Hrbek v OHMI- Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT) (Intellectual property) [2011] EUECJ T-434/10 (15 November 2011)

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(Community trade mark – Opposition proceedings – Application for the Community figurative mark ALPINE PRO SPORTSWEAR & EQUIPMENT – Earlier Community figurative mark ‘alpine’ – Misuse of power – Article 65(2) of Regulation (EC) No 207/2009 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009)

Václav Hrbek, residing in Augustinova (Czech Republic), represented by C. Jäger, lawyer,

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

The Outdoor Group Ltd, established in Northampton (United Kingdom), represented by S. Malynicz, Barrister,

1 On 12 March 2007, the applicant, Mr Václav Hrbek, filed an application for registration of a Community trade mark at 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 mark in respect of which registration was applied for is the following figurative sign:

3 The goods in respect of which registration was applied for are in Classes 18, 24, 25 and 28 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.

5 On 23 January 2008, the intervener, The Outdoor Group Ltd, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The grounds relied on 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). The opposition was based on the following earlier Community figurative mark:

6 The earlier mark, filed on 5 April 2001 and registered on 17 August 2004 under number 2165017, covers goods in Classes 18 and 25 of the Nice Agreement and corresponding, for each of those classes, to the following description:

7 On 29 September 2009, the Opposition Division upheld the opposition in part. It took the view, first, that, apart from toys and games, included in Class 28, the remaining goods in respect of which the mark was applied for were identical or had varying degrees of similarity to those covered by the earlier mark and, second, that the signs at issue were similar overall, in so far as the most distinctive and dominant component of the marks overlaps, that is to say, the word element ‘alpine’. Therefore, a significant part of the relevant public would be likely to attribute the same origin to the goods at issue, or believe that they came from economically-linked undertakings.

8 On 26 November 2009, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

9 By decision of 8 July 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. As regards the comparison of the goods in question, it took the view, first of all, that the ‘umbrellas, umbrella covers and parasols’ covered by the mark applied for had a remote degree of similarity to the ‘bags and luggage’ covered by the earlier mark in so far as they are all travel accessories which are sold in the same outlets or in the same sections and under the same mark; second, that there was a certain degree of similarity between ‘sleeping bags and sleeping sacks’ covered by the mark applied for and ‘backpacks, haversacks and rucksacks’ covered by the earlier mark, in so far as they are likely to be sold in the same outlets, target the same public and may be sold under the same mark; and, third, that there was a low degree of similarity between the ‘sporting articles’ covered by the mark applied for and the ‘skiwear, ski footwear and headgear’ covered by the earlier mark, in so far as they are all necessary for winter sports and therefore display a certain complementary connection and to the extent that they are sold in the same sports shops and may also be sold under the same mark. Furthermore, the Board of Appeal stated that the ‘clothing, footwear and headgear’ covered by the mark applied for included the ‘skiwear, ski footwear and headgear’ covered by the earlier mark and that they were therefore identical.

10 As regards the comparison of the signs at issue, the Board of Appeal found, first, that the word element ‘alpine’ was the dominant element and, second, that it was present in both of the signs at issue, the dissimilarities between them, which were limited to their secondary elements, being insufficient to preclude a likelihood of confusion between those signs. In addition, the Board of Appeal made it clear that, even if the earlier mark was likely to have a weak distinctive character in respect of some goods, that would be insufficient to rule out a likelihood of confusion between the signs at issue. The Board of Appeal accordingly concluded that there was a likelihood of confusion between the two signs.

14 OHIM contends that the applicant’s second head of claim, by which he requests the General Court to order OHIM to reject the opposition to the Community trade mark application and to register that mark, is inadmissible. In accordance with Article 65(6) of Regulation No 207/2009, the General Court is not entitled to issue directions to OHIM, but it is for OHIM to draw the consequences of the General Court’s judgment.

