JUDGMENT OF THE GENERAL COURT (Third Chamber)
16 October 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark CORDIO – Earlier Community word mark CORDIA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑388/12,
Daniela Singer, residing in Obertrubach (Germany), represented by B. Korom, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being
Cordia Magyarország Ingatlanforgalmazó Zártkörüen Müködö rt, established in Budapest (Hungary), represented by A. Nagy, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 July 2012 (Case R 1842/2011‑2), relating to opposition proceedings between Cordia Magyarország Ingatlanforgalmazó Zártkörüen Müködö rt and Ms Daniela Singer,
THE GENERAL COURT (Third Chamber),
Composed, at the time of the deliberation, of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 August 2012,
having regard to the response of OHIM lodged at the Court Registry on 1 March 2013,
having regard to the response of the intervener lodged at the Court Registry on 8 January 2013,
having regard to the decision of 9 April 2013 refusing to authorise the submission of a reply,
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 the closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 19 May 2010, the applicant, Ms Daniela Singer, filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark in respect of which registration was sought is the word sign CORDIO.
3        The services in respect of which registration was sought are, inter alia, in Class 42 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 to the following description: ‘creation of web pages; consultancy with regard to the design of homepages and Internet pages; homepage and web-page design; updating of web pages; updating of computer software; computer software design; maintenance and installation of software; data management on servers; rental and maintenance of memory space for websites, for others (hosting); rental of storage space on the Internet; rental of webservers; providing web space (web-hosting); providing memory space on the Internet’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 107/2010 of 14 June 2010.
5        On 14 July 2010, the intervener, Cordia Magyarország Ingatlanforgalmazó Zártkörüen Müködö rt, filed a notice of opposition, under Article 41 of Regulation No 207/2009, to registration of the trade mark applied for in respect of the services referred to in paragraph 3 above.
6        The opposition was based on the earlier Community word mark CORDIA, registered on 3 April 2007 under No 5 109 822 for, inter alia, services in Class 42, corresponding to the following description: ‘Design of interior decor; packaging design services; graphic arts designing; industrial design; creating and maintaining websites for others; architecture; architectural consultation’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.
8        On 14 July 2011, the Opposition Division of OHIM upheld the opposition in its entirety.
9        On 7 September 2011, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By decision of 10 July 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal found, in essence, that there was a likelihood of confusion between the marks at issue. In particular, it found that many of the services covered by the mark applied for were directed at the general public with a normal degree of attentiveness. As regards ‘data management on servers’, ‘rental of webservers’, and ‘computer software design’, those services were directed at professionals with an above average degree of attentiveness. The Board of Appeal found that the services covered by the marks at issue were in part identical and in part similar. As regards the signs at issue, the Board of Appeal found that they were visually and aurally highly similar. Consequently, according to the Board of Appeal, there was a likelihood of confusion between the marks at issue, even taking into account the fact that a section of the relevant public was composed of highly attentive professionals.
Forms of order sought
11      The applicant claims that the Court should annul the contested decision.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by OHIM.
13      The intervener submits that the Court should dismiss the action.
Law
The references to the observations of 29 March and 11 November 2011
14      OHIM submits that the reference made by the applicant, in paragraph 11 of her application, to the annexes submitted in the administrative proceedings before OHIM is not admissible in the present case since that reference is not related to the plea or the arguments which form the subject matter of the present proceedings.
15      In paragraph 11 of her application, the applicant, so as to avoid repetition, referred to her observations of 29 March and 11 November 2011 submitted in the administrative procedure before OHIM.
16      In that respect, it must be noted that, under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the General Court, the application is required to state a summary of the pleas in law relied on. In accordance with the case-law, that summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The Court has further held that, while the body of the application may be supported and supplemented by references to certain passages in extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in the application, and it is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 14 and the case-law cited).
17      The application, in so far as it refers to documents filed by the applicant before OHIM, is inadmissible because the general reference contained therein is not linked to the pleas and the arguments set forth in the application.
The request that the Court appoint an expert in order to obtain evidence
18      OHIM also submits that the applicant’s request that the Court appoint an expert in order to obtain evidence must be rejected as inadmissible.
