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

(Community trade mark Opposition proceedings Application for Community word mark MAGIC SEAT Earlier national figurative trade mark SEAT Relative ground for refusal Likelihood of confusion Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-363/06,

Honda Motor Europe Ltd, established in Slough, Berkshire (United Kingdom), represented by S. Malynicz, Barrister, and N. Cordell, Solicitor,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and A. Folliard'Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Seat SA, established in Barcelona (Spain),

ACTION brought against the decision of the First Board of Appeal of OHIM of 7 September 2006 (Case R 960/2005-1) relating to opposition proceedings between Seat SA and Honda Motor Europe Ltd,

composed of O. Czúcz (Rapporteur), President, J.D. Cooke and I. Labucka, Judges,

Registrar: C. Kantza, Administrator,

having regard to the application lodged at the Registry of the Court on 5 December 2006,

having regard to the response lodged at the Registry of the Court on 5 April 2007,

further to the hearing on 11 March 2008,

gives the following

Background to the dispute

1. On 10 December 2001, the applicant, Honda Motor Europe Ltd, filed an application for registration of 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 mark for which registration was sought is the word mark MAGIC SEAT.
3. The goods in respect of which registration was sought are in Class 12 under the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond to the following description: 'Vehicle seats and vehicle seat mechanisms and parts and fittings and accessories for these goods'.
4. The application was published in Community Trade Marks Bulletin No 70/2002 of 2 September 2002.
5. On 7 October 2002, Seat SA filed a notice of opposition, under Article 42 of Regulation No 40/94, against registration of the Community trade mark in question and as regards all the goods covered by that application.
6. The opposition was based on, inter alia, the Spanish figurative mark No 2189822, as shown below, which was registered on 3 March 1999 for the following goods in Class 12: 'land vehicles, coupling and transmission components as well as other components and spare parts for land vehicles not belonging to other classes; apparatus for locomotion by land, air or water':
7. One of the grounds relied on in support of the opposition was the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the trade mark applied for and the earlier mark. In support of the opposition, Seat also relied on the reputation of its trade mark, particularly in Spain.
8. By decision of 10 June 2005, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion between the trade mark applied for and the earlier mark having regard to the identity of the goods and the similarity of the conflicting marks. Moreover, it held that, in the light of that finding, it was not necessary to examine the enhanced distinctive character of the earlier trade mark.
9. On 5 August 2005 the applicant lodged an appeal with OHIM against that decision.
10. By decision of 7 September 2006 ('the contested decision'), the First Board of Appeal dismissed the appeal in its entirety. It based its decision on a finding that there was a likelihood of confusion between the trade mark applied for and the earlier mark, because the goods within Class 12 covered by the opposing signs were identical and the conflicting marks similar. The Board of Appeal based that conclusion on the finding that the conflicting marks were, to a certain extent similar at a visual level, that they were similar at an aural level, and that they risked being perceived as similar at a conceptual level. It also stated that the earlier mark had a high distinctive character in Spain on account of its reputation. The Board of Appeal added that, even if consumers did not confuse the two marks and noticed the differences between them, there was nevertheless a risk that consumers would associate them and assume that they had a common commercial origin.

Forms of order sought

11. The applicant claims that the Court should:

annul the contested decision;

order OHIM to pay the costs.

12. OHIM contends that the Court should:

dismiss the action;

order the applicant to pay the costs.

