Source: EURLEX
Language: en
Format: md

ORDER OF THE COURT (Eighth Chamber)

23 November 2010 ([\*](#Footnote*))

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Word mark ENERCON – Opposition of the proprietor of the word mark TRANSFORMERS ENERGON – Refusal to register – Likelihood of confusion)

In Case C-204/10 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 19 April 2010,

**Enercon GmbH,** established in Aurich (Germany), represented by J. Mellor, Barrister, and R. Böhm, 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,

**Hasbro Inc.,** established in Pawtucket (United States),

intervener at first instance,

THE COURT (Eighth Chamber),

composed of K. Schiemann, President of the Chamber, C. Toader and E. Jarašiūnas (Rapporteur), Judges,

Advocate General: V. Trstenjak,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

**Order**

1        By its appeal, Enercon GmbH (‘Enercon’) seeks to have set aside the judgment of the General Court of the European Union of
3 February 2010 in Case T‑472/07 *Enercon* v *OHIM – Hasbro (ENERCON)* (‘the judgment under appeal’), in which the General Court dismissed the action brought against the decision of the Fourth
Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 25 October 2007
(Case R 959/2006-4) dismissing the appeal lodged by Enercon against the decision of the Opposition Division of OHIM which
had upheld the opposition filed by Hasbro Inc. against registration of the word mark ENERCON (‘the contested decision’).

**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2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council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. However, in the light of the date of the material facts, the present case remains governed by Regulation
No 40/94.

3        Article 8(1) of Regulation No 40/94 provides:

‘1.      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.’

**The background to the dispute**

4        On 25 August 2003, Enercon filed an application with OHIM for registration of the word mark ENERCON as a Community trade mark
covering a variety of goods in Classes 16, 18, 24, 25, 28 and 32 under the Nice Agreement of 15 June 1957 concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended.

5        On 30 November 2004, Hasbro Inc. (‘Hasbro’) filed a notice of opposition to that application for registration on the basis
of Article 8(1)(b) of Regulation No 40/94 and Article 8(4) and (5) of that regulation. The opposition was based on, first,
the earlier Community word mark TRANSFORMERS ENERGON, registered under number 3152121 in respect of goods in Classes 16, 18,
24, 25, 28, 30 and 32 under the Nice Agreement, and, second, the earlier non-registered trade marks TRANSFORMERS ENERGON and
ENERGON, used in the United Kingdom for toys and games.

6        The opposition covered all of the goods designated by the earlier mark and was brought against all of the goods in respect
of which registration had been sought.

7        By decision of 26 May 2006, the Opposition Division of OHIM upheld Hasbro’s opposition. It found that there was a likelihood
of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, by reason of the identity of the goods and the
similarity of the signs.

8        On 17 July 2006, Enercon lodged an appeal against that decision. That appeal was dismissed by the contested decision. In that
decision, the Fourth Board of Appeal of OHIM upheld the Opposition Division’s assessment that the similarities between the
signs at issue were sufficient to give rise to a likelihood of confusion.

**Procedure before the General Court and the judgment under appeal**

9        By application lodged at the Registry of the General Court on 21 December 2007, Enercon brought an action seeking annulment
of the contested decision. In support of its action, it relied on a single plea in law alleging infringement of Article 8(1)(b)
of Regulation No 40/94, submitting, in essence, that the element ‘transformers’ was the dominant element of the earlier mark
and that, by examining the similarity of the ENERCON mark – registration of which was sought – only with regard to the ‘energon’
element of the earlier mark, the Fourth Board of Appeal of OHIM had failed to take account of the overall impression created
by the earlier sign.

10      In rejecting that plea, and thereby dismissing the action in its entirety, the General Court held, in paragraphs 32 to 35
of the judgment under appeal, that the Fourth Board of Appeal of OHIM had acted correctly in finding that the ‘transformers’
and ‘energon’ elements of the earlier mark were equally distinctive and dominant.

11      As regards visual similarity, the General Court held, in paragraphs 36 and 37 of the judgment under appeal, that the Fourth
Board of Appeal of OHIM did not disregard the overall impression produced by the earlier mark when it found, correctly, that
the trade mark applied for and the ‘energon’ element of the earlier mark were very similar and that the marks at issue, each
considered as a whole, thus presented a certain visual similarity.

12      In relation to the phonetic comparison of the signs at issue, the General Court held, in paragraphs 38 and 39 of the judgment
under appeal, that the Fourth Board of Appeal of OHIM had also been entitled to find that the marks ENERCON and TRANSFORMERS
ENERGON resembled each other and had, as a whole, a certain degree of similarity.

13      As regards conceptual similarity, the General Court, in paragraphs 40 to 43 of the judgment under appeal, rejected Enercon’s
arguments, including the argument alleging that the fact that the first syllable of the words ‘enercon’ and ‘energon’ is identical
is not sufficient to identify conceptual similarity. In that regard, the General Court stated that the Fourth Board of Appeal
of OHIM had found that there was a low degree of conceptual similarity on a different basis, namely that those two words were
likely to be perceived as evoking the notion of energy.

