Hearst Communications v OHMI - Vida Estetica (COSMOBELLEZA) (Community trade mark) [2012] EUECJ T-344/09 (27 June 2012)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(Community trade mark - Opposition proceedings - Application for Community word mark COSMOBELLEZA - Earlier national and international word and figurative marks COSMO, COSMOPOLITAN, COSMOTEST, COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW - Non-registered marks and trade names COSMO and COSMOPOLITAN - Relative grounds for refusal - No likelihood of confusion - No similarity between the marks - Article 8(1)(b) of Regulation (EC) No 207/2009)

1 On 31 October 2003 the intervener, Vida Estética, SL, 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 fall within Classes 35 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The application for the Community trade mark was published in Community Trade Marks Bulletin No 032/2004 of 9 August 2004.

5 On 5 November 2004 the applicant, Hearst Communication Inc., filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the services referred to in paragraph 3 above.

6 In support of its opposition, the applicant relied on the following earlier rights:

7 The grounds put forward in support of the opposition were those referred to in Article 8(1)(a) and (b), Article 8(4) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b), Article 8(4) and Article 8(5) of Regulation No 207/2009). The opposition was based on all the goods and services protected by the earlier rights and was directed against all the services covered by the Community trade mark application.

8 By decision of 16 March 2007 the Opposition Division rejected the opposition in its entirety. In particular, it found that there was no likelihood of confusion between the mark applied for and the earlier rights on which the opposition was based.

9 On 16 May 2007 the applicant filed an appeal with OHIM, under 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.

10 By decision of 4 June 2009 ('the contested decision'), the Second Board of Appeal dismissed the appeal. In particular, it first noted, in paragraph 14 of the contested decision, that the only argument made by the applicant before it was that there was a likelihood of confusion between the mark applied for and the earlier rights at issue. Consequently, the Board of Appeal decided to assess only the submissions of the parties with respect to Article 8(1)(b) of Regulation No 207/2009.

11 In that context, in the first place the Board of Appeal noted, in paragraph 21 of the contested decision, that if it found the signs at issue to be dissimilar, then the Opposition Division's decision had to be upheld, since it is a necessary prerequisite for the application of Article 8(1)(b) of Regulation No 207/2009 that the signs be similar. According to the Board of Appeal, it follows that opposition based on that ground must fail, even if the earlier signs possessed 'enhanced distinctiveness through reputation or extensive use', or were well known within the meaning of Article 8(2)(c) of Regulation No 207/2009.

12 In the second place, the Board of Appeal carried out, in paragraphs 22 to 25 of the contested decision, a comparison between the mark applied for and the various earlier rights, namely the earlier signs COSMOPOLITAN, COSMOPOLITAN TELEVISION, THE COSMOPOLITAN SHOW, COSMO TEST and COSMO. The Board of Appeal found that those signs, taken overall, and the mark applied for were dissimilar.

13 In the third place, in paragraph 26 of the contested decision, in respect of the applicant's argument regarding the existence of a series of marks containing the common element 'cosmo', the Board of Appeal stated, in essence, that that argument might be invoked only if, inter alia, proof of use of the marks belonging to such a series of marks were provided. According to the Board of Appeal, the abundant evidence of use and of reputation filed by the applicant pertained exclusively to goods in Class 16, namely magazines, publications and printed matter, although the mark applied for only covered services in Classes 35 and 41 which cannot be considered similar to goods in Class 16. Therefore, since the markets and their respective consumers did not overlap, the mark applied for would not be perceived, according to the Board of Appeal, as forming part of a series of marks owned by the applicant.

14 In the fourth place, in paragraph 27 of the contested decision, the Board of Appeal adjudicated on, first, the Opposition Division's decision No 4174/2004, to which the applicant referred, and stated that it was not sufficiently similar to the Opposition Division's decision at issue in the present case. In particular, the Board pointed out that in that other case both the mark applied for and the earlier marks differed from those at issue in the present case and, further, the goods covered by the trade mark applied for included Class 16 goods and were identical to those protected by the earlier marks. Secondly, as regards the reference by the applicant to other OHIM decisions, the Board of Appeal observed that the legality of its decisions must be assessed purely by reference to Regulation No 207/2009, as interpreted by the Community judicature, and not to OHIM's practice in its earlier decisions.

15 Lastly, the Board of Appeal found, in paragraph 28 of the contested decision, endorsing the Opposition Division's decision, that the earlier rights and the mark applied for were dissimilar and, therefore, since the identity or similarity of signs is an indispensable condition for the application of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal dismissed the appeal and the opposition.

19 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it disputes the assessment made by the Board of Appeal regarding the similarity of the marks at issue and claims that the Board erred in finding that there was no likelihood of confusion.

21 Under Article 8(1)(b) of Regulation No 207/2009, 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, because of 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.

22 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. Under that 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 circumstances of the case, in particular the interdependence between the similarity of the signs and that 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 case-law cited).

23 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, to that effect, Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and case-law cited).

24 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods or services in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, 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 76 and case-law cited).