19      In that respect, it must be pointed out that, inasmuch as the applicant makes such a request, which is indicated in the application in an inordinately brief manner, her request that an expert’s report be ordered should not be granted, since the Court considers that it has sufficient information available to it from the documents in the file. It must also be noted that, under Article 70 of the Rules of Procedure, the Court ‘may’ order an expert’s report. As a result, the Court has a wide discretion in that respect (order of the Court of Justice of 16 December 2004 in Case C‑222/03 P APOL and AIPO v Commission, not published in the ECR, paragraph 67).
Substance
20      In support of her action, the applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
21      The applicant claims, in essence, that there is no likelihood of confusion between the marks at issue because of the degree of attentiveness of the relevant public, composed of specialists. She claims, in particular, that the services that she offers are directed at different sectors to those offered by the intervener and do not concern the same country. Likewise, the services concerned are not similar. The Board of Appeal concluded, wrongly, that the services of ‘creating and maintaining websites for others’ covered by the earlier mark included the other services covered by the mark applied for.
22      OHIM and the intervener challenge the applicant’s arguments.
23      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and because of the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
24      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 relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 designated (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).
25      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
26      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question (see RESPICUR, paragraph 42 and the case-law cited).
27      It is in the light of those principles that the present action must be examined.
28      As regards the relevant public, the Board of Appeal found, in paragraphs 26 to 28 of the contested decision, that the services covered by the marks at issue – with the exception of the ‘data management on servers’, ‘rental of webservers’ and ‘computer software design’ services covered by the mark applied for – were directed at the general public with a normal degree of attentiveness. The ‘data management on servers’, ‘rental of webservers’ and ‘computer software design’ services were directed, according to the Board of Appeal, at a specialised public with an above average degree of attentiveness.
29      The applicant claims that the Board of Appeal’s findings are incorrect and submits that the services covered by the marks at issue are directed at specialists, who will pay attention to the minor differences between the signs.
30      In that respect, it must be noted that, as the Board of Appeal pointed out, many of the services covered by the marks are also directed at the general public. That is the case, in particular, with regard to the services of creation and maintenance of web pages, which may be inexpensive. Moreover, the use of those services does not require a high level of technical knowledge. The Board of Appeal’s findings must therefore be affirmed in that the services in Class 42 covered by the marks at issue, with the exception of ‘data management on servers’, ‘rental of webservers’ and ‘computer software design’ services, are directed at the general public with a normal degree of attentiveness.
Comparison of the services
31      According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
32      In the present case, the Board of Appeal rightly found, in paragraphs 33 to 38 of the contested decision, that the ‘creation of web pages’ services covered by the mark applied for are identical to the ‘creating websites’ services covered by the earlier mark. Likewise, the services of ‘consultancy with regard to the design of homepages and Internet pages’, ‘homepage and web-page design’, ‘updating of web pages’, ‘updating of computer software’, ‘data management on servers’, ‘rental and maintenance of memory space for websites, for others (hosting)’, ‘rental of storage space on the Internet’, ‘rental of webservers’, ‘providing web space (web-hosting)’ and ‘providing memory space on the Internet’ covered by the mark applied for are identical to the ‘creating and maintaining websites for others’ services covered by the earlier mark inasmuch as the latter services include the former. They have, in any event, significant similarities. Lastly, the ‘updating of computer software’, ‘maintenance and installation of software’ and ‘computer software design’ services covered by the mark applied for and the ‘creating and maintaining websites for others’ services covered by the earlier mark are similar.
33      The applicant acknowledges the identical nature of the ‘creation of web pages’ services covered by the mark applied for and the ‘creating and maintaining websites for others’ services covered by the earlier mark, but claims that the Board of Appeal erred in finding that the services of ‘creating and maintaining websites for others’ includes the other services covered by the mark applied for. She submits that the other services covered by that mark are different. Moreover, she claims that the services covered by the marks at issue, including those which are identical, are provided in different sectors – in this case, the tourism sector and the real property sector.
34      However, the applicant’s arguments cannot succeed. First, as the Opposition Division, whose decision was upheld by the Board of Appeal, found, the services covered by the two marks are of the same nature in that they are information technology services, have the same purpose, which is to create certain products linked to computing, and are usually provided by the same companies. It follows from this that they are similar. Moreover, the services of ‘consultancy with regard to the design of homepages and Internet pages’, ‘homepage and web-page design’, ‘updating of web pages’, ‘updating of computer software’, ‘data management on servers’, ‘rental and maintenance of memory space for websites, for others (hosting)’, ‘rental of storage space on the Internet’, ‘rental of webservers’, ‘providing web space (web-hosting)’ and ‘providing memory space on the Internet’ covered by the mark applied for and the ‘creating and maintaining websites for others’ services covered by the earlier mark are at least highly similar inasmuch as they are closely linked to the creation and the maintenance of web pages.