Law

13. In support of its action, the applicant relies essentially on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

Arguments of the parties

14. As regards the visual comparison of the conflicting marks, the applicant claims that the Board of Appeal failed to take sufficient account of the 'S' device element of the earlier mark, holding that it would be viewed as a decorative element or as the first letter of the word 'seat'. That conclusion, however, is at odds with the finding contained in the contested decision, according to which the two marks differ visually due to the device element in the earlier mark and the word 'magic' in the trade mark applied for. The 'S' device element is, according to the applicant, the dominant visual aspect of the earlier mark, whereas, in the trade mark applied for, the word 'magic' immediately catches the eye. The Board of Appeal should therefore have found that there was overall a very weak visual similarity between the conflicting marks. In addition, the 'S' device element is an extremely well-known and distinctive sign, as is the case with the logos of Citroà«n, Peugeot, Audi, Mercedes, Toyota and Honda. To ignore that device element amounts to conferring word-only protection on a figurative or composite mark, which is impermissible under the Community trade mark scheme, because marks often achieve protection only on account of the device element. Finally, to ignore the device element in the present case would be an impermissible act of 'radical deconstruction' of a complex mark (Case T-301/03 Canali Ireland v OHIM Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II-2479, paragraph 48). At the hearing, in support of that argument, the applicant also relied on the judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR.
15. As regards the aural comparison of the conflicting marks, the Board of Appeal wrongly concluded that the marks were similar. First, a Spanish consumer would not pronounce the word 'magic' as a Spanish word, since that word does not exist in that language and, therefore, the trade mark applied for, taken as a whole, would also not be pronounced as a Spanish expression. Second, the Board of Appeal also failed to take into consideration the fact that 'magic' is the first word of the trade mark MAGIC SEAT, with the result that the aural differences to the earlier trade mark SEAT occur at the beginning of the trade mark applied for.
16. As regards the conceptual comparison, the applicant complains that the Board of Appeal formed the view that the word 'seat' has no meaning as such in Spanish and that it did not assess, as a whole, the earlier mark, which consists of the word 'seat' and the 'S' device element and which would be immediately and clearly grasped by Spanish consumers as designating the well-known Spanish car manufacturer Seat. Regarding the trade mark applied for (MAGIC SEAT), although the word 'magic' bears some similarity with the Spanish word 'mágico', it would be understood to mean something in English, or at least something in a language other than Spanish, but in no circumstances would it be understood as referring to the Spanish car company Seat. Consequently, the conceptual dissimilarity between the marks counteracts any visual or aural similarity. Moreover, the Board of Appeal failed to take account of the evidence presented by the applicant as to how Spanish consumers were likely to perceive the mark MAGIC SEAT, in particular, the statement of Mr S. according to which those Spanish consumers who can speak English will recognise the word 'magic' as an English word, and those who cannot might consider it to be similar to the Spanish word 'mágico', with the result that they would perceive the mark MAGIC SEAT overall to be an English expression or, at the very least, a foreign expression.
17. As regards the likelihood of confusion, four factors argue against the existence of such confusion in the present case. First, vehicle seats are sometimes relatively high-cost items and purchasers will, therefore, have a relatively high degree of attentiveness with regard to them. Second, those items are usually bought with the assistance of a professional. Third, even if those items are bought without the intervention of professionals, those consumers probably automobile enthusiasts or members of car clubs will nevertheless be well informed. Last, particular care would be exercised by anyone, professional or not, to ensure that he or she has the right seat for the right car. In addition, the Board of Appeal failed to take account of Mr G.'s expert statement, from which it is clear that car seats are usually sold through an authorised dealer; that those seats are sold either as original equipment or as aftermarket spare items; that they are generally bought by knowledgeable enthusiasts and that even car seats in the spare items aftermarket require a fitting kit appropriate for the model of the car.
18. OHIM disputes the applicant's arguments.

Findings of the Court

19. In accordance with Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, a 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 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. In addition, under Article 8(2)(a)(ii) of Regulation No 40/94, 'earlier trade marks' should be understood as meaning, inter alia, trade marks registered in a Member State 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 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 same case-law, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, and in particular similarity between the trade marks and between the goods or services (see Case T-162/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
21. In the present case, the earlier mark upon which the opposition is based is the figurative Spanish mark SEAT. As the Board of Appeal held in the contested decision, the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 40/94 is Spain. Furthermore, taking account of the nature of the goods, the relevant public is composed, on the one hand, of second-hand car dealers, garage owners and mechanics and, on the other hand, of average consumers, who will probably be assisted by a mechanic or other skilled professional when changing or repairing anything related to a vehicle seat. That definition of the relevant public is not, indeed, disputed by the applicant.
22. As regards the comparison of the goods in question, the Board of Appeal was right to hold and is not challenged by the applicant on this point that the goods concerned are identical in so far as the goods covered by the application for registration, namely 'vehicle seats and vehicle seat mechanisms and parts and fittings and accessories for these goods', fall within a broader category, namely 'components and spare parts for land vehicles', covered by the earlier trade mark.

