Deutsche Bahn v OHMI - DSB (IC4) (Intellectual property) [2011] EUECJ T-274/09 (09 September 2011)

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(Community trade mark – Opposition proceedings – Application for Community word mark IC4 – Earlier Community word mark ICE and earlier national figurative mark IC – Criteria for assessing likelihood of confusion – Relative grounds for refusal – Similarity of the services – Similarity of the signs – Distinctive character of the earlier mark – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

Deutsche Bahn AG, established in Berlin (Germany), represented by E. Haag, lawyer,

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

DSB, established in Copenhagen (Denmark), represented by T. Swanstrøm, lawyer,

1 On 24 January 2005, the intervener, DSB, filed an application for registration of a Community trade mark at 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)).

3 The services in respect of which registration was sought are in Class 39 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: ‘Transport; packaging and storage of goods; travel arrangement; travel agency activities; transport brokerage; vehicle rental; railway transport’.

4 The trade mark application was published in Community Trade Marks Bulletin No 33/05 on 15 August 2005.

5 On 8 November 2005, the applicant, Deutsche Bahn AG, filed a notice of opposition to registration of the mark applied for in respect of all the 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, first, on the earlier Community word mark ICE, filed on 1 April 1996 and registered on 29 January 1999 under number 170605, designating, inter alia, services in Class 39 corresponding to the following description: ‘Transport of persons and goods by rail vehicles; services in connection with the operation of a railway system, namely luggage services, luggage storage, schedule and traffic information services including those provided by electronic equipment, reservation services; arranging of railway tours, travel agencies including escorting of travellers; rental of railway vehicles and brokerage of such services’.

7 The opposition was based, secondly, on the following earlier German figurative mark (‘the IC mark’):

8 This mark, which was filed on 2 April 1979 and registered on 16 October 1980 under number 1009258, designates, inter alia, services in Class 39 corresponding to the following description: ‘Conveyance of passengers by track railway’.

9 The opposition was based on, inter alia, all the services in respect of which the earlier marks had been registered and was directed against all the services covered by the application for registration.

10 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).

11 By decision of 26 July 2007 (‘the decision of the Opposition Division’), the Opposition Division rejected the opposition.

12 The Opposition Division took the view, first of all, that, since the signs at issue were not manifestly identical, the relative ground for refusal of registration provided for in Article 8(1)(a) of Regulation No 40/94 was not applicable.

13 Next, the Opposition Division noted that the services covered by the application for registration and the services in respect of which the earlier marks had been registered were identical or similar. As regards the comparison of the mark applied for with the earlier Community trade mark ICE, the Opposition Division took the view that there was limited visual and phonetic similarity between the signs at issue and that they were conceptually different. As regards the comparison of the mark applied for with the earlier national mark, the Opposition Division took the view that they were visually different, that there was an average degree of phonetic similarity between them and that they were conceptually dissimilar. With regard to the overall assessment of the likelihood of confusion between the mark applied for and the two earlier marks, the Opposition Division concluded that the signs at issue could not be regarded as similar, which ruled out any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 and relieved it of the need to take any reputation of the earlier marks into account.

14 On 24 August 2007, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

15 By decision of 30 April 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal and also rejected the opposition.

16 In particular, the Board of Appeal endorsed the reasons set out in the decision of the Opposition Division. Furthermore, it took the view that the earlier marks and the mark applied for were descriptive of the services covered by the application for registration and that they had weak distinctive character, with the result that their ability to fulfil the function of indicating the commercial origin of those services was limited. The Board of Appeal took the view that the signs ICE, IC and IC4 were unlikely to be identified as trade marks and that, therefore, there could not be any likelihood of confusion between them.

20 By its first head of claim, the applicant asks the Court to annul not only the contested decision but also the decision of the Opposition Division.

21 OHIM submits that, according to Article 65(1) of Regulation No 207/2009, actions may be brought before the Courts of the European Union only against decisions of the Boards of Appeal. Consequently, it takes the view that the applicant’s claim for annulment of the decision of the Opposition Division is inadmissible.

