Cristiano di Thiene v OHMI - Nautica Apparel (AERONAUTICA) (Judgment) [2015] EUECJ T-193/14 (23 September 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark AERONAUTICA — Earlier Community word marks NAUTICA and NAUTICA BLUE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Cristiano di Thiene SpA, established in Thiene (Italy), represented by F. Fischetti and F. Celluprica, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,

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

Nautica Apparel, Inc., established in New York, New York (United States), represented by C. Hawkes, Solicitor, and B. Brandreth, Barrister,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 January 2014 (Case R 96/2013-4) concerning opposition proceedings between Nautica Apparel, Inc. and Cristiano di Thiene SpA,

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

having regard to the response of OHIM lodged at the Court Registry on 4 August 2014,

having regard to the response of the intervener lodged at the Court Registry on 11 August 2014,

1 On 8 January 2009, the applicant, Cristiano di Thiene SpA, 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)).

2 The mark in respect of which registration was sought is the word sign AERONAUTICA.

3 The goods and services in respect of which registration was sought are in Classes 9, 18, 20, 25, 35, 42 and 43 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 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

– Class 25: ‘Clothing, footwear, headgear; all the aforesaid goods except uniforms’;

– Class 35: ‘Advertising; business management; business administration; office functions’;

– Class 42: ‘Organisation and management of franchising activities, namely the study and creation of signs and architectural concepts made available to franchisees’;

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/185 of 1 October 2010.

5 On 22 December 2010, the intervener, Nautica Apparel, Inc., filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

– the Community trade mark NAUTICA, registered on 23 April 2007 under No 5 177 399 in respect of goods and services in, inter alia, Classes 8 and 35 and corresponding, for each of those classes, to the following description:

– Class 8: ‘Hand tools and implements (hand-operated); cutlery; side arms; razors; tableware, namely forks, knives and spoons’;

– Class 35: ‘Advertising; business management; business administration; office functions; retail services relating to tableware, rugs, wall paper and wall coverings; information and advisory services relating to the aforesaid’;

– the Community trade mark NAUTICA, registered on 9 October 2008 under No 7 081 391 in respect of goods and services in Classes 9, 25 and 35 and corresponding, for each of those classes, to the following description:

– Class 9: ‘Spectacles, namely eyeglasses and sunglasses, and accessories, namely cases and straps’;

– Class 25: ‘Clothing, namely jackets, blouses, coats, overcoats, raincoats, trousers, pants, shorts, sweaters, shirts, undershirts, undershorts, suspenders, scarves, gloves, hosiery, footwear, head wear, boots, shoes and sneakers’;

– Class 35: ‘Retail store services featuring a wide variety of consumer goods, namely, eyeglasses and sunglasses, watches and clocks and linen products’.

– the Community trade mark NAUTICA BLUE, registered on 16 September 2004 under No 2 921 203 in respect of goods in Classes 9, 18, 20 and 25 and corresponding, for each of those classes, to the following description:

– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; spectacles, including eye glasses, sunglasses, and all accessories thereto’;

– Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; clear plastic holders for badges, beds, chairs, clamps, desk ornaments, jewellery boxes not of metal, non-metal key chains, non-metal key fobs, non-metal key holders, non-metal key rings, non-metal key tags, non-metal license plates, mirrors, non-metal money clips, plastic name badges, non-metal name plates, picture frames, pillows, plaques, plastic flags, plastic storage bins, seat cushions, stools’;

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.

8 On 28 November 2012, the Opposition Division partially upheld the opposition in respect of the following goods and services:

– Class 25: ‘Clothing, footwear, headgear; all the aforesaid goods except uniforms’;

– Class 35: ‘Advertising; business management; business administration; office functions’;

– Class 42: ‘Organisation and management of franchising activities, namely the study and creation of signs and architectural concepts made available to franchisees’.

9 On 11 January 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10 By decision of 10 January 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It held that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in view of the identity or similarity of the goods and services covered by the signs, the average degree of visual and phonetic similarity between the signs, and the normal distinctive character of the earlier trade marks.