25 As stated, correctly, by the Board of Appeal in paragraphs 22 to 25 of the contested decision, the extent of the relevant territory to be taken into consideration when assessing the similarity of the marks at issue and the existence of a likelihood of confusion depends, in the present case, on the definition of the territory in which at least one of the earlier rights was protected. Consequently, analysis of the legality of the contested decision must relate to the territories of the United Kingdom, Germany, Spain, France, Ireland, Italy, Austria and Portugal respectively since, first, one or more of the earlier rights were considered by the Board of Appeal as being there 'registered' or 'having effect' and, second, the applicant has not adduced before the Court specific arguments supported by evidence from which it can be concluded that the relevant territory should be extended to include other countries in the European Union, in respect of which an analysis of the likelihood of confusion might, in some cases, differ from that carried out by the Board of Appeal.

26 In particular, it must be observed that it is solely in relation to the abovementioned countries that the Opposition Division concluded that the evidence produced by the applicant in the course of the administrative procedure demonstrated that its magazines or other publications had a 'wide circulation' under the non-registered marks COSMOPOLITAN and COSMO, a conclusion which the Board of Appeal thereafter endorsed. The Board of Appeal further found, in paragraph 26 of the contested decision, that the abundant evidence of use and of reputation filed by the opponent pertained exclusively to goods in Class 16, namely magazines, publications and printed matter, although the mark applied for only covers services in Classes 35 and 41, which cannot be considered similar to the goods in Class 16.

27 Further, it must be added that the references, in the application, to screenshots from the 'COSMOPOLITAN' and 'COSMO' websites, accessible, moreover, in the Netherlands or internationally, cannot suffice to demonstrate actual use of those earlier non-registered rights in countries of the European Union other than those taken into consideration by the Board of Appeal nor, a fortiori, to demonstrate that they were 'well known' within the meaning of Article 8(2) of Regulation No 207/2009. Since the applicant also referred to 'material of use provided before OHIM' it must be recalled that, in accordance with the case-law, it is not for the Court, when there has been such a general reference to other documents, to take on the role of the parties by seeking to identify the relevant evidence (see, by analogy, Case T-169/03 Sergio Rossi v OHIM - Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraph 30). In those circumstances, and having regard to the fact that this action is based solely on Article 8(1)(b) of Regulation No 207/2009, which must be read in conjunction with Article 8(2) thereof, the Court must reject as irrelevant and unsubstantiated the applicant's claim that it had specifically used the abovementioned earlier non-registered rights 'in all EU Member States', in other words, also in countries other than those referred to in paragraph 25, and as unsubstantiated the claim that its magazine Cosmopolitan was famous throughout those States.

28 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 case-law cited).

29 In the present case, it must be observed that it is clear from paragraph 28 of the contested decision that the Board of Appeal endorsed, as regards the assessment with respect to Article 8(1)(b) of Regulation No 207/2009, the findings of the Opposition Division. Accordingly, in the absence of any argument to the contrary in the contested decision in relation to the relevant public, the view must be taken that the Board of Appeal also approved the definition of the relevant public adopted by the Opposition Division which, moreover, the Board summarised in the contested decision.

30 According to that definition, the relevant public for the services covered by the trade mark applied for was composed, first, of average consumers, as regards 'training, education and entertainment services' and secondly, of professionals, as regards the services 'organisation of exhibitions', 'organisation and conducting of seminars' and also the services 'business management and organisation'.

31 The applicant claims that its earlier rights, in particular COSMO and COSMOPOLITAN, are 'female trademarks'. Accordingly, the relevant public which it targets in the marketing of its magazine Cosmopolitan and its other related goods and services for which that mark and the mark COSMO are used consists of 'women of all ages who are interested in love, sexuality, men, but ... also in beauty and life-style'. According to the applicant, the same is true of the services covered by the trade mark applied for. Although the services are described in a rather general manner, the actual use of that mark shows that it is used towards 'women of all ages who are interested in beauty'.

32 OHIM initially contended, in its response, that neither the Opposition Division nor the Board of Appeal had explicitly referred to the relevant consumer, but that it was however clear from the facts that the goods and services at issue were directed to the general public. OHIM does not accept the definition of the relevant public put forward by the applicant, and maintains that while a description of 'female trademarks' might possibly apply in relation to goods such as 'panty liners or tampons', that cannot be possible with respect to the goods and services at issue in this case. The intervener concurs with the definition of the relevant public as stated in paragraph 30 above. At the hearing, in response to a question from the Court, OHIM essentially accepted that position.

33 In that regard, it must be stated, first, that it is not apparent from the very nature of the services covered by the trade mark applied for (see paragraph 3 above) that they are directed solely to the female public or, in particular, to women who are broadly interested in beauty.

34 Secondly, as regards the goods and services protected by the earlier rights, only those in respect of which a finding had been made of an identity with or similarity to the services covered by the trade mark applied for should be taken into consideration. Since the Board of Appeal did not explicitly define its position in that regard, it must be held, in the light of paragraph 28 of the contested decision, that the Board endorsed the assessment of the Opposition Division, and OHIM moreover confirmed this at the hearing. However, it is again not apparent, from the nature of the services held by the Opposition Division to be similar to the services covered by the trade mark applied for, that those services involving 'organising trade and business fairs and exhibitions' protected by the earlier mark registered in the United Kingdom THE COSMOPOLITAN SHOW, or 'entertainment', 'arranging and conducting of fairs, exhibitions and shows' or 'instructional and teaching services', or even 'business consultation services' and 'business advisory services', all included in Classes 35 and 41 and protected by some of the earlier rights, should be regarded as restricted to a female public.