Comparison of the marks

23. As is apparent from settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-Van Heusen v OHIM Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited).
24. As regards, in the first place, the visual comparison of the conflicting signs, it should be noted that it is perfectly possible to consider and determine whether there is any visual similarity between a word mark and a figurative mark, given that the two types of mark have graphic form capable of creating a visual impression (Case T-110/01 Vedial v OHIM France Distribution (HUBERT) [2002] ECR II-5275, paragraph 51, and Case T-359/02 Chum v OHIM Star TV (STAR TV) [2005] ECR II-1515, paragraph 43).
25. In that regard, the Court holds that a complex trade mark, composed of both verbal and figurative elements, cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. Such is the case where that component is, by itself, likely to dominate the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T-6/01 Matratzen Concord v OHIM Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 33, and STAR TV, paragraph 44).
26. That approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole. However, that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components (MATRATZEN, paragraph 34; Case T-31/03 Grupo Sada v OHIM Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 49).
27. With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components (MATRATZEN, paragraph 35, and GRUPO SADA, paragraph 49).
28. Clearly, in the present case, the two marks to be compared have the word 'seat' in common, to which is added a stylised 'S' shaped device element in the earlier trade mark, and the word 'magic' in the trade mark applied for.
29. The Board of Appeal took the view that the word 'seat' was the dominant element of the earlier mark, that is to say, the component which Spanish consumers would quote when trying to identify the mark as a whole.
30. In that regard, it should be borne in mind that, according to settled case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see, to that effect, Case T-104/01 Oberhauser v OHIM Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 47, and Case T-312/03 Wassen International v OHIM Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II-2897, paragraph 37).
31. In the present case, it should be noted that the 'S' device element of the earlier trade mark is slightly stylised, but does not appear to be original or very elaborate. It is the first letter of the verbal component 'seat', which, even placed below the 'S' device element and printed in smaller characters than that device element, is nevertheless written in large capital letters, is larger than that device element, and is perfectly legible. Moreover, as OHIM rightly contends, and despite the elements referred to by the applicant such as the reproduction of the 'S' device element on the cover of Seat's annual report or on the front of the cars sold by that company that device element has no intrinsic semantic content of its own which would lend the earlier trade mark distinctive character, but primarily has the purpose of accentuating the first letter of the word 'seat'.
32. The Board of Appeal was therefore correct to hold, at paragraph 25 of the contested decision, that, although the device element as such is undoubtedly recognisable in itself, it is also inseparably connected with the word element 'seat', which is highly distinctive in Spain because of the reputation it enjoys. Therefore, the earlier trade mark, assessed as a whole, risks being identified through the word component 'seat', whereas the device element will be perceived as a decorative element or the initial of 'seat'. Consequently, the finding of the Board of Appeal that the word component 'seat' is the dominant element of the earlier trade mark must be upheld.
33. Contrary to the applicant's claim, the Board of Appeal thus correctly applied the case-law according to which the overall impression created in the mind of the relevant public by a complex trade mark may, in certain circumstances, be dominated by one or more of its components (Nestlé v OHIM, paragraph 42).
