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Cite as: [2011] EUECJ T-216/10

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

23 November 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark MONSTER ROCK – Earlier national mark MONSTERS OF ROCK – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-216/10,

Monster Cable Products, Inc., established in Brisbane, California (United States), represented by W. Baron von der Osten-Sacken, O. Günzel and A. Wenninger-Lenz, lawyers,

applicant,

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

defendant,

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

Live Nation (Music) UK Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister, S. Britton and J. Summers, Solicitors,

ACTION brought against the decision of the First Board of Appeal of OHIM of 24 February 2010 (Case R 216/2009-1), concerning opposition proceedings between Live Nation (Music) UK Ltd and Monster Cable Products, Inc.,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the General Court on 10 May 2010,

having regard to the response of OHIM lodged at the Court Registry on 5 August 2010,

having regard to the response of the intervener lodged at the Court Registry on 13 August 2010,

having regard to the decision of 13 October 2010 rejecting the applicant’s request for a stay of the proceedings,

further to the hearing on 12 July 2011,

gives the following

Judgment

Background to the dispute

1 On 1 September 2003, the applicant, Monster Cable Products, Inc., 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 (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 in respect of which registration was sought is the word sign MONSTER ROCK.

3 The goods in respect of which registration was sought are in Class 9 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 to the following description: ‘Electrical and electromagnetic signal transmitting, amplifying, receiving and converting devices, namely, cables, wires, connectors and control devices for use with electrical, electronic and computer devices; loudspeakers; stereo amplifiers; audio equipment and accessories’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 32/2004 of 9 August 2004.

5 On 9 November 2004, the intervener, Live Nation (Music) UK Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).

6 The opposition was based on the word mark MONSTERS OF ROCK, registered in the United Kingdom under No 2 299 141 and covering, inter alia, goods in Class 9 corresponding to the following description: ‘Computer software and computer games; videos, DVDs, MP3, CDs; audio and/or visual tapes, cassettes, discs, records; apparatus for the recording, transmission or reproduction of sound or images; photographic and optical apparatus and instruments; magnetic data carriers, recording discs; sunglasses’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).

8 On 10 December 2008, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94.

9 On 9 February 2009, the applicant filed a notice of appeal at OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

10 By decision of 24 February 2010 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. In particular, it held that, due to the strong visual, aural and conceptual similarities between the marks in question and due to the identity and similarity of the goods in question, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

12 OHIM and the intervener contend that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

13 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 insofar as the Board of Appeal wrongly concluded that there was a likelihood of confusion between the mark applied for and the earlier mark.

14 OHIM and the intervener contest the merits of the applicant’s arguments.

15 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks means 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.

16 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 from economically-linked undertakings constitutes a likelihood of confusion. According to the 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 case. That global assessment implies some interdependence of the factors taken into account, in particular 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).

17 Before examining the arguments put forward by the parties in the light of those principles, it should be noted that the parties do not dispute the definition of the relevant public adopted by the Board of Appeal, according to which the target public, in relation to which the analysis of the likelihood of confusion must be carried out, is the average specialised consumer in the United Kingdom. Moreover, such an analysis is compatible with Regulation No 207/2009.

Comparison of the goods

18 According to settled case-law, in assessing the similarity between the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).

19 The goods in question in the present case are the electronic apparatus and accessories necessary for the transmission of sound in Class 9 of the Nice Agreement. In that regard, the applicant contests the Board of Appeal’s analysis that some of those goods are identical and others are similar.

Identical nature of the goods

20 According to the applicant, the Board of Appeal was wrong to hold, in paragraph 15 of the contested decision, that the loudspeakers, stereo amplifiers and audio equipment and accessories referred to in its trade mark application should be regarded as being included in the apparatus for the recording, transmission or reproduction of sound covered by the earlier mark and, consequently, those goods cannot be considered identical.

21 In that regard, it should be borne in mind that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 34 and the case-law cited).

22 In the present case, the concept of audio equipment and accessories, covered by the Community trade mark application, covers a wide range of apparatus and tools used for listening to sounds and in particular for transmitting and reproducing them. In addition, loudspeakers and stereo amplifiers are devices which enable the strength of the signal to be increased and are, by their very nature, apparatus for the transmission and reproduction of sound.

23 Accordingly, the Board of Appeal did not make an error of assessment in finding that those goods were identical. In any event, as the intervener rightly points out, the goods are, at the very least, similar.

