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

You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Accenture Global Services v OHMI - Silver Creek Properties (acsensa) (Intellectual property) [2010] EUECJ T-244/09 (07 October 2010)
URL: http://www.bailii.org/eu/cases/EUECJ/2010/T24409.html
Cite as: [2010] EUECJ T-244/9, [2010] EUECJ T-244/09

[New search] [Contents list] [Help]

IMPORTANT LEGAL NOTICE - The source of this judgment is the web site of the Court of Justice of the European Communities. The information in this database has been provided free of charge and is subject to a Court of Justice of the European Communities disclaimer and a copyright notice. This electronic version is not authentic and is subject to amendment.

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

7 October 2010 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark acsensa – Earlier Community and national word and figurative marks ACCENTURE and accenture – Relative ground for refusal – No likelihood of confusion – No similarity of signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Obligation to state reasons – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009))

In Case T-244/09,

Accenture Global Services GmbH, established in Schaffhausen (Switzerland), represented by R. Niebel, lawyer,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,

defendant,

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

Silver Creek Properties SA, established in Panama (Panama),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 March 2009 (Case R 802/2008-2), relating to opposition proceedings between Accenture Global Services GmbH and Silver Creek Properties SA,

THE GENERAL COURT (Eighth Chamber),

composed of E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and A. Dittrich, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 22 June 2009,

having regard to the response lodged at the Court Registry on 7 October 2009,

further to the hearing on 24 June 2010,

gives the following

Judgment

Background to the dispute

1 On 6 September 2005, Silver Creek Properties S.A. filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).

2 The mark for which registration was sought is the following figurative sign in colour:

3 The goods and services in respect of which registration was sought are in Classes 9, 35, 36, 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 9: ‘Apparatus for recording, transmission or reproduction of sound or images, data processing equipment and computers; information network infrastructures’;

– Class 35: ‘Business management, business administration, office functions; business services, accountancy and resource management services; outsourcing’;

– Class 36: ‘Financial affairs, monetary affairs, real estate affairs; international tax planning, financial advice’;

– Class 38: ‘Telecommunications; voice and data communications’;

– Class 41: ‘Education, providing of training; educational and training services for workers knowledge, coaching services’;

– Class 42: ‘Technological services and research and design relating thereto; design and development of computer hardware and software; legal advice’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 10/2006 of 6 March 2006.

5 On 6 June 2006 the applicant, Accenture Global Services GmbH, filed a notice of opposition against the mark applied for, claiming a likelihood of confusion within the meaning of Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

6 The opposition was directed against all the goods and services covered by the mark applied for and was based on all the goods and services covered by the applicant’s earlier rights, namely:

– German word mark ACCENTURE, filed on 27 December 2000 and registered on 10 April 2003 under No 300 94 136, to designate goods and services in Classes 9, 16, 35 to 37, 41 and 42;

– German figurative mark represented below, filed on 8 May 2001 and registered on 3 June 2002 under No 301 28 918, to designate goods and services in Classes 9, 16, 35 to 37, 41 and 42:

– Community word mark ACCENTURE, filed on 27 October 2000 and registered on 9 October 2002 under No 1 925 650, to designate goods and services in Classes 9, 16, 35 to 37, 41 and 42;

– Community figurative mark represented below, filed on 16 November 2000 and registered on 14 August 2002 under No 1 958 370, to designate goods and services in Classes 9, 16, 35 to 37, 41 and 42:

7 By decision of 25 March 2008, the Opposition Division rejected the opposition in its entirety.

8 On 23 May 2008, the applicant filed an appeal with OHIM against the Opposition Division’s decision, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

9 By decision of 20 March 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It held, in essence, that the relevant public consisted of professionals and average consumers of the European Union with an average or above average level of attention. As regards the similarity between the earlier Community word mark ACCENTURE and the mark applied for, the Board of Appeal held that visually those marks were dissimilar for the relevant public. Phonetically, the marks were dissimilar in those Member States in which the earlier Community word mark is pronounced with three syllables, and even more so in those, like Germany, in which the earlier trade mark is pronounced with four syllables. Conceptually, there is no concept which might strengthen or weaken the overall visual and phonetic impression given by those marks, since they have no meaning in relevant languages. Hence, the Board of Appeal held that those marks were dissimilar overall. Since one of the conditions set out in Article 8(1)(b) of Regulation No 40/94 was not met, the Board of Appeal concluded that there was no likelihood of confusion between the mark applied for and the earlier Community word mark. It stated that there was therefore no need to consider the similarity of the goods and services concerned, nor whether the earlier mark had a reputation or was well known. As regards the earlier Community figurative mark and the two earlier German marks on which the opposition had also been based, the Board of Appeal considered that those marks were either identical to the earlier Community word mark, or even more different from the mark applied for than was the earlier Community word mark, so that the finding that there was no likelihood of confusion also applied to them.

Forms of order sought

10 The applicant claims that the Court should:

– annul the contested decision;

– annul the decision of the Opposition Division;

– order Silver Creek Properties to pay the costs.

