Scatizza v OHMI - Jacinto (Horse Couture) (Intellectual property) [2011] EUECJ T-238/10 (20 October 2011)

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(Community trade mark – Opposition proceedings – Application for registration of the Community figurative mark Horse Couture – Earlier national figurative mark HORSE – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

Stephanie Scatizza, residing in Breganzona (Switzerland), represented by P. Perani and P. Pozzi, lawyers,

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

1 On 22 June 2007, the applicant, Stephanie Scatizza, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 in respect of which registration was sought is the figurative sign reproduced below:

3 The goods in respect of which registration was sought are in, inter alia, Class 18 of 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, and correspond to the following description: ‘Leather and imitations of leather, and goods made of these materials; hides; trunks and travelling bags’.

4 The application for the Community trade mark was published in Community Trade Marks Bulletin No 62/2007 of 12 November 2007.

5 On 7 February 2008, Manuel Jacinto, L^dafiled a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to at paragraph 3 above.

6 The opposition was based on the earlier national figurative mark, registered in Portugal under number 379879, reproduced below:

7 The earlier mark had been registered for, inter alia, the following goods in Class 18: ‘Handbags, travelling bags, umbrellas, sunshades, whips, horse-trappings and saddlery’.

8 The grounds invoked in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9 By decision of 30 April 2009, the Opposition Division upheld the opposition as regards ‘goods made of leather and imitations of leather; trunks and travelling bags’, but dismissed it as regards the contested goods ‘leather and imitations of leather; hides’. The Opposition Division found that, although the marks were visually dissimilar, the phonetic overlap in the initial common word element ‘horse’, on which the consumer’s attention was more focused, and the conceptual similarity gave rise to a likelihood of association in the present case, given the identity and similarity of the goods. It also found that, without directly confusing them, the relevant Portuguese public might erroneously associate the goods at issue with an identical commercial origin.

10 On 30 June 2009, the applicant filed an appeal with OHIM against the decision of the Opposition Division.

11 By decision of 5 March 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.

12 With regard to the relevant public, the Board of Appeal found that, as the goods at issue were for everyday consumption and were addressed to the public at large, that relevant public consisted of average Portuguese consumers. It also confirmed the Opposition Division’s finding, which, moreover, was not contested by the applicant, that the ‘goods made of leather and imitations of leather; trunks and travelling bags’ designated by the mark applied for and the goods ‘handbags, travelling bags’ covered by the earlier mark were in part identical and in part similar. As regards the comparison of the signs, the Board of Appeal found that, visually, the signs were similar, contrary to the finding of the Opposition Division, that, phonetically, the signs were similar and that, conceptually, they were identical. Given the identity and similarity of the goods, the Board of Appeal held that the reproduction of the inherently distinctive figurative and word elements of the earlier mark within the mark applied for might mislead the average Portuguese consumer into believing that, notwithstanding the different stylisation of the images and the additional descriptive and ornamental elements of the mark applied for, the goods which were sold under those marks came from the same undertaking or from economically-linked undertakings. It therefore concluded that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009.

15 The applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means, in particular, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, 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 33 and the case-law cited). Accordingly, a lesser degree of similarity between those goods or services may be offset by a higher degree of similarity between the marks, and vice versa (Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 48, and Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 25).

18 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 (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

19 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue must be examined in the light of those considerations.

20 In the present case, the applicant does not dispute that the relevant territory for the analysis of the likelihood of confusion is Portugal, that the relevant public consists of the general public, that is to say, the average Portuguese consumer, who is reasonably well informed and reasonably observant and circumspect, or that the goods covered by the marks at issue are either identical or similar. She does, however, criticise the Board of Appeal as having incorrectly assessed the similarity of the signs at issue and the likelihood of confusion.

21 The overall assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, 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 overall assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

22 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially the same as regards one or more relevant aspects (judgment of 16 May 2007 in Case T-491/04 Merant v OHIM – Focus Magazin Verlag (FOCUS), not published in the ECR, paragraph 45).

23 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 (see OHIM v Shaker, paragraph 41 and the case-law cited). 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 (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case where, inter alia, that component is likely, by itself, to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression produced by it (Nestlé v OHIM, paragraph 43).