35 Finally, as regards the applicant's claim that it marketed some of its goods in a particular way, and its claim, in relation to the characteristic content of its magazines or other publications that its intention was clearly to win over the female public, it must be declared that those claims are of no relevance, since, in accordance with settled case-law, a marketing concept is purely a matter of choice for the undertaking concerned and may change after a sign has been registered as a Community trade mark, and therefore cannot have any effect on the assessment of the likelihood of confusion in opposition proceedings (see, to that effect, judgment of 23 September 2009 in Case T-99/06 Phildar v OHIM - Comercial Jacinto Parera (FILDOR), not published in the ECR, paragraph 95). In the light of the foregoing, the applicant's argument that the relevant public is solely a female public or, more particularly, a public consisting of women broadly interested in beauty must be rejected as unfounded.

36 Since the applicant does not in other respects dispute the definition of the composition of the relevant public, set out in paragraph 30 above, it is necessary, having regard to the nature of the services at issue, to start from the premiss that the relevant public consists, in respect of some of the services concerned, of the general public and, in respect of other services concerned, of professionals. Further, it is clear from the contested decision, in particular from the case-law cited in paragraphs 16 and 17 of that decision, that where the Board of Appeal took account of the general public, the Board defined it as being reasonably well informed and reasonably observant and circumspect.

37 The applicant maintains that its marks and its other earlier rights are mainly associated with the 'famous' Cosmopolitan magazine, and with related goods and with services in Classes 35 and 41, the similarity of which to the services covered by the mark applied for cannot be denied. The applicant claims that the similarity is even more obvious because the public targeted by its magazine consists of women interested particularly in beauty, while the intervener also addresses to female consumers its services, including a trade show, a congress relating to woman's beauty and entertainment services. That similarity is enhanced, according to the applicant, by the fame of its Cosmopolitan magazine, and by the fact that the intervener advertises, on its website 'www.cosmobelleza.com', a magazine for women titled Togado, which shows that the range of goods and services which have beauty as a subject are linked.

38 OHIM disputes the applicant's arguments. The intervener points out, more specifically, some differences between the goods and services at issue.

39 In that regard, it must first be observed that, as is clear particularly from paragraph 28 of the contested decision, read together with paragraph 21, the Board of Appeal ruled out any likelihood of confusion between the marks at issue because of the absence of similarity between the marks and because, consequently, one of the indispensable conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not satisfied. It follows that that exclusion of any likelihood of confusion was made without regard to whether the goods and services at issue were similar or even identical.

40 In those circumstances, even if the view is taken that the applicant intends, by its claims, to maintain that a finding of identity or 'enhanced' similarity should have been made in relation to a broader range of services or goods at issue than was the case (see paragraph 34 above), it is clear that those claims are ineffective, since the analysis of the lawfulness of the contested decision must relate solely to the assessment of the similarity of the signs, and the consequence of confirmation that they are overall dissimilar will be the dismissal of this action (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 22 above, paragraph 52).

41 Two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009 when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Case T-286/02 Oriental Kitchens v OHIM - Mou Dybfrost (KIAP MOU) [2003] ECR II-4953, paragraph 38 and case-law cited).

42 The global assessment of the likelihood of confusion with respect to the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, 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 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 (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35).

43 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, such a 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 complex trade mark may not, in certain circumstances, be dominated by one or more of its components. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by it (see Case T-7/04 Shaker v OHIM - Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 40 and case-law cited).

44 Furthermore, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T-359/02 Chum v OHIM - Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and case-law cited).

45 The applicant claims, in essence, that the mark applied for is similar to its earlier rights. OHIM and the intervener dispute the applicant's claim.

46 The Court considers it appropriate, because of the approach taken by the Board of Appeal in the contested decision, to assess whether there are any similarities between the mark applied for and, taking each in turn, the various earlier rights on which the opposition was based.

- Comparison of the mark applied for with the sign COSMOPOLITAN, registered or having effect in the United Kingdom, Germany, Spain and France

47 The Board of Appeal considered, in paragraph 22 of the contested decision, that although the two signs began with the same term, namely, 'cosmo', and contained the same number of syllables, the last three had nothing in common, with the result, according to the Board, that the visual and phonetic differences far outweighed the similarities between those signs.

48 Conceptually, it was, according to the Board of Appeal, impossible to carry out a comparison of the signs at issue in Germany, where they would have no obvious meaning and be perceived as fanciful. On the other hand, in the United Kingdom, the earlier sign had, according to the Board, a meaning, namely, that of a person who 'is worldly and familiar with other places and customs'. That conceptual difference would heighten the dissimilarity of the signs. Lastly, in Spain and France, the sign applied for would evoke the idea of 'cosmic beauty', while the earlier sign would also be perceived as describing a person who 'is worldly and familiar with other places and customs'. According to the Board of Appeal, it followed that, in those countries, the distance between the signs was increased because of their conceptual differences. Further, it followed from the foregoing that the signs, considered globally, were different.

