Vimeo v OHMI - PT Comunicacoes (VIMEO) (Judgment) [2015] EUECJ T-96/14 (23 October 2015)

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

Vimeo LLC, established in New York, New York (United States), represented by A. Poulter and M. MacDonald, solicitors,

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

ACTION brought against the decision of the Second Board of Appeal of OHIM of 27 November 2013 (Case R 1092/2013-2), relating to opposition proceedings between PT Comunicações, SA and Vimeo LLC,

composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 11 February 2014,

1 On 25 March 2011, the applicant, Vimeo LLC, filed an application for registration of a Community trade mark with 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).

3 The services in respect of which registration was applied for are in Classes 38, 41 and 42 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 38: ‘Telecommunications; providing online forums for transmission of messages among users in the field of video sharing; providing access to computer, electronic and online databases; electronic communication services; transmission of electronic media, multimedia content, videos, movies, pictures, images, text, messages, photos, games, user-generated content, audio content, data and information via the Internet and other computer and communications networks; providing online forums, chat rooms, electronic bulletin boards, journals, blogs, and list servers for communication on topics of general interest and for the transmission of messages, comments and multimedia content among users; providing online communications links which transfer web site users to other local and global web pages; audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, tagging, sharing and electronically transmitting data, information, audio and video images; broadcasting services; webcasting services; providing a video sharing portal; providing online community forums for users to post, search, watch, share, critique, rate, and comment on, videos and other multimedia content; providing digital program distribution of audio and video broadcasts over a global computer network; providing a video sharing portal for entertainment and education purposes; provision of information, advice and consultancy relating to all the foregoing.’;

– Class 41: ‘Educational services; providing of training; entertainment; sporting and cultural activities; providing a web site featuring user-generated videos on a wide variety of topics and subjects; educational services relating to the recording of content on electronic media; educational services relating to the provision of electronic media or information over the Internet or other communications networks; entertainment services, namely, providing multimedia content or information over the Internet and other communications networks; entertainment and educational services featuring electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and related information via computer and communications networks; publishing services; electronic publishing services; digital video, audio and multimedia entertainment publishing services; online digital publishing services; providing computer, electronic and online databases for educational, recreational and amusement use in the fields of entertainment, education and general interest; photosharing and video sharing services; provision of information, advice and consultancy relating to all the foregoing.’;

– Class 42: ‘ Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; providing a web site that gives computer users the ability to upload, exchange and share videos; application service provider (ASP) services; providing access to non-downloadable software; providing access to non-downloadable software to enable uploading, downloading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, or otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet and other computer and communications networks; providing access to non-downloadable software to enable sharing of multimedia content and comments among users; hosting multimedia content for others; provision of information, advice and consultancy relating to all the foregoing’.

4 The Community trade mark application was published in Community Trade Marks Bulletin 2011/098 of 22 May 2011.

5 On 24 August 2011, PT Comunicações, SA, filed a notice of opposition under 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 The opposition was based on earlier marks, including the following Community figurative mark:

7 That mark designated goods and services in Classes 9, 16, 35, 37, 38, 41 and 42 corresponding to the following description:

– Class 9 ‘Scientific, electrical, electronic telecommunications, telephone and communications apparatus and instruments for recording, transmission and reproduction of data, in particular of sound, images and voices; radio telephones, mobile and fixed telephones; modems; radio apparatus and instruments including radio pagers and radio facsimile apparatus and instruments; parts for all the aforesaid goods; data carriers, of all kinds, in particular phone cards; encoded cards; chip cards; smart cards; computer software; media for storing information, data, images and sound; machine readable media; digital music (downloadable) provided from a computer database or via the Internet, including MP3 Internet websites; personal digital assistants; satellite receiving and transmission apparatus and instruments; apparatus for listening to music downloaded from the Internet; battery chargers for use with telecommunications apparatus; peripheral equipment for televisions and computers; electrical and electronic game apparatus included in Class 9; computers, including laptops and notebooks; electronic personal organisers; electronic navigational and positional apparatus and instruments including global positioning systems; satellite navigational and positional apparatus and instruments; desk or car mounted units incorporating a loud speaker which permits hands-free use of a telephone handset; in-car telephone handset cradles; parts and fittings included in class 9 for all the aforesaid goods; computer programs and software, with exception of computer programs and software related to pharmacies; downloadable ringtones and graphics for mobile phones; CD-ROMs; electronic publications (downloadable) provided on-line from a computer database, the Internet or other electronic network, with exception of electronic publications (downloadable) provided on-line from a computer database, the Internet or other electronic network related to pharmacies.’;

