JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 April 2013 (*)
(Community trade mark – Opposition proceedings – Application for the word mark ENDURACE – Earlier Community figurative mark ENDURANCE – Relative grounds for refusal – Similarity of the goods and services – Similarity of signs – Partial refusal of registration – Article 8(1)(b) of Regulation (EC) No 207/2009 – Likelihood of confusion)
In Case T‑109/11,
Apollo Tyres AG, established in Baden (Switzerland), represented by S. Szilvasi, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Endurance Technologies Pvt Ltd, established in Aurangabad (India),
ACTION brought against the decision of the First Board of Appeal of OHIM of 25 November 2010 (case R 625/2010-1), concerning opposition proceedings between Endurance Technologies Private Limited and Apollo Tyres AG,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 16 February 2011,
having regard to the response lodged at the Court Registry on 24 May 2011,
further to the hearing on 16 October 2012,
gives the following
Judgment
Background to the dispute
1        On 9 November 2007, Apollo Tyres Ltd (Haryana, India) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark for which registration was sought is the word sign ENDURACE.
3        The goods and services in respect of which registration was sought are in Classes 12, 35 and 37 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 12: ‘tyres, tubes and flaps for automobiles’;
–        Class 35: ‘advertising, business management, business administration, office functions, retail and online retail services connected with tyres, tubes and flaps for automobiles’;
–        Class 37: ‘building construction, repair, installation services, fitting services for tyres, repair and replacement of tyres’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 14/2008, of 7 April 2008.
5        On 4 July 2008, Endurance Technologies Pvt Limited (‘Endurance Technologies’) filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6        The opposition was based on the earlier Community figurative mark, in colour, filed on 9 April 2007 and registered on 13 March 2008 under No 5 819 149, reproduced below:
7        The goods covered by the earlier mark on which the opposition was based fall within Class 12 and correspond to the following description:
–        ‘parts, fittings and accessories for land vehicles; automobiles and automobile components; casting, suspension, transmission and braking products for land vehicles, light alloy wheels for motor vehicles; suspension shock absorbers for vehicles and automobiles; shock absorbing springs for vehicles; front forks for vehicles; rims for vehicle wheels; axles for vehicles; brakes and brake parts for vehicles; brake linings and brake segments for vehicles; hydraulic disc brakes; hydraulic drum brakes, brake shoes, tandem master cylinders for vehicles, wheel cylinders for vehicles, clutches for land vehicles; transmissions for land vehicles; couplings for land vehicles; hydraulic couplings with integral dampers, for land vehicles; hydraulic and gas charged dampers for land vehicles; suspension struts for vehicles; gas springs for vehicles; crankcases for land vehicle components; engines and jet engines for land vehicles; gear boxes and gearing for land vehicles; hubs for vehicles wheels; hydraulic circuits for vehicles; motors for land vehicles; non skid devices for vehicle [tyres]; propulsion mechanisms for land vehicles; air pumps for vehicles; reduction gears for land vehicles; traction engines; torque converters for land vehicles; transmission chains and shafts for land vehicles; turbines for land vehicle; castings for [tyres], casting cars, casting carriages’.
8        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).
9        By a decision of 24 February 2010, the Opposition Division upheld the opposition in part, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, as regards the goods covered by the trade mark application in Class 12, and as regards some of the services covered by that application in Class 35, in respect of inter alia ‘retail and online retail services connected with tyres, tubes and flaps for automobiles’. According to the Opposition Division, such a likelihood of confusion existed, in particular, as regards the non-English-speaking section of the relevant consumers, who would not understand the meaning of the word ‘endurance’.
10      On 16 April 2010, Apollo Tyres Ltd filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11      On 27 August 2010, Endurance Technologies submitted its response, and an application pursuant to Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8). In that context, it requested, inter alia, that the opposition be upheld in respect of all the goods and services covered by the trade mark application and, accordingly, that the latter be rejected in its entirety.
12      By deed of assignment of 14 July 2010, registered at OHIM on 20 October 2010 under No T 005143832, Apollo Tyres Ltd transferred the rights connected to the trade mark application to the applicant, Apollo Tyres AG.