11 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

12 At the hearing, the applicant withdrew the second head of its claim, which was noted in the minutes of the hearing.

Law

13 In support of the action, the applicant puts forward two pleas in law alleging, first, an infringement of Article 8(1)(b) of Regulation No 40/94 and, secondly, an infringement of Articles 73 and 74 of that regulation (now Articles 75 and 76 of Regulation No 207/2009).

The first plea, alleging an infringement of Article 8(1)(b) of Regulation No 40/94

14 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; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

15 For the purposes of the application of Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion presupposes therefore both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative, so that, in the absence of any similarity between the earlier mark and the mark applied for, it can be held that there is no likelihood of confusion, regardless of the reputation of the earlier mark or the degree of identity or similarity of the goods or services concerned (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 51, and Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 48).

16 According to settled case-law, the assessment of the similarity between two marks, with regard to the visual, phonetic or conceptual similarity, must be based on the overall impression given by those marks, bearing in mind, in particular, 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; Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 88; see, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23).

17 It also follows from the case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and CAPIO, paragraph 89).

18 Finally, according to the case-law, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

19 In the present case, the Board of Appeal considered that the relevant public consisted of professionals and average consumers of the European Union with an average or above average level of attention. That definition of the relevant public is not contested by the applicant.

20 The Board of Appeal’s assessment of the similarity of the signs at issue should be examined in the light of those considerations.

21 With regard to the visual comparison, the similarities between the mark applied for and the earlier Community word mark resulting from the combinations of the letters ‘ac’ and ‘en’ in the same position in those marks are, as was noted by the Board of Appeal in paragraphs 34 to 36 of the contested decision, neutralised by the differences in their length, their endings made up of different letters and the existence of the double consonant ‘cc’ in the earlier Community word mark which is not in the mark applied for. The existence of the figurative element placed to the left of the word element in the mark applied for also visually distinguishes that mark from the earlier Community word mark.

22 With regard to the phonetic comparison, it should be noted that, when pronounced in English, the mark applied for and the earlier Community word mark consist of three syllables. Furthermore, the pronunciation of their two first syllables is identical and the two signs are pronounced with the stress being placed on the second syllable. On the other hand, the endings ‘ture’ and ‘sa’ are clearly different phonetically. Although the final letter ‘e’ of the earlier Community word mark is not pronounced in the United Kingdom, the endings ‘ture’ and ‘sa’ are not at all phonetically similar, contrary to the applicant’s claims.

23 With regard to the applicant’s argument that the average consumer would concentrate more on the beginning of the marks, which are similar in the present case, it should be noted that it cannot, in any event, apply to all cases and call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (see, to that effect, Case T-158/05 Trek Bicycle v OHIM – Audi (ALLTREK) [2007], not published in the ECR, paragraph 70 and the case-law cited).

24 In the present case, the fact that the endings of the mark applied for and of the earlier Community word mark are completely different has a great effect on the overall phonetic impression of those signs. In those circumstances, the differences between those marks clearly prevail over their similarities, such that the overall impression of those marks is that they are phonetically different.

25 With regard, finally, to the conceptual comparison, the Board of Appeal was correct to hold, in paragraph 37 of the contested decision, that there is no concept which could strengthen or weaken the overall visual and phonetic impression produced by those signs. That assessment is also not contested by the applicant in the present action.

26 Thus, in the light of the lack of visual, phonetic or conceptual similarity of the mark applied for and the earlier Community word mark, the Board of Appeal was correct to hold that those marks were neither identical nor similar. Consequently, and contrary to the applicant’s claim, it is not necessary to rule on the question whether, in the light of the goods and services covered by those marks, the phonetic comparison is of particular importance in the present case.

27 The applicant is also wrong to claim that the alleged similarity between the goods and services covered by the mark applied for and those covered by the earlier Community word mark, and the alleged reputation of that earlier mark, should have led to the Board of Appeal, in its assessment of the likelihood of confusion, to apply a stricter criterion to the assessment of the similarity between the marks themselves. Admittedly, in accordance with the principle of interdependence between the relevant factors, and in particular the similarity of the marks and that of the goods or services covered, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17; C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 19; and judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 35). However, such an overall assessment of the likelihood of confusion is required only where the two cumulative conditions for the application of Article 8(1)(b) of Regulation No 40/94 are a priori fulfilled, and they are not in the present case (see, to that effect, Vedial v OHIM, paragraph 54, and Il Ponte Finanziaria v OHIM, paragraphs 50 and 51).