– Class 16: ‘Magazines, including magazines with television and cinema content, with exception of magazines related to pharmacies; newspapers, with exception of newspapers related to pharmacies; paper, cardboard, and cardboard and stationery products’;

– Class 35: ‘Advertising and dissemination of advertising matter, including promotional goods, all the aforementioned services when not related to pharmacies’;

– Class 38: ‘Broadcasting of radio and television programmes, dissemination of news; broadcasting of radio and television programmes, radio and television broadcasting; by all means, including by cable and satellite; interactive communications by global telecommunication networks (the Internet), data transmission by cable, transmission of sound and images by satellite; telecommunications including online information on data or other information, images, graphics, sound and/or audiovisual material via computers and communications networks, television subscriptions via the Internet, television and telephone’;

– Class 41: ‘Entertainment, arranging and conducting of seminars, conferences and shows, providing of training, all the aforementioned services when not related to pharmacies’;

– Class 42: ‘Studies, activities, research, development and projects in the field of telecommunications; design and creation of computer programs for telecommunications, design and development of webpages, with exception of design and development of webpages related to pharmacies’.

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

9 On 16 April 2013, the Opposition Division upheld the opposition in its entirety and ordered the applicant to bear the costs of the proceedings.

10 On 14 June 2013, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11 By decision of 27 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal on account of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and the earlier Community mark reproduced in paragraph 6 above.

– annul the Opposition Division’s decision of 16 April 2013 and the dismiss the opposition;

14 The applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion between the marks at issue. It argues that there is such an infringement because, first, the Board of Appeal based its decision on distinguishable case-law and did not consider each of the marks as a whole for the purposes of their comparison; second, the Board of Appeal took into account rights which the opponent had not based its opposition upon; third, the Board of Appeal failed to take into account fully the evidence adduced to show the peaceful coexistence on the market of the marks at issue; and, fourth, the Board of Appeal, without valid reason, conferred on the opponent a monopoly over the group of the three letters ‘meo’. OHIM disputes those arguments and considers that there is a likelihood of confusion between the marks at issue.

15 Having regard to those pleas, it is necessary to rule first on that alleging that the Board of Appeal took into account rights upon which the opponent had not based its opposition and then to rule on the other pleas raised by the applicant.

16 The applicant submits that, since the Board of Appeal stated in the contested decision both that the opposition was based on several earlier rights and that only the earlier Community mark had been taken into consideration, it could not be excluded that the Board of Appeal had wrongly taken account of earlier rights upon which the opponent had not based its opposition. Thus, the applicant argues, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by taking into account rights upon which the opponent had not based its opposition for the purposes of determining whether or not there was a likelihood of confusion between the marks at issue.

17 In that regard, it must be noted that, at paragraph 15 of the contested decision, the Board of Appeal stated that the opposition was based on several earlier rights and that, since the opposition is well founded if it succeeds on the basis of one of the earlier rights, the Board of Appeal would first examine the opposition based on the earlier Community mark.

18 Thus, the Board of Appeal clearly stated that, in the first instance, it would examine the opposition on the basis of a single mark, namely the earlier Community mark. The applicant raises nothing specific that could challenge the fact that the Board of Appeal relied only on the earlier Community mark in reaching its decision. It follows that the plea raised by the applicant alleging that other earlier rights were taken into account must be rejected.

19 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 must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in the Community with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

20 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the circumstances of the case, in particular, the interdependence between the similarity of the signs and the similarity 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).

21 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 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).

22 It is in the light of those principles that the applicant’s various arguments must be examined. First, it is necessary to define the goods at issue and the relevant public, since those are the essential bases for an assessment of the likelihood of confusion between the two marks.

