes that the goods and services at issue are identical or similar, while the signs at issue are globally similar to a high degree, at least in those parts of the European Union where the two signs are conceptually identical. Thus, notwithstanding the high degree of attentiveness which may be expected from the relevant public, the Board of Appeal correctly found that a likelihood of confusion exists between the two marks at issue, within the meaning of Article 8(1)(b) of Regulation No 40/94. The slight overstatement by the Board of Appeal of the level of phonetic similarity between the signs is not sufficient to call into question its conclusion as to the existence of a likelihood of confusion.
44      It follows that the sole plea put forward by the applicant must be rejected.
Costs
45      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 the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Eliza Corporation to bear its own costs and to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and by Went Computing Consultancy Group BV.
Forwood
Moavero Milanesi
Schwarcz
Delivered in open court in Luxembourg on 24 March 2010.
[Signatures]
* Language of the case: English.