49 The applicant maintains that the Board of Appeal erred in taking the view that the signs COSMOPOLITAN and COSMOBELLEZA were not similar. The applicant emphasises that, visually and phonetically, the two marks begin with the same element 'cosmo', in other words they are identical so far as concerns their first five letters, which is the part which particularly attracts the attention of consumers, whereas the final part of the mark applied for constitutes merely a reference to the field in which the services covered by that mark are offered. In addition, according to the applicant, the element 'cosmo' is graphically emphasised when the mark COSMOBELLEZA is used, as is clear from the intervener's website, with the result that consumers associate the two marks at issue. Further, the applicant claims that the abovementioned earlier mark enjoys enhanced distinctiveness because of its reputation and its extensive use in respect of a magazine and related goods and services in the fields of interest for women, including the field of beauty. That reinforces the impression of similarity, since the mark applied for could also be used in that sector, and since the relevant consumer would think, when seeing or hearing the mark applied for, of the earlier mark with which he is familiar.

51 The Court must hold, as OHIM did, that although the marks COSMOBELLEZA and COSMOPOLITAN are identical so far as concerns their first five letters, it remains the case that they are significantly different in their second parts, consisting of seven letters, which the relevant consumer would not fail to notice.

52 In that regard, first, in relation to the applicant's argument that the beginning of a sign has more importance than the ending in the overall impression produced by that sign, it must be recalled that that consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM - Audi (ALLTREK), not published in the ECR, paragraph 70, and judgment of 8 September 2010 in Case T-369/09 Quinta do Portal v OHIM - Vallegre (PORTO ALEGRE), not published in the ECR, paragraph 29).

53 However, in the present case, since it has not been demonstrated that the initial part of the marks at issue, namely 'cosmo', constitutes their dominant element and since the term 'belleza' is, at most, suggestive in relation to the subject of the services covered by the trade mark applied for, the Court must make an overall comparison of those marks. When making such a comparison, account must be taken of the fact that the relevant public is subdivided into several groups according to the capacity of its members to understand the meaning or, at least, the suggestions contained in each of the marks in question.

54 Accordingly, first, as regards the relevant German public, the Court must hold, as did the Board of Appeal, and there being no dispute by the applicant on this point, that, since that public would perceive no meaning in any of the marks at issue, it would regard them as fanciful names, not comparable conceptually.

55 That public will be more specifically influenced by the abovementioned visual and phonetic differences between the marks, accentuated by some Italian, Portuguese or Spanish connotations emerging from the second part of the mark applied for, placing a distance between that mark and the mark COSMOPOLITAN, which is English-sounding.

56 Those differences would prevail even if some German consumers were to identify in the beginning of the marks at issue a reference to the cosmos ('Kosmos' in German). A suggestive element of that kind cannot in itself represent a similarity which outweighs the strong visual and phonetic differences to be found in the second part of the marks in question, which moreover exceeds the first part in length.

57 Secondly, as regards the relevant public in the United Kingdom, the Board of Appeal was correct to take into consideration the understanding of the meaning of the word 'cosmopolitan' as an additional element of differentiation between the marks.

58 In accordance with the case-law, conceptual differences may counteract to a large extent visual or phonetic similarities between the signs concerned. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (see, to that effect, Case T-292/01 Phillips-Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 54).

59 In the present case, it is common ground that the word 'cosmopolitan' is an ordinary English word, which, as stated by the Board of Appeal, means, inter alia, a person who 'is worldly and familiar with other places and customs'. Such a definition places even greater distance between the earlier mark and that applied for, the meaning or suggestive range of which are probably not understood in the United Kingdom, where that mark is therefore regarded as fanciful.

60 Thirdly, as regards the relevant public in Spain and France, the Board of Appeal was correct to take into consideration, as an additional element of conceptual differentiation, the fact that the mark applied for is understood as evoking 'cosmic beauty'. That is because the French term describing a woman's beauty, namely, the adjective 'belle', is not far removed from the term 'belleza', nor the word 'cosmos' from the prefix 'cosmo'. As regards the understanding of the word 'cosmopolitan' in the sense referred to in the preceding paragraph, it is linked to the fact that the French equivalent, namely the word 'cosmopolite', presents a strong similarity with the English word. The same is true, by analogy, as regards the Spanish language, particularly because of the existence, in its vocabulary, of the words 'cosmopolita' and 'belleza'.

61 Further, the Court must observe, as OHIM did, that consumers understanding the abovementioned meanings or suggestions will have no reason to divide the marks at issue into a number of separate words. In respect of the earlier mark, they will grasp its overall aspect, the more so because the suffix 'politan' does not exist as an independent linguistic unit. As regards the mark applied for, that will probably also be the case, because the verbal element 'cosmo' will be regarded by that part of the public which detects the conceptual reference of the mark applied for as being a qualification of the word 'belleza', which gives a suggested meaning to the whole of the neologism in question, describing a sort of cosmic beauty. Further, the part of the relevant public who do not understand that meaning will take the mark to be a verbal expression which is homogeneous and invented.

