ORDER OF THE COURT (Fifth Chamber)

22 January 2010 ( )

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Earlier mark BLUE – Word sign ‘Ecoblue’– Likelihood of confusion – Similarity of the signs)

In Case C‑23/09 P,

APPEAL pursuant to Article 56 of the Statute of the Court of Justice, brought on 19 January 2009,

ecoblue AG, established in Munich-Bogenhausen (Germany), represented by C. Osterrieth, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant at first instance,

Banco Bilbao Vizcaya Argentaria SA, established in Madrid (Spain),

party to the proceedings before the Board of Appeal,

THE COURT (Fifth Chamber),

composed of E. Levits, President of the Chamber, J.-J. Kasel (Rapporteur) and M. Safjan, Judges,

Advocate General: Y. Bot,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, ecoblue AG (‘ecoblue’) claims that the Court should set aside the judgment of 12 November 2008 in Case T-281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue) (‘the judgment under appeal’), by which the Court of First Instance of the European Communities (now ‘the General Court’) dismissed ecoblue’s action brought against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 25 April 2007 (Case R 0844/2006-1; ‘the contested decision’) relating to opposition proceedings between Banco Bilbao Vizcaya Argentaria SA (‘Banco Bilbao’) and ecoblue.

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, in view of the date on which the application for registration was filed, these proceedings remain governed by Regulation No 40/94.

3 Article 8(1)(b) of Regulation No 40/94 was worded as follows:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.’

4 Article 8(2) of that regulation provided:

‘for the purposes of paragraph 1, “Earlier trade marks” means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) Community trade marks;

…’

The factual background to the dispute

5 On 27 September 2002, ConCapital GmbH filed an application for registration as a Community trade mark of the word sign ‘Ecoblue’. That application was subsequently transferred to ecoblue.

6 The services in respect of which registration of the trade mark was applied for, after the restriction made during the proceedings before OHIM, fall within Classes 35, 36 and 38 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

– Class 35: ‘Business consultancy, organisation consultancy, professional business consultancy, arranging and concluding commercial transactions for others’;

– Class 36: ‘Financial affairs, monetary affairs, capital investment, credit consultancy, credit bureaux; real estate affairs, real estate and mortgage brokerage, real estate management, consultancy with regard to the purchasing and financing of real estate’;

– Class 38: ‘Telecommunications services, except the transmission of radio and television programmes’.

7 Following the publication of the Community trade mark application in the Community Trade Marks Bulletin, Banco Bilbao filed a notice of opposition against registration of the word sign ‘Ecoblue’ as a Community trade mark in respect of all the services referred to in the application for registration, on the ground that that registration infringed Article 8(1)(b) of Regulation No 40/94.

8 The opposition was based on eight earlier Community word marks containing the word ‘blue’, including in particular the mark BLUE, the only one taken into account by the Board of Appeal, in respect of which registration had been applied for on 15 October 1999 and granted by decision of 10 October 2003 for goods and services in Classes 9, 36 and 38 of the Nice Agreement (‘the earlier mark’).

9 By decision of 26 April 2006, OHIM’s Opposition Division upheld the opposition.

10 On 23 June 2006, ecoblue filed an appeal with OHIM against that decision by the Opposition Division.

11 By the contested decision, the First Board of Appeal of OHIM dismissed that appeal. In substance, it found that the marks Ecoblue and BLUE were visually and phonetically similar to a certain extent. On a conceptual level, they both referred to the colour blue. In so far as the element ‘eco’ could be considered to be descriptive of an essential quality of the services referred to in the application for registration of the mark Ecoblue and given that it had a rather low degree of distinctiveness, the likelihood of confusion was established. According to the Board of Appeal, the relevant public could perceive the mark Ecoblue as a variation of the mark BLUE and, consequently, the services at issue as having the same commercial origin.

The action before the General Court and the judgment under appeal

12 By application lodged at the Registry of the General Court on 23 July 2007, ecoblue brought an action against the contested decision. In support of that action, ecoblue raised a single plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94.

