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

(Community trade mark Opposition proceedings Application for Community word mark GIORGIO BEVERLY HILLS Earlier national word mark GIORGIO Relative ground for refusal No likelihood of confusion Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-228/06,

Giorgio Beverly Hills, Inc., established in Cincinnati, Ohio (United States), represented initially by M. Schaeffer, and subsequently by K. Sandberg, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and G. Schneider, acting as Agents,

defendant,

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

WHG Westdeutsche Handelsgesellschaft mbH, established in Hagen (Germany), represented by H. Prange, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 21 June 2006 (Joined Cases R 107/2005'2 and R 187/2005'2), concerning opposition proceedings between WHG Westdeutsche Handelsgesellschaft mbH and Giorgio Beverly Hills, Inc.,

composed of N. J. Forwood, President, E. Moavero Milanesi (Rapporteur) and L. Truchot, Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 28 August 2006,

having regard to the response of OHIM lodged at the Registry of the Court on 12 December 2006,

having regard to the response of the intervener lodged at the Registry of the Court on 30 November 2006,

further to the hearing on 7 May 2008,

gives the following

Background to the dispute

1. On 2 January 1997, the applicant, Giorgio Beverly Hills, Inc., lodged an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The trade mark in respect of which registration was sought is the word sign GIORGIO BEVERLY HILLS.
3. The goods in respect of which registration was applied for are, inter alia, in Class 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond to the following description: 'clothing, footwear, headgear'.
4. On 6 July 1998, the intervener, WHG Westdeutsche Handelsgesellschaft mbH, filed an opposition, on the basis of Article 8(1)(b) of Regulation No 40/94, against registration of the trade mark applied for. The opposition was based on, inter alia, the earlier German word mark GIORGIO, registered on 20 March 1986 under No 1 089 461 and designating the following goods in Class 25: 'clothing (with the exception of hosiery)'.
5. By decision of 10 December 2004, the Opposition Division upheld the opposition to the extent to which it was based on that earlier German trade mark, on the ground that there was a likelihood of confusion between that mark and the mark applied for.
6. On 10 February 2005, the applicant filed an appeal with OHIM against the Opposition Division's decision.
7. By decision of 21 June 2006 ('the contested decision'), the Second Board of Appeal dismissed the appeal and confirmed the Opposition Division's decision. After noting that the word 'giorgio' was the dominant element in the two trade marks in conflict, the Board of Appeal decided that they were similar from both the visual point of view as well as the phonetic and conceptual points of view. In particular, it held that, in view of the fact that designers and manufacturers of clothing and other accessories often opened stores in various locations, the words 'beverly hills' would be perceived by the majority of consumers as alluding to the goods in question since they would understand them as a reference to the famous shopping quarter of Los Angeles, in the United States, one of the preferred places of famous designers and manufacturers. Having regard to the similarity of the goods covered by the trade marks in question and the similarity of the signs concerned, the Board of Appeal concluded that there was a likelihood of confusion.

Forms of order sought by the parties

8. The applicant claims that the Court should:

annul the contested decision in so far as it dismissed the appeal in Case R 187/2005'2;

reject the opposition of 6 July 1998 in so far as that opposition was upheld by the Opposition Division's decision of 10 December 2004;

order OHIM to pay the costs;

order the intervener to bear the costs of the proceedings before OHIM.

9. OHIM contends that the Court should:

dismiss the action;

order the applicant to pay the costs.

10. The intervener contends that the Court should:

dismiss the action;

uphold the appeal against the Opposition Division's decision of 10 December 2004;

order the applicant to pay the costs, including those relating to the proceedings before OHIM.

11. At the hearing, the applicant explained, in response to a question put by the Court, that its second head of claim was in fact indissociable from the first, and this was noted in the minutes of the hearing.