24 According to the applicant, the marks at issue are very different in visual, phonetic and conceptual terms, a fact which excludes any likelihood of confusion on the part of the relevant public.

25 At issue in the present case are the figurative mark applied for – Horse Couture – and the earlier figurative mark HORSE, registered in Portugal. It must be noted that the earlier mark and the mark applied for are both composite marks. The mark applied for comprises the word elements ‘horse’ and ‘couture’, written in a highly stylised typeface, and a figurative element consisting of a highly stylised representation of a horse facing left, on a light grey oval background. The earlier mark, for its part, comprises the word element ‘horse’, written in upper-case letters in a standard typeface, and a figurative element consisting of an ordinary representation of a galloping horse facing right. As the Board of Appeal pointed out at paragraph 22 of the contested decision, the marks at issue therefore coincide in that they both contain a representation of a horse and the word element ‘horse’.

26 As regards the earlier mark, it must be noted that, in view of the fact that the individual components of that mark are the verbal and figurative expression of the same idea and that those elements have an evident and clearly perceptible meaning, it is very likely that the relevant public will recall them in equal measure. It must therefore be held, reflecting the view taken by the Board of Appeal and the applicant, that the figurative representation of the horse in the earlier mark is no less dominant or distinctive than the word element ‘horse’ situated below the representation of the horse.

27 It must be stated that the same also holds true of the mark applied for. Contrary to what the applicant claims, although the components comprising the mark applied for are highly stylised, the relevant public will quite easily perceive the mark applied for as consisting of the word elements ‘horse’ and ‘couture’ and a horse and not as representing the letter ‘h’ or ‘x’ or two letters ‘c’ appearing side by side. Furthermore, the presence of the word element ‘horse’, which the applicant does not dispute will be understood by the relevant public as meaning ‘horse’, appears fully to support that finding. As the Board of Appeal rightly pointed out in paragraph 26 of the contested decision, the inherently distinctive image of the horse in the mark applied for is at least as dominant and as distinctive as the word element ‘horse’ written below it. Contrary to what the applicant claims, the word element ‘horse’ cannot be regarded as being descriptive of the goods at issue since the category of goods covered by the application for registration encompasses goods that are not in any way related to horses. As regards the word element ‘couture’, which refers to ‘haute couture’, it is clear that, in view of the goods concerned, this has, at most, only a very weak distinctive character, given that it is descriptive of the characteristics of the goods at issue, as the Board of Appeal stated in paragraph 24 of the contested decision, a finding which is not contested by the applicant. Finally, with regard to the grey oval background, it must be noted, first, that such a component will not appear unusual to the relevant public, and, second, that it is not arranged in a specific, original or elaborate manner. It must therefore be concluded, first, that the representation of the horse in the mark applied for is at least as dominant and as distinctive as the word element ‘horse’, and, second, that the word element ‘couture’ and the light grey oval background are not negligible. It is in the light of those considerations that the signs at issue must be compared.

28 The Board of Appeal stated, inter alia, in paragraph 28 of the contested decision that the signs ‘coincide in that both contain a figurative representation of a horse in the top part of the marks’ and that ‘the only word element of the earlier mark … is entirely reproduced as the first word element of the … mark [applied for]’. The Board of Appeal found that ‘[t]he different representation and direction of the horses, the different typeface of the verbal elements and the additional ornamental details in the … mark [applied for] cannot neutralise the effect of the overlap in the inherently distinctive image of a horse and the word element “HORSE” itself’. The Board of Appeal concluded that ‘[w]hile not ignoring the eye-catching stylisation of the image of a horse in the … mark [applied for], consumers will primarily recall the … mark [applied for] by the image of a horse as such, reinforced by the word element “HORSE”’.

29 Those findings of the Board of Appeal cannot be regarded as being vitiated by any error whatsoever, contrary to what the applicant claims.