Similarity of the goods

24 According to the applicant, the Board of Appeal was not able to hold that the other goods in question and the opponent’s goods were similar on the ground that the former goods were indispensable for the use of the latter goods and that they were, thus, complementary. It points out that complementary goods are goods which are closely connected in the sense that one is indispensable or important for the use of the other (Case T-175/06 Coca-Cola v OHIM – San Polo (MEZZOPANE) [2008] ECR II-1055, paragraph 67). However, the Board of Appeal disregarded those principles in considering that all electronic apparatus require cables and wires. In particular, the Board of Appeal did not take account of the fact that the apparatus, cables and wires concerned are usually manufactured by different undertakings and have different natures, purposes and methods of use.

25 It should be borne in mind that goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraphs 57 and 58 and the case-law cited).

26 In the present case, in the particular context of visual and sound reproduction, the ‘cables, wires, connectors and control devices’ covered by the mark applied for transmit electricity and electronic signals which may be perceived as sounds or images. They are therefore used in conjunction with the ‘apparatus for the recording, transmission or reproduction of sound and images’ covered by the earlier mark. They may even be considered an integral part of that apparatus. First, they are a means of supplying it with electricity and, second, they enable the transfer of the electrical signals necessary for recording, transmission or reproduction.

27 Furthermore, the applicant’s argument that certain apparatus is able to function without wires is not relevant, given that the description of the goods covered by the earlier mark is not restricted to that apparatus alone, which, moreover, requires, in any event, an initial supply of electricity via a cable or wire.

28 Lastly, the quality of the ‘cables, wires, connectors and control devices’ is one of the parameters which determine the quality of a recording of sounds and images. That close connection illustrates – if illustration is needed – the importance attached to such goods when using ‘apparatus for the recording, transmission or reproduction of sound and images’.

29 In light of the foregoing, it must be concluded that the goods covered by the mark in question and the earlier goods are similar.

30 Accordingly, the Board of Appeal did not make an error of assessment in finding, first, in paragraph 15 of the contested decision, that loudspeakers, stereo amplifiers, audio equipment and accessories were identical to apparatus for the recording, transmission or reproduction of sound and images and, second, in paragraph 16 of the contested decision, that cables, wires, connectors and control devices and apparatus for the recording, transmission or reproduction of sound and images were similar.

Comparison of the signs

31 The applicant submits that the Board of Appeal was wrong to conclude that the mark sought and the earlier mark were highly similar visually, aurally and conceptually. It claims in particular that the Board of Appeal, in equating the word ‘monster’ with ‘monsters’, failed to apply the principles for assessing the degree of similarity between marks correctly.

32 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment 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).

33 It is therefore necessary to determine whether or not the overall impression given by the signs in question, as found by the Board of Appeal following a visual, aural and conceptual comparison, is incorrect.

Visual comparison

34 The Board of Appeal observed, in paragraph 18 of the contested decision, that the signs were highly similar visually because the first seven letters and the last four letters of the marks in question coincide and the word ‘monster’, considered to be the dominant component, is likely to attract the consumer’s attention, who will be likely to remember it more easily, because he only rarely has the opportunity to compare marks directly and must rely on the imperfect image which he has retained of them.

35 The applicant claims that the Board of Appeal failed to take account of two elements, namely, the use of the singular form of the first word in the mark applied for and the different number of words in the two marks. It infers from this that the mark applied for gives a very different visual impression from that given by the earlier mark.

36 Although it is true that the earlier mark contains the word ‘monster’ in its plural form, the addition of an ‘s’ to the end of the word has only a negligible influence and is not capable of reducing the degree of similarity between the marks. As OHIM rightly points out, the signs coincide in the first seven letters of their first word. It must be stated that the applicant does not put forward any evidence enabling the Court to consider that the case-law relating to the significance of the first component of a word mark (see Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Lineas Aéras de España (MUNDICOR) [2004] ECR II-965, paragraph 81) is not applicable in the present case. Besides, the two marks also share all four letters of the last word.

37 Thus, there are some differences between the marks in question, such as the number of words or the use of the singular or plural form. However, those are comparatively insignificant differences given the complexity of the two word marks in question, which, in both cases, are relatively long and have the basic elements, ‘monster’ and ‘rock’, in common. Therefore, the differences highlighted are not likely to outweigh the similarities found in the eyes of a well informed, even specialised, consumer.

38 Accordingly, the Board of Appeal did not make an error of assessment in considering that there were significant visual similarities between the mark sought, MONSTER ROCK, and the earlier mark, MONSTERS OF ROCK.