15 By his second head of claim, the applicant requests the General Court to order OHIM to reject the opposition and to allow registration of the mark in question. In that regard, it must be borne in mind that, according to settled case-law, in an action before the Courts of the European Union against the decision of a Board of Appeal of OHIM, the latter, under Article 65(6) of Regulation No 207/2009, is required to take the measures necessary to comply with the judgments of those courts. It is therefore not for the General Court to issue directions to OHIM. It is for OHIM to draw the appropriate inferences from the operative parts of judgments and from the grounds on which they are based (Case T-33/03 Osotspa v OHIM – Distribution & Marketing (Hai) [2005] ECR II-763, paragraph 15; see, to that effect, Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 22).

17 OHIM also contends that the applicant’s third head of claim, by which he requests the Court to order OHIM to pay the costs relating to the opposition proceedings, is inadmissible. Under Article 136(2) of the Court’s Rules of Procedure, and in accordance with its case-law, the costs incurred for the purposes of opposition proceedings cannot be regarded as recoverable costs.

18 In that regard, it should be observed that, under Article 136(2) of the Court’s Rules of Procedure, ‘costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal and costs incurred for the purposes of the production, prescribed by the second subparagraph of Article 131(4), of translations of pleadings or other documents into the language of the case shall be regarded as recoverable costs’. It follows that costs incurred for the purposes of opposition proceedings cannot be regarded as recoverable costs (Case T-164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II-1401, paragraph 27; see, to that effect, judgment of 9 March 2010 in Case T-15/09 Euro-Information v OHIM (EURO AUTOMATIC CASH), not published in the ECR, paragraph 49).

19 The applicant’s third head of claim must therefore be rejected as inadmissible in so far as it concerns the costs incurred in respect of the opposition proceedings.

20 The applicant essentially relies on two pleas in law in support of his application, alleging, first, breach of Article 65(2) of Regulation No 207/2009 and, second, breach of Article 8(1)(b) of that regulation.

The first plea in law, alleging breach of Article 65(2) of Regulation No 207/2009

21 The applicant submits that the Board of Appeal exceeded its powers, as its decision lacks objectivity and has no legal basis. First of all, the Board of Appeal did not properly examine the arguments or evidence submitted in respect of the distinctive character of the term ‘alpine’. Second, it limited its assessment to the word elements of the signs at issue, without examining the signs as a whole. Third, it did not properly apply the criteria for identifying whether there is a likelihood of confusion between those signs.

22 It must be borne in mind that the concept of misuse of power has a precisely defined scope in European Union law and refers to cases where an administrative authority has used its powers for a purpose other than that for which they were conferred on it. In that respect, the Court has consistently held that a decision may amount to a misuse of power only if it appears, on the basis of objective, relevant and consistent evidence, to have been taken for purposes other than those stated (Case T-30/00 Henkel v OHIM (Image of a detergent product) [2001] ECR II-2663, paragraph 70, Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraph 22).

23 In the present case, however, the applicant has not put forward any evidence to demonstrate that the Board of Appeal, by adopting the contested decision, was pursuing a purpose other than that of ascertaining whether the mark applied for complied with the conditions for registration prescribed by Regulation No 207/2009, as regards the existence of a relative ground for refusal. By his arguments, the applicant has merely relied on circumstances allowing him to challenge the legality of the contested decision.

The second plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009

25 Essentially, the applicant challenges the contested decision as regards, first of all, the level of attention of the relevant public, second, the similarity of the goods in question and, third, the distinctive character of the earlier mark and the similarity of the signs at issue.

26 The applicant submits that the Board of Appeal incorrectly determined the level of attention of the relevant public. He maintains that, as regards skiwear, ski footwear and headgear, as well as backpacks and rucksacks, the relevant public is composed of well-informed and particularly attentive consumers, because, on the one hand, those goods are not everyday consumer items, in so far as they are quite expensive, and, on the other, those consumers have an interest in finding, from among those goods, those which perform best so that they may benefit as much as possible from their ski holidays.