13      By decision of 25 November 2010 (the ‘contested decision’), the First Board of Appeal of OHIM dismissed the appeal and upheld in part the requests of Endurance Technologies. Thus, having stated that it must rule on the opposition in its entirety, the Board of Appeal rejected, because of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the application for a Community trade mark for all of the goods covered by that application in Class 12, and for the ‘retail and online retail services connected with tyres, tubes and flaps for automobiles’ in Class 35 and the services of ‘repair’, ‘installation’, ‘fitting services for tyres’ and ‘repair and replacement of tyres’ in Class 37.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision in so far as it rejected the application for registration of the following goods, in Classes 12, 35 and 37: ‘tyres, tubes and flaps for automobiles; retail and online retail services connected with tyres, tubes and flaps for automobiles; repair, installation services, fitting services for tyres, repair and replacement of tyres’;
–        annul the contested decision in so far as it ordered the applicant to reimburse Endurance Technologies the sum of EUR 550;
–        order Endurance Technologies to pay all the costs incurred by the applicant before the Opposition Division, the Board of Appeal, and the General Court.
15      OHIM contends that the Court should:
–        dismiss the action for annulment in its entirety;
–        order the applicant to pay the costs.
Law
Admissibility of Annexes A. 10, A. 13 and A. 14
16      OHIM argues that some of the documents produced by the applicant before the Court, namely Annexes A.10, A.13 and A.14 to the application, are inadmissible, since they were not submitted in the course of the administrative procedure.
17      In that regard, it must be noted, first of all, that it is indeed clear from the administrative file of the procedure before OHIM that the documents in question – intended to support the applicants’ claims that the words ‘endurance’, ‘endurace’, ‘enduracers’ and ‘enduro’ are understood throughout the European Union – were submitted for the first time before the General Court.
18      Moreover, it must be pointed out that, although some documents concerning the meaning of the word ‘endurance’ had already been submitted before OHIM, those documents contained, on the one hand, extracts of English-language Web pages relating to that term, such as extracts from the Wikipedia encyclopaedia concerning ‘endurance racing’, extracts from articles in the Chicago Tribune newspaper on ‘motor racing endurance’, and internet searches for English expressions such as ‘auto parts and accessories’, ‘endurance motor racing’, ‘endurance motor oil’, ‘endurance test of engines’, ‘endurance tester’, ‘endurance of batteries’, ‘endurance cars’, and, on the other, extracts from the website of the French dictionary Larousse, concerning the meaning of the word ‘endurance’ in that language, and extracts from a search for the French expression ‘endurance automobile’ using the Google search engine.
19      Consequently, although those documents involve Web pages accessible throughout the European Union, they are different from the extracts submitted for the first time before the Court in Annex A.10 the application, which specifically concern the understanding of the word ‘endurance’ in Finland, in Germany, in Spain and in Sweden and which are respectively targeted at each of those four countries. As regards Annexes A.13 and A.14 to the application, they are clearly different from the evidence submitted before OHIM, in that they concern the words ‘enduracers’ and ‘enduro’, which were not the subject of the search results submitted in the administrative procedure.
20      It must also be pointed out that the lack of understanding of the meaning of the word ‘endurance’ by a part of the relevant public of the European Union was considered to be a decisive factor in the determination of the dispute by the Opposition Division, which held, in its decision, that the likelihood of confusion between the marks at issue concerned, in particular, the non-English-speaking part of the relevant public (see paragraph 9 above). Accordingly, it must be found that, already in the proceedings before the Board of Appeal, the applicant was in a position to produce any relevant evidence which it considered necessary to support its claim that the word ‘endurance’ is understood by all of the relevant public of the European Union.
21      In that respect, it is apparent, moreover, from the action brought by the applicant before the Board of Appeal that one of its main arguments related to the fact that the word ‘endurance’ would not be understood just by the English-speaking public, but, to the contrary, it would probably be understood by a much larger part of the relevant public of the European Union, or even by all of the public of the European Union. The applicant also made reference, before the Board of Appeal, to statistics concerning the knowledge of languages in the European Union, and in particular knowledge of English and French, and claimed that the word ‘endurance’ is a commonly used word which is easily understood even by persons who lack basic knowledge in those two languages. In those circumstances, the Court considers that it was for the applicant to provide, on that particular point, if necessary, all of the evidence in support of its application in the procedure before OHIM (see, by analogy, Case T‑303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II‑1917, paragraph 76).