23 After noting that the parties had not contested the comparison of the goods and services at issue carried out by the Opposition Division, the Board of Appeal held that the goods at issue were partly identical and partly similar (paragraph 23 of the contested decision).

24 That assessment, which is moreover uncontested by the parties, must be upheld. Having regard to the description of the goods and services covered by the marks at issue, set out in paragraphs 3 and 7 above, it must be held that the goods and services at issue are partly identical and partly similar.

25 The Board of Appeal held that the relevant public consisted of consumers in all Member States of the European Union. The Board also held that the goods at issue were aimed at and frequently purchased by the public at large, which was deemed to consist of consumers who are reasonably well informed and reasonably observant and circumspect, as well as business customers with specific professional knowledge or expertise in the telecommunications sector. The Board therefore concluded that the level of attention would vary from average to high (paragraphs 17 and 22 of the contested decision).

26 That assessment, which is not disputed by the parties, must be upheld. In the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, account should be taken of the average consumer of the category of goods or services concerned. That consumer is, in principle, reasonably well informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question (see, to that effect, judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited). In the present case, having regard to the nature of the goods at issue, it must be held that the relevant public consists of the public at large and professionals, whose level of attention is average or high.

27 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see 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).

28 The assessment of the similarity between two marks cannot be limited to 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 at issue as a whole, but that 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 judgment in OHIM v Shaker, paragraph 27 above, EU:C:2007:333, 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 (judgment in OHIM v Shaker, cited in paragraph 27 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, EU:C:2007:539, paragraph 43).

29 In the present case, the Board of Appeal focussed the comparison of the signs on the perception by the Anglophone part of the relevant public, in accordance with Article 7(2) of Regulation No 207/2009 (paragraphs 27 to 29 of the contested decision). That approach is unchallenged by the applicant and must be upheld given that it is consistent with Article 7(2) of Regulation No 207/2009.

30 In the contested decision, the Board of Appeal first described each of the signs at issue and then considered that the figurative elements of the earlier Community trade mark (‘the earlier mark’) were secondary in the overall impression of the sign meo. The Board concluded therefore that it was appropriate to compare the words ‘vimeo’ and ‘meo’. In that regard, the Board held that the latter word was identically contained in the former, constituting three of its five letters. The Board also considered that, even though the element ‘vi’ was placed at the beginning of the sign applied for, the part to which the relevant public generally attached greater importance, that element would not be ignored visually. According to the Board of Appeal, the element ‘meo’ creates a similarity between the signs in question overall given that the unremarkable figurative elements of the earlier mark do not play a relevant role in the sign’s overall impression (paragraphs 30 to 32 of the contested decision).

31 The applicant submits that none of the figurative elements of the earlier mark is included in the mark applied for, which is a word mark. Furthermore, in its application for a Community mark, the opponent did not choose to request the registration of the word ‘meo’ in block capital letters but deliberately represented the earlier mark with a stylised font and a figurative element, which, according to the applicant, necessarily restricts the scope of the protection conferred by the registration. The applicant also points out that the mark applied for is longer than the earlier mark. Moreover, the applicant submits that the marks at issue begin with completely different letters, namely, on the one hand ‘vi’ and, on the other hand, ‘me’. Only three letters of those marks are the same, which comprise the end of the mark applied for. However, it is common ground that consumers give greater attention to the beginning of a mark. Even though the Board of Appeal referred to that principle (paragraph 32 of the contested decision), it did not attach any weight to it, according to the applicant.

32 OHIM submits, in essence, that the signs present clear visual similarity since the letters that make up the earlier mark are reproduced, in the same order, within the mark applied for. The fact that the different letters of the mark applied for, namely ‘v’ and ‘i’, are located at the beginning of the word ‘vimeo’ does not preclude the finding of visual and phonetic similarities of the signs.

33 The Court considers that the Board of Appeal’s assessment must be upheld. While it is true that the relevant public will perceive that the signs at issue differ visually due to the stylised typeface of the earlier sign, the figurative elements of the earlier sign, and the greater number of letters and the group of letters ‘vi’ in the mark applied for, that public would also perceive that the said signs share the element ‘meo’. As a result of that common element, that public will perceive a certain visual similarity between the marks at issue.