30 In view of the overall visual impression given by the earlier mark, the Board of Appeal was right to hold that, notwithstanding the differences introduced by the peculiar stylisation of the horse, by the different direction in which the horse is facing, by the typeface used for the word elements and by the additional ornamental details of the mark applied for, the fact remains that the only word element of the earlier mark is reproduced in full in the mark applied for and that the marks at issue coincide inasmuch as each depicts a horse. The fact that the figurative element depicts a horse is clearly perceptible in the earlier mark. As regards the mark applied for, even assuming that some consumers might wonder for a moment whether the figurative element depicts a horse, as the applicant contends, it appears that any possible confusion is removed by the word element ‘horse’, which, it is not contested, will be understood by the relevant public as meaning ‘horse’. It follows that, contrary to the applicant’s contention, there is no ambiguity in regard to the horse depicted in the marks at issue (see, by analogy, judgment of 17 April 2008 in Case T-389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 79).

31 It should be added that the difference in the graphic stylisation of the horses in the marks at issue is a minor element that the relevant public is not likely to remember. As regards the difference introduced by the grey oval background present in the mark applied for, which is a purely ornamental detail, it does not in any way alter the fact that the relevant public will perceive a horse, both in the mark applied for and in the earlier mark. That horse immediately comes to the mind of the relevant public and will be remembered (see, by analogy, Representation of a pelican, paragraph 80).

32 The Court therefore finds that the fact that each of the signs at issue depicts a horse, and that the only word element of the earlier mark constitutes the first word element of the mark applied for, implies that there is a degree of visual similarity between the signs at issue. However, that similarity is weak, given the differences introduced by the peculiar stylisation of the horse, the different direction in which the horse is facing, the typeface used for the verbal elements and the additional ornamental details (oval background) in the mark applied for.

33 The Board of Appeal found, essentially, that the signs were phonetically similar, in particular on the ground that the only word element of the earlier mark will be pronounced in the same way as the first word element of the mark applied for and that the difference introduced by the word element ‘couture’ is not sufficient to affect that similarity.

34 The Court finds that analysis to be correct, contrary to what the applicant contends.

35 It must be noted that, as the only word element of the earlier mark and the first word element of the mark applied for are identical, they are phonetically identical. It is true that the word element ‘couture’, placed in second position in the mark applied for, introduces a difference to the extent that it gives a different length, structure and rhythm to the signs at issue. However, contrary to the applicant’s contention, that difference alone is not sufficient to make the signs phonetically different. As the Board of Appeal rightly pointed out in that regard, the word element ‘couture’ will carry less weight than the word element ‘horse’, situated at the beginning of the sign, particularly since, according to settled case-law, the relevant public normally pays more attention to the beginning of a mark than to the end (see Case T-109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II-687, paragraph 30 and the case-law cited). Moreover, as is clear from paragraph 27 above, it should be added that the word element ‘couture’ has, at most, a very weak distinctive character, since it is descriptive of the nature of the goods at issue.

36 Consequently, it must be held that, although the word element ‘couture’ somewhat diminishes the degree of phonetic similarity between the signs at issue, the difference caused by that element is only marginal in view of the fact that the first element of those signs, to which the average consumer generally pays greater attention, is phonetically identical. Therefore, it must be held that there is phonetic similarity between the signs taken as a whole. That similarity is further reinforced, as the Board of Appeal essentially stated in paragraph 29 of the contested decision, by the fact that it cannot be excluded that, given the prominent size and position of the figurative elements in the marks at issue, part of the relevant public will verbally refer to the marks at issue simply by describing them by the term ‘horse’, with the result that, for that section of the public, the marks at issue will be phonetically identical.

37 The Board of Appeal explained in paragraph 30 of the contested decision that the marks are conceptually identical in that ‘both marks convey the concept of a horse, mutually reinforced by the figurative image and the corresponding word element [horse]’.

38 The Court holds that those findings are not vitiated by any error, contrary to what the applicant contends.

39 As regards the marks at issue, it should be recalled that the word element ‘horse’ will be understood by the majority of the relevant public as meaning ‘horse’ and that it will therefore be interpreted as referring directly to their figurative element. Each of those two elements reinforces the other, with the result that consumers will more easily understand one because of the other. Taken together, those two elements therefore call clearly to mind the same concept of a horse.