13 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, the applicant raises four main complaints. In the first place, the Board of Appeal did not attach due importance to the fact that only the contested trade mark contained the prefix ‘aero’. In the second place, in the light of the case-law, the Board of Appeal held — wrongly — that two signs are similar when they are at least partially identical, whereas that principle does not apply unless the common element dominates the overall impression produced by the signs or the two elements have no conceptual meaning for the public concerned, neither of which is the situation in the present case. In the third place, the applicant submits that the conceptual differences between the signs at issue offset and counteract their visual and phonetic similarities. In the fourth place, the Board of Appeal wrongly held that the element ‘nautica’ is of average distinctive character, even though that term is inherently weak. In addition, it did not correctly apply the case-law pursuant to which the more distinctive the earlier mark, the greater will be the likelihood of confusion.

15 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the 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.

16 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 judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

18 It should be emphasised at the outset that the applicant is not disputing that the relevant public consists of the general public and a public of professionals, with the result that the level of attention will vary from average to high, or that the goods and services concerned are either identical or similar.

19 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the 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 judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

20 In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and 8 September 2010 in Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, EU:T:2010:362, paragraph 21).

21 Furthermore, it should be noted that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 7 March 2013 in FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, EU:T:2013:112, paragraph 31 and the case-law cited).

22 Regarding the visual and phonetic similarities, the applicant considers that the Board of Appeal erred by underestimating the importance of the element ‘aero’ at the beginning of the contested trade mark. Consequently, the Board of Appeal did not correctly apply the rule that consumers normally attach greater importance to the first part of the word or words constituting a word mark. In addition, the applicant submits that, in holding that two marks are similar when they are at least partially identical as regards one or more relevant aspects, the Board of Appeal disregarded the fact that that rule does not apply unless the common element dominates the overall impression or the two elements have no conceptual meaning for the public concerned.

24 According to case-law, the rule that the consumer normally attaches more importance to the first part of words cannot apply in every case (see judgments of 16 May 2007 in Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, ECR, EU:T:2007:143, paragraph 70 and the case-law cited, and 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 32). In the present case, it should be borne in mind that the sign AERONAUTICA must be compared with the two earlier signs NAUTICA and NAUTICA BLUE.

25 In the first place, it must be pointed out that while it is true that the element ‘aero’ is a differentiating element, the difference created is insignificant in comparison with the length of the common element ‘nautica’ and the important position occupied by the latter element in the signs in question and, accordingly, is insignificant in the context of the overall visual impression given to consumers by the length and position of that common element.

26 In the second place, it is necessary to confirm the Board of Appeal’s conclusion in paragraph 34 of the contested decision that the short element ‘blue’ does not alter the fact that there is an average degree of visual and phonetic similarity between the signs.

27 In the third place, it must be emphasised that, contrary to the applicant’s assertions, the finding of a likelihood of confusion cannot be made conditional upon the overall impression produced by the composite sign being dominated by the part of that sign which consists of the earlier trade mark. Even if the common element cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of the marks at issue, to the extent that it constitutes in itself the earlier mark and still has an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element still has an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (judgment of 6 October 2005 in Medion, C‑120/04, ECR, EU:C:2005:594, paragraphs 30 to 32, and order of 22 January 2010 in ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria, C‑23/09 P, EU:C:2010:35, paragraph 45).

28 In the present case, the question whether the element ‘nautica’ is dominant in the overall impression produced by the mark applied for is of little importance, since the applicant is not claiming that the element ‘nautica’ does not still have an independent distinctive role in the sign AERONAUTICA. It merely argues that the earlier trade mark has a weak distinctive character rather than an average one. However, the case-law cited in paragraph 27 above does not make a distinction depending on whether the independent distinctive character of the common element, such as ‘nautica’ in the present case, is weak or average. The applicant’s argument must, therefore, be rejected.

29 Accordingly, the applicant has still not established that the Board of Appeal erred in holding that there was an average degree of visual and phonetic similarity between the sign AERONAUTICA on the one hand and the signs NAUTICA and NAUTICA BLUE on the other.

30 Regarding the conceptual similarity, the applicant maintains that the term ‘nautica’ refers to the maritime sector and the term ‘aeronautica’ to the aeronautical sector, which gives rise to a conceptual difference. In addition, the applicant claims that the Board of Appeal disregarded its obligation to provide a statement of reasons in the contested decision on that subject.

32 In the first place, it must be pointed out that the Board of Appeal held, on the one hand, that, for the Spanish-, French-, Portuguese- and (probably) English-speaking public, the terms ‘nautica’ and ‘aeronautica’ could allude to the idea that the goods and services were linked to nautical or aerial navigation techniques. On the other hand, for the part of the relevant public which did not understand those terms, the conceptual comparison of the signs would be neutral. The term ‘blue’, which is understood by a significant part of the relevant public, refers to both the colour of the sky and that of the sea and therefore has a certain connection with aerial and nautical navigation.

