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URL: http://www.bailii.org/eu/cases/EUECJ/2010/T49008.html
Cite as: [2010] EUECJ T-490/8, [2010] EUECJ T-490/08
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(Community trade mark – Opposition proceedings – Application for Community figurative mark CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance – Earlier Community and national figurative marks CM Capital Markets – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T-490/08,
CM Capital Markets Holding, SA, established in Madrid (Spain), represented by T. Villate Consonni and J. Calderón Chavero, lawyers,
applicant,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Carbon Capital Markets Ltd, established in Oxford (United Kingdom), represented by E. Hardcastle, Solicitor,
ACTION brought against the decision of the First Board of Appeal of OHIM of 3 September 2008 (Case R 16/2008'1) concerning opposition proceedings between CM Capital Markets Holding, SA and Carbon Capital Markets Ltd,
composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 November 2008,
having regard to the response of OHIM lodged at the Court Registry on 12 May 2009,
having regard to the response of the intervener lodged at the Court Registry on 1 May 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 give a ruling 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 9 June 2005 the intervener, Carbon Capital Markets 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) 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 trade mark for which registration was sought is the figurative sign reproduced below:
3 The services in respect of which registration was sought fall within Class 36 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 are described as follows: ‘Financial services; commodity trading; commodities brokerage; commodities finance; commodities investment services; services relating to the trading of commodities; provision of pricing information of commodities; capital investments; investment services; services relating to emissions allowance trading; options trading; trading in emissions allowances; trading in equities; trading in stocks; commodities brokerage; risk management services; financing of acquisitions; information, advisory and consultancy services relating to emissions trading’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 50/2005 of 12 December 2005.
5 On 10 March 2006 the applicant, CM Capital Markets Holding, SA, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of that trade mark for the services referred to in paragraph 3 above.
6 The opposition was based on two registrations of the blue and grey figurative sign (‘the earlier marks’) reproduced below:
7 That sign had been registered:
– first, as Community trade mark No 3409281 on 6 July 2005, covering services in Classes 35, 36 and 42 of the Nice Agreement described, in respect of each of those classes, as follows:
– Class 35: ‘Cost price analysis; business management and organisation consultancy; industrial management assistance; professional business consultancy, personnel recruitment, personnel management; accountancy; tax preparation; statistical information services; marketing studies’;
– Class 36: ‘Actuarial services; management of financial assets; agencies for debt and rent collection; financial analysis; stocks and bonds brokerage; issue of tokens of value; financial and fiscal evaluations; fiscal valuations; investment trusts and holding companies; financial, monetary and stock services; mutual funds and capital investment; exchange rates, stock exchange quotations’;
– Class 42: ‘Industrial analysis and research services; design and development of computer hardware; consultancy services in the field of computer programming; studies, analysis, design of software projects and computer systems; consultancy relating to computers, rental of computers; computer software; webpage creation and design; scientific and technological services, research and design relating thereto; industrial analysis and research services; consultancy and legal assistance’;
– second, as Spanish trade mark No 2381503 on 5 October 2001, covering services in Class 36 of the Nice Agreement described as ‘Financial and exchange services’.
8 The opposition was based on all the services protected by the earlier marks.
9 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
10 On 30 October 2007 the Opposition Division of OHIM rejected the opposition, finding, in essence, that there was no likelihood of confusion between the signs at issue.
11 On 17 December 2007 the applicant filed an appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.
12 By decision of 3 September 2008 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal. In particular it considered, at paragraph 22 of the contested decision, that, while the services covered by the marks at issue were ‘essentially the same’, the marks nevertheless did not display a sufficient degree of similarity for there to be a likelihood of confusion between them, taking into account the fact that the expression ‘capital markets’ is generic for services in the financial sector, the inherently low distinctive character of the earlier marks and the fact that the relevant public is highly attentive and well informed.