13 According to ecoblue, there is no likelihood of confusion within the meaning of that provision, since the mark Ecoblue and the marks held by Banco Bilbao are not similar.

14 The General Court dismissed the action by the judgment under appeal.

15 The General Court held, in paragraph 24 of the judgment under appeal, that the relevant public is made up of professionals and of the general public of the European Union and, in paragraph 25 of that judgment, that the similarity or identical nature of the services in question is not disputed.

16 In respect of the comparison of the marks at issue, the General Court pointed out, in paragraph 26 of the judgment under appeal, that two marks are similar when they are at least partially identical as regards one or more relevant aspects. In paragraph 27 of that judgment it stated that the global assessment of the likelihood of confusion must be based, in so far as the visual, phonetic or conceptual similarity of the marks at issue is concerned, on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I-6191, paragraph 23).

17 After having observed, in paragraph 30 of the judgment under appeal, that the Board of Appeal compared the marks at issue on the basis of the word elements ‘eco’ and ‘blue’, those two elements having a concrete meaning for the average consumer, in paragraphs 31 to 36 of that judgment the General Court examined whether there were visual, phonetic or conceptual similarities between the signs concerned.

18 On that basis, the General Court found, in paragraph 31 of the judgment under appeal, that although the marks at issue are visually and phonetically different on account of the presence of the word element ‘eco’ in the trade mark applied for, they are otherwise identical. In paragraph 32 of that judgment, it pointed out that the word element ‘eco’ is descriptive of at least a part of the services referred to in the application for registration and that, therefore, it is not particularly distinctive and cannot be regarded as dominating the overall impression made by the mark Ecoblue.

19 In paragraph 33 of the judgment under appeal, the General Court added that, even if the component ‘blue’ cannot be considered as dominating the overall impression created by the mark Ecoblue, it must be taken into account in the assessment of the similarity of the marks at issue and of the likelihood of confusion, to the extent that it constitutes in itself the earlier mark and still has an independent distinctive role in the mark Ecoblue (Case C-120/04 Medion [2005] ECR I-8551, paragraph 30).

20 The General Court held, in paragraph 34 of the judgment under appeal, that the presence of the word element ‘eco’ in the Ecoblue mark is not a dissimilarity which can counteract, on a visual and phonetic level, the similarity found.

21 In paragraph 35 of the judgment under appeal, the General Court held that the Board of Appeal had not erred in finding that the marks at issue were also conceptually similar to the extent that they both refer to the colour blue.

22 In paragraph 37 of the judgment under appeal, the General Court concluded that, even if the distinctive character of the earlier mark is limited, the Board of Appeal did not err in finding that a likelihood of confusion had been established.

Forms of order sought by the parties before the Court of Justice

23 By its appeal, ecoblue claims that the Court should set aside the judgment under appeal and annul the contested decision, dismiss the opposition brought by Banco Bilbao and order OHIM to pay the costs.

24 OHIM contends that the Court should dismiss the appeal in its entirety and order ecoblue to pay the costs.

The appeal

25 Pursuant to Article 119 of its Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss it in whole or in part, without opening the oral procedure.

26 In support of its appeal, ecoblue raises a single ground of appeal alleging that the General Court erred in law in holding that there was, between the marks at issue, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. That ground of appeal is broken down into four branches.

Arguments of the parties

27 By the first branch of its single ground of appeal, ecoblue criticises the General Court for failing to take into account, in the assessment of the likelihood of confusion, the fact that the earlier trade mark, which is purely descriptive with regard to the services at issue, has only a low degree of distinctiveness. In doing so the General Court went against the case-law according to which the more distinctive the earlier mark, the greater will be the likelihood of confusion (SABEL, paragraph 24).

28 By the second branch of the ground of appeal, ecoblue claims that the General Court did not correctly apply the rule that consumers normally attach more importance to the first part of the word or words making up a word mark.

