JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

11 December 2014 ( *1 )

‛Community trade mark — Opposition proceedings — Application for the Community figurative mark F1-LIVE — Earlier Community figurative mark F1 and national and international word marks F1 Formula 1 — Relative grounds for refusal — Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009)’

In Case T‑10/09 RENV,

Formula One Licensing BV, established in Rotterdam (Netherlands), represented by B. Klingberg and K. Sandberg, lawyers,

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, intervener before the General Court, being

ESPN Sports Media Ltd, established in London (United Kingdom), represented by T. de Haan, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 16 October 2008 (Case R 7/2008-1), concerning opposition proceedings between Racing-Live and Formula One Licensing BV,

THE GENERAL COURT (Eighth Chamber),

composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,

Registrar: C. Heeren, Administrator,

having regard to the written procedure and further to the hearing on 3 July 2014,

gives the following

Judgment

Background to the dispute

1 On 13 April 2004, Racing-Live SAS 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 mark in respect of which registration was sought is the figurative sign reproduced below:

3 The goods and services in respect of which registration was sought are in Classes 16, 38 and 41 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, for each of those classes, to the following description: — Class 16: ‘Magazines, pamphlets, books; all the aforesaid goods relating to the field of formula 1’; — Class 38: ‘Communication and dissemination of books, magazines and newspapers via computer terminals; all the aforesaid services relating to the field of formula 1’; — Class 41: ‘Electronic publication of books, journals and periodicals; entertainment information; arranging competitions on the Internet; reservation of tickets for shows; on-line gaming; all the aforesaid services relating to the field of formula 1’.

4 That application for registration was published in Community Trade Marks Bulletin No 5/2005 of 31 January 2005.

5 On 2 May 2005, the applicant — Formula One Licensing BV — filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for, alleging a likelihood of confusion for the purposes of Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).

6 The opposition was based, inter alia, on the following earlier registrations: — three registrations of the word sign F1: (i) international registration No 732 134 of 20 December 1999, with effect in Denmark, Germany, Spain, France, Italy and Hungary, for, inter alia, a range of goods and services in classes 16, 38 and 41; (ii) German registration No 30 007 412 of 10 May 2000 for the ‘Conducting of sporting events’ in Class 41; and (iii) UK registration No 2 277 746 D of 13 August 2001 for ‘Paper, card, cardboard, printing, painting and drawing sets; catalogues’ in Class 16 and ‘Telecommunication services; electronic transmission of data, images and sound via computer terminal and networks’ in Class 38; — registration of Community figurative mark No 631 531 of 19 May 2003 reproduced below, covering the range of goods and services in Classes 16, 38 and 41 that are among those covered by the mark applied for:

7 The opposition was based on all the goods and services covered by the earlier marks and was directed against all the goods and services covered by the mark applied for.

8 Formula One Licensing submitted that all the marks owned by it had acquired a high level of distinctiveness through their use, over many years, in relation to various goods and services.

9 By decision of 17 October 2007, the Opposition Division of OHIM, relying solely on earlier international registration No 732 134, refused the application for a Community trade mark. It found that the goods and services covered by the marks at issue were similar or identical and that the signs at issue were similar to a medium degree and that, in consequence, there was a likelihood of confusion between those marks for the purposes of Article 8(1)(b) of Regulation No 40/94.

10 On 14 December 2007, Global Sports Media Ltd, which replaced Racing-Live SAS as proprietor of the mark in respect of which registration is sought, filed a notice of appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

11 By decision of 16 October 2008 (‘the contested decision’), the First Board of Appeal annulled the Opposition Division’s decision. It ruled that, even though the goods and services in question were identical or similar, there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 between, on the one hand, the trade mark applied for and, on the other, those owned by Formula One Licensing, since there were obvious differences between them. The Board of Appeal also held that the relevant public, which consists of ordinary consumers and professional users, perceived the combination of the letter ‘f’ and the numeral ‘1’ as the generic designation of a category of racing car and, by extension, of races involving such cars. The Board of Appeal also concluded that the reputation of the earlier trade marks concerned only the ‘f1’ element of the mark registered under No 631 531.