34. It also follows that the Board of Appeal was right to conclude at paragraph 28 of the contested decision that, visually, the conflicting marks were to some extent similar, bearing in mind the presence of the common component 'seat', but that they differed by reason of the figurative element present in the earlier mark and the word 'magic', which will be perceived, in the trade mark applied for, as qualifying the word 'seat' on account of its resemblance to its Spanish equivalent 'mágico'.
35. Lastly, the applicant's argument that paragraphs 25 and 28 of the contested decision are irreconcilable in that it follows from paragraph 25 that the earlier mark's device element was insignificant and from paragraph 28 that the two marks differed visually by reason of the presence of that device element in the earlier mark and the presence of the word 'magic' in the trade mark applied for must also be rejected. As has been pointed out above, the Board of Appeal did not overlook the 'S' device element at paragraph 25 of the contested decision but took the view that that mark, assessed as a whole, was dominated by the verbal component 'seat' and that the device element would be perceived as a decorative element or as the initial of 'seat'. Thus, even though, at paragraph 28 of the contested decision, the Board of Appeal recognised that, visually, the conflicting marks differed by reason of the ancillary figurative element of the earlier mark and the word 'magic' in the trade mark applied for, it also took the view that those marks were, to a certain extent, similar by reason of the presence in both marks of the word 'seat', which was the dominant element of the earlier mark.
36. As regards, in the second place, the aural comparison of the conflicting marks, it is common ground that the 'S' shaped figurative element of the earlier mark is not intended to be pronounced. Further, it should be observed, as the Board of Appeal correctly noted, without being challenged by the applicant, that the word component of the earlier trade mark 'seat' will be pronounced by the relevant public in two syllables 'se-at'.
37. As regards the trade mark applied for, the Court finds that the word 'seat', reproduced in the word mark MAGIC SEAT, risks not being perceived by the relevant public, including those consumers who understand English, as the translation of the English word for seat, in so far as the word 'seat' immediately triggers an association with the name of the well-known Spanish car manufacturer Seat. Contrary to the applicant's assertions, it therefore risks being pronounced as a Spanish word with two syllables, and not as a monosyllabic English word.
38. As to the applicant's argument that the Board of Appeal's assessment goes against the case-law according to which consumers will generally remember the beginning of a mark rather than the end, the Court would recall that that argument cannot hold in all cases (judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM Audi (ALL TREK), not published in the ECR, paragraph 70 and the case-law cited) and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse the different aspects of it.
39. Thus, as has been pointed out above, the word 'magic' will be perceived by the relevant public as a simple qualifier for the word 'seat' on account of its resemblance to the Spanish word 'mágico', which is purely laudatory. In that regard, it is settled case-law that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark (Case T-129/01 Alejandro v OHIM Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 53, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 34). The argument that the relevant public will not pronounce 'magic seat' as a Spanish expression by virtue of the fact that the word 'magic' does not exist in that language must be rejected for the same reason.
40. It follows that it cannot be ruled out that the trade mark applied for will be pronounced 'ma-gic se-at' by at least a section of the relevant public. In those circumstances, since the incorporation of the single word element of the earlier trade mark into the dominant element of the trade mark applied for justifies the conclusion that there is significant phonetic similarity between the conflicting marks, the assessment of the Board of Appeal on that issue must accordingly be upheld (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 37).