28 With regard, finally, to the applicant’s argument that the Board of Appeal did not correctly determine, in its assessment of the likelihood of confusion, the visual similarity between the marks at issue, since it took into account exclusively the earlier Community word mark ACCENTURE, and not the earlier Community and German figurative marks on which the opposition was also based, which are claimed to be closer to the mark applied for in view of the use of lower case letters, it should be recalled that word marks are marks consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II-1297, paragraph 33). The protection which results from registration of a word mark concerns the word mentioned in the application for registration but not any of its specific graphic or stylistic elements (see, to that effect, judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74). Consequently, the finding of a lack of visual similarity between the mark applied for and the earlier Community word mark ACCENTURE applies also in relation to that sign written in lower case letters. In any event, taking into account extra features of the earlier figurative marks, namely the black background and the symbol ‘>’ which is above the letter ‘t’, can only increase still further the visual difference as against that between the word element ‘acsensa’ and the earlier Community word mark ACCENTURE, so that the Board of Appeal was justified in holding that the finding of a lack of likelihood of confusion was also valid in relation to the earlier figurative marks on which the opposition was also based.

29 It follows that the first plea, alleging an infringement of Article 8(1)(b) of Regulation No 40/94, must be rejected.

The second plea, alleging an infringement of Articles 73 and 74 of Regulation No 40/94

30 The applicant claims, in essence, that the Board of Appeal infringed its obligation to give adequate reasons for the contested decision, in accordance with the first sentence of Article 73 of Regulation No 40/94, on the ground that its arguments relating to the similarity of the goods and services concerned, the reputation of the earlier marks and the existence of earlier figurative marks were not taken into account.

31 The Court notes that, under the first sentence of Article 73 of Regulation No 40/94, decisions of OHIM are to state the reasons on which they are based. According to the case-law, the obligation to state reasons under that provision has the same scope as that enshrined in Article 253 EC. Its purpose is to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the European Union judicature to exercise its power to review the legality of the decision (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73 and the case-law cited).

32 It follows from the same case-law that whether a statement of reasons satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE and METABALANCE 44, paragraph 73 and the case-law cited).

33 The Boards of Appeal can also not be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 55; see also, by analogy, Joined Cases C-204/00 P, C-205/00 P, C-211/00 P, C-213/00 P, C-217/00 P and C-219/00 P Aalborg Portland and Others v Commission [2004] ECR I-123, paragraph 372; and Case C-3/06 P Groupe Danone v Commission [2007] ECR I-1331, paragraph 46).

34 With regard to the Board of Appeal’s failure to take into account the alleged similarity of the goods and services concerned and the alleged reputation of the earlier marks referred to by the applicant, it should be noted that, according to the case-law referred to in paragraph 15 of this judgment and in the light of the Board of Appeal’s finding relating to the lack of similarity between the marks at issue, which has been confirmed by the Court, those arguments did not require a specific answer. In any event, it is apparent from the contested decision that the Board of Appeal took those arguments into consideration, but, given its finding of a lack of similarity between the marks at issue, rejected them as irrelevant.

35 With regard to the applicant’s argument that, although the earlier figurative marks are visually closer to the mark applied for than the earlier Community word mark ACCENTURE, they were not taken into consideration, it should be noted that the Board of Appeal held, in paragraph 44 of the contested decision, that the applicant’s other earlier marks on which the opposition was also based were either identical to the earlier Community word mark, or even more different from the mark applied for than the earlier Community word mark. Therefore, the Board of Appeal indicated the reason why it considered that taking the earlier figurative marks into consideration led also to the finding of a lack of likelihood of confusion between the marks at issue.

36 In the light of the case-law referred to in paragraphs 31 to 33 of this judgment, the reasons stated in the contested decision are therefore sufficient to allow the applicant to know why it was adopted and the Court to exercise its power of review.

37 It follows that the Board of Appeal did not infringe Article 73 of Regulation No 40/94.

38 As regards the applicant’s claim that the Board of Appeal infringed Article 74 of Regulation No 40/94, it should be noted that that provision relates, in particular, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based.

39 In the present case, the Court must reject the argument submitted by the applicant in connection with the present plea, alleging that the Board of Appeal failed to take into consideration the account of facts which it had submitted to prove the similarity of the goods and services concerned, the reputation of the earlier marks and the existence of the earlier figurative marks must be rejected. The alleged failures cannot call in question the assessment of the Board of Appeal, which, as has already been pointed out, correctly based its dismissal of the applicant’s appeal on the lack of similarity between the mark applied for and the earlier marks (see, to that effect, judgments of 25 June 2008 in Case T-224/06 Otto v OHIM – L’Altra Moda (l’Altra Moda), not published in the ECR, paragraph 50, and of 24 September 2008 in Case T-179/07 Anvil Knitwear v OHIM – Aprile e Aprile (Aprile), not published in the ECR, paragraph 73).

40 Therefore, the second plea, alleging an infringement of Articles 73 and 74 of Regulation No 40/94, must be rejected.

41 It follows from the foregoing considerations that the action must be dismissed in its entirety.

Costs

42 Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1. Dismisses the action;

2. Orders Accenture Global Services GmbH to pay the costs.

Martins Ribeiro

Papasavvas

Dittrich

Delivered in open court in Luxembourg on 7 October 2010.

[Signatures]

* Language of the case: English.