62 In light of the abovementioned findings, it must be concluded that the Board of Appeal was correct to hold that the signs in question were dissimilar overall. That conclusion cannot be invalidated by the applicant's claims relating to, first, the manner in which the common part 'cosmo' in the mark applied for is emphasised when it is used by the intervener and, secondly, the consideration that the earlier mark enjoys an enhanced distinctiveness because of its reputation and extensive use.

63 As regards the first claim, in accordance with settled case-law a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration but not any of its specific graphic or stylistic elements (see judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM - Curon Medical (CURON), not published in the ECR, paragraph 74 and case-law cited). Consequently, the applicant's assertion is unfounded.

64 As regards the second claim, it must be observed, first, as regards the United Kingdom, that, as stated by the Opposition Division and as accepted for its part by the Board of Appeal, the existence of rights acquired by use and by reputation had been demonstrated for the earlier non-registered marks COSMOPOLITAN and COSMO solely in respect of 'printed matter and magazines' in Class 16. Those goods are dissimilar to the services covered by the mark applied for.

65 Secondly, as regards reputation in the other relevant Member States, it was demonstrated only in France, namely in respect of the French registration No 1486096 of the COSMOPOLITAN mark, and that solely in respect of the 'magazines, publications, newspapers, printed matter' in Class 16, also dissimilar to services covered by the trade mark applied for.

66 In those circumstances, neither the fact that the earlier mark has a reputation nor the fact that it is well known can be taken into consideration when assessing the similarity of the marks at issue. In any event, those circumstances cannot constitute in the present case a factor of sufficient weight to invalidate the conclusion that there is no similarity between it and the mark applied for in any of the countries in the European Union under consideration, since that conclusion derives from an objective analysis of the marks taken as a whole.

- Comparison of the mark applied for and the earlier marks COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW, registered or having effect in the United Kingdom, Ireland, Germany, Spain, France, Italy, Austria and Portugal

67 The Board of Appeal stated, in paragraph 23 of the contested decision, in relation to comparison of the mark applied for with the earlier signs COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW, that the same arguments as those concerning the earlier mark COSMOPOLITAN (summarised in paragraphs 47 and 48 above), applied a fortiori, 'given the additional element [television] contained in the earlier sign' which put further distance between the signs. Consequently, the Board of Appeal found that the signs were dissimilar overall.

68 The applicant claims that the mark THE COSMOPOLITAN SHOW is a figurative mark of which the main and distinctive element is 'cosmopolitan', with the result that, since the marks COSMOPOLITAN and COSMOBELLEZA are similar, THE COSMOPOLITAN SHOW and COSMOBELLEZA must also be similar. The applicant adds that the word 'show' enhances the similarities, since it refers directly to services covered by the mark applied for, which include trade shows and exhibitions, the organisation of congresses and related services, in other words, services which are identical or highly similar to a show. Next, the applicant claims that the earlier mark COSMOPOLITAN TELEVISION is comparable to the above situation. That is because, first, a television programme might be broadcast from a trade show and, secondly, entertainment services are, according to the applicant, very close to television services.

70 It is clear that, since it has already been concluded that the marks COSMOBELLEZA and COSMOPOLITAN are dissimilar (see paragraph 62 et seq. above), only if the additional elements of the earlier marks COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW strengthened the similarities in relation to the sign applied for would it have been possible to come to a different conclusion. It is however clear that, on the contrary, the addition of the words 'television' and 'show' alters both the structure of the earlier marks as compared with the mark applied for and their conceptual scope, by adding a reference to the sectors covered by the earlier marks. Accordingly, in terms of the overall comparison, visually, phonetically and conceptually, the distance between the marks at issue has merely increased, as correctly found by the Board of Appeal when it refers to the element 'television' and, implicitly, the element 'show'.

71 Further, the applicant's various claims to the effect that those additional elements refer directly to services covered by the mark applied for are of no relevance, since that fact, even were it to be considered as proved, has no effect on the comparison of the signs at issue. That is because such claims fail to demonstrate that conceptually the marks COSMOPOLITAN TELEVISION or THE COSMOPOLITAN SHOW, on the one hand, and COSMOBELLEZA, on the other, are significantly closer, since the conceptual analysis must take into account, more specifically, the marks as such and not solely the sectors in which it is presumed they will be used. In any event, if there is any coming together of the concept to be found in the earlier marks and some of the services which the mark applied is intended to protect, that cannot outweigh the differences in the structure of marks under comparison.

- Comparison of the mark applied for with the earlier sign COSMO, registered in the United Kingdom and Portugal

72 The Board of Appeal held, in paragraph 25 of the contested decision, that the signs at issue differed widely in the number of syllables, namely five against two, and in length, the mark applied for being more than twice as long as the earlier sign. Apart from the common term 'cosmo', the Board stated that the signs did not coincide. In Portugal, consumers would have some insight into the meaning of the terms at issue and would understand that the mark applied for alludes to a 'cosmic' or 'universal beauty' and that the earlier sign alludes to the 'cosmos'. In the opinion of the Board of Appeal, that is a conceptual difference which puts further distance between the signs at issue. In the United Kingdom, the sign COSMO will suggest the cosmos, while the sign COSMOBELLEZA will have no meaning, the term 'cosmo', blending seamlessly with the word 'belleza'. Consequently, there is also some conceptual difference between the signs. It follows, according to the Board of Appeal, that the signs at issue are dissimilar.