14      The General Court concluded, in paragraphs 44 and 45 of the judgment under appeal, that the Fourth Board of Appeal of OHIM
had been right to hold that the signs at issue, each considered as a whole, bore a certain degree of similarity and that,
consequently, as regards the global assessment of the likelihood of confusion, Enercon had not demonstrated that that Board
of Appeal had erred in finding that, taking into account, first, the similarity of the signs at issue and, second, the fact
that the designated goods were identical, the target public might be led to believe that the goods at issue came from the
same undertaking or undertakings which were economically linked.

**Forms of order sought before the Court of Justice**

15      The appellant requests the Court of Justice to set aside the judgment under appeal and, as appropriate, the contested decision
and the decision of the Opposition Division of OHIM, to remit the case to OHIM and to order Hasbro and OHIM to pay the costs.

16      OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

**The appeal**

17      Under 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 that appeal, without opening the oral procedure.

18      In support of its appeal, Enercon relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

19      Enercon takes the view that the General Court misinterpreted, or wrongly applied, the principles established in the judgment
in Case C‑120/04 *Medion* [2005] ECR I‑8551, in relation to the element of a mark having an independent distinctive role. According to Enercon, the
errors made in that regard by the Opposition Division of OHIM are also present in the contested decision and in the judgment
under appeal based on that decision. No account was taken of the fact that the principle laid down in *Medion* applies only in exceptional circumstances in which the usual rule – that the average consumer perceives the mark as a whole
– does not apply.

20      However, in the present case, according to Enercon, there are no such exceptional circumstances, as the word ‘energon’ does
not have the slightest independent distinctive role within the earlier mark. Furthermore, there is no analogy with the circumstances
considered in *Medion* since, in the present case, in contrast to the circumstances in *Medion*, the mark applied for consisted of a single word element, whereas the earlier mark consisted of two elements.

21      By reason of the incorrect application of the principles established in *Medion*, in the view of Enercon, no overall assessment was carried out as to the likelihood of confusion which took into account
all the facts of the present case. A correct analysis of those facts would, according to it, have led to a finding that there
is a low level of similarity between the marks at issue on the visual, phonetic and conceptual levels and that, overall, significant
differences exclude any likelihood of confusion. At the very most, there is a risk of association *stricto sensu*.

22      In that regard, it must be held, at the outset, that the judgment under appeal contains no explicit reference to the judgment
in *Medion* or implicit reference to the concept of an independent distinctive role referred to in paragraph 30 of that judgment.

23      Far from taking the view that the circumstances of the present case constituted a particular case such as that referred to
in paragraph 30 of *Medion*, the General Court pointed out, first, in paragraph 27 of the judgment under appeal, that, according to settled case-law,
the assessment of the visual, phonetic and conceptual similarity of the marks in question must be based on the overall impression
given by those marks, bearing in mind, in particular, their distinctive and dominant components (see, inter alia, Case C‑334/05 P
*OHIM* v *Shaker* [2007] ECR I‑4529, paragraph 35 and case-law cited). In paragraph 28 of the judgment under appeal, the General Court added
that 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.

24      Replying, next, in paragraphs 31 to 35 of the judgment under appeal, to Enercon’s arguments that the Fourth Board of Appeal
of OHIM committed an error by reducing the earlier mark to its ‘energon’ element and by thus ignoring the overall impression
created by that mark, dominated by the ‘transformers’ element, the General Court assessed the relative importance of those
elements in the overall impression created by the earlier mark and concluded that the Board of Appeal had acted correctly
in finding that the two elements were equally distinctive and dominant.

25      As regards the visual, phonetic and conceptual similarities of the marks at issue, the General Court, as is apparent from
paragraphs 11 to 14 of the present order, examined the assessments carried out by the Fourth Board of Appeal of OHIM, and
Enercon’s arguments, and concluded that the Board of Appeal had been right to hold that the signs at issue, each considered
as a whole, bore a certain degree of similarity. Consequently, it found that Enercon had not demonstrated that the Fourth
Board of Appeal of OHIM had erred in its overall assessment of the likelihood of confusion, regard being had also to the similarity
of the goods covered by the marks at issue.

26      It is manifestly clear from the foregoing that the General Court in no way interpreted or applied the principles established
in *Medion* in relation to an element of a mark having an independent distinctive role, and that, in reply to the appellant’s arguments,
it correctly carried out an overall assessment of the marks at issue taking into account all of the factors relevant to the
case.

27      It follows that the single plea in law is clearly unfounded.

28      Moreover, in so far as, by that plea, the appellant criticises the General Court for having wrongly assessed the similarities
between the marks at issue and ignored their differences, thus excluding, according to the appellant, a likelihood of confusion,
suffice it to state that that is an assessment of a factual nature which is not, save where the facts and evidence are distorted
– something which is not alleged in this case – subject to review by the Court of Justice on appeal (see, to that effect,
inter alia, Case C‑234/06 P *Il Ponte Finanziaria* v *OHIM* [2007] ECR I‑7333, paragraph 38 and the case-law cited). To that extent, therefore, the plea is manifestly inadmissible.

29      It follows from all of the foregoing that the appeal must be dismissed in its entirety as being, in part, manifestly unfounded
and, in part, manifestly inadmissible.

**Costs**

30      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. As OHIM has applied
for an order for costs against the appellant, and as the latter has been unsuccessful, the appellant must be ordered to pay
the costs.

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

1.      **The appeal is dismissed.**

2.      **Enercon GmbH shall pay the costs.**

[Signatures]

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[\*](#Footref*) Language of the case: English.

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