Forms of order sought by the parties
13 The applicant claims that the Court should:
– annul the contested decision, with the consequence that registration of the trade mark applied for will be refused in its entirety;
– uphold its claims;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– uphold the contested decision, with the consequence that registration of the trade mark applied for will be allowed in its entirety;
– uphold its claims;
– order the applicant to pay the costs.
Law
16 The applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
17 The applicant submits, in essence, that the Board of Appeal erred in holding that there was no likelihood of confusion between the trade marks at issue.
18 In the first place, the applicant takes the view that the services covered by the marks at issue are identical, as observed by the Board of Appeal.
19 In the second place, the applicant submits, in essence, that the marks at issue are ‘nearly identical’.
20 The applicant regards three words – namely ‘carbon’, ‘capital’ and ‘markets’ – which appear in the trade mark applied for, and, moreover, the letter ‘c’ and the two words ‘capital’ and ‘markets’, which appear in the earlier marks, as being the dominant elements in those marks. It observes in that regard that the words ‘capital’ and ‘markets’ are common to the signs at issue. Furthermore, the letter ‘c’ in the earlier marks is the initial of the word ‘carbon’, which appears in the trade mark applied for and to which it is a reference. According to the applicant, the trade marks at issue evoke and protect services in connection with the carbon dioxide markets provided by the companies concerned.
21 The applicant states in that regard that both OHIM’s previous practice in taking decisions and the case-law show that consumers identify and remember a complex mark by its word element rather than by its graphic element, which is negligible in the present case, and that complex marks are identical where they include identical word elements. As OHIM’s Opposition Division has found in a number of cases where it concluded that there was a likelihood of confusion, it is important to note that the word elements of the trade marks at issue are ‘more than 70% the same’. Moreover, the graphic distinctions between the marks at issue are not such as to prevent a likelihood of confusion. The applicant states in that regard that, in the trade mark applied for, both the graphic element and the word element ‘emissions compliance solutions & carbon finance’ are negligible.
22 In the third place, the applicant takes the view that the Board of Appeal did not, in accordance with the case-law, ‘give due attention to the fact that, since the services covered are the same, the demarcation line and the distinction between the trade marks at issue [should] be clear and immediate’. The applicant observes in that regard that, as the case-law shows, first, the average consumer rarely has the chance to make a direct comparison between the different marks and must, therefore, rely on his imperfect recollection of them, and, second, such a consumer does not have special technical knowledge, nor is he a specialist. Consequently, in the applicant’s view, as the Court stated in Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II'4359, paragraph 50, the Board of Appeal should have concluded in this instance that ‘[a]s a consequence of the fact that the services covered are identical, any differences between the signs [at issue] are attenuated’.
23 In the fourth place, the applicant submits that the likelihood of association of the marks at issue must be taken into account, since it is more than likely that a consumer who is familiar with the earlier marks and their commercial origin will associate them with the trade mark applied for.
24 OHIM and the intervener challenge the applicant’s arguments.
Findings of the Court
25 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 or the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (ii) of Regulation No 207/2009), an earlier trade mark means a trade mark registered in a Member State or in the Community where the date of application for registration is earlier than the date of application for registration of the Community trade mark.
26 According to established case-law, 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 line of 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 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).
27 The present case must be considered in the light of that case-law.
The relevant public
28 According to the case-law, 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).
29 In the present case, first of all, it is undisputed that, since the earlier marks are a Community trade mark and a Spanish trade mark, the Board of Appeal was correct in observing, at paragraph 12 of the contested decision, that it is necessary to take into consideration the perception of the marks at issue by the consumer of the services throughout the territory of the Community (see, to that effect, judgment of 22 March 2007 in Case T-322/05 Brinkmann v OHIM – Terra Networks (Terranus), not published in the ECR, paragraphs 29 and 30).
30 Second, the Board of Appeal concluded, also at paragraph 12 of the contested decision, that the relevant public is ‘very attentive and well informed’, having stated that ‘the earlier marks cover services aimed at a specialised group of persons, including experts, brokers and other persons acting in the financial and capital markets, and [that] the services designated by the mark applied for are also intended for the same public’.