27 In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken 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).

28 In the present case, the Board of Appeal took the view, in paragraph 16 of the contested decision, that the goods in question, including those identified by the applicant for the purposes of registration of the mark applied for, are everyday consumer items, in respect of which the relevant public’s level of attention is average. Even though consumers do not buy skiwear, ski footwear and headgear, or backpacks and rucksacks, on a daily basis, these are goods that are bought regularly for winter sports and adventure sports. Furthermore, they may be used every day, as is the case, in particular, with backpacks or, during the winter in some Member States, with skiwear. They should therefore be considered to be everyday consumer items.

29 As regards the price of those goods, in accordance with the case-law, the clothing sector comprises goods which vary widely in quality and price. While it is possible that a consumer will be more attentive to the choice of mark when he or she buys a particularly expensive item, such an approach on the part of the consumer cannot be presumed, without evidence, with regard to all goods in that sector (see, to that effect, 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 43). That conclusion also applies to skiwear, and to backpacks and rucksacks, which, as the intervener has submitted, also include goods that vary in quality and price, ranging from general distribution goods, that are generally cheaper, to more expensive manufacturers’ brands.

30 Nevertheless, as the applicant maintains, it must be held that, in respect of skiwear, ski footwear, headgear, as well as backpacks and rucksacks, part of the relevant public is composed of consumers who regularly ski or hike and therefore know those goods well. Those consumers will therefore tend to pay particular attention when examining the goods in question in order to obtain the best possible protection against the cold and snow, as well as paying attention to their technical qualities for enhanced performance and comfort. It must therefore be held, contrary to what the Board of Appeal concluded in paragraph 16 of the contested decision, that the level of attention of that section of the public will be higher.

31 In the light of the foregoing, it must be held, first, as the Board of Appeal maintained in paragraph 16 of the contested decision, that backpacks are everyday consumer articles in respect of which the level of attention of the relevant public is average and, second, as the applicant submitted, that the level of attention of the relevant public in respect of skiwear, ski footwear and headgear, as well as rucksacks, is, for a section of that public, higher.

32 With regard to the comparison of the goods in question, the applicant challenges the findings of the Board of Appeal in respect of: first, umbrellas, umbrella covers and parasols; second, sleeping bags and sleeping sacks; third, skiwear, ski footwear and headgear; and, fourth, sporting articles.

33 According to settled case-law, in order to assess the similarity between the goods or services in question, all the relevant factors of the relationship between them 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).

34 First, as regards umbrellas, umbrella covers and parasols, covered by the mark applied for, in Class 18, the applicant maintains that these are dissimilar to bags and luggage, also in Class 18, covered by the earlier mark. He submits that the fact that they are sold in the same outlets does not mean that they should be considered to be similar, in so far as the nature and purpose of those goods differ.

35 In this regard, it should be stated that the Board of Appeal did not base its finding, which was to recognise the low degree of similarity between the goods in question, solely on the fact that they are sold in the same outlets. As is apparent from paragraph 20 of the contested decision, the Board of Appeal found that all of those articles belonged to the ‘travel accessories’ category and that, despite being different in nature and purpose, were likely to be sold in the same outlets or in the same sections of department stores and under the same mark.

36 However, the applicant has put forward no specific argument capable of challenging the inclusion of umbrellas, umbrella covers and parasols as travel accessories and their distribution under the same marks as bags and luggage. The Board of Appeal was therefore correct to find that those goods have a low degree of similarity.

37 Second, as regards sleeping bags and sleeping sacks, covered by the mark applied for, in Class 24, the applicant maintains that these are dissimilar to backpacks and rucksacks, in Class 18, covered by the earlier mark, in so far as no complementary relationship exists between those two categories of goods. He thus claims that it is highly unlikely that people looking for skiwear and other accessories will be looking for sleeping bags and sleeping sacks at the same time, given that, in view of the low temperatures, they will generally not be using sleeping bags.