33 As the Board of Appeal’s reasoning can be clearly seen from the contested decision, the applicant’s argument relating to a supposed failure to provide a statement of reasons must therefore be rejected as unfounded.

34 In the second place, it must be pointed out that, in its written pleadings, the applicant did not dispute that a part of the relevant public did not know the meaning of the terms ‘aeronautica’ and ‘nautica’. At the hearing, the applicant argued for the first time that, although a part of the relevant public did not know the term ‘nautica’, the whole of the relevant public was well aware of the term ‘aeronautica’.

35 In that regard, in addition to the fact that the applicant’s argument is late, it should be emphasised that, in any event, for the part of the relevant public which does not know the term ‘nautica’, the conceptual comparison of the signs remains neutral. It should also be emphasised that the part of the relevant public which does not know the term ‘nautica’ cannot be regarded as being a negligible part of the total relevant public.

36 Accordingly, the applicant’s argument relating to the conceptual similarity must be rejected as unfounded.

37 Furthermore, the assessments made in paragraphs 29 and 36 above cannot be undermined by the applicant’s arguments that (i) the conceptual differences between the signs counteract their visual and phonetic similarities and (ii) the Board of Appeal misapplied the rule pursuant to which two marks are similar if one of the two elements of the mark in respect of which registration is sought is identical to the term constituting the earlier trade mark, because that rule does not apply unless the two elements have no conceptual meaning for the relevant public.

38 In that regard, it is sufficient to note that, since — as stated in paragraph 35 above — the conceptual comparison of the signs is neutral for a non-negligible part of the relevant public, those arguments are irrelevant.

39 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 (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

40 The Board of Appeal held that, in view of the identity or similarity of the goods and services in question, the average degree of visual and phonetic similarity between the signs, and the normal distinctive character of the earlier trade marks, there was a likelihood of confusion.

41 The applicant submits that the Board of Appeal wrongly held that the earlier trade mark NAUTICA was of average distinctive character, even though that term is inherently weak. In particular, the applicant argues, first, that the term ‘nautica’ allows consumers directly to associate the goods and services covered by that mark with the maritime world, and, second, that the Board of Appeal did not correctly apply the case-law pursuant to which the more distinctive the earlier mark, the greater will be the likelihood of confusion.

43 Regarding the distinctive character of the earlier marks NAUTICA and NAUTICA BLUE, it should be borne in mind that, while it is admittedly settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, that case-law does not in any way imply that there is necessarily no likelihood of confusion where the distinctive character of the earlier mark is weak (see order in ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria, cited in paragraph 27 above, EU:C:2010:35, paragraph 39 and the case-law cited).

44 Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited).

45 It follows that, even if it were necessary to accept the applicant’s arguments based on the weak distinctive character of the earlier trade mark, the identity or similarity of the goods in question and the visual and phonetic similarities between the signs at issue which were rightly noted by the Board of Appeal are in any event sufficient grounds in the present case for concluding that there is a likelihood of confusion.

46 Accordingly, the applicant’s arguments based on the weak distinctive character of the earlier trade mark cannot alter the significance of the Board of Appeal’s assessment of the likelihood of confusion and must therefore be rejected as ineffective.

47 In those circumstances, the Board of Appeal was right to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

48 That conclusion is not affected by the precedents relied on by the applicant, in which the Opposition Division, in other cases, reached a different conclusion from that in the present case.

49 According to settled case-law, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77 and the case-law cited).

50 Since, in the present case, it has been found that the Board of Appeal was right to conclude that the registration of the sign AERONAUTICA as a mark for the goods in question was not compatible with Regulation No 207/2009, the applicant could not validly rely, for the purposes of undermining that conclusion, on earlier decisions of OHIM, in particular where the marks in question were, as in the present case, dissimilar.

51 It follows from all of the foregoing that, as none of the arguments put forward by the applicant in support of its heads of claim is well founded, the action must be dismissed in its entirety.

52 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

53 As 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Cristiano di Thiene v OHMI - Nautica Apparel (AERONAUTICA) (Judgment) [2015] EUECJ T-193/14 (23 September 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T19314.html Cite as: [2015] EUECJ T-193/14, ECLI:EU:T:2015:668, EU:T:2015:668

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