29 By the third branch of the ground of appeal, ecoblue submits that the General Court, in holding that two trade marks are similar when they are at least partially identical as regards one or more relevant aspects, failed to have regard to the fact that that rule applies only if the common element dominates the overall impression or if both elements have no conceptual meaning for the public concerned. In this connection, ecoblue relies on paragraph 39 of the judgment in Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953.

30 By the fourth branch of its single ground of appeal, ecoblue criticises the General Court for having misapplied the rule that the visual and phonetic similarities of the marks at issue may be counteracted by conceptual differences. In its opinion, the General Court should have accepted that the difference in the conceptual meaning of the Ecoblue mark could counteract the alleged visual and phonetic similarities of the trade marks.

31 OHIM primarily contends that the single ground relied on by ecoblue in support of its appeal is inadmissible in its various branches on the ground that it concerns issues exclusively of fact, which it is not for the Court to assess in an appeal.

32 In the alternative, it considers the arguments submitted by ecoblue to be completely unfounded and the judgment under appeal to have correctly applied Article 8(1)(b) of Regulation No 40/94.

33 As far as the first branch of the single ground of appeal relied on by ecoblue is concerned, OHIM submits that it must be rejected as inoperative, inadmissible and manifestly unfounded. Since the admissibility of the argument and the evidence produced to support it were disputed by OHIM, the General Court analysed it only for the sake of completeness. In addition, ecoblue was unable to produce legal arguments specifically substantiating the claim that the word ‘blue’ is only very slightly distinctive. In any event, even if ecoblue were justified in referring to the arguments which it submitted at first instance, the General Court was fully entitled to reject them.

34 As regards the second branch of the ground of appeal, OHIM contends that the General Court took into account the principle that consumers normally attach more importance to the first part of the word or words making up a word mark, but explained that it was not applicable in this case.

35 As regards the third branch of the ground of appeal and concerning the first condition specified by ecoblue, namely that trade marks are similar only where the common element dominates the overall impression, OHIM points out that there may be a likelihood of confusion even where the overall impression produced by a complex mark is not dominated by the common element provided that that element still has an independent distinctive role. Concerning the second condition set out by ecoblue, namely that two marks are similar only where none of their components has a conceptual meaning for the relevant public, OHIM considers that the case-law relied on by ecoblue is merely a specific example of the general principle under which two marks are generally to be regarded as similar if they coincide in at least one of their relevant aspects.

36 As far as the fourth branch of the single ground of appeal is concerned, OHIM submits that, besides the fact that the assessment of the facts found by the General Court does not fall within the jurisdiction of the Court of Justice on appeal, the General Court cannot be criticised for having erred in assessing of the semantic similarity of the signs and its impact on the overall impression created by the marks at issue.

Findings of the Court

37 As regards the first branch of the single ground raised by ecoblue in support of its appeal, the General Court held in paragraph 37 of the judgment under appeal that, even if the distinctive character of the mark BLUE is limited, the Board of Appeal had not erred in finding that a likelihood of confusion had been established.

38 Consequently, the appellant is clearly not justified in criticising the General Court for failing to have regard, in the assessment of the likelihood of confusion, to the argument based on the weak distinctive character of the earlier mark.

39 Moreover, while it is admittedly settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion (see inter alia SABEL, paragraph 24), that case-law does not in any way imply that there would necessarily be no likelihood of confusion where the distinctive character of the earlier mark is weak (see order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, paragraph 45).

40 It follows that the first branch of the ground of appeal must be rejected as clearly unfounded.

41 As regards the second branch of the same ground, it is settled case-law that it follows from Article 256 TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union and Article 112(1)(c) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (Case C-286/04 P Eurocermex v OHIM [2005] ECR I-5797, paragraph 42, and Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 44).

42 However, the argument relied on by ecoblue does not meet those requirements. It criticises the General Court for failing to have correctly applied the rule according to which consumers normally attach more importance to the first part of words, but does not submit legal arguments to demonstrate how the General Court erred in law. The appellant in fact merely repeats word for word an argument which it had already submitted to the first instance court, without adopting any position on the grounds by which that court rejected it.