22 Under Article 65(3) of Regulation No 207/2009, the Courts of the European Union have jurisdiction to annul or to alter the decisions of the Boards of Appeal. In that regard, an application for the Court to adopt the decision which, according to one party, the Board of Appeal should have taken is within the scope of the power to alter decisions of the Board of Appeal provided for under Article 65(3) of Regulation No 207/2009 (see, to that effect, Case T-�363/04 Koipe v OHIM – Aceites del Sur (La Española) [2007] ECR II-�3355, paragraphs 29 and 30, and judgment of 11 February 2009 in Case T-�413/07 Bayern Innovativ v OHIM – Life Sciences Partners Perstock (LifeScience), not published in the ECR, paragraphs 14 to 16).

23 It is clear, however, from Article 64(1) of Regulation No 207/2009, in force at the date of adoption of the contested decision, that the Board of Appeal had the power to annul the decision of the Opposition Division if it considered the appeal to be well founded. Such annulment therefore falls within the measures which may be taken by the General Court in the exercise of its power to alter decisions (see, to that effect, Case T-�334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II-�2787, paragraph 19 and the case-law cited).

24 It follows that the plea of inadmissibility put forward by OHIM in relation to the applicant’s claim for annulment of the decision of the Opposition Division must be rejected.

25 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, an 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. Furthermore, under Article 8(2)(a) of Regulation No 207/2009, ‘earlier trade marks’ means 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.

26 It is settled case-law that the risk that the public may 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 that same case-law, 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 case, in particular the interdependence of 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).

27 The applicant maintains that the contested decision is vitiated by an error of assessment since there is, in its view, a likelihood of confusion between the IC4 mark, on the one hand, and the ICE and IC marks, on the other. Given the identity of the services in question and the highly distinctive character of the earlier marks, the degree of similarity between the marks at issue is sufficiently high for the relevant public to be led to believe that the services in question come from the same undertaking or from economically-linked undertakings. Furthermore, the Board of Appeal applied an ‘empirical method’ instead of examining the opposition in the light of the criteria for assessing the existence of the condition laid down in Article 8(1)(b) of Regulation No 207/2009.

28 It is appropriate to begin by examining the applicant’s complaint, which alleges, in essence, that the Board of Appeal erred in law in applying an inappropriate method in order to assess whether there is a likelihood of confusion in the present case.

29 In the contested decision, the Board of Appeal proceeded directly to an analysis of the likelihood of confusion, without going through the usual stages of reasoning involving a visual, phonetic and conceptual comparison of the signs.

30 Having observed that the sequence of letters ‘ic’ designates a certain type of train service, the Board of Appeal initially took the view in its analysis that the three marks at issue are descriptive and consequently cannot fulfil the function of indicating the commercial origin of the services in question. It therefore took the view that the relevant public would not perceive the IC4, ICE and IC signs to be trade marks, which is sufficient to rule out any likelihood of confusion.

31 The Board of Appeal went on in its analysis to note that the IC4 sign will in all likelihood be accompanied by the initials DSB, designating the intervener, whereas the ICE and IC signs will in all likelihood be accompanied by the initials DB, which designate the applicant. Any likelihood of confusion would therefore be ruled out by the presence of those initials, notwithstanding the fact that the train services operated by the two companies in dispute may be provided beyond the Member States in which those companies have their seats.

32 However, the Board of Appeal also referred back to the analysis of the Opposition Division, which is also set out in the contested decision.

33 It must be borne in mind that, according to the case-law, the issue of whether there is a likelihood of confusion which is liable to prevent a sign from being registered as a Community trade mark is a matter which depends on a series of factors, including the degree of similarity between the sign applied for and the earlier mark on which any opposition is based (see paragraph 26 above).

34 In order to assess the degree of similarity between the sign applied for and the earlier marks on which an opposition is based, it is necessary to determine the degree of visual, phonetic and conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed (see, to that effect, Case C-�552/09 P Ferrero v OHIM [2011] ECR I-�0000, paragraphs 52 and 85 and the case-law cited).

35 Furthermore, under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

36 However, as the applicant submits, in the contested decision the Board of Appeal proceeded directly to an analysis of the likelihood of confusion between the IC4 mark applied for and the earlier ICE and IC marks on which the opposition was based, without going through the usual stages of reasoning involving a comparison of the services covered and a visual, phonetic and conceptual comparison of the signs at issue.

