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Cite as: [2010] EUECJ T-400/08, [2010] EUECJ T-400/8

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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

13 September 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark ENERCON – Earlier Community word mark ENERGOL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Partial refusal to register)

In Case T-�400/08,

Enercon GmbH, established in Aurich (Germany), represented by R. Böhm, lawyer,

applicant,

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

defendant,

the other party to the proceedings before the Board of Appeal of the Office having been

BP plc, established in London (United Kingdom),

APPLICATION for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 14 July 2008 (Case R 957/2006-�4), relating to opposition proceedings between BP plc and Enercon GmbH,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij (Rapporteur), President, V. Vadapalas and L. Truchot, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 22 September 2008,

having regard to the response lodged at the Registry of the General Court on 7 January 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,

gives the following

Judgment

Background to the dispute

1 On 25 August 2003, the applicant, Enercon GmbH, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘the Office’) 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 registration sought was for the word mark Enercon.

3 The goods in respect of which registration of the mark was sought fall within, inter alia, Classes 1, 2 and 4 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, in respect of each of those classes, to the following description:

– Class 1: ‘Chemicals used in scientific research in the field of regenerative energy production; fuel-saving preparations, solvents for varnishes and lacquers’;

– Class 2: ‘Paints, primers, engraving inks, fireproof paints; colours; fixatives; thinners; lacquers; preservatives against rust, metal protection preparations and other preservatives, all in particular for coating wind energy plants and water treatment installations’;

– Class 4: ‘Industrial oils and oils for paints; lubricants, lubricating oils and greases; dust removing preparations, in particular dust absorbing, wetting and binding compositions; fuels and illuminants; candles, wicks’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2004/035 of 30 August 2004.

5 On 24 November 2004, BP plc filed a notice of opposition on the grounds referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009).

6 The opposition was based on the earlier Community word mark No 137828 ENERGOL, registered on 1 April 1996 in respect of goods falling within Classes 1 and 4 and corresponding, in respect of each of those classes, to the following description:

– Class 1: ‘Chemical products for use in industry excluding cleaning preparations, products for cleaning and de-oiling of metal and porcelain, and stearins for use in the manufacture of pharmaceuticals, foodstuffs, cosmetics and the fermentation process; fluids for use in hydraulic circuits and in hydraulically-�operated equipment; fluids for use in metal cutting and in operating machinery; transmission fluids; oils for use in manufacturing processes’;

– Class 4: ‘Lubricating oils and greases; industrial oils and greases; lubricants; fuels; additives (in the nature of oils) for lubricants and fuels; oils and spirits for lighting, heating and lubrication; petroleum products; transmission oils’.

7 The opposition was based on all of the goods covered by the earlier mark and directed against a portion of the goods designated by the trade mark application, set out in paragraph 3 above.

8 By decision of 26 May 2006, the Opposition Division upheld the opposition in part but rejected it so far as ‘dust removing preparations, in particular dust absorbing, wetting and binding compositions; candles, wicks’ in Class 4 were concerned, which were found to be dissimilar to the goods covered by the earlier mark.

9 On 17 July 2006, the applicant filed a notice of appeal at the Office against the Opposition Division’s decision.

10 By decision of 14 July 2008 (‘the contested decision’), the Fourth Board of Appeal of the Office, first, dismissed the appeal as inadmissible in so far as it sought annulment of the part of the decision rejecting the opposition and, secondly, as unfounded for the remainder, on the ground that the Opposition Division had, under Article 8(1) of Regulation No 40/94, correctly concluded that the similarities between the signs at issue were sufficient to create a likelihood of confusion.

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision;

– order the Office to pay the costs.

12 The Office claims that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

Arguments of the parties

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

14 First, the applicant claims that the Board of Appeal made an incorrect assessment of the phonetic similarities. It submits that the pronunciation of the signs at issue differs considerably and takes issue with the contention that the letters ‘co’ and ‘go’ are pronounced similarly in many of the languages of the European Union, in particular in English, German, French, Italian and Spanish. The signs at issue should consequently, it argues, be considered to be phonetically dissimilar.

15 Secondly, the applicant submits that there is no conceptual similarity, and it disputes the finding of the Board of Appeal that the signs at issue have no conceptual meaning. According to the applicant, the relevant public would easily understand that the earlier mark ENERGOL refers to ‘energy’, specifically ‘energy from oil’, rendering it descriptive in character. By contrast, the trade mark applied for – ENERCON – is an entirely invented term.

16 Lastly, the applicant submits that, because of the descriptive character of the prefixes ‘ener’ of the marks at issue, the relevant public’s attention will focus on the suffixes ‘gol’ and ‘con’ of those marks, which have significant visual differences.

17 The applicant concludes that the similarities of the marks at issue are outweighed by their differences, a fact which consequently renders those signs different overall.

18 The Office disputes the soundness of the applicant’s arguments.

Findings of the Court

19 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 may not be registered if, because of its identity with or similarity to that 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.

20 It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that 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 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 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 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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 Case T-�316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-�43, paragraph 42 and the case-law cited).

22 It must be noted, at the outset, that the finding set out in paragraph 16 of the contested decision, according to which the existence of a likelihood of confusion must be assessed with respect to professionals in the chemical research sector or in the industry in general, and to the general public of the European Union, is not disputed by the applicant.

23 Likewise, the findings set out in paragraph 17 of the contested decision, rejecting the challenge to the Opposition Division’s assessment with regard to the similarity of the goods covered by the trade marks at issue, are also not called into question by the applicant.