40 That conceptual identity is not called into question by the applicant’s claim, firstly, that the words ‘horse couture’ do not have any particular meaning in the relevant territory, inasmuch as the French word ‘couture’ will not be understood by the relevant public and, secondly, that, even if the relevant public were to recognise the meaning of the words ‘horse couture’, the association of the French word ‘couture’ with the English word ‘horse’ will probably be perceived as a fanciful expression which associates, in a very original and strange way, the idea of a horse with the concept of fashion and style. Suffice it to say in that regard that there is no doubt that the relevant public will link the common reference in the two marks at issue to the concept of a horse. Consequently, the mere fact that the mark applied for contains the additional word element ‘couture’ does not make it conceptually different overall from the earlier mark.

41 In those circumstances, in order to assess whether there is a likelihood of confusion between the marks at issue, it is necessary to take into consideration the fact that those marks have a low degree of visual similarity, are conceptually identical and phonetically similar and that the goods are either identical or similar.

42 It must be recalled that the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned, and taking into account all factors relevant to the circumstances of the case. That global assessment takes account of the degree of similarity between the marks and between the goods or services covered and implies some interdependence of the factors taken into account, with the result that a lesser degree of similarity between those goods or services may be offset by a higher degree of similarity between the marks, and vice versa (see paragraph 17 above).

43 In the present case, given what has been stated in paragraph 41 above and, more particularly, taking into account the fact that the marks at issue are conceptually identical and phonetically similar, the view must be taken that, in the minds of the relevant public, those trade marks are similar. Moreover, it must be recalled that the goods covered by the marks at issue are either identical or similar. The corollary of that identity or similarity is that the scope of any differences between the signs in question is reduced (see, to that effect, Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 74).

44 According to the applicant, the visual aspect of the comparison of the goods at issue is more important than the phonetic and conceptual aspects since items of clothing, including products made of leather, are generally bought in self-service department stores ‘on sight’. The applicant also points out that, as the word element ‘horse’ is descriptive, the Board of Appeal was wrong to rely essentially on that element common to both marks for the purpose of establishing that they are similar.

45 The claim relating to the descriptive character of the word element ‘horse’ cannot be upheld. First, it must be pointed out that, while the Board of Appeal did indeed take into account the word element ‘horse’ to establish that the marks at issue were similar, it also took into account the fact that those two marks featured a figurative element depicting a horse. Second, it must be recalled that, contrary to what the applicant claims, the word element ‘horse’ cannot be considered to be descriptive of the goods at issue, as is clear from paragraph 27 above.

46 The argument that the visual aspect of the comparison is decisive must be rejected. Admittedly, according to settled case-law, in the context of the overall assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 57, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 49). Thus, if the goods covered by a given mark are sold only on oral request, the phonetic aspects of the sign in question are bound to have greater significance for the relevant public than the visual aspects (see, to that effect, Case T-147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II-11, paragraph 105). By contrast, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that the relevant public, when making a purchase, usually perceives visually the mark designating those goods (Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 55).

47 However, in the present case, even if it is assumed that the goods concerned are habitually bought ‘on sight’ and that the visual aspect is, as a result, of greater importance in the overall assessment of the likelihood of confusion, such a finding would still be fully justified because, as was noted in paragraph 32 above, the marks at issue indeed also display a degree of visual similarity. In any event, it must be held that the degree of similarity between the marks at issue is such (see paragraph 43 above) as to lead to the conclusion that a likelihood of confusion exists irrespective of whether or not the visual aspect is more important than the other aspects.

48 Indeed, the visual differences between the marks at issue are offset by the fact that the marks are conceptually identical and phonetically similar, and also by the identity or similarity of the goods concerned. Therefore, the differences between the marks are not sufficient to remove a likelihood of confusion in the minds of the relevant public.

49 It follows from all of the foregoing that the Board of Appeal did not err in finding, in paragraph 34 of the contested decision, that the relevant public could consider that the goods come from the same undertaking or from economically-linked undertakings and that that public could regard the mark applied for as a variation of the earlier mark or as a sub-brand of the earlier mark designating a special product line (see, to that effect, BUDMEN, paragraph 57).

50 It follows that the Board of Appeal was right to hold that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

51 It follows from the foregoing that the plea put forward by the applicant is unfounded and must be rejected, and that the action must be dismissed in its entirety.

52 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

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