34 That assessment is not called into question by the fact that the earlier mark contains figurative elements. As the Board of Appeal correctly stated, the figurative elements of the earlier mark will be perceived by the relevant public as secondary vis-à-vis the verbal elements of that mark. They therefore do not prevent the relevant public perceiving a certain visual similarity due to the common element ‘meo’.

35 The group of letters ‘vi’ placed at the beginning of the mark applied for, which is in fact a longer sign than the earlier mark, also does not preclude the perception by the relevant public of a certain visual similarity between the marks at issue due to their common element, ‘meo’. Although it is indeed true that the first component of word marks may be more likely to catch the consumer’s attention than the components which follow, that cannot apply in all cases (see judgment of 4 July 2014, Advance Magazine Publishers v OHIM — Montres Tudor (GLAMOUR), T‑1/13, EU:T:2014:615, paragraph 31 and the case-law cited). In the present case, the element ‘vi’ in the mark applied for does not attract the relevant public’s attention more than the element ‘meo’, which follows it. All the more so, given that the mark applied for is composed of only three syllables and ends with the letter ‘o’. Thus, the fact that the sign applied for begins with the group of letters ‘vi’ and contains more letters than the earlier mark does not preclude the existence, for the relevant public, of a certain degree of visual similarity between the signs at issue due to their common element ‘meo’.

36 In the contested decision, the Board of Appeal held, having noted that the word element of the earlier mark was identically contained in the mark applied for, that, even though the component ‘vi’ in the mark applied for was placed at the beginning of the sign applied for, the common element ‘meo’ in the marks at issue could not be ignored phonetically and created a similarity between the signs at issue (paragraph 32 of contested decision).

37 The applicant submits that the mark applied for is longer than the earlier mark, the former being composed of five letters and three syllables, while the latter is composed of only three letters and two syllables. Moreover, the beginning of the mark applied for, ‘vi’, is entirely different from the beginning of the earlier mark, ‘me’. Consumers give more attention to the first part of a mark. Even though the Board of Appeal referred to that principle, it failed to give any weight whatsoever to it.

38 OHIM contends that the signs present a clear degree of phonetic similarity due to the fact that the letters making up the earlier mark are reproduced, in the same order, in the mark applied for. The fact that the letters that are different in the mark applied for, namely ‘v’and ‘i’, are positioned at the beginning of the word ‘vimeo’ does not preclude a finding of phonetic similarity of the signs. In that regard, OHIM repeats the same argument it made in relation to visual similarity (see paragraph 32 above).

39 The marks at issue have a certain phonetic similarity due to the fact that the earlier mark contains the group of letters ‘meo’ which is entirely contained within the mark applied for. The relevant public will pronounce the mark applied for as a whole and the group of letters ‘meo’ in the mark applied for will be pronounced in the same way as in the earlier mark. The fact that the mark applied for begins with the letters ‘v’ and ‘i’ and that it is therefore longer to pronounce does not lead to the conclusion that there is no phonetic similarity at all between the marks at issue. The relevant public will perceive a phonetic similarity due to the group of letters ‘meo’ common to those marks.

40 As regards the conceptual comparison, the Board of Appeal held that neither of the signs at issue had a meaning for the relevant public and therefore no conceptual comparison could be made (paragraph 33 of the contested decision).

41 The applicant accepts that the marks at issue present no conceptual similarity due to their lack of meaning. According to the applicant, the mark applied for will be perceived as a whole word, which cannot be divided into several components, and does not have a meaning. In addition, according to the applicant, if the description of the mark applied for is thought of as relating to online video sharing, it seems that the only concept that relevant consumers would associate with the mark applied for will be that of ‘video’, which further serves to distinguish it from the earlier mark.

42 The Board of Appeal’s assessment that a conceptual comparison of the marks cannot be carried out must be upheld. For the Anglophone part of the relevant public, the term ‘meo’ has no meaning. Furthermore, that part of the relevant public would not automatically associate the term ‘vimeo’ with the term ‘video’. In addition, at the hearing the applicant stated that it had not submitted any evidence of such an association. Moreover, the applicant clarified that it did not wish to suggest that there was a conceptual difference between the marks at issue. Thus, the Board of Appeal correctly held that no conceptual comparison could be made between the marks at issue.