24 In the present case, only the Board of Appeal’s finding with regard to the similarity of the trade marks at issue is disputed. In this respect, according to settled case-law, the assessment of the visual, phonetic and conceptual similarity of the signs in question must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components (judgment of 15 April 2010 in Case T-488/07 Cabel Hall Citrus v OHIM – Casur S.C. Andaluza (EGLÉFRUIT), not published in the ECR, paragraph 32).

25 The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-�4529, paragraph 35 and the case-law cited).

26 So far as concerns the visual similarity of the trade marks ENERGOL and ENERCON here at issue, the Board of Appeal observed, in paragraph 18 of the contested decision, that the marks at issue both comprised seven letters, five of which were identical and placed in the same order, with only the fifth and seventh letters being different. In that regard, it found that the capital letters ‘G’ and ‘C’ resembled each other when written in capitals. The Board of Appeal thus took the view that the visual similarities outweighed the dissimilarities resulting from the two different letters.

27 In order to challenge the Board of Appeal’s assessment on that issue, the applicant submits that the prefix ‘ener’ shared by the trade marks at issue is descriptive, with the result that the public’s attention will focus on the final syllables ‘gol’ and ‘con’. In this connection, first, it must be noted that the applicant does not explain how the reference to the concept of energy is descriptive of all of the goods covered by the marks at issue. Secondly, it must be pointed out that the similarity of the signs has to be assessed on the basis of the overall impression which they create. Consequently, while it is necessary to take into account the degree of distinctive and dominant character possessed by the constituent elements of the trade marks for the purposes of assessing their similarity, no element may be entirely ignored. In the present case, even if, as the applicant submits, the element ‘ener’ shared by the marks at issue is understood by the relevant public as a reference to energy, the Board of Appeal should not be considered to have erred in holding that, when assessed overall, the signs at issue were visually similar.

28 So far as phonetic similarity is concerned, the Board of Appeal held, also in paragraph 18 of the contested decision, that the trade marks at issue were both composed of three syllables, the first two being identical. The Board of Appeal thus took the view that the rhythm and intonation resulting from the pronunciation of the marks in issue were the same, with the result that the phonetic similarities outweighed the dissimilarities resulting from the consonants in the final syllable.

29 The applicant, however, has not put forward any argument capable of casting doubt on the soundness of the Board of Appeal’s assessment. Even if, as the applicant submits, in German and other languages of the European Union, first, the letter ‘g’ is ‘spoken softly’, whereas the letter ‘c’ is ‘sharply pronounced’, and, secondly, the phoneme ‘ol’ is lengthened, whereas the phoneme ‘on’ is short and sharp, it cannot be accepted that the pronunciation of the signs as a whole differs significantly. Although there are certain dissimilarities in the pronunciation of the final syllable of the trade marks at issue, the Board of Appeal did not err when it held that, having regard to the overall assessment of those marks, the phonetic similarities outweighed the differences resulting from the consonants in the final syllable.

30 So far as conceptual similarity is concerned, the Board of Appeal observed, in points 19 and 20 of the contested decision, that the concept of energy was rarely designated by the abbreviation ‘ener’, whether in common parlance or among the professional public in the industry concerned. It thus held that the public would understand the reference to the concept of energy only after an improbable ‘mental splitting’ of the marks at issue. Consequently, the Board of Appeal held that the marks at issue were perceived as invented words with no immediate conceptual meaning.

31 The applicant submits that there is no conceptual similarity. That, however, is precisely the conclusion arrived at by the Board of Appeal, which, by holding that the signs at issue did not have any immediate meaning, rejected conceptual similarity as a relevant factor for the purposes of analysing the likelihood of confusion.

32 In so far as, by denying that the earlier mark ENERGOL is an invented term with no meaning, the applicant is seeking to argue that the marks at issue are conceptually different, it must be pointed out that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-120/04 Medion [2005] ECR I-8551, paragraph 28, and OHIM v Shaker, paragraph 35). Thus, even if it is accepted that the prefix ‘energ’ may have a link with the concept of energy and that the suffix ‘ol’ is understood as referring to the word ‘oil’, the Board of Appeal cannot be held to have erred in taking the view that the relevant public would probably not be led to split mentally the trade mark ENERGOL and, therefore, that that sign did not present a sufficiently immediate meaning for it to be acknowledged as having a clear conceptual sense.

33 As the Office correctly points out, the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them only when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping it immediately (see Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-�4335, paragraph 54; Case T-355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-�791, paragraph 49; and Case T-�185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-�1739, paragraph 56).

34 So far as the global assessment of the likelihood of confusion is concerned, the Board of Appeal held, in paragraph 20 of the contested decision, that, given the identity or similarity of the goods at issue and the strong visual and phonetic similarity of the marks, which have no immediate conceptual meaning, there was a likelihood of confusion between the marks at issue on the part of the relevant public with respect to the goods for which the opposition had been upheld.

35 Inasmuch as the applicant has not shown that the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarities, there is nothing to cast doubt on the conclusion drawn by the Board of Appeal that there is a likelihood of confusion between the marks at issue with respect to the goods for which the opposition was upheld.

36 In the light of all of the foregoing, the single plea, alleging breach of Article 8(1)(b) of Regulation No 40/94, must be rejected and, accordingly, the action must be dismissed.

Costs

37 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.

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

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1. Dismisses the action;

2. Orders Enercon GmbH to pay the costs.

Meij

Vadapalas

Truchot

Delivered in open court in Luxembourg on 13 September 2010.

[Signatures]

* Language of the case: English.