41. As regards, lastly, the conceptual comparison of the two conflicting marks, one must take into account the understanding which the relevant public may have of the conflicting marks and more particularly of the dominant element of the earlier mark 'seat', which is common to both marks.
42. In regard to the meaning of the earlier mark, on the one hand, it should be borne in mind that the device element 'S' does not have any semantic content of its own.
43. On the other hand, the Board of Appeal held, at paragraph 30 of the contested decision, that the word 'seat' as such was devoid of any meaning in the Spanish language and constituted the anacronym for the name of the company which is the proprietor of the earlier trade mark, namely, Sociedad Española de Automóviles de Turismo. It added that, because of the reputation acquired by that company and that earlier trade mark, the word 'seat' had become identifiable as a trade mark for cars.
44. That assessment by the Board of Appeal must be upheld. The word 'seat' does not exist in the Spanish language but has acquired a secondary sense or its own meaning in Spanish, in so far as it describes clearly the Spanish car manufacturer Seat (see, to that effect and by way of analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 104). Indeed the applicant accepts that the earlier trade mark, composed of the device element and the word 'seat', will be immediately perceived by the relevant consumer as describing the well-known Spanish car manufacturer Seat.
45. As regards the trade mark applied for (MAGIC SEAT), the Board of Appeal then found that it risked being perceived as having a conceptual likeness to the earlier trade mark SEAT, in that it comprises a mark having a high distinctive character to which the laudatory adjective 'magic' is added.
46. That assessment must also be upheld in so far as it cannot be ruled out that the relevant public, faced with the mark MAGIC SEAT describing vehicle seats sold by the applicant, will, having regard to the reputation of the earlier trade mark and the purely laudatory nature of the adjective 'magic', associate that mark with the earlier trade mark SEAT and therefore with the Spanish car manufacturer.
47. The linguistic evidence put forward on that point must be rejected. According to the applicant, that evidence was not taken into account by the Board of Appeal. The simple statement of the expert Mr S. that most Spanish consumers recognise 'magic' as an English word and that, although they may find it similar to the Spanish word 'mágico', they would nevertheless perceive the trade mark MAGIC SEAT, considered as a whole, as an English expression does not suffice to demonstrate that such a mark would not be understood by at least a section of the relevant public as a Spanish expression.
48. That statement does not rely on any statistical or technical data capable of showing that the relevant public understands English. As has been stated above, the relevant public is composed, on the one hand, of second-hand car dealers, garage owners and mechanics and, on the other hand, of average consumers who will probably be assisted by a mechanic or other skilled professional when changing or repairing anything related to a vehicle seat. In those circumstances, that statement is not sufficient to exclude the possibility that at least a section of that relevant public will not consider the trade mark applied for as a non'Spanish expression, but will associate it with the Spanish car manufacturer Seat.
49. Therefore, in so far as the two conflicting marks risk being perceived, by at least a section of the relevant public, as referring to the car manufacturer Seat, the Board of Appeal was fully entitled to hold that they were conceptually similar.
50. Since there is no conceptual difference between the two conflicting marks that is capable of counteracting their visual and aural similarities, the applicant's argument alleging that the Board of Appeal failed to apply the rule of counteraction must be rejected.
51. It follows that the conflicting marks appear to be similar overall, that similarity resulting from, in particular, the reproduction of the dominant component of the earlier trade mark 'seat' in the trade mark applied for.