43 As has been stated in paragraph 20 above, the likelihood of confusion must be assessed globally, in accordance with the perception that the relevant public has of the signs and the goods or services in question, and taking account of all factors relevant to the case.

44 Those factors include, in particular, the interdependence of the similarity of the signs and the similarity of the goods and services designated, and the peaceful coexistence of the two marks on the particular market.

45 The Court of Justice has held that it cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public. The absence of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (judgment of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, ECR, EU:C:2009:503, paragraph 82).

46 In the present case, the applicant submits that, in its assessment of the likelihood of confusion, the Board of Appeal failed properly to take into account the peaceful coexistence on the market of the marks at issue and that it wrongly found that a comparison of all the marks at issue showed similarity between them.

47 In the contested decision, the Board of Appeal found, in essence, that the extracts from websites and the registration databases for the mark meo were insufficient to demonstrate that the marks at issue had peaceably coexisted in the European Union in the years preceding the date on which the application for registration of the mark sought was lodged. Furthermore, as regards the mark applied for, the Board of Appeal held that the evidence in relation to that mark gave no indication as to the way in which the public had encountered the marks at issue on the market of the goods or the services for which they had been used. The Board observed that none of the documents submitted came directly from a consumer of the goods and services at issue. Finally, the Board of Appeal held that, even if coexistence between the marks at issue were to be established, which was not the case, that was not sufficient to establish that there was no likelihood of confusion (paragraphs 34 to 44 of the contested decision).

48 The applicant submits that the Board of Appeal failed correctly to take into account the evidence provided by the applicant to show that, since 2006 at least, the marks at issue had peacefully coexisted on the market. More specifically, according to the applicant, contrary to what the Board of Appeal found, the evidence that it supplied showed the use made in the European Union of the mark applied for, for example, as part of the name of the VIMEO service and in the domain name ‘vimeo.com’, described the profiles of users of VIMEO services established in the European Union and referred to the use of the VIMEO service in Europe. In addition, the applicant submits that paragraph 8 of the witness statement given by the applicant’s President established that the applicant had operated an online video platform in Europe since at least 2005 without having been informed of a single case of confusion between the marks at issue. Furthermore, according to the applicant, it was clear that the opponent had used the mark in the field of telecommunications and television broadcasting since at least 2006. The opponent did not challenge that evidence and the Board of Appeal did not give any particular reason to doubt its accuracy.

49 OHIM contends that, in the present case, there is no objective evidence demonstrating that the marks coexisted in the EU in such a way that consumers of the services designated by each of them did not confuse those marks before the application for registration of the mark VIMEO as a Community trade mark being lodged. The reason for the Board of Appeal’s finding that peaceful coexistence was not proven was the conspicuous absence of evidence to show the way in which the marks at issue were used on the market and showing that consumers were used to seeing the signs without confusing them.

50 In that regard, it is necessary to recall that the possibility that the coexistence of earlier marks on the market could reduce the likelihood of confusion found to exist can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark has demonstrated to the requisite legal standard that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 10 April 2013 in Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, EU:T:2013:160, paragraph 48 and the case-law cited).

51 It follows that, in the first place, as regards the geographic scope of coexistence, where the opposition to the registration of a Community trade mark is based on an earlier Community trade mark and the coexistence of that earlier trade mark with a trade mark identical to the trade mark applied for is relied on in support of there being no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union. If the likelihood of confusion exists potentially throughout the European Union due to the Community-wide scope of the earlier trade mark, the absence of the likelihood of confusion as a result of the coexistence of the marks identical to the marks at issue must, in turn, be proven throughout the European Union. In the second place, it must be observed that, in order for two marks to co-exist, it is essential that they be present together on the market at issue over a sufficiently long period before the date of filing of the application for registration of the Community trade mark (see judgment in ASTALOY, paragraph 50 above, EU:T:2013:160, paragraphs 49 and 51 and the case-law cited).

52 In that regard, it must be noted that the evidence of use of the mark applied for, which the applicant submits was not correctly taken into account, consists of a witness statement of the applicant’s President, extracts from the VIMEO website showing the profiles of long-standing users of VIMEO, copies of articles appearing between 2008 and 2010 in The Guardian and extracts of promotional events for the VIMEO platform in Berlin (Germany), Paris (France) and London (United Kingdom) taken from the VIMEO website.