37 The Board of Appeal concluded that there was no likelihood of confusion between the marks at issue after taking the view that, being purely descriptive, all of those marks lacked the minimum level of distinctiveness that would enable consumers to associate the goods and services marketed under those trade marks with a specific undertaking or economically-linked undertakings (paragraphs 17 to 20 of the contested decision). Furthermore, according to the Board of Appeal, the ICE and IC signs, on the one hand, and the IC4 sign, on the other, will in all likelihood always be accompanied by the initials DB and DSB designating the applicant and the intervener, respectively (paragraph 21 of the contested decision).

38 In adopting that approach, the Board of Appeal made a number of errors of law.

39 First, on the one hand, the importance of the distinctive character of an earlier mark must indeed be taken into consideration in assessing whether there is a likelihood of confusion in the context of opposition proceedings, since the more distinctive the earlier mark, the greater will be the likelihood of confusion. Consequently, marks with a high distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (see, by analogy, Case C-�342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-�3819, paragraph 20 and the case-law cited).

40 However, the Board of Appeal’s reasoning in the contested decision, while presented in the context of an examination of the absolute grounds for refusal of registration provided for in Article 7(1)(b) and (c) of Regulation No 207/2009, is of no relevance to the analysis of the likelihood of confusion envisaged in Article 8 of that regulation. In examining whether the earlier marks had the minimum distinctiveness required in order to be regarded as trade marks, the Board of Appeal failed to have regard for the provisions of Article 41(1) of Regulation No 207/2009, according to which opposition proceedings are intended to be limited to an examination of the relative grounds for refusal of registration provided for in Article 8 of Regulation No 207/2009.

41 On the other hand, it must be observed that none of the findings of the Board of Appeal recalled in paragraph 37 above is in any way based on the pleas and arguments put forward by the parties to the opposition procedure. Thus, as the applicant submits, the Board of Appeal applied an autonomous ‘empirical method’. In accepting those arguments of its own motion, the Board of Appeal failed, as a result, to have regard to the provisions of Article 76(1) of Regulation No 207/2009.

42 Second, it should be noted that the finding of a weak distinctive character for an earlier trade mark does not in itself prevent a finding that 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 paragraph 39 above), this 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 Case T-�7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-�3085, paragraph 56 and the case-law cited).

43 However, the view taken by the Board of Appeal, even if it did not amount to a denial that the earlier marks had any distinctive character, is necessarily based at least on the premiss that an earlier trade mark with a weak distinctive character may have such limited protection that the factor of the similarity of the signs is in any event entirely disregarded. As a result, however, the factor based on the distinctive character of the earlier trade marks would be given undue importance, since such a result would not be consistent with the very nature of the global assessment which OHIM is required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009, which requires that all relevant factors be taken into consideration (see, to that effect, Limoncello della Costiera Amalfitana shaker, cited in paragraph 42 above, paragraph 57).

44 It follows from the foregoing that the Board of Appeal’s main reasoning cannot constitute a sufficient basis for the contested decision. Nevertheless, as OHIM observes, in the contested decision the Board of Appeal expressly adopted the Opposition Division’s analysis of the likelihood of confusion between the marks in this instance. That being the case, the errors of law referred to in paragraphs 39 to 43 above are not such as to result in the annulment of the contested decision and the General Court should carry out its review on the basis of the assessment of the likelihood of confusion in the decision of the Opposition Division (see, to that effect, judgment of 18 January 2011 in Case T-�382/08 Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), not published in the ECR, paragraph 38 and the case-law cited).

45 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. 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 Case T-�256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-�449, paragraph 42 and the case-law cited).

46 In the contested decision, the Board of Appeal pointed out that consumers were deemed to be reasonably well informed and reasonably observant and circumspect. Although the Board of Appeal adopted the reasoning of the Opposition Division (contested decision, paragraph 22), it must nevertheless be noted that the decision of the Opposition Division does not include any assessment of the degree of attention of the relevant public.

47 The parties disagree on this point. In the opinion of the applicant, the degree of attention of the relevant public in relation to the services at issue is that of the general public in respect of commonly used services. It is therefore limited. That, the intervener submits, is not the case.

