Tifosi Optics v OHMI - Tom Tailor (T) (Judgment) [2014] EUECJ T-531/12 (07 October 2014)

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(Community trade mark — Opposition proceedings — Application for Community figurative mark T — Earlier Community figurative mark T — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Tifosi Optics, Inc., established in Watkinsville (United States), represented initially by A. Tornato and D. Hazan, and subsequently by R. Gilbey, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Tom Tailor GmbH, established in Hamburg (Germany), represented by O. Gillert, K. Vanden Bossche and B. Köhn-Gerdes, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 September 2012 (Case R 729/2011-2), concerning opposition proceedings between Tom Tailor GmbH and Tifosi Optics, Inc.,

composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,

having regard to the application lodged at the Court Registry on 6 December 2012,

having regard to the response of OHIM lodged at the Court Registry on 19 February 2013,

having regard to the response of the intervener lodged at the Court Registry on 25 March 2013,

1 On 11 September 2009, the applicant — Tifosi Optics, Inc. — 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 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 sought is the following figurative sign:

3 The goods in respect of which registration was sought are in Classes 9 and 25 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:

– Class 9: ‘Optical apparatus and instruments; spectacles; sunglasses; frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor; visors; binoculars; ski masks; protective helmets and goggles, parts and fittings therefor; contact lenses and containers therefor’;

4 The Community trade mark application was published in Community Trade Marks Bulletin No 43/2009 of 9 November 2009.

5 On 5 February 2010, the intervener — Tom Tailor GmbH — filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier Community figurative mark — registered under No 1 368 232 — reproduced below:

7 The goods covered by the earlier trade mark were in Classes 9 and 25, inter alia, and corresponded, for each of those classes, to the following description:

– Class 9: ‘Optical apparatus and instruments; eyewear; eyeglasses; sunglasses; lenses; eyeglass cases and sunglass cases; parts and fittings for all the aforesaid goods’;

– Class 25: ‘Men’s and women’s clothing; t-shirts, shirts, jeans, pants, shorts, leather pants, chaps, sweaters, jackets, vests, skirts, dresses and footwear; articles of outerclothing’.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.

10 On 31 March 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11 By decision of 17 September 2012 (‘the contested decision’), wholly based on the earlier Community trade mark registered under No 1 368 232, the Second Board of Appeal of OHIM annulled the Opposition Division’s decision and refused the Community trade mark application for all the goods concerned. On the one hand, it held that, since the signs at issue were not identical, the opposition brought on the basis of Article 8(1)(a) of Regulation No 207/2009 could not be upheld. On the other hand, it found that the goods covered by the mark applied for and the goods covered by the earlier trade mark were either identical or similar; that the trade marks were visually similar and aurally and conceptually identical; and that the earlier trade mark had average inherent distinctiveness. The Board of Appeal concluded from this that the identity and similarity of the goods concerned and the degree of similarity between the marks, considered cumulatively, were sufficiently high to justify the conclusion that there was a likelihood of confusion, even in a case involving an earlier trade mark of weak distinctive character.

12 By application lodged at the Court Registry on 6 December 2012, the applicant brought the present action.

15 OHIM contends that Annexes A 10 to A 13 to the application were submitted for the first time before the General Court, and not during the proceedings before OHIM, and must therefore be declared inadmissible. Those annexes contain the results from searches of OHIM’s registers and of the registers of certain Member States’ patent and trade mark offices for registrations of trade marks composed of or containing the letter ‘t’.

16 The applicant argues that the annexes in question do not alter the subject-matter of the dispute in any way, because they are related to an argument which the applicant has put forward throughout the proceedings, namely, that alphabetical trade marks are generally weak.

17 In that connection, it should be borne in mind that, according to case-law, the purpose of actions before the General Court under Article 65 of Regulation No 207/2009 is to secure review of the legality of decisions of the Boards of Appeal of OHIM and, accordingly, the role of the Court is not to re-evaluate the facts in the light of documents produced for the first time before it. To admit such evidence is contrary to Article 135(4) of the Rules of Procedure of the General Court, which states that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see, to that effect, Case T‑128/01 DaimlerChrysler v OHIM (Calandre) [2003] ECR II‑701, paragraph 18; Case T‑435/05 Danjaq v OHIM — Mission Productions (Dr. No) [2009] ECR II‑2097, paragraph 11; and Case T‑28/10 Euro-Information v OHIM (EURO AUTOMATIC PAYMENT) [2011] ECR II‑1535, paragraphs 17 and 18).