53 Those documents indicate that the sign VIMEO was used in the EU before the application for registration that is the object of these proceedings. In addition, as regards the earlier mark, the applicant submits that it is clear that the opponent has used the mark in the field of telecommunications and broadcasting since at least 2006. In that respect, the applicant refers to the grounds of its appeal before the Board of Appeal reproduced in an annex to the application. That assessment is not disputed.

54 However, while accepting that those grounds are sufficient to establish the use in the European Union of that earlier mark, it must be held that the finding of the presence of marks identical to those at issue, before the lodging of the application for registration, is not sufficient to demonstrate the peaceful co-existence of the marks in issue.

55 It is possible to take into account the coexistence of two marks in the assessment of the likelihood of confusion only in so far as the evidence produced indicates clearly that such coexistence was based upon the absence of any likelihood of confusion between those marks (judgment in ASTALOY, cited in paragraph 50 above, EU:T:2013:160, paragraph 62).

56 Accordingly, it was for the applicant, in the present case, to adduce evidence to support a finding that the consumers of the products covered by each of the marks at issue did not confuse them before the filing of the application for registration of the VIMEO mark as a Community trade mark.

57 In that regard, neither the extracts from the VIMEO website, nor the copies of articles published between 2008 and 2010 in The Guardian, nor the fact that it was clear that the opponent has used its mark in the field of telecommunications and broadcasting since at least 2006, shows, sufficiently conclusively, that the consumers of the goods or services covered by each of the marks at issue did not confuse those marks. That evidence does not give any indication as to the perception by the relevant consumer of the two signs and still less an indication of the perception by that consumer of those signs as referring to two distinct undertakings or associations.

58 Finally, as regards the witness statement provided by the applicant’s President, in which he states that the applicant had not been informed of any instance of confusion between the mark applied for and the earlier mark, it must be noted that that is not evidence sufficient to establish the peaceful co-existence of the marks in the sense that consumers do not confuse those marks when faced with them. That is merely one factor which, moreover, does not emanate from consumers of the goods and services at issue.

59 Accordingly, for the reasons given above, it must be held that the peaceful coexistence of the marks has not been established sufficiently for it to be taken into account in the global assessment of the risk of confusion between the marks at issue.

60 The applicant submits that the presence of the element ‘meo’ in the mark applied for does not enable a likelihood of confusion between the marks to be established. A comparison of the marks at issue, each considered as a whole, reveals the lack of similarity between them. Thus, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion between the marks at issue. According to the applicant, the effect of the findings of the Board of Appeal was to confer on the opponent a monopoly on the group of three letters ‘meo’, including where it is used as an element in a mark that does not consist of identifiable and divisible components, which is wrong, particularly in circumstances where the group of letters ‘meo’ is used as one of the elements in a longer word which is not likely to be dissected into several elements by the relevant consumer and the element ‘meo’ is commonly used in the European Union within marks that are unconnected with the opponent.

61 The applicant again states that the opponent was unable to provide any evidence that the earlier mark had an enhanced distinctive character. The applicant recalls in that regard that the Board of Appeal held that the distinctive character of the earlier mark should be seen as normal.

62 The applicant further submits that the cases relied on by the Board of Appeal are exceptions to the general rule that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various components. Furthermore, those cases are not relevant for the present case because, first, the mark applied for is not composed of two identifiable and divisible elements that have a meaning for the relevant consumers, one of which is the earlier mark, as in the cases giving rise to the judgments of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue) (T‑281/07, EU:T:2008:489), and of 1 July 2009 in Perfetti Van Melle v OHIM — Cloetta Fazer (CENTER SHOCK) (T‑16/08, EU:T:2009:240). Second, the applicant submits that the mark applied for is not composed of the name of a third party undertaking and of the earlier mark, whether or not they have an independent distinctive character, as in the case giving rise to the judgment of 6 October 2005 in Medion (C‑120/04, ECR, EU:C:2005:594). Third, the applicant submits that the Board of Appeal did not identify other factors enabling it to conclude that, on perceiving the mark applied for, the average consumer would divide it up into several separate elements such as ‘vi’, ‘me’ and ‘o’, or ‘vi’ and ‘meo’. Furthermore, according to the applicant, there are no such factors. Fourth, the applicant submits that the Board of Appeal did not identify other factors that enabled it to conclude that the group of letters ‘meo’ retained an independent distinctive character in the mark applied for, or that the average consumer would otherwise identify the element ‘meo’ within the mark applied for. Furthermore, according to the applicant, there are no factors of this type.