73 The applicant claims that the mark 'COSMO' is identical to the first part of the mark applied for, in other words, to the part of the latter mark which will particularly draw the attention of consumers. It follows that the marks at issue are visually and phonetically similar. The applicant claims that the reputation and long and extensive use of the earlier mark in question must also be taken into account, because that is the reason why consumers will perceive the earlier mark in the mark applied for. In addition to those factors, according to the applicant, there is the fact that the marks at issue are used in the same fields.

74 It is clear, in that regard, that, visually, both the length of the mark applied for and the fact that its appearance refers to terms of the Spanish, Portuguese or Italian languages, though that term may not be understood by the relevant public, particularly in the United Kingdom, are factors which counteract the similarity to be found in the fact that the beginning of the mark applied for is identical to the earlier mark. Contrary to what is claimed by the applicant, the element 'belleza' cannot be regarded as visually negligible because it is placed at the end of the mark applied for (see paragraphs 52 and 53 above). Moreover, that element is also not devoid of distinctiveness in relation to the services at issue, since it remains fanciful for consumers in the United Kingdom and at most suggestive for consumers in Portugal, particularly where it is taken together with the initial element 'cosmo' with which it forms a homogeneous neologism.

75 Phonetically, it is clear, by analogy with the conclusion in the preceding paragraph, that the differentiation caused by the second part of the word 'cosmobelleza' makes it possible to distinguish the marks at issue. In particular, given that it is a homogeneous neologism, the relevant consumer has no reason not to pronounce that second part, where Italian, Portuguese or Spanish sounds are an additional element of differentiation in the pronunciation of the mark applied for, which is longer than that of the mark COSMO.

76 Conceptually, the Court shares the view of the Board of Appeal that there is some difference. Admittedly, in Portugal, where the relevant consumers will perceive the meanings or suggestions carried by the two marks at issue, namely, the reference to a 'cosmic beauty', on the one hand, and 'cosmos', 'space' or 'the universe', on the other, the concepts overlap to an extent, both marks including the reference to the 'cosmic'. However, the conceptual addition in the mark applied for designed to refer to beauty enhances and makes specific the meaning of that mark, in such a way as to differentiate it from the earlier mark COSMO, conveying those concepts linked to 'the universe'. Further, taking into account such a differentiating feature ensures that undue protection is not given to marks relying on a word which could be understood as part of everyday language, the inherent distinctiveness of which cannot accordingly be regarded as particularly high (see, by analogy, Case T-34/04 Plus v OHIM - Bälz and Hiller (Turkish Power) [2005] ECR II-2401, paragraphs 61 to 63).

77 As regards the United Kingdom public, it is clear that since that public will not understand the meaning of the mark COSMOBELLEZA, but solely that of the mark COSMO, it will continue to perceive a degree of conceptual dissimilarity, albeit slight, because of the Italian, Portuguese or Spanish aspect suggested by the mark applied for, but will not however understand the specific meaning.

78 That conclusion is again not invalidated by the applicant's reference to the fact that the earlier mark has a reputation and that its use is long and extensive. As has already been stated in paragraphs 64 and 65 above, the reputation or use of the earlier mark COSMO have not been demonstrated in relation to the services which are at issue in this case and cannot therefore be taken into consideration in the assessment of the similarity of the marks at issue. In any event, neither the enhanced distinctiveness as a result of use nor even the reputation of the earlier mark can invalidate the conclusion arrived at following an objective analysis of the absence of similarity between the marks, taken overall, in any of the countries of the European Union under consideration.

79 It follows from the foregoing that the marks at issue, taken as a whole, are different.

- Comparison of the mark applied for with the sign COSMO TEST, registered or having effect in Portugal, Spain, France and Italy

80 The Board of Appeal stated, in paragraph 24 of the contested decision, that the abovementioned signs differed in length and in number of syllables. The Board added that, visually, the mark applied for consisted of a single word whereas the earlier mark consisted of two word components. The Board of Appeal found that, since those signs coincided only in their common term 'cosmo', they were dissimilar overall.

81 The applicant claims that the distinctive and non-descriptive component of the earlier mark COSMO TEST was the first word component, namely 'cosmo', and that a similarity between the marks at issue was again undeniable since that component was, again, included in the mark applied for.

82 In that regard, suffice it to state that since an overall similarity between the mark applied for and the earlier mark COSMO has been ruled out, there can be no other conclusion in relation to the earlier mark COSMO TEST, in the absence of evidence of any conceptual link between the additional element 'test' in the earlier mark and the mark applied for which might be capable of increasing the similarities between the marks at issue. However, the applicant has not claimed that the meaning of the mark COSMO TEST, if it is to be understood by part of the relevant public as referring to a sort of universal test, brings that mark closer, conceptually, to the meaning of the mark applied for, namely 'cosmic beauty'. The applicant's argument must therefore be rejected.