31 It must be noted that, while the applicant refers expressly in its written pleadings to case-law according to which, in essence, the average consumer does not have special technical knowledge and is not a specialist, it nevertheless does not expressly claim that the Board of Appeal made an error of assessment in determining the relevant public. Moreover, the applicant does not put forward any argument or evidence to show that users of the services in question – assuming they are final consumers and not only professionals – are not very attentive or well informed, as the Board of Appeal found, taking into account the nature of the financial services covered by the marks at issue. The Board of Appeal’s assessment in that regard cannot, therefore, be called into question.
32 Third, in view of the fact that the relevant public is very attentive and well informed, it must be observed that the Board of Appeal was entitled to take the view, at paragraph 17 of the contested decision – which is not challenged by the parties – that that public is familiar with basic English financial terminology.
33 In the light of the foregoing, it must be held that the relevant public consists of consumers throughout the whole Community who are very attentive, well informed and familiar with basic English financial terminology.
Comparison of the services
34 The parties do not dispute the fact that the Board of Appeal was correct in stating, at paragraph 22 of the contested decision, that ‘the conflicting services are essentially the same’. Since the services falling in particular within Class 36 of the Nice Agreement that are covered by the earlier marks include the same range of financial sector services as those covered by the trade mark applied for and falling within the same class, the services at issue must be considered to be identical (see, to that effect, judgment of 18 April 2007 in Joined Cases T-333/04 and T-334/04 House of Donuts v OHIM – Panrico (House of donuts), not published in the ECR, paragraph 41).
Comparison of the signs
35 The global assessment of the likelihood of confusion must, as far as the visual, phonetic or conceptual similarity of the signs in question is concerned, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements (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).
36 Assessment of the similarity between two marks means more than taking just one component of a complex trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case where that component is likely to dominate, by itself, the relevant public’s recollection of that mark, with the result that all the other components of the mark are negligible within the overall impression created by it (Nestlé v OHIM, paragraph 43).
37 In the first place, as regards any dominant elements in the trade marks at issue, it must be noted in this instance that, whereas the applicant submits that the word elements ‘carbon’, ‘capital’ and ‘markets’ of the trade mark applied for, and ‘c’, ‘capital’ and ‘markets’ of the earlier marks are the dominant elements of the signs at issue, and that, in the trade mark applied for, the figurative element and the expression ‘emissions compliance solutions & carbon finance’ are negligible, the Board of Appeal did not mention in the contested decision that, in its view, certain elements of the trade marks at issue were dominant. By contrast, at paragraph 17 of the contested decision, it expressly rejected the notion that the terms ‘capital’ and ‘markets’ could constitute a ‘critical factor’ in the context of a comparison of the signs at issue. The Board of Appeal found, in essence, that the terms ‘capital’ and ‘markets’ were generic terms in the financial sector and, moreover, that, in accordance with the case-law, the target public would not generally consider a descriptive element forming part of a complex mark to be the distinctive and dominant element of the overall impression conveyed by that mark.
38 First, it must be noted that the trade mark applied for is composed of a graphic element consisting of two interlocking rings, to the right of which is the word element ‘carbon capital markets’ above the word element ‘emissions compliance solutions & carbon finance’.
39 As regards, first of all, the word element ‘carbon capital markets’, it should be noted that, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, Case T-363/04 Koipe v OHIM – Aceites del Sur (La Española) [2007] ECR II-3355, paragraph 92, and judgment of 13 December 2007 in Case T-242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 52 and the case-law cited). Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, el charcutero artesano, paragraph 53 and the case-law cited, and Case T-7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 44 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see paragraph 36 above).