Law

The applicant's claim for annulment of the contested decision

12. In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

Arguments of the parties

13. The applicant claims that the average consumer of clothing displays an unusually high level of attention and is deemed to be well informed, observant and circumspect, since the goods concerned are purchased after reflection.
14. Further, the applicant contests the Board of Appeal's assessment concerning the similarity of the marks in question. In this regard, it claims that that assessment must be based on the overall impression given by the signs in question, bearing in mind that the relevant consumer does not proceed to analyse their various details. It therefore disputes the Board of Appeal's finding that the dominant element of the two marks is the word 'giorgio' and the element 'beverly hills' is only secondary because the average German consumer would perceive it as referring to a famous shopping area. In that regard, the applicant submits that 'Beverly Hills' is known as a famous residential area but not as a famous shopping area, as is proved by the extracts from the dictionaries and encyclopaedia which it provides. In order to support its argument that the names of geographical places enjoy distinctiveness for the relevant goods, the applicant also submits extracts from two decisions of the Bundespatentgericht (German Federal Patent Court) and copies of the registration certificates of the mark '5th Avenue' both as a German national and as a Community trade mark. Furthermore, in order to show that the words 'beverly hills' are not less distinctive than the element 'giorgio', it refers to Case T-162/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821. Finally, the applicant maintains that the term 'giorgio' is not very distinctive for clothing, footwear and headgear, as is shown by the existence of numerous German and Community trade marks containing the Italian forename 'Giorgio', copies of the registration certificates of which the applicant exhibits.
15. OHIM notes, first of all, that the applicant does not question the Board of Appeal's assessment that the goods concerned, all of which are in Class 25, are similar. Next, it contends that the trade marks at issue are similar from the visual point of view, because the common element 'giorgio' is dominant in the two signs concerned because of both its higher degree of distinctiveness and its position in the signs. In view of the fact that it is common for a single clothing manufacturer to use sub-brands in order to distinguish its various lines from one another, the geographical content of the words 'beverly hills' could contribute to reinforcing the consumer's perception of the trade mark applied for as being a sub-brand of the trade mark GIORGIO. The fact that the earlier trade mark is wholly incorporated in the mark applied for means that the trade marks in question are also similar phonetically. OHIM submits that the same is true of conceptual similarity, since 'Giorgio' is an Italian forename, of average distinctiveness, and that the words 'beverly hills' allude to the goods designated because they evoke the splendour of a renowned geographical location in California. Finally, OHIM disputes all the arguments relied on by the applicant to demonstrate that there is no likelihood of confusion, on the grounds, first, that the applicant has not proved such use on the market of trade marks containing the forename Giorgio as to diminish its distinctiveness, and, second, that the national judgments cited as well as the decisions given by the Board of Appeal in other cases cannot bind OHIM.
16. The intervener takes issue with the applicant's arguments and submits, in particular, that Beverly Hills is famous not only as a place of residence of famous people but also as a shopping area renowned throughout the world, as is proved by the extracts from various Internet sites annexed to the response.

Findings of the Court

17. Under Article 8(1)(b) of Regulation No 40/94, 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.
18. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see GIORGIO BEVERLY HILLS, paragraphs 30 to 32 and the case-law cited). For the purposes of that global assessment, account must be taken of the perception of the target consumer and of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
19. In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraphs 26 and 27, and Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraphs 35 and 36). That global assessment must, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (Case C-251/95 SABEL [1997] ECR I-6191, paragraphs 22 and 23, and Case T-104/01 Oberhauser v OHIM Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 25, 26 and 34).
20. As regards the public and the goods covered, it should be noted, as the parties accept, first, that the goods in respect of which the mark has been applied for and those in respect of which the earlier mark was registered are similar and, second, that the relevant public is the average German consumer of those goods.
21. It is in the light of those considerations that the lawfulness of the contested decision must be determined, by reference to the arguments of the parties on the degree of attention on the part of the relevant public, the comparison of the signs and the likelihood of confusion.
22. Since the earlier mark was registered in Germany, account must be taken, for the purposes of its comparison with the mark applied for, of the perception of German consumers of clothing, footwear and headgear. Since those goods are targeted at the general public, the relevant public is composed of average German consumers who are reasonably well informed and reasonably observant and circumspect (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 34, and Case T-301/03 Canali Ireland v OHIM Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II-2479, paragraph 45).
23. So far as the similarity of the signs in question is concerned, the contested decision is based on the consideration that the dominant element of the two trade marks is the word 'giorgio', which is the only word of which the earlier sign consists and the first word making up the mark applied for, in which that word is followed by a geographical designation. According to the Board of Appeal, it follows that the marks in question are similar both visually and phonetically, since the public's attention is in general attracted by the first element of a mark, as well as conceptually, since the shared element 'giorgio' is an Italian forename which is uncommon in Germany and has average distinctiveness, whereas the words 'beverly hills' are allusive to the goods in question.
24. In this respect, it should be recalled that the assessment of the visual, phonetic or conceptual similarity of the marks in question must be based on the overall impression given by the marks. Whilst it is true that, in that assessment, account must be taken of the distinctive and dominant elements of the signs, the fact remains that, in the mark applied for, the word 'giorgio' is not a dominant element within the meaning of paragraph 42 of OHIM v Shaker.
25. Contrary to what OHIM essentially submits, the words 'beverly hills' do not have weak distinctive character. Thus, the Court has already held that those words, which refer to a particular geographical place with which the target public is familiar, are not descriptive of the goods in question (GIORGIO BEVERLY HILLS, paragraph 49).
26. The documents provided by the intervener regarding knowledge of Beverly Hills as a shopping district were submitted for the first time before the Court. Those documents are therefore inadmissible, since it follows from Article 63(2) of Regulation No 40/94 that facts not submitted by the parties before OHIM cannot be submitted at the stage of the appeal brought before the Court of First Instance, which is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of Community law made by that board, particularly in the light of the facts which were submitted to the latter. By contrast, the Court of First Instance cannot carry out such a review by taking into account matters of fact newly produced before it (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 54).
27. It is therefore necessary to assess the similarity of the marks at issue in the light of the foregoing considerations.
28. As regards the visual similarity of the signs at issue, it must be noted that the mark applied for is three times longer than the earlier mark. Admittedly, the first component of word marks may be more likely to catch the consumer's attention than the following components (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L'Oréal v OHIM Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65). However, that consideration cannot apply in all cases (see, to that effect, Case T-292/01 Phillips-Van Heusen v OHIM Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 50, and Case T-117/02 Grupo El Prado Cervera v OHIM Heirs of Debuschewitz (CHUFAFIT) [2004] ECR II-2073, paragraph 48). It cannot, in any event, call into question the fact that it is necessary to take account of the overall impression given by the marks at issue when examining their similarity, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, SABEL, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25; Fifties, paragraph 28, and Case T-355/02 Mülhens v OHIM Zirh International (ZIRH) [2004] ECR II-791, paragraph 41).
29. The same applies from the phonetic point of view, in view of the fact that the mark applied for will be pronounced in six syllables ('gior-gio-be-ver-ly-hills'), whereas the earlier mark contains only two syllables ('gior-gio').
30. As regards the conceptual comparison of the conflicting signs, as was stated at paragraph 25 above, the words 'beverly hills' in the mark applied for refer to a particular geographical place, with which the target public is familiar, and are not descriptive of the goods concerned. Those words have a strong semantic value which, combined with that of the masculine forename Giorgio, produces a whole that is conceptually different from the earlier mark (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 49).
31. Furthermore, in a business sector such as that of clothing, in which it is common to use signs consisting of forenames and surnames, and in particular Italian forenames and surnames, it may be assumed, as a general rule, that very common forenames and surnames will be used more frequently in the course of trade than unusual forenames and surnames. Accordingly, and in the absence of any enhanced distinctiveness through use of the earlier mark, the consumer will not infer from the use of the forename Giorgio the existence of an economic link between all the proprietors of marks containing that forename (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 50, and Case T-169/03 Sergio Rossi v OHMI Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraph 83).
32. It follows that the similarities between the two marks in question cannot outweigh the differences between them, which create a different overall impression.
33. Accordingly, even though there is similarity between the goods covered by the conflicting marks in this case, the visual, phonetic and conceptual differences between the signs in question constitute, in particular in the light of the findings in paragraphs 30 and 31 above, sufficient grounds for holding that there is no likelihood of confusion in the mind of the relevant public (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 52).
34. In those circumstances, the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be upheld and the contested decision must be annulled.