18 In the present case, it is not disputed that Annexes A 10 to A 13 to the application were produced for the first time before the General Court. Consequently, even if it is accepted that the facts to which they relate were discussed in the proceedings before OHIM, those documents must be rejected as inadmissible.

19 The intervener observes that Annexes A 3 and A 4 to the application, which contain certificates showing that the applicant’s lawyers are members of the Bar, are not translated into the language of the case (English). Consequently, it contends that those annexes do not meet the formal requirements set out by the Rules of Procedure and cannot be taken into consideration.

21 In that regard, it should be borne in mind that, under Article 44(3) of the Rules of Procedure, a lawyer acting for a party must lodge at the Court Registry a certificate attesting to the fact that he is authorised to practise before a court of a Member State or of another State which is a party to the European Economic Area (EEA) Agreement. That provision does not require that the certificate be translated into the language of the case.

22 While it is true that the first subparagraph of Article 35(3) of the Rules of Procedure provides for the use of the language of the case in, inter alia, the documents supporting the parties’ written pleadings and in the parties’ oral pleadings, it should be noted that the certificates showing that the parties’ representatives are members of the Bar are not documents supporting written pleadings for the purposes of that provision. Those certificates are intended first and foremost for the General Court, so that it can ascertain whether the parties are properly represented. This admissibility criterion relates to public policy and the General Court must verify of its own motion that it is satisfied. For such purposes, translation into the language of the case is not necessary.

23 It follows that the intervener’s argument must be rejected and that Annexes A 3 and A 4 to the application must be declared admissible, as must the certificate produced by the applicant’s new representative, appended to the letter lodged at the Court Registry on 27 January 2014.

Admissibility of the applicant’s arguments concerning the comparison of the goods

24 OHIM contends, in essence, that the applicant’s arguments concerning the similarity of the goods do not meet the requirement under Article 44(1)(c) of the Rules of Procedure for the applicant to submit a summary of the pleas in law on which the application is based.

25 In support of its argument, OHIM cites settled case-law, according to which the General Court must reject as inadmissible a head of claim or argument in an application submitted to it if the essential matters of law and of fact on which the head of claim or argument is based are not indicated coherently and intelligibly in the application itself (Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 37).

26 The applicant contests OHIM’s argument and challenges, in particular, OHIM’s interpretation of the case-law in question.

27 In that regard, it should first be borne in mind that, according to case-law, within the restrictions of Article 65 of Regulation No 207/2009, as interpreted by the Court of Justice, the General Court can carry out a full review of the legality of the decisions of OHIM’s Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 39).

28 Thus, if the Court is hearing an action contesting the Board of Appeal’s assessment of the likelihood of confusion between two signs, it has jurisdiction to examine the Board of Appeal’s assessment of the similarity of the goods in question, even where no specific challenge has been made by the applicant on that subject, since the Court cannot be bound by an incorrect assessment of the facts by the Board of Appeal (see, to that effect, Les Éditions Albert René v OHIM, paragraphs 47 and 48, and judgment of the General Court of 2 June 2010 in Case T‑35/09 Procaps v OHIM — Biofarma (PROCAPS), not published in the ECR, paragraph 59).

29 Second, it should be noted that — as the applicant has correctly pointed out — the principle laid down in the case-law relied on by OHIM covers the whole of the application, not just the section summarising the pleas in law on which the application is based which, pursuant to the Practice Directions to Parties, the applicant is required to include in the application. Accordingly, the requirements set out in both Article 44(1)(c) of the Rules of Procedure and the case-law mentioned above have been met by the applicant in the present case. First, the application includes, in paragraphs 15 and 16 thereof, a summary of the single plea in law relied on, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Second, the arguments relating to the comparison of the goods are based on matters of fact and of law which are indicated coherently and intelligibly in the application.

30 Consequently, the applicant’s arguments concerning the comparison of the goods must be declared admissible and it must be found that the General Court had to examine the Board of Appeal’s comparison of those goods in any event.

31 The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It submits, in essence, that the Board of Appeal was wrong to conclude, initially, that the goods in question were similar or identical; subsequently, that the signs at issue were visually, aurally and conceptually similar; and, lastly, that there was a likelihood of confusion between the marks at issue.