48 According to the case-law referred to in paragraph 45 above, it is necessary to take into consideration the point of view of the average consumer of the services to which the opposition relates, who must be deemed to be reasonably well informed and reasonably observant and circumspect. The degree of attention likely to be paid by that consumer depends on the nature of the services in question and the terms on which they are marketed.

49 In the present case, the opposition relates to all of the services covered by the application for registration of the IC4 mark, that is to say, transport, packaging and storage of goods, travel arrangement, travel agency activities, transport brokerage, vehicle rental and, finally, railway transport.

50 Such services are aimed at professional people, whose degree of attention is generally high, as well as at end-users of those services, whose degree of attention may, admittedly, be lower. However, as the intervener submits, the services in question can be purchased in travel agencies and via the internet and, accordingly, the purchase may be carried out at leisure, if appropriate after a detailed personal discussion in which the services offered are described and compared. It follows that the degree of attention of the relevant public cannot be described as limited, as the applicant claims, but must be regarded as being average.

51 Under Article 8(1)(b) of Regulation No 207/2009, applications for registration of trade marks cannot be upheld if there is a likelihood of confusion between those trade marks and earlier trade marks on the part of the public in the territory in which those earlier trade marks are protected.

52 In the present case, it is common ground that the likelihood of confusion between the IC4 mark applied for and the earlier Community trade mark ICE must be assessed from the point of view of consumers in the European Union, and that the likelihood of confusion between the IC4 mark and the earlier IC mark registered in Germany must be assessed from the point of view of the German public.

53 The Board of Appeal did not carry out a comparison of the services in the contested decision, adopting instead the findings of the Opposition Division (contested decision, paragraph 22). The Opposition Division had carried out a detailed comparison of the services for which registration of the IC4 trade mark was sought with the services for which the ICE and IC trade marks had been registered.

54 First, ‘transport’ services (IC4 mark), on the one hand, and services in respect of ‘transport of persons and goods by rail vehicles’ (ICE mark) and ‘conveyance of passengers by track railway’ (IC mark), on the other, were considered to be identical.

55 Second, services in respect of ‘packaging and storage of goods’ (IC4 mark), on the one hand, and ‘transport of goods by rail vehicles’ and ‘services in connection with the operation of a railway system, namely luggage services, luggage storage’ (ICE mark), on the other, were considered to be similar.

56 Third, ‘travel arrangement’ (IC4 mark), on the one hand, and ‘arranging of railway tours’ and ‘reservation services’ (ICE mark), on the other, were considered to be identical.

57 Fourth, services in respect of ‘travel agency activities’ (IC4 mark) were considered to be identical to services in respect of ‘travel agencies including [the] escorting of travellers’ (ICE mark).

58 Fifth, the Opposition Division took the view that ‘transport brokerage’ services (IC4 mark) encompassed the ‘rental of railway vehicles and brokerage of such services’ (ICE mark) and that, therefore, those services were identical.

59 Sixth, according to the Opposition Division, ‘vehicle rental’ services (IC4 mark) encompass services relating to the ‘rental of railway vehicles’ (ICE mark), and so those services are identical.

60 Seventh, ‘railway transport’ (IC4 mark) and the ‘transport of persons and goods by rail vehicles’ (ICE mark) were considered to be identical.

61 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-�443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-�2579, paragraph 37 and the case-law cited).

62 In the present case, the Opposition Division, whose analysis was adopted by the Board of Appeal, found that the services in respect of transport, travel arrangement, travel agency activities, transport brokerage, vehicle rental and railway transport covered by the application for registration were identical to the services within Class 39 in respect of which the earlier Community trade mark ICE had been registered. In addition, services in respect of packaging and storage of goods, which were covered by the application for registration, and services relating to the transport of goods by rail vehicles and services in connection with the operation of a railway system, namely luggage services and luggage storage, in respect of which the ICE trade mark had been registered, were considered to be similar. Finally, only transport services as referred to in the application for registration were considered to be identical to the services involving the conveyance of passengers by track railway in respect of which the earlier IC trade mark had been registered.