38 In that regard, it should be stated that the Board of Appeal did not establish any link between, on the one hand, sleeping bags and sleeping sacks and, on the other, skiwear, in Class 25. It merely compared, in paragraph 21 of the contested decision, ‘sleeping bags and sleeping sacks’ covered by the mark applied for, in Class 24, with ‘backpacks, haversacks, rucksacks and knapsacks’, covered by the earlier mark, in Class 18. Backpacks, haversacks, rucksacks and knapsacks are goods that are sought not only by skiers but also by a relatively wide range of consumers, including those who engage in certain sports such as hiking or climbing or who take part in adventure holidays, who may also be looking for sleeping bags and sleeping sacks in the pursuit of those sports or holidays. Thus, as the Board of Appeal found, without the applicant putting forward any argument that could cast doubt on that finding, ‘sleeping bags and sleeping sacks’, covered by the mark applied for, and ‘backpacks, haversacks, rucksacks and knapsacks’, covered by the earlier mark, target the same consumers and may be sold under the same mark.

39 The Board of Appeal was therefore correct to find, in paragraph 21 of the contested decision, that those goods had a certain degree of similarity.

40 Third, the applicant maintains that the Board of Appeal should not have rejected the application for registration for all the goods in Class 25, but only for those giving rise to a likelihood of confusion with those covered by the earlier mark.

41 It is apparent from paragraph 23 of the contested decision that the Board of Appeal took the view that ‘clothing, footwear, headgear’, covered by the mark applied for, on the one hand, and ‘skiwear, ski footwear and headgear’, covered by the earlier mark, on the other, were identical goods, in so far as the former were defined in very general terms and therefore included the latter.

42 In accordance with the case-law, the view must be taken that the category of goods ‘clothing, footwear, headgear’ covered by the mark applied for may, inter alia, include ‘skiwear, ski footwear and headgear’ covered by the earlier mark. In the absence of a restriction of any kind in respect of the description of the goods of the mark applied for, it cannot be ruled out that the applicant may try to market skiwear under the mark applied for as clothing (see, to that effect, Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraphs 35 to 39, and judgment of 16 September 2009 in Case T-400/06 Zero Industry v OHIM – zero Germany (zerorh+), not published in the ECR, paragraph 36). Consequently, it must be held that there is an overlap between the categories of goods referred to above and, contrary to the applicant’s claim, that the goods in question are therefore identical.

43 Fourth, and last, as regards ‘sporting articles’, covered by the mark applied for, in Class 28, the applicant maintains that these are different from skiwear covered by the earlier mark, as they cover all articles for practising a variety of sports and are dissimilar to skiwear. Moreover, the fact that these goods are sold in the same outlets does not mean that they should be considered to be similar.

44 In this regard, it should be noted that the Board of Appeal found, in paragraph 22 of the contested decision, that there is a certain degree of similarity, albeit weak, between sporting articles and skiwear in so far as, on the one hand, they may be sold in the same outlets and, on the other, they are all necessary for practising winter sports and they therefore display a complementary connection.

45 According to the case-law, complementary goods and services are those which are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for supplying those services. By definition, goods intended for different publics cannot be complementary (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraphs 57 and 58 and the case-law cited).

46 In the present case, on the one hand, it must be held that the category of ‘sporting articles’, covered by the mark applied for, covers all sports, including skiing, in so far as the application for a Community trade mark contains no restriction in that regard. On the other hand, skiwear, covered by the earlier mark, includes articles necessary for practising winter sports and therefore indispensable to the use of sporting articles for skiing, such as skis or surfboards. They may thus be sold under the same mark or in the same outlets and consumers may think that the same undertaking is responsible for manufacturing those goods. Consequently, it must be held that sporting articles and skiwear are complementary and, therefore, similar goods.