33 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark, and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

34 It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that line of authority, 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 account being taken of 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 covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

35 Moreover, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).

36 Lastly, it has been held that, 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).

37 It must be found that the Board of Appeal was right to hold in paragraphs 20 to 23 of the contested decision that, in the present case, the relevant public consists of both professionals and the general public, with the professionals having a higher level of attention than the average consumer. Furthermore, as is acknowledged by all the parties, although the relevant public’s degree of attention is average as regards most of the goods involved, it is higher than average for some of the goods in Class 9: the sophisticated or technical nature of some of those goods, such as optical apparatus, requires more in-depth consideration on the part of consumers.

38 According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include 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 for the goods or services 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).

39 It has also been found that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see Case T‑346/04 Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 34 and the case-law cited).

40 It must be held that the Board of Appeal was right to conclude that these goods were identical to the Class 25 goods covered by the earlier trade mark: as the Board of Appeal points out in paragraph 28 of the contested decision, all the Class 25 goods covered by the earlier trade mark are included in the more general category of ‘clothing, footwear, headgear’ designated by the mark applied for. Furthermore, the applicant does not take issue with the Board of Appeal’s comparison of the goods in that respect.

41 Although the Board of Appeal held — rightly — that, by reason of their objective, the ‘contact lenses’ covered by the mark applied for and the ‘eyeglasses’ covered by the earlier trade mark were similar, it must be stated that the earlier trade mark also covers ‘lenses’ and that, accordingly, those goods are even identical. Regarding the ‘containers’ covered by the mark applied for, they are inseparable from lenses and have, moreover, the same function as the ‘eyeglass cases’ covered by the earlier trade mark, that is to say, to protect eyewear. What is more, such products can be manufactured by the same companies and then be marketed through the same distribution channels. Furthermore, the applicant has not challenged the Board of Appeal’s findings in that regard.

– ‘Optical apparatus and instruments; spectacles; sunglasses; frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor; ... binoculars; ... protective ... goggles’ (Class 9)

42 In paragraph 29 of the contested decision, the Board of Appeal found that these goods were identical to the Class 9 goods covered by the earlier trade mark. It observed in that regard that some of the goods covered by the mark applied for, such as ‘frames, hinges and arms for spectacles and sunglasses’, were identical because of the finding that those goods were included in the more general category of ‘parts and fittings for eyeglasses and sunglasses’ — Class 9 goods covered by the earlier trade mark. By the same token, the ‘binoculars’ and ‘protective ... goggles’ covered by the mark applied for are — according to the Board of Appeal — identical to the ‘optical apparatus and instruments’ which make up a more general category of goods covered by the earlier trade mark. Lastly, the Board of Appeal implicitly concludes that the goods are identical as regards the ‘optical apparatus and instruments; spectacles; sunglasses’ covered by the mark applied for, since the wording used to describe those goods is identical to the wording used to describe some of the goods covered by the earlier trade mark.

43 The applicant does not deny that the ‘optical apparatus and instruments; spectacles; sunglasses; frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor’ covered by the mark applied for are identical or similar to the Class 9 goods covered by the earlier trade mark. However, it denies that there is any similarity as regards the ‘binoculars’ and ‘protective ... goggles’ covered by the mark applied for. It argues, in essence, that those goods are not intended for the same end consumers as the goods covered by the earlier trade mark and that they are manufactured and distributed differently.

44 In that regard, it should first of all be noted that the parties’ arguments referring to degrees of identity or similarity in connection with ‘binoculars’ and ‘protective ... goggles’ stem from misunderstandings on the part of both the applicant and OHIM.

45 First, in paragraph 39 of its application initiating proceedings, the applicant denies that the ‘visors; ... ski masks; protective helmets and goggles’ covered by the mark applied for are similar to the ‘eyewear’ covered by the earlier trade mark. However, the assessment carried out by the Board of Appeal compares ‘protective ... goggles’ with ‘optical apparatus and instruments’ and finds those goods to be identical, while the ‘visors; ... ski masks; protective helmets ..., parts and fittings therefor’ covered by the mark applied for are compared with the ‘articles of outerclothing’ in Class 25, covered by the earlier trade mark.

46 Second, it should be noted that, contrary to OHIM’s assertion, the Board of Appeal did not find that ‘binoculars’ and ‘protective ... goggles’ were similar to ‘articles of outerclothing’ but that they were similar to ‘optical apparatus and instruments’.