63 All of those findings, which are not disputed by the parties, must be upheld.

64 It must, nevertheless, be observed that, even though all of the services covered by the application for registration and those in respect of which the Community trade mark ICE was registered were considered to be identical or similar, the Opposition Division made no comparison of services, other than that of transport, with the services in respect of which the earlier national trade mark IC had been registered. The Opposition Division could not, however, reject the opposition in its entirety without taking the view that there was no likelihood of confusion between the IC4 mark applied for and the IC mark as regards all of the services covered by the application for registration. The degree of similarity between the services covered by the marks at issue is indeed one of the factors that must be taken into account in a global assessment of the likelihood of confusion (see paragraphs 26, 34 and 42 above). By failing to determine the degree of similarity between services other than that of transport referred to in the application for registration, and the services in respect of which the IC trade mark was registered, the Opposition Division therefore failed to provide an adequate statement of reasons for its decision, and that lack of reasoning would, by itself, suffice to render that decision unlawful and consequently to lead, even automatically, to its partial annulment, since the Board of Appeal sought to adopt the statement of reasons for the decision of the Opposition Division.

65 In those circumstances, the Court deems it appropriate to consider, first of all, whether, in restating the analysis of the Opposition Division, the Board of Appeal was fully entitled to rule out any likelihood of confusion between the IC4 trade mark applied for and the earlier Community trade mark ICE.

66 The Opposition Division observed, first of all, that the marks at issue were short. Taking the view that the relevant public is in a better position to perceive the differences between signs if they are short, it found that the differences, albeit minor, between the signs at issue could suffice to distinguish them and to avoid any likelihood of confusion.

67 Next, the Opposition Division compared the signs and noted that each one consisted of three characters, the first two letters, ‘i’ and ‘c’, being common to both signs and appearing in the same order. The Opposition Division also stated that the two signs differed in relation to their third character, the earlier mark ending in the letter ‘e’, whereas the mark applied for ends in the figure ‘4’.

68 Both signs being short, the Opposition Division concluded that there was a limited degree of visual similarity between them.

69 As regards phonetic similarity, the Opposition Division’s reasoning was similar and led to the same conclusion as that reached in relation to the visual comparison (see paragraphs 66 to 68 above).

70 Conceptually, the Opposition Division found that the word ‘ice’ would be understood by English speakers as referring to frozen water, whereas the IC4 sign is meaningless.

71 Even if it is accepted that German consumers would be capable of realising that the ICE trade mark is an abbreviation of ‘intercity express’, the presence of the figure ‘4’ in the IC4 sign prevents a connection from being established between the letters ‘ic’ in the IC4 sign and the term ‘intercity’. The IC4 sign would thus be meaningless to German consumers; the signs are therefore conceptually dissimilar.

72 The Opposition Division concluded from its comparison of the IC4 and ICE signs that the impression which they create is dissimilar in all respects, the noted differences effectively outweighing the similarities.

73 The global assessment of the likelihood of confusion must, as far as the examination of the visual, phonetic or conceptual similarity of the signs at issue is concerned, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that 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. In addition, account must 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 his imperfect recollection of them (see Case C-�334/05 P OHIM v Shaker [2007] ECR I-�4529, paragraph 35 and the case-law cited, and GIORGIO BEVERLY HILLS, cited in paragraph 26 above, paragraph 32 and the case-law cited).

74 In that regard, it should be pointed out, in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects. As the Court’s case-law indicates, the visual, phonetic and conceptual aspects are relevant (see Case T-�6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-�4335, paragraph 30 and the case-law cited).

75 As regards the visual comparison of the IC4 and ICE signs, the Opposition Division, whose findings were adopted by the Board of Appeal, observed, first of all, that the marks at issue were short. Taking the view that the relevant public is in a better position to perceive the differences between signs if they are short, it found that the differences, albeit minor, between the signs at issue could suffice to distinguish them and to avoid any likelihood of confusion.

76 Next, the Opposition Division compared the signs and noted, inter alia, that the two signs differed in relation to their third character, the earlier mark ending in the letter ‘e’, whereas the mark applied for ends in the figure ‘4’. Both signs being short, the Opposition Division concluded that there was a limited degree of visual similarity between them.