12 As regards Article 8(5) of Regulation No 40/94, the Board of Appeal found that, although the earlier figurative mark may convey an image of state-of-the-art technology, exclusivity and luxury, the only vehicle for doing so is the ‘f1’ element, in the F1 logotype version. However, few consumers attribute any distinctive character to the abbreviation F1, unless it is represented in the form of that logotype. In that connection, the Board of Appeal stated that there was nothing in the mark applied for to remind the public of that logotype and that, consequently, the trade mark applied for would not free-ride on the earlier marks or tarnish their reputation; nor would it enable its owner to benefit unjustifiably from the positive image of the earlier marks.

Proceedings before the General Court and the Court of Justice

13 By application lodged at the Registry of the General Court on 14 January 2009, Formula One Licensing brought an action for annulment of the contested decision for breach of Articles 8(1)(b) and 8(5) of Regulation No 40/94.

14 At the hearing on 10 June 2010, the parties presented oral argument and replied to the questions put to them by the General Court.

15 By judgment of 17 February 2011 in Formula One Licensing v OHIM — Global Sports Media (F1 — LIVE) (T‑10/09, ECR, EU:T:2011:45; ‘the judgment of the General Court’), the General Court dismissed the action and ordered Formula One Licensing to pay the costs.

16 In order to make that ruling, the General Court rejected both pleas in law raised by Formula One Licensing.

17 By application lodged at the Registry of the Court of Justice on 29 April 2011, Formula One Licensing brought an appeal, claiming that the Court of Justice should set aside the judgment of the General Court.

18 By judgment of 24 May 2012 in Formula One Licensing v OHIM, (C‑196/11 P, ECR, EU:C:2012:314; ‘the judgment on appeal’), the Court of Justice set aside the judgment of the General Court.

19 The Court of Justice found that the General Court had called into question the validity of the earlier trade marks in proceedings for registration of a Community trade mark, thereby acting in breach of Article 8(1)(b) of Regulation No 40/94. In those circumstances, Formula One Licensing was justified in claiming that the judgment of the General Court was vitiated by an error in law (the judgment on appeal, paragraph 18 above, EU:C:2012:314, paragraphs 51 to 53).

20 The Court of Justice referred the case back to the General Court for examination of the question ‘whether, without a finding of a lack of distinctive character of the “f1” element in the earlier trade marks, it may be found that Article 8(1)(b) of Regulation No 40/94 does not apply’.

21 After delivery of the judgment on appeal and in accordance with Article 118(1) of the Rules of Procedure of the General Court, the case was assigned to the Sixth Chamber. Subsequently, following a change in the composition of the Chambers of the Court, the Judge-Rapporteur was assigned to the Eighth Chamber, to which the present case was accordingly allocated.

22 By letter of 11 June 2014, ESPN Sports Media applied to be substituted for Global Sports Media as intervener in the proceedings before the General Court on the ground that the rights to the mark applied for had been transferred to it.

23 By letter of 17 June 2014, the parties to the proceedings were invited to submit their observations on that application. By letter of 20 June 2014, OHIM did not raise any objections to ESPN Sports Media being substituted for Global Sports Media in the present proceedings.

24 By order of the General Court (Eighth Chamber) of 30 June 2014, the substitution was allowed.

Forms of order sought by the parties following the referral of the case

25 The parties were asked to submit their observations, in accordance with Article 119(1) of the Rules of Procedure. Formula One Licensing and OHIM lodged their written observations within the time allowed, on 9 August and 28 September 2012 respectively. ESPN Sports Media did not submit observations within the prescribed period.

26 In its observations, Formula One Licensing claims that the General Court should: — annul the contested decision; — order OHIM and ESPN Sports Media to pay the costs incurred in the proceedings before OHIM, the General Court and the Court of Justice.

27 In its observations, OHIM contends that the General Court should: — dismiss the action in its entirety; — order Formula One Licensing to pay the costs.

Law

28 In support of its action, Formula One Licensing raises two pleas in law: (i) infringement of Article 8(1)(b) of Regulation No 40/94 and (ii) infringement of Article 8(5) of that regulation.

The first plea in law: infringement of Article 8(1)(b) of Regulation No 40/94

29 First, it should be held that — as the Board of Appeal found — the relevant public consists of average consumers in the European Union.

30 Similarly, the Board of Appeal was correct in concluding, in paragraphs 25 to 27 of the contested decision, that the goods and services covered by the marks at issue are either identical or very similar.