40 In the present case, it must be noted that the expression ‘capital markets’ is descriptive of the services as a whole which the trade mark applied for is intended to protect, and, moreover, that the word ‘carbon’ evokes some of those services, such as services in connection with ‘emissions allowance trading’, which the relevant public, being very attentive and well informed, will interpret as being a reference to financial services in connection with carbon dioxide emissions. Furthermore, the expression ‘carbon capital markets’ forms a syntactically cohesive unit which the relevant public will interpret as meaning ‘capital markets in the carbon sector’.
41 Therefore, contrary to the applicant’s submission, the expression ‘carbon capital markets’ cannot be regarded as the dominant element of the trade mark applied for.
42 Next, as regards the graphic element and the word element ‘emissions compliance solutions & carbon finance’, it must be held that, contrary to the applicant’s assertions, they cannot be regarded as negligible. While the graphic element of the trade mark applied for is obviously decorative, the fact remains that that element appears at the beginning of the sign and is, therefore, immediately apparent. Moreover, while the expression ‘emissions compliance solutions & carbon finance’ – which the relevant public will recognise as meaning ‘solutions in relation to emissions compliance and finance in the carbon sector’ – is written in small letters which are not immediately legible, it must nevertheless be observed that the length of that expression within the sign is the same as that of the expression ‘carbon capital markets’, the meaning of which is thereby clarified.
43 Accordingly, neither the figurative element nor the word elements of the trade mark applied for may be regarded as being either dominant or negligible. It is therefore the overall impression conveyed by the trade mark applied for which must be taken into account (see, to that effect, judgment of 11 December 2008 in Case T-90/06 Tomorrow Focus v OHIM – Information Builders (Tomorrow Focus), not published in the ECR, paragraph 29).
44 Second, with regard to the earlier marks, as the Board of Appeal correctly stated at paragraph 18 of the contested decision, they are composed of a graphic element consisting of a rectangular frame onto which is superimposed the capital letter ‘c’ and a wavy line which, according to the Board of Appeal, could be perceived as a fanciful letter ‘m’; moreover, below that figurative element and positioned centrally is the expression ‘capital markets’ in lower case, except for the initial letters. Whereas the word ‘capital’ is in the same grey colour as the letter ‘c’ in the figurative element, the word ‘markets’ is written in the same blue colour as the wavy line.
45 In that regard, the applicant’s argument that the relevant public attaches greater significance to the word elements than to the figurative elements of a complex mark, and, therefore, that the earlier marks are dominated by the letter ‘c’ and by the word elements ‘capital’ and ‘markets’, must be rejected.
46 First, as regards the figurative element of the earlier marks, it must be noted that the letter ‘c’ and, as the case may be, the letters ‘c’ and ‘m’ – assuming that the relevant public does not perceive the fanciful letter ‘m’ as merely a wavy line – form a visual whole that is indissociable from the rectangular frame within which they appear. It is therefore the graphic element as a whole which, as the Board of Appeal correctly observed at paragraph 18 of the contested decision, is likely particularly to attract the attention of the relevant public on account of its particular graphics and not just the letter ‘c’ or, as the case may be, the letters ‘c’ and ‘m’.
47 Second, as regards the word element of the earlier marks, it must be observed that although – as stated at paragraph 40 above in relation to the trade mark applied for – the expression ‘capital markets’, which is descriptive of the services covered by the earlier marks, is not generally likely to dominate the overall impression conveyed by the earlier marks, it is nevertheless a relevant element for the purposes of a comparison of the signs at issue because, inter alia, it is as prominent, visually, as the graphic element.
48 In the light of the foregoing, it must therefore be held that the trade mark applied for and the earlier marks must be compared visually, phonetically and conceptually with regard to the overall impression conveyed by the graphic and word elements of those marks – none of those elements being capable of being regarded as either dominant or negligible – and not just with regard to their word elements, as erroneously claimed by the applicant.
49 In the second place, as regards the visual comparison of the marks at issue, it must be noted that although, as the applicant points out, the word elements ‘capital’ and ‘markets’ are common to those marks, the fact remains that their visual configuration is different, as the Board of Appeal correctly observed at paragraph 18 of the contested decision.