43 In any event, the reasoning of the General Court in paragraph 32 of the judgment under appeal does not contain any incorrect application of the rule according to which consumers normally attach more importance to the first part of words.

44 Consequently, the second branch of the single ground raised in support of the appeal must be rejected as clearly inadmissible.

45 As regards the third branch of the ground of appeal, consisting in the claim, first, that the finding of a similarity between two marks may be upheld only where the element common to the marks is dominant in the overall impression produced by the mark containing other elements, the General Court was correct to hold in paragraph 33 of the judgment under appeal that it follows from the case-law cited in paragraph 19 of this order that, even if the common element cannot be considered as dominating the overall impression, it must be taken into account in the assessment of the similarity of the marks at issue, to the extent that it constitutes in itself the earlier mark and still has an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element still has an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (see Medion, paragraph 31).

46 The second argument raised by ecoblue, based on the judgment in Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), according to which the General Court was wrong to apply the rule that two marks are similar where one of the two elements of the mark for which registration is sought is identical to the word constituting the earlier mark, since that rule applies only if the two elements have no conceptual meaning for the relevant public, is founded on a misinterpretation both of that judgment and of the judgment under appeal.

47 First, although, in the specific case where one of the only two words constituting a word mark is identical to the sole word constituting an earlier word mark and where those words, taken together or separately, have no meaning for the relevant public, those marks are normally considered to be similar, the fact remains that, in general, as is also apparent from Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), the assessment of the similarity between two marks must be based on the overall impression created by their visual, phonetic and conceptual aspects, bearing in mind their distinctive and dominant components (SABEL, paragraph 23, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25).

48 Secondly, in contrast to what ecoblue claims, in paragraph 31 of the judgment under appeal the General Court did not merely state that the word ‘blue’, which alone constitutes the earlier mark, is one of the only two word elements making up the mark applied for, and thereby infer that the marks at issue were similar.

49 On the contrary, it is clear from paragraphs 31 to 36 of the judgment under appeal that the General Court, in order to establish whether the two marks were similar, devoted a significant part of its reasoning to assessing their distinctive and dominant elements, taking into account all the relevant factors in the case.

50 Consequently, the third branch of the single ground raised in support of the appeal must be rejected as clearly unfounded.

51 As regards the fourth branch of the same ground, relating to the alleged conceptual differences between the marks at issue, it must be recalled that, in accordance with the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, to that effect, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 26, and Il Ponte Finanziaria v OHIM, paragraph 38).

52 The analysis of the General Court in paragraphs 31 to 36 of the judgment under appeal, according to which, in essence, the word signs at issue are visually and phonetically similar and the alleged dissimilarity on the conceptual level is insufficient to counteract that similarity, is such an appraisal.

53 Since, by the fourth branch of the ground of appeal, the appellant seeks in actual fact to call into question the entirely factual appraisals made by the General Court in paragraphs 31 to 36, without claiming that that court in any way distorted the facts and evidence submitted to it, that branch must be rejected as clearly inadmissible.

54 Since none of the four branches of the single ground raised by ecoblue in support of its appeal can be upheld, the appeal must be dismissed in its entirety as being in part clearly inadmissible and in part clearly unfounded.

55 As regards ecoblue’s claim that the contested decision should be annulled, that must also be dismissed. It is only where an appeal culminates in the judgment under appeal being set aside that, in accordance with the first paragraph of Article 61 of the Statute of the Court of Justice, the Court might itself give judgment in the matter and examine for that purpose possible defects in the contested decision.

56 Furthermore, it must be pointed out that, in any event, the Court does not have jurisdiction, in the context of the review of legality carried out in an appeal, to issue directions to the institutions and administrative authorities, so that ecoblue’s claim that the opposition brought by Banco Bilbao should be dismissed must be declared inadmissible.

Costs

57 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since ecoblue has been unsuccessful it must, in accordance with the form of order sought by OHIM, be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby orders:

1. The appeal is dismissed.

2. ecoblue AG shall pay the costs.

[Signatures]