47 The General Court finds that the Board of Appeal was right to conclude that the ‘optical apparatus and instruments; spectacles; sunglasses; frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor; ... binoculars’ covered by the mark applied for were identical to goods covered by the earlier trade mark. The description of those goods either corresponds to the description of goods covered by the earlier trade mark — that is, ‘optical apparatus and instruments; ... eyeglasses; sunglasses’ — or is included in a more general description of the goods covered by the earlier trade mark, such as ‘optical apparatus and instruments’, which encompasses the ‘binoculars’ covered by the mark applied for, or ‘parts and fittings for all the aforesaid goods’, which encompasses the ‘frames; cases; hinges; arms and lenses for spectacles and sunglasses, parts and fittings therefor’ covered by that mark.

48 However, it should be noted that the Board of Appeal erred in finding that the ‘protective ... goggles’ covered by the mark applied for were identical to the ‘optical apparatus and instruments’ covered by the earlier trade mark: the latter category covers goods which are far more technically complex than spectacles, such as microscopes, telescopes or cameras. By contrast, the ‘protective ... goggles’ covered by the mark applied for appear to be similar goods to the ‘sunglasses’ in Class 9 covered by the earlier trade mark in view, inter alia, of the method of use and intended purpose of both categories of goods. Although the category of ‘protective ... goggles’ includes goggles intended to protect the eyes from physical impact or from contact with harmful substances during construction work, industrial work or work with chemicals, it also includes goggles designed to protect against intense light, which have a similar or identical aim to the ‘sunglasses’ covered by the earlier trade mark. Accordingly, there is an average degree of similarity between the ‘protective ... goggles’ covered by the mark applied for and the ‘sunglasses’ covered by the earlier trade mark.

– ‘Visors; ... ski masks; protective helmets ..., parts and fittings therefor’ (Class 9)

49 In paragraphs 32 and 33 of the contested decision, the Board of Appeal concluded that there was a certain degree of similarity between these goods and the ‘articles of outerclothing’ — goods in Class 25 — covered by the earlier trade mark.

50 The applicant argues that those goods are not similar. However, that argument must be rejected as ineffective, owing to the applicant’s misunderstanding in that regard (see paragraph 45 above).

51 The General Court finds that the Board of Appeal was right to conclude that the ‘visors; ... ski masks; protective helmets ..., parts and fittings therefor’ in Class 9 covered by the mark applied for were similar to the ‘articles of outerclothing’ in Class 25 covered by the earlier trade mark.

52 It should first of all be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. Goods may not therefore be regarded as being different from each other solely on the ground that they appear in different classes: the benchmark is whether, from the relevant public’s perspective, the goods in question may have a common commercial origin (see, to that effect, PiraÑAM diseño original Juan Bolaños, paragraphs 37 and 38).

53 Moreover, because of their producers, points of sale and purpose, those two categories of articles are closely connected. As the Board of Appeal rightly pointed out, they are often produced by the same undertakings, in particular by undertakings specialising in sports clothing and equipment. Similarly, they are often sold together in sports shops. Lastly, regarding the purpose of those articles, although it is true that ‘visors; ... ski masks; protective helmets’ are of a protective nature, that is also the case for ‘articles of outerclothing’, which, as the Board of Appeal noted, cover the body in order to protect it from the elements. Furthermore, just like ‘articles of outerclothing’, ‘visors; ... ski masks; protective helmets’ can function as fashion items, serving to express the wearer’s personal taste or style.

54 It must therefore be concluded that there is an average degree of similarity between the ‘visors; ... ski masks; protective helmets ..., parts and fittings therefor’ in Class 9 covered by the mark applied for and the ‘articles of outerclothing’ in Class 25 covered by the earlier trade mark.

55 In conclusion, many of the goods covered by the marks at issue are identical and the rest are similar.

56 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, account being taken, in particular, of 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 the 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).

57 Moreover, 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 where that element is likely, by itself, to dominate the image that the relevant public has of the mark, with the result that all the other components of the mark are negligible within the overall impression created (Nestlé v OHIM, paragraph 43).