77 However, as the applicant observes, the signs at issue consist of three characters, the first two of which, the letters ‘i’ and ‘c’, are common to both and appear in the same position and order. The signs at issue are thus partly identical and will therefore be liable to be perceived by the relevant public as creating a strong impression of visual similarity.

78 It is true, as both the intervener and OHIM contend, that the difference between the third character of each sign constitutes an element of differentiation, the significance of which is heightened owing to the brevity of the signs at issue. In this instance, however, those differences are not such that those signs may be regarded as being entirely dissimilar.

79 As OHIM submits, the overall impression created by the marks at issue must be taken into consideration (Case T-�438/07 Spa Monopole v OHIM – De Francesco Import (SpagO) [2009] ECR II-�4115, paragraph 23). It must also be borne in mind in this regard that, when assessing the degree of similarity between the signs, account must be taken of the fact that a consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see paragraph 73 above).

80 In those circumstances, while there is no need to address the parties’ difference of opinion as to whether consumers attach more or less importance to the beginning of the signs than to their end, it must be held that the relevant public will perceive the marks at issue as having an average degree of visual similarity.

81 As regards the phonetic comparison of the IC4 and ICE signs, it will be recalled that the phonetic comparison of the IC4 and ICE signs must take account of the point of view of all consumers in the European Union (see paragraph 52 above).

82 It is common ground that the IC4 sign will be pronounced throughout the European Union as the series of characters of which it is composed, namely the letter ‘i’, followed by the letter ‘c’, followed by the figure ‘4’. The sign in respect of which registration is sought will therefore be pronounced as three or more syllables, depending on the number of syllables required to pronounce the figure ‘4’ in the different languages of the European Union.

83 The parties agree in their view, shared by the Opposition Division, that in languages other than English the earlier trade mark ICE will be pronounced as three syllables, namely the letters ‘i’, ‘c’ and ‘e’, as pronounced in each of those languages.

84 As OHIM maintains, English speakers will be likely to pronounce the sign ICE both as a set of initials and as the word meaning frozen water (ice) in English, which is pronounced as a single syllable.

85 In those circumstances, it must be concluded that, with the exception of those English-speaking consumers who would pronounce the sign ICE in the same way as the English word ‘ice’, and for whom there will be no phonetic similarity between the ICE and the IC4 signs, the relevant public will perceive the signs at issue as having a low degree of phonetic similarity linked to the sequence of the letters ‘i’ and ‘c’, which are common to both signs.

86 In essence, the Opposition Division ruled out any conceptual similarity between the signs on the grounds that the ICE sign means ‘frozen water’ to an English-speaking consumer and that the presence of the figure ‘4’ in the IC4 sign prevents non-English-speaking consumers from linking the letters ‘i’ and ‘c’ which make up that sign to the notion of an ‘intercity’ train.

87 However, as the Board of Appeal pointed out in the contested decision, the evidence submitted by the parties during the opposition proceedings and also presented to the General Court proves that it is customary, in connection with the services concerned, to use the set of letters ‘ic’ to designate ‘intercity’ trains, that is to say, a particular type of train service.

88 Furthermore, as the applicant submits, it is conceivable that the characters ‘e’ and ‘4’, which complete the signs at issue, will be perceived as amplifying the nature of the services designated by the signs at issue, namely, ‘express’ and ‘fourth generation’, respectively.

89 In those circumstances, it must be held that the signs at issue have an average degree of conceptual similarity.

90 The Opposition Division, whose analysis was adopted by the Board of Appeal, took the view that, since there was no similarity of any kind between the marks at issue, there was no likelihood of confusion between them. For the same reason, the Opposition Division decided that it was superfluous to consider the distinctive character of the earlier marks and, in particular, to examine whether those earlier marks enjoyed a reputation in Germany.

91 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 concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (Case C-�39/97 Canon [1998] ECR I-�5507, paragraph 17, and 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 74).

92 It follows from the foregoing that the IC4 and ICE trade marks are visually, phonetically and conceptually similar (see paragraphs 80, 85, 89 above). Accordingly, the Opposition Division and the Board of Appeal erred in taking the view that it was not necessary to examine the distinctive character of the ICE trade mark.