22      According to settled case-law, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009; it is not therefore the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 14 April 2010 in Case T‑514/08 Laboratorios Byly v OHIM – Ginis (BILLY’s Products), not published in the ECR, paragraph 44 and the case-law cited).
23      It follows that the documents submitted in Annexes A.10, A.13 and A.14 to the application are inadmissible.
Substance
24      The applicant contests the Board of Appeal’s assessment of the similarity of the signs at issue and claims that the Board wrongly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
25      OHIM disputes the applicant’s arguments.
26      In accordance with Article 8(1)(b) of Regulation No 207/2009, 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.
27      In accordance with settled case-law, 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. According to the same line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception of the relevant public of the signs and goods or services in question, taking into account all relevant factors, and in particular the interdependence between the similarity of the signs and the similarity 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 32 and the case-law cited).
28      For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should, however, 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 rely on an imperfect recollection of them. 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 (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 33 and the case-law cited).
29      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 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).
30      In addition, although the distinctive character of the earlier mark must indeed be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgment of 14 February 2008 in Case T‑189/05 Usinor v OHIM – Corus (UK) (GALVALLOY), not published in the ECR, paragraph 70 and the case-law cited, and judgment of 13 September 2010 in Case T‑72/08 Travel Service v OHIM – Eurowings Luftverkehrs (smartWings), not published in the ECR, paragraph 63).
31      Lastly, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods or services in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
32      It is in the light of the principles set out in paragraphs 26 to 31 above that the Court, in the present case, must examine the applicant’s single plea in law.
The comparison of the goods and services at issue
33      According to consistent case-law, in assessing the similarity of the goods or services concerned, all the relevant factors which characterise the relationship between them should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see Case T‑388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II‑4301, paragraph 51 and the case-law cited). Moreover, goods are similar, within the meaning of Article 8(1)(b) of Regulation No 207/2009, where the relevant public considers them to be part of the same product family (Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 33).
34      In the present case, first, as regards the goods at issue, the Board of Appeal found that those referred to in the trade mark application in Class 12 may fall within the category of ‘parts, fittings and accessories’ for automobiles, protected by the earlier mark, because of the broad formulation used in that earlier mark. In particular, according to the Board of Appeal, ‘tyres’ and ‘tubes’ are necessary components of a car and, consequently, fall within the description ‘parts’ or ‘fittings’. The ‘flaps’, according to the Board of Appeal, could be classed in the category of ‘accessories’, given that they are not strictly necessary. Accordingly, the Board of Appeal found that the goods concerned were identical (see the contested decision, paragraphs 11, 12 and 14).
35      The applicant contests the Board of Appeal’s assessment, and claims that the goods at issue differ in their nature, function, and intended purpose. It submits that the ‘tyres, tubes and flaps for automobiles’ referred to in the trade mark application are made exclusively of rubber, whereas the ‘parts, fittings and accessories for land vehicles’ covered by the earlier mark are made of metal and/or aluminium. According to the applicant, the goods at issue are never manufactured by the same company ‘so that the channels of trade are … different’.
36      OHIM claims that the applicant’s claim amounts to denying the obvious, since the first of the abovementioned categories of goods is included in the second.
37      The Court notes that, despite the applicant’s claims above, there is no actual evidence to support its statement that the ‘parts, fittings and accessories for land vehicles’ covered by the earlier mark are limited to goods made solely ‘of metal and/or aluminium’. In particular, it must be pointed out that such an express limitation is not apparent from OHIM’s administrative file and, moreover, the applicant has not claimed otherwise. Therefore, it must be concluded, as found by the Board of Appeal, and for the reasons set out in the contested decision, that the above category of goods includes the goods in Class 12 referred to in the trade mark application.
38      Accordingly, it must be found that the goods at issue are identical.
39      That finding is not refuted by the inclusion, in the annexes to the application, and without any argument referring to them, of extracts from the website of the Endurance group (www.endurancesystems.com) showing the goods marketed by that group, or of two decisions of United States courts concerning the comparison of goods such as tyres and automobile parts.