47 In the light of all of the foregoing, the applicant’s arguments based on the dissimilarity of the goods in question must be rejected. The Board of Appeal was therefore correct to uphold, in paragraph 19 of the contested decision, the finding of the Opposition Division that ‘backpacks, bags, trunks’, ‘briefcases, handbags, shopping bags, school satchels’ and ‘purses, not of precious metal’, in Class 18, covered by the mark applied for, and ‘bags, backpacks, haversacks, rucksacks, knapsacks, trunks, luggage, suitcases, holdalls’, and ‘wallets’, in Class 18, covered by the earlier mark, are identical. Similarly, the Board of Appeal acted correctly in finding, in paragraphs 20 to 23 of the contested decision, that the goods examined in paragraphs 34 to 46 above had varying degrees of similarity.

48 The global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the 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 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).

49 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 (see 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, inter alia, where 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 created by it (Nestlé v OHIM, paragraph 43).

50 Likewise, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (see Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 54 and the case-law cited).

51 In the present case, the Board of Appeal considered, in paragraph 28 of the contested decision, that, visually, the only word element of the earlier mark – ‘alpine’ – was identical to the dominant element of the mark applied for and that it was present in both of the signs at issue, the dissimilarities between them, which were limited to their secondary elements, being insufficient to preclude a likelihood of confusion between those signs. The Board of Appeal also found, in paragraph 32 of the contested decision, that the element ‘alpine’ was the dominant element in the signs at issue.

52 While the applicant acknowledges that both of the signs contain an identical word element, namely ‘alpine’, he refutes its dominant character and takes issue with the Board of Appeal’s finding that the signs at issue are similar. He thus takes the view that the additional word and figurative elements of the marks at issue should also be taken into account in respect of the comparison of the signs at issue. He further points out that the dominant element of the mark applied for is the capital letter ‘A’ at its beginning.

53 The assessment of the signs at issue shows that the earlier mark is composed of the term ‘alpine’, which is the longest element of the mark, in black letters, and, to its right, a figurative element depicting a stylised capital letter ‘A’, white in colour and inscribed within a black oval shape. That figurative element, placed after the term ‘alpine’, is shorter than the word element and occupies a secondary position, with the result that it will go unnoticed by the relevant public. As regards the mark applied for, it is also composed of the term ‘alpine’ written in bigger capital letters than the other terms and is black in colour. By contrast, the initial letter ‘a’ is represented in white and is inscribed within a black shape which will be perceived by the relevant public as mere decoration and is not therefore likely particularly to attract the attention of the relevant public. To the right of the term ‘alpine’, there is a black rectangle containing the expression ‘pro’, in white letters, and, below, the expression ‘sportswear & equipment’, in black letters. The expressions ‘pro’ and ‘sportswear & equipment’ are represented in smaller letters than the term ‘alpine’ and occupy a secondary position in relation to the element ‘alpine’, with the result that they may go unnoticed by the relevant public.

54 It is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (see judgment of 11 May 2010 in Case T-492/08 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 46 and the case-law cited).

55 In the light of the foregoing, it must be held that the term ‘alpine’ dominates the overall impression created by the signs at issue, with the result that consumers retain it in their memory, whereas the other figurative and word elements are negligible for the relevant public. The Board of Appeal therefore acted correctly in finding, in paragraphs 28 and 32 of the contested decision, that the term ‘alpine’ was the dominant element.

56 So far as the visual similarity is concerned, the signs at issue have in common the dominant element ‘alpine’ and are therefore similar from that point of view, without the presence of relatively simple figurative elements in the two signs being capable of casting doubt on that conclusion (see, to that effect, judgment of 16 May 2007 in Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the ECR, paragraph 46).