The likelihood of confusion

52. According to the case-law, the more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 20 and the case-law cited).
53. In addition, for the purposes of the overall assessment of the likelihood of confusion, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Regard should also be had to the fact that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 26) and to the fact that a public composed of professionals specialising in the area of goods covered is likely to evince a high degree of attentiveness when selecting those goods (see Case T-126/03 Reckitt Benckiser (España) v OHIM Aladin (ALADIN) [2005] ECR II-2861, paragraph 96 and the case-law cited).
54. In the present case, the Board of Appeal found that there was a likelihood of confusion on the grounds that the marks are similar, that the earlier trade mark has a high distinctive character in Spain on account of its reputation, and that the goods in question are identical. It stated, in particular, that, even if the relevant public did not confuse one mark with the other, and noticed their differences, they still risked associating the two marks and assuming that the goods covered had the same commercial origin.
55. It follows from the assessment set out above that the goods covered by the two marks are identical and that the two marks are similar overall.
56. Moreover, it is not in dispute that the earlier trade mark has a high distinctive character in Spain on account of its reputation, with the result that it enjoys a greater protection than those marks with a less distinctive character.
57. It follows that there is a likelihood that the relevant public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings. Therefore, the Board of Appeal did not commit an error of assessment in holding that there was a likelihood of confusion or association on the part of the relevant public.
58. The applicant's arguments cannot cast any doubt on that finding.
59. As regards the applicant's argument that the word 'seat', as contained in the trade mark applied for, loses its secondary meaning and indication of commercial origin because of its association with the English word 'magic', it is sufficient to note that, having regard to the reputation of the trade mark SEAT and the descriptive nature of the word 'magic', the latter term risks being perceived by the relevant public as qualifying the word 'seat', in particular in the expression 'magic seat!', as the Board of Appeal observed at paragraph 27 of the contested decision. Moreover, that finding is corroborated by the fact that, as OHIM contends in its pleadings, it is more and more commonplace to promote trade marks in non-anglophone Member States by using English words in order to increase their international image, and that the use of the English word 'magic' as a laudatory qualifier has become popular.
60. As for the argument alleging that four factors should have led the Board of Appeal to conclude that there was no likelihood of confusion that is to say, vehicle seats are likely to be relatively high-cost items; the purchase of such items is normally carried out with the assistance of a dealer; the high knowledge level of the consumer of those goods; and the fact that every consumer, whether professional or not, will take particular care to ensure that the seat is compatible with the appropriate car model that argument must also be rejected.
61. The Court considers that the applicant, in putting forward those four factors, appears to be claiming that the relevant public's degree of attention is high, whether that public is professional or not, such that any confusion between the two conflicting marks would be avoided. In that regard, the Board of Appeal's assessment at paragraph 35 of the contested decision must be upheld, namely, that the likelihood of confusion between the two conflicting marks is in no way undermined by the fact that the public is mostly composed of specialists. As the Board of Appeal states, the trade in components and spare parts for motor vehicles is not restricted to authorised car dealers of one brand only, with the result that it cannot be ruled out that a Spanish car dealer or mechanic stocking up on components or spare parts from different manufacturers will assume that the goods marketed under the trade mark applied for come from Seat or from a manufacturer economically linked to Seat.
62. Furthermore, although the relevant consumer's high degree of attention may, admittedly, lead him to be aware of the technical characteristics of car seats in order that he may ensure their compatibility with the relevant car model, it should be borne in mind that, taking into account the identity of the goods concerned, the similarity of the conflicting marks and the high distinctive character of the earlier trade mark, the fact that the relevant public may consist of professionals is not sufficient to rule out the possibility that they may believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings (see, to that effect, ALADIN, paragraph 100). While the relevant public's high degree of attention implies that it will be well informed about vehicle seats and may thus avoid making mistakes regarding the compatibility of those seats with the relevant car model, it cannot prevent that public from believing that the seats bearing the MAGIC SEAT trade mark are part of a new range of products developed by the well-known Spanish car manufacturer Seat.
63. Finally, as regards the argument based on the alleged failure by the Board of Appeal to take account of the expert statement of Mr G. from which it is clear, according to the applicant, that car seats are normally sold through an authorised dealer and sold either as original equipment or as aftermarket spare items, the Court finds that argument to be irrelevant because as particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks (judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 59).
64. Moreover, in so far as the applicant alleges that the Board of Appeal did not take into account Mr G.'s expert statement according to which car seats are generally bought by knowledgeable enthusiasts who are not likely to be confused and even the aftermarket seats require a fitting kit corresponding to the relevant car model, the argument must be rejected as it has been established above that, although the relevant public's high degree of attention may help it avoid making mistakes as to the compatibility of seats with the relevant car model, one cannot exclude the possibility of a likelihood of confusion or association in respect of the commercial origin of those goods.
65. It follows that the single plea in law put forward by the applicant is unfounded. Consequently, the present action will be dismissed.

Costs

66. 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. As the applicant has been unsuccessful, it must be ordered to pay OHIM's costs, in accordance with the form of order sought by the latter.

On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Honda Motor Europe Ltd to pay the costs.

Czúcz

Cooke

Labucka

Delivered in open court in Luxembourg on 9 September 2008.

E. Coulon

O. Czúcz

Registrar

President

---

* Language of the case: English.