40      Even if the applicant is to be understood as seeking to show that the other party to the procedure does not use the earlier mark to designate goods similar to those for which the trade mark application is made, it must be pointed out that, since the earlier trade mark had not been registered for at least five years at the date of the publication of the trade mark application at issue in the present case, its holder was not required to prove its genuine use in accordance with Article 42(2) of Regulation No 207/2009. Nor did the applicant make an application to that effect before OHIM. Accordingly, the earlier trade mark is deemed to be registered in respect of all of the categories of goods that it designates, so that solely the wording of those categories is relevant in the context of the comparison with the goods referred to in the trade mark application. It has already been found that that wording is sufficiently broad as to include those goods.
41      As regards the two United States decisions, they were made by a court in a state which is not a member of the European Union, applying its own legislation in a factual context different to that at issue in the present case. Therefore, they are not relevant to the resolution of the present dispute, since the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it, which applies independently of any national system (see, by analogy, judgment of 23 October 2007 in Case T‑405/04 BORCO-Marken-Import Matthiesen v OHIM (Caipi), not published in the ECR, paragraph 53).
42      Moreover, the applicant’s claims, made for the first time at the hearing, concerning the allegedly ‘excessively general’ scope of the wording of the category of goods at issue protected by the earlier mark must be rejected as being out of time, since they were referred to in neither the proceedings before the Board of Appeal (see, by analogy, judgment of 23 October 2008 in Case T‑158/06 Adobe v OHIM (FLEX), not published in the ECR, paragraphs 28 to 31) nor the action before the Court (see, to that effect, judgment of 18 January 2012 in Case T‑422/07 Djebel SGPS v Commission, not published in the ECR, paragraphs 142 and 143 and the case-law cited). In any event, it cannot be considered that the category of goods ‘parts, fittings and accessories for land vehicles’ of the earlier mark, the only one taken into consideration by the Board of Appeal in the context of the assessment of the similarity between the goods at issue, is too vague or imprecise.
43      Secondly, as regards the various services covered by the mark applied for, the Board of Appeal found, in essence, that the purpose of the ‘retail services connected with tyres, tubes and flaps for automobiles’ in Class 35 was to persuade consumers to purchase the goods at issue. It considered that those services included services of promoting, primarily by way of advertising, sales of tyres, tubes and flaps. Clearly, in the Board of Appeal’s view, the public targeted by those promotional activities cannot be different from the public at which the goods themselves are aimed. Consequently, the Board of Appeal concluded that the retail services referred to in the trade mark application and the goods ‘parts, fittings and accessories for land vehicles’ protected by the earlier trade mark were manifestly similar by reason of their complementarity, since the subject-matter of the former is necessarily the latter (see the contested decision, paragraph 15).
44      Moreover, according to the Board of Appeal, the same reasons apply, by analogy, to ‘fitting services for tyres’ and ‘repair and replacement of tyres’ in Class 37 (see the contested decision, paragraph 16).
45      Furthermore, as regards the ‘repair’ and ‘installation’ services in that class, the Board of Appeal found that they were so broadly formulated as to be capable of including the subject-matter covered by the earlier mark, since a car can be repaired and a tyre or other part can be installed on a car. Accordingly, in the Board of Appeal’s view, those services were, for reasons of complementarity, also similar to the goods protected by the earlier mark (see the contested decision, paragraph 17).
46      In the absence of any challenge in that respect on the part of the applicant, apart from those rejected in paragraph 37 above, those premisses should also be taken into account in the assessment of the likelihood of confusion. Moreover, as regards services other than those referred to in paragraphs 43 to 45 above and in respect of which the Board of Appeal did not find a similarity with the goods protected by the earlier mark, it suffices to note that they are not the subject of the present proceedings.
The relevant public and its degree of attention
47      It is settled case-law that the relevant public is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 30 September 2010 in Case T‑270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28 and the case-law cited). Moreover, in general, if the goods or services covered by one of those marks are included in the broader designation of the earlier mark, the relevant public is defined by reference to the more specific wording (medidata, paragraph 28).