58 In paragraphs 37 and 38 of the contested decision, the Board of Appeal held that the marks at issue were visually similar overall: the overall impression of both marks was determined by the capital letter ‘T’ surrounded by an oval, the elements by which they would both be recognised. Despite some slight differences between the signs, the Board of Appeal maintained that the similarities — both the presence of the capital letter ‘T’ and the oval, and the way in which those two elements were depicted — prevailed.

59 The applicant denies that the signs at issue are similar and asserts that the impression conveyed by the signs is determined by the distinctive stylisation of the marks and not by the elements lacking distinctive character, namely, the capital letter ‘T’ or the oval. Essentially, the applicant submits that the signs at issue consist of graphic stylistic elements in addition to the capital letter ‘T’ and the oval.

61 It should first of all be noted that the mark applied for consists of a thick capital letter ‘T’ reproduced in white on a black background inside an elongated oval, with a narrow white half-moon on both sides of that oval. The earlier trade mark consists of a thick capital letter ‘T’ reproduced in black inside a white oval, the border of which is outlined in black.

62 According to case-law, the assessment of the similarity of the signs must be based on the overall impression given by those signs (OHIM v Shaker, paragraph 35). In the present case, that overall impression is determined, as the Board of Appeal rightly observed, by the capital letter ‘T’ and the oval which surrounds it: two elements, perceived as a whole, which consumers are likely to recognise and remember. Moreover, there is no reason to suppose that one of those two elements would dominate in either of the signs at issue. By contrast, the graphic stylisation of the signs is clearly secondary and requires a detailed examination on the part of consumers, who do not adopt a particularly attentive approach when confronted with single-letter signs. A fortiori, the graphic stylisation of the two signs cannot be considered to be the distinctive or dominant element of those signs. Thus, contrary to the applicant’s assertions, the overall impression of the signs at issue is not based exclusively on the graphic stylisation of the marks.

63 In addition, it should be noted that the documents filed by the intervener in support of its line of argument support the finding that, in the case of most of the goods covered by the earlier trade mark, such as clothing or eyeglasses, that mark, when placed on a product, is relatively small when compared with the article in question. What is more, the mark is often printed or embroidered in the same colour as — or in a colour very similar to — the product itself. In other words, in order to distinguish the graphic stylisation of the earlier trade mark, consumers must carry out a very detailed examination of that mark, which is unlikely.

64 It should also be emphasised that — contrary to the applicant’s assertions — it is not impossible for the capital letter ‘T’ and the oval to be elements which have distinctive character. That finding cannot be called into question by the argument that, owing to the frequent use of single letters to represent brands, consumers are conditioned to form an impression which is based more on the distinctive stylisation of the marks. Moreover, it should be borne in mind that the weak distinctive character of an element does not necessarily mean that the element will not be taken into consideration by the relevant public (see Case T‑134/06 Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 54 and the case-law cited).

65 Indeed, in the present case, it is the capital letter ‘T’ surrounded by an oval which will be remembered by consumers, to the detriment of the graphic stylisation. It is true that, as the applicant claims, consumers are capable of perceiving differences between the stylisation of signs. However, the key point is how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisation and draw comparisons between them.

66 In the light of the foregoing, it must be found that the two signs are similar and that — as OHIM observed — that similarity is not limited to the coincidence of capital letter ‘T’s surrounded by ovals, but extends to the stylistic features of that letter in each of the signs. Similarly, far from foregoing examination of the graphic stylisation of the signs at issue, the Board of Appeal took account of the ways in which the capital letter ‘T’s were depicted, concluding that they were similar.

67 It should be emphasised that it is not denied by the Board of Appeal, OHIM, or the intervener that there are visual differences between the signs. In that regard, it is certainly true that the colour contrast in the mark applied for is reversed in the earlier trade mark, that the oval is slightly longer in the mark applied for and that the half-moons featured at the edges of the oval in the mark applied for are missing from the earlier trade mark. Nevertheless, those are minor, or hardly perceptible, differences, with the result that they are not sufficient to outweigh the numerous and pronounced similarities between the signs.

68 Therefore, it must be found that the Board of Appeal was right to conclude that the signs at issue were visually similar.

69 In paragraph 39 of the contested decision, the Board of Appeal held that, aurally, the only pronounceable element of the signs at issue is the letter ‘T’ which is common to both signs. It therefore concluded that the signs were identical in that regard.

70 The applicant primarily contests the relevance of the aural impression. However, it emphasises that, even assuming that there is an aural impression, consumers will inevitably make the connection between the sign and the name of the company which owns it, which appears on most of the goods marketed by that company.