Whether there is a likelihood of association because of the existence of a series of marks

83 The Board of Appeal stated, in paragraph 26 of the contested decision, in relation to the applicant's claim concerning the likelihood of association because of the existence of a 'series of marks' containing the word element 'cosmo', that, in order to demonstrate that there was such a likelihood, evidence of use of marks belonging to a series had to be provided. However, according to the Board of Appeal, in the present case, the abundant proof of use and reputation provided by the applicant concerned exclusively the 'magazines, publications and printed matter', goods in Class 16. Further, according to the Board of Appeal, the mark applied for covered solely services in Classes 35 and 41, which could not, in the Board's opinion, be regarded as similar to the goods in Class 16. The Board of Appeal concluded that, since the markets and their respective consumers did not overlap, the mark applied for would not be perceived as forming part of a series of marks owned by the applicant.

84 The applicant maintains that the Board of Appeal disregarded the argument based on the existence of a family of marks. According to the applicant, the earlier mark COSMO is not only used as an abbreviation of the name of the famous Cosmopolitan magazine, but also in connection with other 'notions' such as those referred to by the terms 'cosmo tips' and 'my cosmo'. Consequently, according to the applicant, female consumers will assume that the mark applied for has the same commercial origin, or comes from an undertaking economically linked to that which is the proprietor of the earlier marks.

85 It must be observed that, in accordance with Case T-194/03 Il Ponte Finanziaria v OHIM - Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445, confirmed by the Court of Justice in Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, a likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if both of two conditions are satisfied (see, to that effect, BAINBRIDGE, paragraph 125 et seq.).

86 First, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a 'series'. For there to be a likelihood of the public's being mistaken as to whether the trade mark applied for belongs to the series, the earlier marks forming part of that series must necessarily be present on the market. Since taking into account the serial nature of the earlier marks would entail widening the scope of protection of the trade marks forming part of the series, considered individually, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing the same distinctive element, and in the absence of any actual use of the marks, must be regarded as excluded. Consequently, failing proof of such use, any likelihood of confusion entailed by the appearance on the market of the trade mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the trade mark applied for (BAINBRIDGE, paragraph 85 above, paragraph 126).

87 Secondly, the mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That could not be the case where, for example, the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (BAINBRIDGE, paragraph 85 above, paragraph 127, and Case T-287/06 Torres v OHIM - Bodegas Peñalba López (Torre Albéniz) [2008] ECR II-3817, paragraph 81).

88 In the present case, first, it must be recalled that the distinctiveness acquired through use of the earlier marks was considered by the Opposition Division, whose conclusions were adopted by the Board of Appeal, to be proved solely in respect of the French mark COSMOPOLITAN and in respect of the non-registered marks COSMOPOLITAN and COSMO having effect in the United Kingdom. Consequently, even if a minimum of two earlier marks might, in certain circumstances, be the initial basis of a series of marks, the question whether, in the present case, such a series exists arises, on any view, only in respect of the United Kingdom.

89 However, it is clear that the applicant has not proved that the Board of Appeal's conclusion, that evidence of use of the earlier marks leading to greater distinctiveness or reputation was provided solely in respect of certain goods in Class 16 (see paragraph 83 above), which lacked any similarity with the services covered by the trade mark applied for, was erroneous.

90 In that regard, while it is admittedly true that some of the services covered by the trade mark applied for and the abovementioned goods protected by the earlier rights may overlap as regards the field in which they are placed, namely, that of fashion, that factor alone cannot be regarded as sufficient ground for the conclusion that the relevant consumers using the intervener's services would usually perceive the marks COSMO or COSMOPOLITAN, which have a reputation in the United Kingdom, as referring to a supplier of similar services, and, thereafter, would tend to associate the applicant's undertaking with that of the intervener. That is because whether it is, as the case may be, professionals or the general public who are involved, it is reasonable to believe that those consumers will be aware of the very restricted sector in which the use of the marks COSMO and COSMOPOLITAN is well known, since their reputation derives particularly, not to say exclusively, from the fact that the magazines which they designate have a wide circulation, as is clear from the facts taken into consideration by the Opposition Division and summarised in the contested decision.

91 In any event, in the circumstances of the present case, the element 'cosmo' cannot be regarded as the common element which is characteristic of a series consisting of the marks COSMO, COSMOPOLITAN and COSMOBELLEZA, for the purposes of the case-law cited in paragraph 87 above. That is because it is clear that neither in the earlier mark COSMOPOLITAN nor in the mark applied for is it probable that the element 'COSMO' will be perceived as being an independent element which serves to connect those marks to a series. In the case of the former, it is the English word 'cosmopolitan', used in everyday vocabulary, which will be remembered as a whole by consumers, because of its more specific semantic content, distinct from that of the element 'cosmo' taken by itself. In the case of the latter, while being fanciful, the mark applied for will also be perceived as it is, that is say, as a homogeneous unit, given that consumers in the United Kingdom have no reason to distinguish its second element, which they will not understand.