31 In addition, it is understood that the combination of the letter ‘f’ and the numeral ‘1’ is the abbreviation of ‘Formula 1’, a term that generally designates a category of racing cars and, by extension, races involving such cars.

32 Formula One Licensing submits, in essence, that there is a likelihood of confusion between the mark applied for F1-LIVE, on the one hand, and the word mark F1 (protected as an international mark in Denmark, Germany, Spain, France, Italy and Hungary), on the other. There is also a likelihood of confusion between the mark applied for and the Community figurative mark.

33 As is clear from the judgment on appeal (paragraph 18 above, EU:C:2012:314, paragraph 47), if Article 8(1)(b) of Regulation No 40/94 is not to be infringed, it is necessary to acknowledge that an earlier national mark on which an opposition against the registration of a Community trade mark is based has a certain degree of distinctiveness.

34 Accordingly, it cannot be found that the F1 sign is generic, descriptive or devoid of any distinctive character without calling into question, in proceedings concerning the registration of a Community trade mark, the validity of the earlier trade mark, which would give rise to an infringement of Article 8(1)(b) of Regulation No 40/94 (the judgment on appeal, paragraph 18 above, EU:C:2012:314, paragraphs 51 and 52).

35 It is true that, where an opposition based on the existence of an earlier national trade mark is filed against the registration of a Community trade mark, OHIM — and, consequently, the Court — must verify the way in which the relevant public perceives the sign, identical to that national trade mark, in the mark applied for and evaluate, if necessary, the degree of distinctiveness of that sign (the judgment on appeal, paragraph 18 above, EU:C:2012:314, paragraph 42).

36 However, that verification may not culminate in a finding that a sign identical to a registered and protected national trade mark lacks distinctive character, since such a finding would not be compatible with the coexistence of Community trade marks and national trade marks or with Article 8(1)(b) of Regulation No 40/94, read in conjunction with Article 8(2)(a)(ii) thereof (the judgment on appeal, paragraph 18 above, EU:C:2012:314, paragraph 44).

37 As is clear from the judgment on appeal, paragraph 18 above (EU:C:2012:314, paragraph 45), such a finding would be detrimental to national trade marks identical to the sign considered to be devoid of distinctive character, as the registration of such a sign as a Community trade mark would bring about a situation likely to eliminate the national protection of those marks. Accordingly, such a finding would not be in keeping with the system established by Regulation No 40/94, which is based on the coexistence of Community trade marks and national trade marks, as stated in recital 5 in the preamble to that regulation, given that the validity of an international or national trade mark cannot be called into question for lack of distinctive character except in cancellation proceedings brought in the Member State concerned under Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).

38 That being so, it should be noted that it can be seen from the written evidence produced by the parties before OHIM that, since — as was noted in paragraph 31 above — the ‘f1’ word element is the usual abbreviation of the expression ‘Formula 1’, that element has a weak distinctive character. It should be recalled in that connection that the goods and services covered by the application for registration relate, more specifically, to ‘the field of formula 1’.

39 In addition, Formula One Licensing’s assertion that the ‘f1’ word element is the dominant element in the mark applied for cannot be accepted. The mark applied for has a relatively complex character, in that it is composed of two word elements ‘f1’ and ‘live’, separated by a hyphen and incorporated into an original graphic configuration to form a specific logo. Accordingly, those elements will be perceived visually as a whole.

40 As regards the reputation claimed, it is clear from the documents before the Court that the Board of Appeal was right to find that it related solely to the logotype version of the ‘f1’ word element.

41 It is therefore necessary to compare the signs at issue, that is to say, to compare the earlier word mark F1 with the mark applied for and, if necessary, the earlier figurative mark F1 Formula 1 with the mark applied for.

42 As a preliminary point, it should be noted that the Board of Appeal was correct in finding, in paragraph 59 et seq. of the contested decision, that there was a certain degree of similarity between the earlier word mark F1 and the mark applied for because of the ‘f1’ element common to both. None the less, they differ visually in terms of their length, the presence in the mark applied for of the word ‘live’ and the fact that the mark applied for contains a figurative element.

43 From a phonetic point of view, it should be noted that the mark applied for consists of two words and that the earlier mark contains only one word. The addition of a striking extra word in the mark applied for diminishes, to some extent, the presence of the common ‘f1’ element. Nevertheless, given that the signs at issue both contain the ‘f1’ element, which is the first to be pronounced in the mark applied for, there is some degree of similarity phonetically.