50 While the graphic element of the trade mark applied for precedes both the expression ‘carbon capital markets’, which appears to its right and is written in bold capital letters, and the expression ‘emissions compliance solutions & carbon finance’, the graphic element of the earlier marks is, by contrast, positioned above the word element ‘capital markets’, with the result that the word and graphic elements of the earlier marks constitute a graphic whole that is different from that formed by the trade mark applied for. Furthermore, the visual difference between the marks at issue is highlighted not only by the fact that the graphic element of the trade mark applied for, and the letter ‘c’ or, as the case may be, the letters ‘c’ and ‘m’ within the graphic element of the earlier marks, are positioned at the beginning of those signs, but also by the fact that the colouring and lettering of the terms ‘capital’ and ‘markets’, which are the only elements common to the signs at issue, are different.
51 Consequently, contrary to the applicant’s assertions, the marks at issue, assessed globally, are not visually similar.
52 In the third place, as regards the phonetic comparison of the marks at issue, the Board of Appeal found, at paragraph 19 of the contested decision, that, in spite of the differences arising from the fact that the earlier marks are perceived as consisting of one phoneme and five syllables, whereas the trade mark applied for contains seven syllables, there is a certain similarity between the marks at issue owing to the presence of the expression ‘capital markets’.
53 The applicant challenges the Board of Appeal’s assessment in that respect, claiming that the marks at issue are ‘nearly identical’ since the only difference between them arises from the fact that the earlier marks include the letter ‘c’, whereas the trade mark applied for includes the word ‘carbon’.
54 Although the five syllables of the expression ‘capital markets’ in the marks at issue are identical and appear in the same order, it is nevertheless the case that, leaving aside the fact that the trade mark applied for includes the expression ‘emissions compliance solutions & carbon finance’ which does not appear in the earlier marks, the marks at issue differ also inasmuch as the trade mark applied for includes two syllables, ‘car’ and ‘bon’, in addition to those which make up the earlier marks, the sounds of those two syllables are different from those of the letter ‘c’ or, as the case may be, the letters ‘c’ and ‘m’ in the earlier marks, and those phonetic differences are discernible as soon as the marks at issue are pronounced.
55 In that regard, the Court must reject the applicant’s argument that the case-law, and the previous practice of OHIM in taking decisions on which the applicant relies, show that complex marks are identical where they include identical word elements. Such a principle would not, in any event, apply in the present case since, as has been stated at paragraph 54 above, some of the word elements of the marks at issue are not identical and the word elements in question are not at all negligible in the overall impression conveyed by those marks.
56 Therefore, contrary to the applicant’s submission, the Board of Appeal did not commit any error in finding that, assessed globally, there was only some phonetic similarity between the marks at issue.
57 In the fourth place, as regards a conceptual comparison of the marks at issue, the Board of Appeal found, at paragraph 20 of the contested decision, that they had different meanings since, in essence, the letter ‘c’ in the earlier marks is likely to be perceived, not as the abbreviation of the word ‘carbon’ which appears in the trade mark applied for, but rather as the abbreviation of the word ‘capital’ which appears in the earlier marks, in the same way as the fanciful letter ‘m’ is interpreted as the abbreviation of the word ‘markets’.
58 The applicant challenges the Board of Appeal’s assessment in that regard, maintaining that the marks at issue have the same meaning, in so far as the letter ‘c’ in the earlier marks must be interpreted as referring to the word ‘carbon’ which appears explicitly in the trade mark applied for. According to the applicant, the letter ‘c’ in the earlier marks is a reference to the word ‘carbon’, given that the marks at issue are protecting the same services in connection with the carbon dioxide markets as those provided by the companies concerned.
59 In that regard, it must be noted first of all that the relevant public, consisting of consumers who are very attentive, well informed and familiar with basic English financial terminology, will attach little significance to the meaning of the words ‘capital’ and ‘markets’, which are descriptive of those services and which do not enable the commercial origin of the trade marks at issue to be identified.