57 Nevertheless, the applicant contends that the presence of the aforementioned figurative and word elements in the signs at issue give rise to composite marks, particularly in the case of the mark applied for, which may thus be considered to be visually dissimilar to the earlier mark, as was the case with the marks examined by the Court in the judgment in Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 38. As has been indicated in paragraph 53 above, and in contrast to the judgment in Fifties, the figurative and word elements that accompany the word element ‘alpine’ in the two signs at issue are quite simple, while the term ‘alpine’ is represented in both of those signs in an almost identical manner and dominates the overall impression which they create. Consequently, the applicant’s argument that the mark applied for is a composite sign which is visually dissimilar to the earlier mark is unfounded.

58 Furthermore, the applicant’s argument that the signs at issue are dissimilar because the earlier mark is represented in capital letters, whereas the mark applied for is represented in lower-case letters, cannot invalidate the finding of visual similarity between those signs. The applicant bases his argument on an a contrario interpretation of the judgment in Case T-425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II-4265, paragraph 78. In that judgment, however, the Court merely found that ‘the acronym AMS is represented in a similar way in the earlier mark and the mark applied for, namely in upper-case letters’, stating that ‘[t]he fact that the mark applied for is represented in italics does not make it possible to draw a distinction since the difference is practically imperceptible to the consumer’. Thus, in the present case, the fact that the signs at issue are represented in different characters, that is to say, capital letters and lower-case letters, and that the earlier mark was, in contrast to the mark applied for, represented in italics, cannot lead to the conclusion that they will be perceived as different by the relevant public. The applicant’s argument must therefore be rejected as being entirely unfounded.

59 Consequently, the Board of Appeal was correct to conclude, in paragraph 28 of the contested decision, that the marks at issue were visually similar.

60 So far as concerns the phonetic similarity, in view of the term ‘alpine’ present in both of the marks at issue, it must be held, as the Board of Appeal found in paragraph 29 of the contested decision, that the marks are also similar in that regard. Contrary to what the applicant claims, the difference linked to the addition of the expressions ‘pro’ and ‘sportswear & equipment’ to the term ‘alpine’ does not call into question the existence of a phonetic similarity, in so far as the two marks have a dominant element in common (see, to that effect, monBeBé, paragraph 63, and NIMEI LA PERLA MODERN CLASSIC, paragraph 46) and since, as stated in paragraph 53 above, the expressions ‘pro’ and ‘sportswear & equipment’ occupy a secondary position in the mark applied for. They are therefore not likely to be pronounced by the relevant public.

61 The Board of Appeal was therefore correct to conclude, in paragraph 29 of the contested decision, that the signs at issue were phonetically almost identical.

62 So far as concerns the conceptual similarity, it should be noted at the outset that the Board of Appeal did not distinguish the analysis of the conceptual similarity from that of the distinctive character of the term ‘alpine’. Nevertheless, in so far as the existence of a conceptual similarity between the signs is independent of the issue whether or not the signs at issue are highly distinctive, it is necessary to address those two questions separately.

63 Thus, conceptually, the term ‘alpine’ is present in both marks and has a clear meaning for the English and French public, that is to say, ‘the Alps’ or ‘relating to the Alps’. Nevertheless, as that term also has quite close equivalents in other languages of the European Union, such as the terms ‘alpino/a’ in Italian, ‘alpin’ in German, or’alpino/a’ in Spanish, it could also be understood by that section of the public. That term will be perceived by the relevant public as a fanciful term only if its meaning in the language in question is far removed from the term ‘alpine’. Therefore, for those members of the public who understand the meaning of that term, the signs at issue are conceptually similar, in so far as they have the dominant element ‘alpine’ in common (see, to that effect, monBeBé, paragraph 65, and NIMEI LA PERLA MODERN CLASSIC, paragraph 48).

64 In addition, with regard to the expressions ‘pro’ and ‘sportswear & equipment’ present in the mark applied for, it must be stated that these will be understood at least by the English-speaking public. Nevertheless, those expressions, the former meaning ‘professional’ or ‘favourable, positive, supportive’ and the latter meaning ‘clothing and equipment for sport’, have, as the Board of Appeal made clear in paragraph 31 of the contested decision, a widespread use in the trade context in question. In view of that fact and, as has been observed in paragraph 53 above, of the secondary nature of those expressions in the mark applied for, it must be held, contrary to what the applicant claims, that they are therefore not likely to play a decisive role in differentiating between the signs at issue, as the dominant element of both is ‘alpine’.