63 In accordance with the general rule set out in paragraph 62 above, the applicant submits that, where a mark is not divisible, in particular where the consumer would not divide it into several elements, which, in his eyes, have a specific meaning or resemble words known to him, or where no company name appears within the mark, it cannot be determined that the marks at issue are similar simply because the letters making up the earlier mark are present in the mark applied for (judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33).

64 OHIM contends that the applicant’s argument that the signs at issue are dissimilar overall is unfounded. In particular, OHIM contends that the Court has repeatedly held that the fact that a mark consists exclusively of the earlier mark to which another word has been added is an indication that there is a similarity between the two marks. Therefore, the fact that the word element of the earlier mark, ‘meo’, is entirely reproduced within the sign applied for, VIMEO, strongly militates in favour of the conclusion that the signs at issue are similar.

65 In the global assessment, first, the Board of Appeal held that the opponent had not claimed enhanced distinctive character acquired through use of the earlier mark, with the result that only the mark’s intrinsic distinctive character would be taken into account. The Board of Appeal found that the distinctive character of the mark was normal, given that the earlier mark as a whole had no meaning for the relevant public in relation to the goods and services at issue. The Board of Appeal noted that 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. Next, the Board of Appeal found that, having regard, first, to the fact that the common element ‘meo’ made the signs visually and phonetically similar, including for consumers who are particularly attentive, and, second, to the fact that the goods and services were partly identical and partly similar, the overall impression produced by the marks at issue could lead the public to believe that the goods and services at issue came, at the very least, from undertakings that are economically linked, which meant that there was a likelihood of confusion (paragraphs 46 to 48 of the contested decision).

67 Taking into account the visual and phonetic similarities of the marks at issue (see paragraph 30 et seq. above), the similarities between the goods and services at issue (see paragraphs 23 and 24 above) and the ordinary distinctive character of the earlier mark, which is not disputed, the overall impression produced by the marks at issue could lead the public to believe that the goods and services at issue come, at the very least, from undertakings that are economically linked.

68 As OHIM correctly states, even though the group of letters ‘meo’ making up the mark applied for does not have an independent distinctive role within the mark applied for, it contributes in a significant way to the overall impression produced by that mark in so far as it makes up two fifths of the sign. Thus, the fact that that group of letters does not have an independent distinctive role does not call into question the finding by the Board of Appeal.

69 Furthermore, even if the Anglophone part of the relevant public associates the mark applied for, VIMEO, with the term ‘video’, where it is used for online video sharing services, which is not the case, the fact remains that the overall impression produced by the marks at issue could lead the public to believe that the goods and services at issue come, at the very least, from undertakings that are economically linked. Even if that association were proven, it is not sufficient to call into question the existence of a likelihood of confusion having regard to the importance of the visual and phonetic similarities of the marks at issue and that of the goods and services at issue.

70 Equally, the claim that the case-law referred to by the Board of Appeal is irrelevant does not affect the assessment recalled in paragraph 67 above. Every case concerning a likelihood of confusion must be assessed on its own merits. In the present case, having regard to the visual and phonetic similarities between the signs at issue and the similarities between the goods and services covered, it must be held that there is a likelihood of confusion between the marks at issue.

71 Even if the case-law referred to by the Board of Appeal should be regarded as irrelevant, it remains the case that the global assessment of the marks and goods and services shows that there is a likelihood of confusion for the relevant public.

72 Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.

73 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.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Vimeo v OHMI - PT Comunicacoes (VIMEO) (Judgment) [2015] EUECJ T-96/14 (23 October 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T9614.html Cite as: EU:T:2015:799, ECLI:EU:T:2015:799, [2015] EUECJ T-96/14

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