60 Furthermore, as the Board of Appeal correctly observed at paragraph 20 of the contested decision, it is important to note not only that there is a very large number of words that begin with the letter ‘c’, but also that the relevant public is more likely to perceive that letter as referring to the word ‘capital’ than to the word ‘carbon’. In the earlier marks, the letter ‘c’ appears above the word ‘capital’, is written in the same colour and appears in the same font and size as are used for that word. Therefore, the relevant public is likely to perceive the letter ‘c’ as referring to the word ‘capital’. That finding is corroborated by the fact that, assuming that the wavy line is perceived as a fanciful letter ‘m’, the letters ‘c’ and ‘m’ are likely to be perceived as the initial letters of the identically-coloured words ‘capital’ and ‘markets’, respectively, or, as pointed out by OHIM, as the initials of the applicant’s company name.
61 Moreover, contrary to what is claimed by the applicant, the fact that the marks at issue cover the same services does not undermine the conclusion (see paragraph 60 above) that the relevant public is unlikely, in the present case, to make a connection between the letter ‘c’ in the earlier marks and the word ‘carbon’ in the trade mark applied for.
62 The Court finds, therefore, as did the Board of Appeal, that the marks at issue refer to different meanings; consequently, assessed globally, they are not conceptually similar.
63 In view of all the foregoing considerations, it must be held that, as the Board of Appeal correctly stated at paragraph 21 of the contested decision, and contrary to the applicant’s assertions, the signs at issue are different. In the overall impression conveyed by the signs at issue, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, in the present case, the relevant public is highly attentive and well informed.
The likelihood of confusion
64 The Board of Appeal found, at paragraph 22 of the contested decision, that, in spite of the fact that the services covered by the marks at issue are identical, there is insufficient similarity between them to establish a likelihood of confusion, given that the expression ‘capital markets’ is generic for services in the financial sector, that the relevant public is highly attentive and well informed, and that the earlier marks have an inherently low distinctive character.
65 The applicant criticises the Board of Appeal, in essence, for failing to find that there was a likelihood of confusion despite it being apparent from the case-law that, as a consequence of the fact that the services covered are identical, any differences between the signs at issue are attenuated.
66 In that regard, it is sufficient to note that, bearing in mind the lack of similarity of the signs at issue (see paragraph 63 above), the Board of Appeal was right to find that, in spite of the services covered being identical, there was no likelihood of direct confusion between the trade mark applied for and the earlier marks. The fact that the designated services are identical cannot, in the global assessment of the likelihood of confusion, compensate for the lack of similarity between the signs at issue (see, to that effect, judgment of 12 February 2009 in Case T-265/06 Lee/DE v OHIM – Cooperativa italiana di ristorazione (PIAZZA del SOLE), not published in the ECR, paragraph 56).
67 Furthermore, in so far as the applicant claims that there is a likelihood of association between the marks at issue, in that it is more than likely that a consumer who is already familiar with the earlier marks and their commercial origin will associate those earlier marks with the trade mark applied for, that argument must be rejected since, as has been held at paragraph 63 above, the signs at issue are different (see, to that effect, Case T-287/06 Torres v OHIM – Bodegas Peñalba López (Torre Albéniz) [2008] ECR II-3817, paragraph 81).
68 In the light of all the foregoing considerations, the single plea put forward by the applicant must be rejected as unfounded.
69 The action must, therefore, be dismissed.
Costs
70 Under Article 87(2) of the Rules of Procedure of the 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 and the intervener.
On those grounds,
hereby:
1. Dismisses the action;
2. Orders CM Capital Markets Holding, SA to pay the costs.
|
Pelikánová |
Jürimäe |
Soldevila Fragoso |
Delivered in open court in Luxembourg on 22 June 2010.
[Signatures]
* Language of the case: English.