48      In the present case, the Board of Appeal found, in essence, that the relevant public was composed of car owners in the European Union, inasmuch as the earlier mark covered the category of goods ‘parts, fittings and accessories’ for automobiles, formulated in a sufficiently broad manner as to include items such as tyres, flaps, tyre rims, exhaust pipes and other items targeted at end customers, namely individuals possessing a car (see the contested decision, paragraphs 12 and 13).
49      The applicant claims that the goods and related services covered by the trade mark application are for daily consumption and are therefore targeted at the ‘average consumer’ who is reasonably well informed and reasonably observant and circumspect. Since ‘endurance’ is an English and French word, the relevant public is composed of English- and French-speaking consumers. OHIM contests the applicant’s claim.
50      In that respect, it suffices to note that, in accordance with the case-law cited in paragraph 31 above, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods or services in question in that territory. That is indeed the case in the present case, as the earlier mark is a Community trade mark.
51      In those circumstances, in the absence of any other challenges by the applicant to the definition of relevant public used by the Board of Appeal, it is necessary to take into account, for the purposes of the overall assessment of the likelihood of confusion, a public composed of, inter alia, car owners in the European Union.
52      As regards the level of attention of such a public, it is clear from the contested decision that the Board of Appeal, without expressly ruling in that respect, nevertheless clearly took into account a public which could include ‘observant persons’. In paragraph 30 of the contested decision, it found that a likelihood of confusion existed even with regard to such a public.
53      In that respect, the Court notes, first, as regards ‘tyres’, that it is clear from the case-law that, even if those goods are not for everyday consumption, their acquisition does not entail in-depth consideration. Accordingly, the relevant public in respect of such goods is composed of averagely observant European Union consumers (see, to that effect, judgment of 13 December 2011 in Case T‑424/09 Goodyear Dunlop Tyres UK v OHIM – Sportfive (QUALIFIER), not published in the ECR, paragraph 26).
54      Secondly, as regards ‘tubes and flaps for automobiles’, although a part of the relevant consumers may also buy them without in-depth consideration, it cannot be excluded that at least some of those consumers specifically examine the technical compatibility of those goods with the tyres, flaps, or wheels of their automobiles and, accordingly, that they are likely to show a higher level of attention when acquiring those goods. Thus, in the light of the nature of those goods, it is necessary to affirm the approach of the Board of Appeal, according to which the relevant public could also include ‘observant individuals’.
55      Thirdly, as regards the various services referred to in the trade mark application and considered by the Board of Appeal to be similar to the goods protected by the earlier mark, it must be recalled that some of those services are linked to tyres, tubes or flaps and that others concern, more generally, ‘repair’ or ‘installation’, without further specification, that is to say that they may also be linked to ‘parts’, ‘fittings’ and ‘accessories’ for automobiles. Clearly, the relevant consumers may include both those who do not pay any particular attention to those services and those who, in searching for a quality technical service, would assess the offers and the providers of those services on the market in a more detailed manner and, accordingly, pay greater attention to the mark under which those services are proposed.
56      It follows that the relevant public, composed inter alia of car owners in the European Union, includes both consumers who show an average level of attention when buying the goods and choosing the services at issue as well as others who may show a higher level of attention.
The similarity of the signs at issue
57      Two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009 when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see, to that effect, Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case-law cited).
58      The global assessment of the likelihood of confusion with respect to the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given 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 appreciation of such a likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35).
59      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 40 and the case-law cited).
60      Furthermore, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).
61      In the present case, the Board of Appeal considered that the mark applied for, though consisting of a word that does not exist, so closely resembles the word ‘endurance’ that it would in all likelihood be perceived by reasonably observant consumers as a ‘misspelling’ thereof. Overall, the two marks could be regarded, in the Board of Appeal’s view, as similar visually and nearly identical aurally (see the contested decision, paragraph 23).
62      As regards the earlier mark, according to the Board of Appeal, although the oval device placed on top of the word ‘endurance’ influences the visual impression of that mark, it is the word element that will attract the public’s attention and which, in practice, will be used by consumers as a means to distinguish the goods at issue from those having a different industrial source. In the Board of Appeal’s view, the visual device, though coloured and relatively oversized, does not really represent anything striking, visually or conceptually. Thus, in the opinion of the Board of Appeal, the ‘dominant element’ of the earlier mark is the word element (see the contested decision, paragraph 24).