72 It must be stated that the Board of Appeal was right to find that the signs at issue will be pronounced like the letter ‘T’. In that regard, the Board of Appeal pointed out — rightly — that it had to assess the signs as they had been filed or registered and that, whatever the actual use of the signs, the names of the respective companies formed no part of the marks at issue. What is more, that finding cannot be called in question by the applicant’s argument that the goods covered by the mark applied for are technical glasses and that, consequently, they are sought out, selected and purchased only after they have been examined in detail by the consumer. In that context, the applicant’s argument that consumers will inevitably make the connection between the sign and the name of the company which owns the brand must be rejected as ineffective: setting aside the fact that establishing such a link presupposes that consumers have prior knowledge of both marks (which has not been demonstrated), such a factor has no bearing on the aural impression conveyed by the marks as filed.

73 It must therefore be found that, in the present case, the signs at issue will be pronounced identically, that is to say, like the letter ‘T’. Consequently, the marks are aurally identical.

74 In paragraphs 40 and 41 of the contested decision, the Board of Appeal explains that individual letters of the alphabet may have their own conceptual content. It also states that, in the present case, the same concept — namely, the capital letter ‘T’ — stands out for the relevant public. Accordingly, the Board of Appeal concludes that the signs are conceptually identical.

75 The applicant stresses the particular importance of the conceptual meaning of a mark, especially when compared with the visual impression created. It asserts that the capital letter ‘T’ has no conceptual meaning in itself and (in contrast with the ways in which the signs are depicted, which reflect their respective concepts) merely constitutes the denotation of the marks. It maintains that, in the present case, the signs at issue are very different conceptually, one having a static appearance, the other having a dynamic one.

77 It must be stated that, in the context of comparing signs in order to assess the likelihood of confusion between two marks, the term ‘concept’ covers any meaning which it is likely that the relevant public will associate with a sign or with one of its elements.

78 It should be noted, in that regard, that the General Court has not unambiguously answered the question whether an individual letter of the alphabet may convey a concept.

79 Thus, on the one hand, the General Court has held that no concept could be associated with the letters ‘S’, ‘P’, or ‘R’ (Case T‑363/06 Honda Motor Europe v OHIM — Seat (MAGIC SEAT) [2008] ECR II‑2217, paragraph 42; judgment of 20 October 2011 in Case T‑189/09 Poloplast v OHIM — Polypipe (P), not published in the ECR, paragraph 83; and, to that effect, judgment of 27 June 2013 in Case T‑89/12 Repsol YPF v OHIM — Ajuntament de Roses (R), not published in the ECR, paragraph 42). In that judgment in Case T‑89/12, the General Court even asserted — in general terms — that, conceptually, it had to be found that the letters of the alphabet have no semantic meaning and that it is thus impossible to compare them conceptually.

80 On the other hand, the General Court has found that a clear concept could be associated with the letter ‘x’, owing to the meaning which that letter has in the fields of mathematics and information technology (judgment of 5 November 2013 in Case T‑378/12 Capitalizaciones Mercantiles v OHIM — Leineweber (X), not published in the ECR).

81 Irrespective of whether it is possible to give a general answer to that question, it must be stated that, in the present case, the way in which the signs at issue are perceived from a conceptual point of view is not relevant for the purposes of comparing those signs. Indeed, the Board of Appeal was wrong to identify the capital letter ‘T’ as a concept peculiar to the signs at issue: it was not established that the capital letter ‘T’ had a particular meaning in one of the languages of the European Union; nor did the Board of Appeal indicate what concept would be conveyed by the capital letter ‘T’ in the present case. Consequently, it was not possible to carry out a conceptual comparison of the signs.

82 The applicant’s argument that the way in which the signs at issue are perceived from a conceptual point of view stems from the way in which those signs are depicted must also be rejected. In that regard, it has already been stated in paragraph 62 above that, in the present case, the graphic stylisation plays only a secondary role and is not a decisive factor in determining how consumers will perceive the signs at issue. For the sake of completeness, it should be noted that the alleged stylistic differences highlighted by the applicant — the stout, static and simple nature of the earlier sign and the sleek, dynamic and complex nature of the sign applied for — are not adequate indicators of the signs having different conceptual content.