44 From a conceptual point of view, the earlier mark designates a specific category of racing car — Formula 1 cars — and can also be perceived as implicitly referring to Formula 1 races. The mark applied for carries the same message, but the addition of the word ‘live’, which suggests the reporting or broadcasting of an event in ‘real time’, makes it conceptually richer than the earlier mark.

45 It follows from all the foregoing that, although there are elements that distinguish the marks at issue, one from the other, visually, phonetically and conceptually, there is also a certain degree of overall similarity between those marks as a result of the inclusion of the word element of the earlier mark in the figurative mark for which registration is sought.

46 It is now necessary, therefore, to undertake a global assessment of whether there is a likelihood of confusion between the marks at issue.

47 It should be borne in mind that the 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 covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (the judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast‑Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

48 In that regard, it should be noted that, in relation to the goods and services covered, the element ‘f1’ in ordinary typeset has only a weak distinctive character and that any reputation enjoyed by the Community figurative mark used in the European Union was essentially linked to the logotype version.

49 However, it should be pointed out that, even if the distinctive character of the earlier mark is weak, that does not preclude a finding that, in the circumstances, there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, the judgment in Canon, paragraph 47 above, EU:C:1998:442, paragraph 24), 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 the judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

50 It should be observed in that regard that the goods and services covered by the mark applied for and those covered by the earlier marks are either identical or very similar.

51 In addition, as has been pointed out in paragraphs 42 and 45 above, the ‘f1’ word element in the earlier mark was reproduced in the mark for which registration is sought. Although the ‘f1’ word element cannot be regarded as the dominant element in the mark applied for, that does not mean that it must therefore be regarded as negligible. More specifically, it should be noted that the other two components of the mark applied for — namely, the ‘live’ word element and the figurative element consisting in a circle that stands out against a dark grey background — could be perceived as respectively suggesting the broadcasting of sporting events in real time and a racing circuit. Accordingly, since those elements may evoke the general idea of events connected with motor sports, their combination with the word ‘f1’ helps to anchor in the mind of the relevant public the image of Formula 1 motor racing conveyed by that word element.

52 It follows from the foregoing — in particular, from the fact that the relevant public keeps in mind only an imperfect picture of marks, which means that the common element (the ‘f1’ element) creates a certain similarity between the marks concerned, and from the interdependence of the various factors to be taken into consideration, the goods concerned being identical or very similar — that the likelihood of confusion in the minds of consumers cannot be ruled out. In other words, the two marks are likely to be linked in the minds of consumers, who, because the F1 mark is reproduced identically, will interpret the mark applied for as a variant of that earlier mark and, accordingly, as having the same commercial origin.

53 It must therefore be held that the Board of Appeal erred in concluding that there was no likelihood of confusion between the mark applied for and the earlier word mark.

54 It follows from all the foregoing that the contested decision must be annulled, without there being any need to compare the earlier figurative mark with the mark applied for, or to examine the second plea.

Costs

55 In the judgment on appeal, the Court of Justice reserved the costs. It is for the General Court, therefore, to make a ruling in the present judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.

56 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

57 Since OHIM and ESPN Sports Media have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by Formula One Licensing.

58 Moreover, Formula One Licensing claims that OHIM and ESPN Sports Media should be ordered to pay the costs that it incurred in the proceedings before OHIM. In that regard, it should be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division of OHIM (the judgment of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, EU:T:2010:256, paragraph 51). Accordingly, Formula One Licensing’s claim that OHIM and ESPN Sports Media, having been unsuccessful, should be ordered to pay the costs, including those incurred by Formula One Licensing in the proceedings before OHIM, can be allowed only as regards the costs necessarily incurred by Formula One Licensing for the purposes of the proceedings before the Board of Appeal of OHIM.

On those grounds, THE GENERAL COURT (Eighth Chamber) hereby:

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 16 October 2008 (Case R 7/2008-1).

2. Orders OHIM and ESPN Sports Media Ltd to pay the costs incurred by Formula One Licensing BV in the proceedings before the General Court and the Court of Justice, and in the proceedings before the Board of Appeal of OHIM.

Gratsias Kancheva Wetter Delivered in open court in Luxembourg on 11 December 2014. [Signatures]

( *1 ) Language of the case: English.