35      Secondly, as the Board of Appeal pointed out, the sectors of activity in which the applicant and the intervener operate are irrelevant for the present comparison.
36      In that respect, it must be noted that because particular marketing strategies for goods or services covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether given effect or not, which are by their very nature subjective for the proprietors of the marks (see judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 59, and Case T-363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II-2217, paragraph 63). Thus, the use that the applicant intends to make of the mark applied for is irrelevant in that respect. In the context of opposition proceedings, OHIM may take account of the list of services applied for only as it appears in the trade mark application concerned, subject to any amendments thereto (see, to that effect, judgment of 13 April 2005 in Case T‑286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 33, and Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 89).
37      It follows that the Board of Appeal was right to find that the services at issue are in part identical or at least highly similar and in part similar.
Comparison of the signs
38      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression created by the marks, 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 assessment of such a 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).
39      For the purposes of the present comparison, the sign applied for CORDIO must be compared with the earlier sign CORDIA.
40      In paragraph 43 of the contested decision, the Board of Appeal upheld the Opposition Division’s finding that the signs at issue are visually and aurally highly similar, but are not conceptually similar.
41      Those conclusions must be confirmed. The two word signs both have six letters, of which only one, the last, is different. They therefore coincide in the sequence of letters ‘cordi’, which makes them highly similar visually and aurally.
42      As regards the conceptual comparison, it must be noted that the term ‘cordio’ is the English abbreviation used to refer to the concept of ‘Coral Reef Degradation in the Indian Ocean’. As for the term ‘cordia’, it refers to a genus of plants and trees that are characterised by having a pleasant smell and different flowers, commonly planted in gardens. As the Board of Appeal pointed out in paragraph 42 of the contested decision, neither of those terms is commonly used in any of the languages of the European Union. It is thus appropriate to distinguish those cases in which the meaning of at least one of those terms will be understood from those in which neither of the terms will be understood by the relevant public. In the first case, the signs will be conceptually different whereas in the second case, no conceptual comparison will be possible.
43      The applicant complains that the Board of Appeal failed to take sufficient account of the fact that the professionals who make up the relevant public are very attentive to the small differences between signs. Accordingly, she claims that there is no likelihood of confusion between the signs at issue.
44      In that respect, it must be recalled that, as pointed out in paragraph 30 above, the relevant public in the present case is not composed solely of specialists. On the contrary, the majority of the services concerned are directed at the general public. Consequently, the applicant’s argument is irrelevant.
45      It follows that the signs at issue are visually and aurally highly similar, whereas they are conceptually different, but only for the section of the relevant public who understand at least one of the terms which constitute them.
The likelihood of confusion
46      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. 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‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and 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 74).
47      In the present case, in paragraph 46 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue.
48      As can be seen from the above considerations, the services covered by the two marks are in part identical or at least highly similar and in part similar. As for the signs, they are visually and aurally highly similar. As regards the conceptual comparison, the signs will be different for the section of the public which knows at least one of the terms which constitute them. However, it must be taken into account that although the terms which constitute the two signs have a meaning (see, in that respect, paragraph 42 above), they are not commonly used in any of the languages of the European Union. Accordingly, the conceptual differences for one section of the public cannot offset the similarities between the signs at issue. The signs are similar even for the professionals who constitute the relevant public for some of the services referred to by the mark applied for (see paragraph 28 above) and who have a higher degree of attentiveness. It follows that the Board of Appeal was right to conclude that there was a likelihood of confusion.
49      In view of all of the foregoing, the present plea in law and the entire action must be dismissed.
Costs
50      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, she must be ordered to pay the costs, in accordance with form of order sought by OHIM.
51      Since the intervener has not applied for the applicant to be ordered to pay the costs, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Daniela Singer to bear her own costs and to pay the costs incurred by OHIM;
3.      Orders Cordia Magyarország Ingatlanforgalmazó Zártkörüen Müködö rt to bear its own costs.
Czúcz
Labucka
Gratsias
Delivered in open court in Luxembourg on 16 October 2013.
[Signatures]
* Language of the case: English.