65 Having regard to all of the foregoing, it must be concluded that the signs at issue are visually, phonetically and conceptually similar.

66 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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).

67 The Board of Appeal found, in paragraph 32 of the contested decision, that, in view, first of all, of the similarity of the signs at issue and, second, of the identity or partial similarity of some of the goods in question, there was a likelihood of confusion between the two signs. It also made clear, in paragraph 33 of the contested decision, that, even if the earlier mark may have a weak distinctive character in respect of certain goods, as the applicant claims, that would be insufficient to discount a likelihood of confusion between the two signs because the distinctive character of the earlier mark was only one factor among others involved in the assessment of the likelihood of confusion.

68 The applicant submits that the term ‘alpine’ will be understood as a clear reference to the place where the products may be used or where they emanate from and that it cannot therefore be a constituent element of a mark, in particular for skiwear, rucksacks and other similar products for ski sports. Thus, in so far as the word element is descriptive and, therefore, lacking distinctive character, it must be available for use by other traders.

69 In that regard, first of all, on the assumption that that argument could be understood as meaning that the mark applied for was contrary to the absolute grounds for refusal and may not be registered, it must be borne in mind that this does not fall within the jurisdiction of the General Court in opposition proceedings (see, to that effect, judgment of 15 October 2008 in Joined Cases T-305/06 to T-307/06 Air Products and Chemicals v OHIM – Messer Group (Ferromix, Inomix et Alumix), not published in the ECR, paragraph 62).

70 Secondly, should the applicant, by his submissions, be seeking to highlight the weak distinctive character of the earlier mark, it must be borne in mind that, in accordance with the case-law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion with the mark applied for. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see PAGESJAUNES.COM, paragraph 70 and the case-law cited).

71 Thus, in the present case, contrary to what the applicant claims, the alleged weak distinctive character, or descriptive character, of the element ‘alpine’ cannot preclude a likelihood of confusion. Indeed, as is apparent, on the one hand, from paragraph 47 above, the goods covered by the two signs at issue are identical or have varying degrees of similarity and, on the other, from paragraph 65 above, the signs at issue are visually, phonetically and conceptually similar. Therefore, the applicant’s argument must be rejected as being unfounded and it must be held that there is a likelihood of confusion between those signs.

72 The applicant also claims that the Board of Appeal did not correctly evaluate the likelihood of confusion, in so far as it did not take into account the fact that the visual aspect is more important than the other aspects in respect of the comparison of the signs at issue, the choice of items of clothing generally being made visually. It is, admittedly, settled case-law that, in respect of clothing, the visual aspect is more important in the overall assessment of the likelihood of confusion (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 51). Nevertheless, as has been stated in paragraph 65 above, given that the signs at issue are also visually similar, that argument must be rejected as being unfounded.

73 Moreover, the fact that part of the relevant public’s level of attention is quite high in respect of skiwear, ski footwear, headgear, as well as rucksacks, is irrelevant in the present case. In the light of the similarity of the signs at issue, a higher level of attention on the part of the relevant public is not sufficient to rule out the risk of that public attributing the same origin, or that of economically-linked undertakings, to the goods in question (see, to that effect, Ferromix, Inomix and Alumix, paragraph 63).

74 In the light of all the foregoing, it must be concluded that the Board of Appeal did not err in finding 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. The applicant’s second plea in law must therefore be rejected and, consequently, the application must be dismissed in its entirety.

75 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hrbek v OHMI- Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT) (Intellectual property) [2011] EUECJ T-434/10 (15 November 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T43410.html Cite as: [2011] EUECJ T-434/10

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