The intervener's second head of claim

35. By its second head of claim, the intervener requests the Court to uphold the appeal brought against the Opposition Division's decision of 10 December 2004. Although the intervener does not specify it, the appeal to which it refers and which it requests be upheld can only be the appeal with the reference R 107/2005'2, which it had brought before the Board of Appeal against the Opposition Division's decision of 10 December 2004 in so far as that decision had rejected its opposition, and which, after being joined with Case R 187/2005-2, was dismissed by the Board of Appeal in the contested decision.
36. It is therefore necessary to re-classify that head of claim as meaning that it seeks, pursuant to Article 134(3) of the Rules of Procedure of the Court of First Instance, the annulment of the contested decision in so far as the Board of Appeal rejected its opposition.
37. In that connection, Article 44(1)(c) of those Rules applies also to the form of order sought for the purpose of Article 134(3), which must therefore contain a summary of the pleas in law on which the application is based. However, it must be noted that the intervener's response does not contain a statement of the pleas in law relied upon in support of its second head of claim, which must for that reason be dismissed as inadmissible.

Costs

38. 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. In the present case, OHIM has been unsuccessful and the applicant has applied for OHIM to be ordered to pay the costs.
39. Under the third subparagraph of Article 87(4) of the Rules of Procedure, the Court may order an intervener to bear its own costs. In the present case, the intervener, like OHIM, has been unsuccessful but the applicant has not applied for the intervener to be ordered to bear its costs.
40. However, the applicant has applied for the intervener to be ordered to pay the costs of the proceedings before OHIM. Under Article 136(2) of the Rules of Procedure, only costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.
41. Accordingly, OHIM must be ordered to pay, in addition to its own costs, the costs relating to the present proceedings incurred by the applicant. The intervener is ordered to pay, in addition to its own costs, the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE COURT OF FIRST INSTANCE (Seventh Chamber)

hereby:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 21 June 2006 (Cases R 107/2005-2 and R 187/2005-2) in so far as it dismissed the appeal in Case R 187/2005-2;

2. Orders OHIM to bear its own costs and to pay those incurred by Giorgio Beverly Hills, Inc. during the proceedings before the Court of First Instance;

3. Orders WHG Westdeutsche Handelsgesellschaft mbH to bear its own costs and to pay those incurred by Giorgio Beverly Hills for the purposes of the proceedings before the Board of Appeal of OHIM.

Forwood

Moavero Milanesi

Truchot

Delivered in open court in Luxembourg on 10 December 2008.

[Signatures]

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* Language of the case: English.