63      In response to the applicant’s claim that a non-distinctive word may not be considered dominant and that consumers will rather be attracted by the device of the earlier mark, the Board of Appeal found, as a preliminary, that the word ‘endurance’ is an English and French word designating ‘the ability of a person or a thing to withstand adversity and strain’. Clearly, in the Board of Appeal’s view, that is a meaningful notion in respect of automotive parts and fittings which typically wear out over time. However, according to the Board of Appeal, consumers in many parts of the European Union might not be aware of that word, a circumstance which is sufficient, in itself, for the trade mark application to be rejected on the basis of a likelihood of confusion for such a public. Accordingly, the Board of Appeal affirmed the position taken by the Opposition Division based on the same reasoning (see the contested decision, paragraphs 25 to 28).
64      It is appropriate, at this point, to assess the lawfulness of the abovementioned findings of the Board of Appeal, concerning a non-English- or non‑French‑speaking public, since, if they are affirmed, the action may be rejected without it being necessary to rule on the subsequent part of the contested decision, relating to the existence of a likelihood of confusion by the part of the public which understands the word ‘endurance’ (see the contested decision, paragraphs 29 to 31). In accordance with VENADO with frame and Others, paragraph 31 above (paragraph 76), it suffices, in order for registration of a Community trade mark to be refused, that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union.
65      The applicant claims, in essence, that, since the allusive meaning of the word ‘endurance’, denoting the ‘ability [of the goods at issue] to exert themselves for a long period of time’ or ‘the ability to keep doing something difficult, unpleasant or painful for a long time’, would be understood by all of the relevant public in the European Union, particularly because it is an ‘ordinary’ word in French and English, it is devoid of any distinctive character, and, accordingly, the consumer will focus as much, or even predominantly, on the figurative element. Thus, in the applicant’s view, the marks at issue differ visually, phonetically and conceptually. Visually, the applicant also stresses the difference in the number of letters which comprise the respective words in the marks in dispute, in addition to the difference resulting from the fact that the earlier mark also includes a figurative element. Phonetically, the applicant claims that the difference in the last syllable of those words is of particular importance, since in the pronunciation of the marks at issue the emphasis is placed on the last syllable. Conceptually, the applicant submits that the mark applied for is an invented word, combining the words ‘endurance’ and ‘race’, the latter meaning ‘a competition’. It relies, in that respect, on the annexes to the application intended to show that consumers throughout the European Union understand the word ‘endurace’ as referring to endurance races and, furthermore, know the term ‘enduro’, meaning a motorcycle race. OHIM disputes the applicant’s arguments.
66      In that respect, as indicated by the Board of Appeal, it is reasonable to consider that at least some non-English- or non-French-speaking consumers might not understand the word ‘endurance’. First, as OHIM submits before the Court, that word has no resemblance to or common root with its equivalents in languages such as, inter alia, German, in which a comparable meaning is expressed using words like ‘Dauerhaftigkeit’, ‘Durchhaltevermögen’, ‘Ausdauer’, ‘Haltbarkeit’ or ‘Dauerhaltbarkeit’, Polish (‘Wytrzymałość’) or Greek (‘αντοχή’). It is the same in, for example, Slovak (‘Vytrvalosť’, ‘Výdrž’ or ‘Životnosť’), Czech (‘Vytrvalost’, ‘Výdrž’ or ‘Životnost’) or Hungarian (‘állóképesség’, ‘élettartam’, ‘ellenállóképesség’, ‘szívósság’ or ‘ellenállás’).
67      Nor, moreover, can the word ‘endurance’ be automatically considered to be a basic English word whose meaning would be understood by any European Union consumer. As regards the evidence produced by the applicant in order to establish the contrary, namely the knowledge of the word ‘endurance’ even in certain non-English- or non-French-speaking Member States, it has already been held, in paragraphs 16 to 23 above, that it was submitted too late and is thus inadmissible, and that, in any event, it concerns only four Member States. Therefore, it must be held that the applicant has failed to provide valid proof of knowledge of the word ‘endurance’ throughout the European Union.