83 Consequently, the Board of Appeal erred in concluding that the signs in question were conceptually identical.

84 It follows from the foregoing that, contrary to the findings of the Board of Appeal, the marks at issue are similar or identical only visually and aurally, since it is not possible to compare them conceptually. The fact remains that, when assessed globally, account being taken of the fact that any conceptual comparison of those marks is irrelevant, it must be concluded that the marks are highly similar for the relevant public. Given that the signs have a high degree of visual similarity, that conclusion remains valid even if the applicant’s argument that the aural comparison is less relevant than the visual comparison is taken into consideration. Accordingly, even for the less technical goods, which can be purchased without the help of a sales assistant, it must be found that the signs are similar overall.

85 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see, to that effect, 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).

86 In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must instead rely on his imperfect recollection of them (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26, and Case T‑186/02 BMI Bertollo v OHIM — Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38).

87 In the present case, the Board of Appeal found, in essence, that, in view of the identity or similarity of the goods covered by the marks at issue and the fact that the signs at issue were visually similar and aurally and conceptually identical, and taking the principle of imperfect recollection into account, there was a likelihood of confusion, even though the relevant public demonstrated a higher degree of attention with regard to some of the goods concerned.

88 In that regard, it should first of all be borne in mind that, as has been explained in paragraph 55 above, all the goods covered by the marks at issue are similar or even identical.

89 Next, as has been explained in paragraph 84 above, the signs at issue are aurally identical and are highly similar overall, despite the fact that — contrary to the findings of the Board of Appeal — it is not possible to compare them conceptually.

90 Lastly, the Board of Appeal was right to find that the impression of the marks at issue likely to be retained by the relevant public would be largely determined by their memory of a capital letter ‘T’ inside an oval. That finding is also valid for consumers who are professionals and for consumers who are more attentive because of the technical nature of certain goods. Indeed, the visual and aural similarities between the signs at issue are such that the effective memorisation of the visual differences which do exist between the marks requires a degree of meticulousness and effort which seems unlikely to be employed even by professional or circumspect consumers.

91 In those circumstances and account being taken of the imperfect recollection which the relevant consumer will have of the marks at issue, the decision of the Board of Appeal must be approved in so far as it found that there was a likelihood of confusion between the marks at issue in respect of all the goods covered by the mark applied for.

92 The Board of Appeal was also right to find that the fact that the relevant public’s level of attention would be higher for some of the goods concerned is not a sufficient ground for concluding that that public would not believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings: the degree of similarity between the signs and the degree of identity or similarity between the goods concerned are such that there is a likelihood of confusion even in the event that the relevant public has a high level of attention.

93 The applicant’s arguments are not capable of casting doubt on that finding.

94 First, the applicant submits that the Board of Appeal’s reasoning leads to the absurd conclusion that there would be a likelihood of confusion on the part of consumers for any logo consisting of a capital letter ‘T’. It is sufficient to observe in that regard that, as has been stated above, the Board of Appeal’s findings that the marks at issue are similar and that there is a likelihood of confusion between them are based on the Board having taken a number of factors into account, not just the fact that there is a capital letter ‘T’ in both of those marks.

95 Second, the applicant submits that, in the present case, the weak distinctive character of the earlier trade mark, combined with the graphical differences between the marks at issue, must rule out any likelihood of confusion.

96 In that regard, it must be observed that, even if it is accepted that the earlier trade mark has a weak distinctive character, the findings in paragraphs 91 and 92 above are not called in question. Indeed, it is necessary to endorse the Board of Appeal’s view that, even in such circumstances, the degree of identity and similarity between the goods and the degree of similarity between the marks are, considered cumulatively, high enough to warrant the conclusion that there is a likelihood of confusion.

97 Accordingly, the applicant’s argument must be rejected, without there being any need to examine the applicant’s arguments relating to the earlier trade mark’s low degree of distinctiveness.

98 In the light of the foregoing, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

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

2. Orders Tifosi Optics, Inc. to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Tom Tailor GmbH.

Admissibility of the applicant’s arguments concerning the comparison of the goods

– ‘Visors; ... ski masks; protective helmets ..., parts and fittings therefor’ (Class 9)

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Tifosi Optics v OHMI - Tom Tailor (T) (Judgment) [2014] EUECJ T-531/12 (07 October 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T53112.html Cite as: [2014] EUECJ T-531/12, ECLI:EU:T:2014:855, EU:T:2014:855

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