93 As the parties are in disagreement on that point, that issue must be addressed at the outset, since the degree of distinctiveness of the earlier trade mark is one of the factors that must be taken into consideration in a global assessment of the likelihood of confusion.

94 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, Lloyd Schuhfabrik Meyer, cited in paragraph 39 above, paragraph 20 and the case-law cited).

95 The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Case T-�277/04 Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) [2006] ECR II-�2211, paragraphs 34 and 35 and the case-law cited).

96 In this regard, the evidence adduced by the applicant during the opposition proceedings and in support of the present action shows that the ICE trade mark has a highly distinctive character in Germany as a result of its reputation.

97 Indeed, the applicant submitted to OHIM, and attached to its application, documents which demonstrate that ICE services have been widely marketed in Germany since 1991, that is to say, 14 years before the date of the application for registration of the IC4 trade mark. DB’s virtual monopoly in the interregional rail transport sector in Germany thus lends credibility to the applicant’s assertion that the ICE trade mark is universally known in that Member State. That reputation, moreover, is a matter of common knowledge, as evidenced by the fact that the term ICE appears as the applicant’s trade mark in a number of German dictionaries.

98 Since the reputation of the ICE trade mark is well established in Germany, the arguments which the intervener seeks to derive from the descriptiveness of that mark are ineffective, as they cannot lead to any finding other than that the ICE trade mark is intrinsically weak.

99 The fact that the ICE trade mark is highly distinctive in Germany alone does not mean that the General Court can dispense with the need to take that factor into consideration, since it suffices, for the purpose of justifying a refusal to register a trade mark, that a likelihood of confusion exists only in part of the European Union. Where, in opposition proceedings challenging registration of a Community trade mark pursuant to Article 41 of Regulation No 207/2009, the earlier trade mark is a Community trade mark and the relevant territory for assessing the likelihood of confusion is thus the whole of the European Union, registration must be refused, given the unitary character of the Community trade mark, even if a relative ground for refusal exists only in part of the Community (see, to that effect, Case T-�355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-�791, paragraphs 34 to 36, and Case T-�185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II-�715, paragraph 33).

100 Accordingly, the following factors must be taken into account in an assessment of the likelihood of confusion between the IC4 mark and the earlier ICE trade mark. First, the degree of attention of the relevant public must be regarded as average, and not as limited (see paragraph 50 above). Second, the services in this instance are identical or similar (see paragraphs 62 and 63 above). Third, the marks at issue have an average degree of visual and conceptual similarity, and limited phonetic similarity (see paragraphs 80, 85 and 89 above). Fourth, the ICE trade mark is highly distinctive (see paragraphs 96 to 99 above).

101 In the light of all those factors, the Board of Appeal erred in concluding that there was no likelihood of confusion between the IC4 and ICE trade marks. Consequently, the contested decision must be annulled, as, by virtue of the alteration of that decision, must the decision of the Opposition Division.

102 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 OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

103 By contrast, it follows from the same provisions that the intervener’s claim that the applicant should be ordered to pay the costs must be rejected, since the intervener has been unsuccessful.

104 Under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Accordingly, the applicant is entitled to claim that OHIM should be ordered to pay the costs incurred by the applicant for the purposes of the appeal.

105 OHIM correctly submits that it follows from Article 136(2) of the Rules of Procedure that costs incurred by the parties for the purposes of the opposition proceedings cannot be regarded as recoverable costs (Case T-�164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II-�1401, paragraph 27).

106 Accordingly, the applicant’s claim that OHIM should be ordered to pay the costs incurred by the applicant for the purposes of the opposition proceedings must be rejected.

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 30 April 2009 (Case R 1380/2007-1) and the decision of the Opposition Division of OHIM of 26 July 2007;

2. Orders OHIM to pay the costs incurred by Deutsche Bahn AG for the purposes of the present judicial proceedings and the proceedings before the Board of Appeal;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Deutsche Bahn v OHMI - DSB (IC4) (Intellectual property) [2011] EUECJ T-274/09 (09 September 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T27409.html Cite as: [2011] EUECJ T-274/9, [2011] EUECJ T-274/09

Court of Justice of the European Communities (including Court of First Instance Decisions)