68      That conclusion is not invalidated by the applicant’s reference, at the hearing, to the judgment of 5 May 2011 in Case T‑461/09 CheapFlights International v OHIM – Cheapflights (Cheapflights with a black aeroplane), not published in the ECR, in order to draw analogies for the present case as regards the understanding, throughout the European Union, of words in the English language.
69      Contrary to what is claimed by the applicant, the situation in the present case differs from that in Cheapflights with a black aeroplane, since there the Court had found, in paragraph 33 of the judgment at issue, that it was ‘in the light of their very frequent use in the air transport sector, [that] the words “cheap” and “flights” could be understood by the relevant public, whether it had a knowledge of English or not’. In the present case, however, it is neither well known nor proven that there is, throughout the territory of the European Union, such frequent use of the word ‘endurance’ that it would be understood even by a substantial part of the non-English- or non-French-speaking relevant public. Accordingly, although it is settled case-law that the Board of Appeal may take into consideration, not only the facts expressly put forward by the parties to the opposition proceedings, but also facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see, to that effect, Cheapflights with a black aeroplane, paragraph 68 above, paragraph 32), it cannot be criticised, in the present case, in relation to its conclusion concerning the lack of understanding of the word ‘endurance’ by a part of the relevant public.
70      Accordingly, the word ‘endurance’, perceived by at least a part of non‑English- or non-French-speaking consumers as an invented word, would also be remembered by that public when confronted with the earlier mark, regardless of the device occupying the greater part of that mark.
71      That is particularly so since that word is also relatively large in relation to the mark taken in its entirety, and is easily readable because of the use of a font of upper-case letters which differs only slightly from customary fonts. Moreover, that readability and the memorable character of the word ‘endurance’ are not weakened by the device mentioned above, notwithstanding the colours used, as that device is not particularly striking in the absence of a sufficiently clear meaning or evocation which would lead the relevant consumers to remember it alone (see, by analogy, Limoncello della Costiera Amalfitana shaker, paragraph 59 above, paragraph 42, and the judgment of 22 May 2012 in Case T‑273/10 Olive Line International v OHIM – Umbria Olii International (O LIVE), not published in the ECR, paragraph 59 and the case-law cited).
72      In that respect, it should also be recalled that, according to settled case-law, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see, to that effect, Case T‑312/03 Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II‑2897, paragraph 37; judgment of 15 December 2009 in Case T‑412/08 Trubion Pharmaceuticals v OHIM – Merck (TRUBION), not published in the ECR, paragraph 45 and the case-law cited, and judgment of 2 February 2011 in Case T‑437/09 Oyster Cosmetics v OHIM – Kadabell (Oyster cosmetics), not published in the ECR, paragraph 36). That general reasoning may be applied in the present case, since, even if – given its size – it is not negligible, the figurative element of the earlier mark is liable to be perceived by consumers as, in essence, a decorative element and not as an element indicating the commercial origin of those products.
73      In those circumstances, the Board of Appeal rightly concluded that the mark applied for and the earlier mark were similar visually and nearly identical aurally, because the word ‘endurace’, constituting the former, is very similar to the word element of the latter, ‘endurance’ (see the contested decision, paragraph 23).
74      In the first place, visually, there is a great similarity between the words ‘endurance’ and ‘endurace’, the only difference being the insertion of the letter ‘n’ between eight letters which are otherwise identical. Therefore, considering also the relative length of those words, consumers who normally perceive a mark as a whole and do not proceed to analyse its various details (see, to that effect, OHIM v Shaker, paragraph 58 above, paragraph 35) might not notice any difference between them. That seems all the more probable since, first, the present analysis concerns, in particular, the perception of the marks at issue by the part of the relevant public which understand neither the meaning of the word ‘endurance’ nor, a fortiori, that of the neologism which constitutes the mark applied for and which therefore is liable to have only a vague memory of those words.
75      Secondly, it is not excluded that such a consumer might pay particular attention to the identical beginning of the words in question, comprising the common root ‘endura’, since the lack of understanding of those words make it difficult to read them in their entirety. That element allows the application, in the present case, of the general reasoning that, in certain circumstances, consumers are likely to take more note of a mark’s beginning than of the following parts (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65).