Aural comparison

39 The Board of Appeal held, in paragraph 20 of the contested decision, that the marks were highly similar aurally, because the pronunciation of their first words is almost identical. Moreover, since the word ‘rock’ is present in both marks, they have an aurally identical ending.

40 The applicant submits that the number of syllables and the difference between the number of words in each mark give rise to a different intonation and rhythm.

41 That argument cannot be accepted. The marks in question have an aurally identical ending due to the common use of the word ‘rock’. In addition, their beginnings also show a great aural similarity. The addition of an ‘s’ to the end of the first word and the addition of the preposition ‘of’ in the middle of the mark are secondary aspects which may go unnoticed orally and are, in any event, not enough to have a significant influence on the intonation and the rhythm of the pronunciation of the marks in question.

42 Accordingly, the Board of Appeal legitimately held that there was a strong aural similarity between the marks in question.

Conceptual comparison

43 In paragraph 21 of the contested decision, the Board of Appeal held that the marks were highly similar conceptually. Since the consumer often relies on his imperfect recollection of a mark, the Board held that the marks in question could refer to the same concept, namely, monsters of rock music.

44 The applicant contests the Board of Appeal’s assessment. It submits that the word ‘rock’ lacks distinctive character in both marks, since it refers to the music of the same name. In addition, the applicant emphasises the conceptual differences in the use of the word ‘monster’. For the applicant, that word, which is included in its company name, refers to an imaginary frightening creature. The earlier mark, by contrast, has, according to the applicant, a connotation of excellence which is absent from the mark sought. For its part, the intervener considers that the expression ‘monsters of rock’ refers to monsters of rock, that is, the great stars of that type of music.

45 In that regard, it should be noted that certain words or expressions may have multiple meanings. Due to the very general meaning of the marks in question, it is difficult to gauge which meaning will be favoured by the consumer. Thus, the word ‘monster’ may, as the applicant rightly submits, refer both to a frightening creature and to a certain concept of excellence. However, the applicant does not put forward any arguments capable of showing that the consumer will favour the first meaning of the word ‘monster’ in any analysis he may carry out in respect of the mark applied for. In addition, the intervener rightly observes that the word ‘monster’ is capable of having both meanings for each of the two marks in question.

46 Moreover, it should be noted that, although conceptual differences can in certain circumstances counteract the visual and aural similarities between the signs concerned, for there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (Case T-336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II-4667, paragraph 80). However, the applicant has not adduced evidence that the mark applied for showed, in at least one of its senses, a meaning which the public would be able to grasp immediately.

47 Moreover, the average consumer only rarely has the opportunity to compare marks directly and he must thus rely on his imperfect recollection of them. That consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited). It is therefore unlikely that that consumer will remember the differences between the extremely nuanced connotations which the applicant refers to in order to differentiate the two marks from a conceptual point of view.

48 Lastly, the fact that the word ‘monster’ refers to the applicant’s company name does not affect those findings. The applicant puts forward no evidence to indicate or suggest that the average specialised consumer in the United Kingdom will automatically make a connection between the mark applied for and the applicant’s company or, assuming that such a connection were established, that that connection would outweigh the visual, aural and conceptual similarities found above.

49 It follows from the foregoing that the Board of Appeal did not make an error of assessment in holding that the marks showed a strong conceptual similarity.

Overall likelihood of confusion

50 The applicant alleges that the Board of Appeal failed to take account, in its overall analysis of the likelihood of confusion, of the weak distinctive character of the earlier mark, in particular with regard to ‘apparatus for the recording, transmission or reproduction of sound or images’.

51 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, 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, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).

52 In addition, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a strong similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited).

53 In the present case, the Board of Appeal found, rightly, that the goods covered by the Community trade mark application and the earlier mark are identical or similar and that the two marks in question display strong similarities. Therefore, it was not necessary to refer explicitly to the earlier mark’s degree of distinctiveness. Under those circumstances, even if the earlier mark were of weak distinctive character, that fact would not be such as to rule out any likelihood of confusion between the marks concerned.

54 Under those circumstances, it must be held that the Board of Appeal did not make an error of assessment in concluding that there was a likelihood of confusion.

55 Accordingly, the action must be dismissed in its entirety.

Costs

56 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 forms of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Monster Cable Products, Inc. to pay the costs.

Pelikánová

Jürimäe

van der Woude

Delivered in open court in Luxembourg on 23 November 2011.

[Signatures]

** Language of the case: English.