92 Moreover, the abovementioned arguments cannot be invalidated by the applicant's references to certain other marks or 'notions' such as those referred to by the terms 'cosmo tips' and 'my cosmo' which the applicant claims to have used, since the opposition was not based on them and it has not been shown that they were mentioned in the procedure before the Board of Appeal.

93 In those circumstances, the applicant's argument based on the alleged existence of a series of marks must be rejected as unfounded.

94 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 the 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 VENADO with frame and Others, paragraph 74).

95 Further, 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, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24; Canon, paragraph 94 above, paragraph 18; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 20).

96 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 case-law cited).

97 In the present case, the Board of Appeal took the view that the applicant had not proved to the requisite legal standard that there was a likelihood of confusion between the earlier marks and the mark applied for. Given that the earlier marks and the mark applied for were dissimilar, the Board of Appeal endorsed the conclusions of the Opposition Division and dismissed the appeal, since 'identity or similarity of signs is an indispensable condition for the application of Article 8(1)(b) of Regulation No 207/2009'. Further, the Board relied on the rule that, when the signs compared are not similar, opposition based on the application of Article 8(1)(b) must fail, even if the earlier marks possessed enhanced distinctiveness acquired through reputation or extensive use, or if they are well known within the meaning of Article 8(2)(c) of Regulation No 207/2009.

98 The Court observes, first, that as is clear from paragraphs 62, 70, 79, 82 and 93 above, the assessment by the Board of Appeal concerning the overall analysis of the similarities between the marks at issue must be upheld, as must the assessment of the claimed existence of a series of marks containing the element 'cosmo'.

99 Accordingly, the question arises whether the Board of Appeal was correct to draw the conclusions summarised in paragraph 97 above or whether, on the contrary, the applicant's argument based on the identity or similarity of the goods and services concerned and the reputations of certain earlier marks are such as to invalidate those conclusions.

100 As regards the first part of that argument, it is clear from settled case-law that the absence of similarity of the signs at issue cannot, in the context of the global assessment of the likelihood of confusion, be offset by the fact that the goods and services designated are identical or similar and that they belong to the same production or marketing sector, since the fact that goods and services are identical or similar is not sufficient to support the finding that there is a likelihood of confusion (see, by analogy, the judgment of 16 January 2008 in Case T-112/06 Inter-IKEA v OHIM - Waibel (idea), not published in the ECR, paragraph 83 and case-law cited, and easyHotel, paragraph 23 above, paragraph 42).

101 As regard the second part of the argument, while it is settled case-law that the greater the distinctiveness of the earlier mark the greater the likelihood of confusion, it must be made clear that a likelihood of confusion presupposes that the signs are identical or similar. Thus, although for the purposes of assessing whether there is sufficient similarity between the signs or between the goods and services to give rise to a likelihood of confusion, account must be taken of the fact that a mark is well known or has a reputation, that fact has no bearing on the assessment of the likelihood of confusion where the marks at issue are globally different (see idea, paragraph 84 and case-law cited). Those considerations are applicable, in the present case, both in respect of the earlier mark COSMOPOLITAN and in respect of the mark COSMO, to the extent that their distinctiveness acquired by usage or even their reputation have been held to be proved.

102 In addition, as previously stated in paragraphs 25 to 27 above, in relation to the applicant's claim that the abovementioned earlier marks were used and had a reputation 'in all EU Member States', the applicant has not submitted in support of its claim evidence which is sufficient to render invalid the findings of the Opposition Division, adopted by the Board of Appeal, that solely in the territories of the United Kingdom and France, and solely in respect of some of the goods in Class 16, was it demonstrated that some of the earlier marks had a reputation or were well known (see, inter alia, paragraphs 13, 64 and 65 above). Neither the website screenshots submitted as part of the annex to the application nor the general references to the administrative file before OHIM make it possible to assess, for the purposes of the case-law cited in paragraphs 95 and 96, the market position held by the marks at issue in the markets of other countries of the European Union, how intensive and long-standing their use has been or even the proportion of interested parties who identify the goods or services as having their origin in a specific undertaking on the basis of those trade marks.

103 Finally, as regards the applicant's arguments that the relevant public for the marks at issue is identical, and, more specifically, that it is limited to women interested in fashion and beauty, who would more readily think of the earlier marks when they were offered the services covered by the mark applied for, those claims have already been refuted in paragraph 33 et seq. above.

104 In the light of all of the foregoing, it must be held that the Board of Appeal correctly determined that the signs at issue were dissimilar and that there was no likelihood of confusion between them. In those circumstances, the Court considers that there is no need to rule on the claims submitted by the intervener in relation to, first, the peaceful coexistence of the marks at issue in Spain and, second, the references to decisions of Spanish courts holding that there was no likelihood of confusion between the marks COSMOPOLITAN and COSMOBELLEZA.

105 Consequently, the applicant's single plea in law cannot be accepted and the action must therefore be dismissed.

106 Under Article 87(2) of the Rules of Procedure of the 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 forms of order sought by OHIM and the intervener.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hearst Communications v OHMI - Vida Estetica (COSMOBELLEZA) (Community trade mark) [2012] EUECJ T-344/09 (27 June 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T34409.html Cite as: [2012] EUECJ T-344/9, [2012] EUECJ T-344/09

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