76      In the second place, the phonetic similarity of the marks is, as the Board of Appeal indicated, even stronger than the visual similarity. As recalled in paragraph 72 above, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. Contrary to what is claimed by the applicant, the difference in sound due to the absence of the letter ‘n’ in the mark applied for is marginal in comparison with the identical sound of the eight other common letters, and would not, therefore, neutralise it in most conceivable pronunciations for a non-English- or non‑French‑speaking public (see, by analogy, TRUBION, paragraph 72 above, paragraphs 50 to 53).
77      Moreover, the importance of the phonetic aspect is reinforced, in the present case, by the comparison of the marks at issue because of the objective conditions for marketing some of the goods at issue, such as the ‘tyres’ or ‘tubes and flaps for automobiles’ covered by the trade mark application. Those goods may be offered to consumers by professionals, inter alia, in garages, or in other points of sale, maintenance, or repair of cars. In that respect, it must be pointed out that, according to the case-law, the consideration of such ‘objective’ circumstances in which the goods covered by the marks are marketed is fully justified, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks at issue (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraphs 104 and 105).
78      Accordingly, and in the absence of any possibility of comparing the marks at issue conceptually, since the non-English- or non‑French‑speaking public would not derive any meaning from either of the marks at issue, the visual similarity and virtual phonetic identity lead to the conclusion that there is a likelihood of confusion between those marks, as the Board of Appeal rightly concluded, as regards the goods and services found to be identical or similar (see paragraphs 33 to 46 above). Because of the strong similarities in question, such a likelihood of confusion cannot, moreover, be excluded even for a consumer who is highly attentive when purchasing the goods or choosing the services at issue. Such a consumer would be liable to confuse those marks, in particular where they are displayed on goods in combination with detailed technical information which particularly attracts the purchasers’ attention.
79      The above conclusions are not invalidated by the applicant’s other arguments, according to which, in essence, given the sufficiently close link between the word ‘endurance’ and the goods at issue, the earlier mark could have fallen within the scope of the prohibition laid down by Articles 7(1)(c) and 7(2) of Regulation No 207/2009, if that word had not been associated with a particularly prominent figurative element, consisting of three blue and white ellipses. The applicant submits, in that connection, that it is settled case-law that, where a mark is devoid of any distinctive character for being a common word which is primarily merely descriptive of the goods at question in only one Member State of the European Union, that mark must be refused registration at OHIM even if it may not be understood in other languages of the European Union.
80      In that respect, it suffices to find that the earlier mark was validly registered as a Community trade mark and that its validity cannot be called into question in the context of opposition proceedings before OHIM or, on appeal, before the General Court. Accordingly, in the context of the assessment of the likelihood of confusion, the Board of Appeal was right to acknowledge a certain degree of distinctiveness of the earlier mark (see, by analogy, as regards earlier national trade marks, Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR I‑0000) and, in particular, to dismiss the argument that the word ‘endurance’ could be considered as devoid of distinctive character for the non-English- or non‑French-speaking part of the relevant public (see the contested decision, paragraphs 24 to 28).
81      For the same reason, namely the earlier mark’s valid registration as a Community trade mark, the Court finds irrelevant the OHIM decisions to which the applicant refers, which rejected applications for registration as Community trade marks of word marks containing the word ‘endurance’ for certain categories of goods – which are, moreover, different from the goods at issue in the present case.
82      It follows from all of the foregoing that the present action must be rejected in its entirety, without it being necessary to rule on the substance of the applicant’s claims concerning the question of whether a likelihood of confusion also exists for consumers who understand the meaning of the word ‘endurance’, namely English or French speakers.
83      Likewise, given the fact that the applicant’s head of claim clearly seeks the ‘annulment’ of the contested decision and that that head of claim has been rejected, it is not necessary to rule on the potential consequences to be drawn from the fact that the application is titled ‘application in reformation’, without the applicant indicating what such a reformation should consist in.
Costs
84      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.
85      Since the applicant 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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Apollo Tyres AG to pay the costs.
Forwood
Dehousse
Schwarcz
Delivered in open court in Luxembourg on 23 April 2013.
[Signatures]
* Language of the case: English.