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Cite as: [2011] EUECJ T-228/9, [2011] EUECJ T-228/09

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JUDGMENT OF THE GENERAL COURT (Second Chamber)

13 April 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark U.S. POLO ASSN. – Earlier Community and national word marks POLO-POLO – Relative ground for refusal – Likelihood of confusion – Similarity of 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-228/09,

United States Polo Association, established in Lexington, Kentucky (United States), represented by P. Goldenbaum, I. Rohr and T. Melchert, lawyers,

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 being

Textiles CMG, SA, established in Onteniente (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 20 March 2009 (Case R 886/2008-4), relating to opposition proceedings between Textiles CMG, SA and United States Polo Association,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the Court on 11 June 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 23 September 2009,

further to the hearing on 1 December 2010,

gives the following

Judgment

Background to the dispute

1 On 31 August 2005 the applicant, United States Polo Association, 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 trade mark for which registration was sought is the word sign U.S. POLO ASSN.

3 The goods in respect of which registration was sought are in Classes 9, 20, 21, 24 and 27 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for Class 24, to the following description: ‘Textiles, in particular bed sheets, pillowcases, flat sheets, terry towels, beach towels, blankets, bedspreads, cushion covers, quilts, table cloths, table mats, table runners, wallpaper (included in class 24)’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 9/2006 of 27 February 2006.

5 On 18 May 2006 Textiles CMG SA (‘the opponent’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods in Class 24 referred to in paragraph 3 above.

6 The opposition was based on Spanish registration No 2179234 of the earlier word mark POLO-POLO and on Community registration No 4322971 of the earlier word mark POLO-POLO.

7 The Spanish mark POLO-POLO had been filed on 6 August 1998 and registered on 20 September 1999 for goods in Class 24 corresponding to the following description: ‘bed sheets, table linen, eiderdown, textile table and bed clothing’. The Community mark POLO-POLO had been filed on 4 March 2005 and registered on 30 May 2006 for goods in Class 24 corresponding to the following description: ‘Textiles, textile goods not included in other classes, bed and table linen’ and services in Classes 35 and 39.

8 The opposition was based solely on the Class 24 goods covered by the earlier national and Community registrations and was directed against the goods in the same class covered by the Community trade mark application.

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 By decision of 17 April 2008 the Opposition Division allowed the opposition.

11 On 11 June 2008 the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.

12 By decision of 20 March 2009 the Fourth Board of Appeal of OHIM dismissed the appeal (‘the contested decision’). Specifically, it considered, after comparing the mark applied for only with the earlier Community trade mark, that the Opposition Division had been right to allow the opposition since there was a likelihood of confusion on the part of the relevant public between the marks at issue in respect of the goods in Class 24. First, the goods in Class 24 covered by the earlier Community mark were identical to those covered by the Community trade mark application. Second, the signs at issue were visually, phonetically and conceptually similar. In conclusion, the Board of Appeal found that in view of the identity of the goods at issue and the visual, phonetic and conceptual similarities between the signs at issue there was a likelihood of confusion on the part of the relevant public, namely the average consumer in the European Union, who might have only an imperfect recollection of the earlier mark POLO-POLO.

Forms of order sought

13 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs;

– should the opponent intervene in the present proceedings, order it to bear its own costs.

14 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

15 The applicant raises, in essence, a single plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94. In support of that plea, it puts forward an initial set of arguments claiming that the Board of Appeal failed to apply principles established by the settled case-law of the Court of Justice and the General Court, followed by a second set of arguments claiming that the Board of Appeal was wrong to find that the marks at issue were visually, phonetically and conceptually similar and that there was therefore a likelihood of confusion.

16 OHIM disputes the applicant’s arguments.

17 Although in the application the applicant separates its arguments challenging the Board of Appeal’s application of legal principles established by case-law from its arguments calling into question the Board of Appeal’s finding that the signs at issue are similar, in those arguments the applicant is criticising, in essence, the assessment which the Board of Appeal made in the contested decision with regard to the similarity of those signs.

18 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 two 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.

19 Furthermore, under Article 8(2)(a) of Regulation No 40/94 (now Article 8(2)(a) of Regulation No 207/2009), earlier trade marks means trade marks registered in a Member State or Community trade marks, where the date of application for registration is earlier than the date of application for registration of the Community trade mark.

20 According to consistent case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (see, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17). 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 the goods or services concerned and taking into account all factors relevant to the circumstances of the case (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 and 31 and the case-law cited).

21 That global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and that of the goods or services covered. 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-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 48, and GIORGIO BEVERLY HILLS, paragraph 20 above, paragraph 32).

22 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).

23 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the earlier mark and the trade mark applied for must be examined in the light of those considerations.

The relevant public

24 The parties are agreed that the relevant public is composed of average consumers in the European Union, since the protected earlier mark by reference to which the likelihood of confusion was assessed is a Community mark. However, the applicant submits that, in view of the fact that the goods at issue will not be ordered or referred to orally but will be chosen by consumers on the basis of their appearance, suitability, colour and size, they will be closely inspected before being purchased and that customers will therefore have a more than average level of attention with respect to those goods.

25 In that regard, it should be noted that there is no evidence in the file to show that when purchasing textile goods, such as table linen or bed linen, the average consumer in the European Union, because of the objective characteristics of those goods, would purchase them only after a particularly close inspection, thus demonstrating a more than average level of attention; the fact that the trade mark applied for may appear on the goods at issue cannot be regarded as constituting an objective characteristic of such goods, contrary to the applicant’s contention at the hearing.

26 The Board of Appeal was therefore right to hold that the relevant public was composed of average consumers in the European Union who do not demonstrate a high level of attention.

Similarity of the goods

27 The applicant has not disputed the Board of Appeal’s finding in paragraph 13 of the contested decision that the goods covered by the marks at issue are identical.

Similarity of the signs

28 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23; Lloyd Schuhfabrik Meyer, paragraph 20 above, paragraph 25, and Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35).

29 According to established case-law, two trade marks are similar when, from the point of view of the relevant public, there is an at least partial correspondence between them with regard to one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and judgment of 26 January 2006 in Case T-317/03 Volkswagen v OHIM – Nacional Motor (Variant), not published in the ECR, paragraph 46).

30 Moreover, this Court has held that 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 composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible, however, that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by it (see Case T-7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 40 and the case-law cited). The overall impression of a composite word mark may also be dominated by one or more of its components.

31 The applicant claims that the Board of Appeal was wrong to find that there was a likelihood of confusion between the marks at issue by comparing only one of the elements of the trade mark applied for, namely the word ‘polo’, with the earlier Community trade mark, as if that word were capable of dominating the image of the trade mark applied for.

32 It is not apparent, however, from the contested decision that, for the purposes of assessing the similarity of the signs at issue, the Board of Appeal considered that the word ‘polo’ was dominant in the mark applied for. After stating that those signs were visually and phonetically similar to a medium degree in that they had that word in common and that, in the mark applied for, only that word would be meaningful for the relevant public, the Board of Appeal held that, since the relevant public may have an imperfect recollection of the earlier Community mark, it was liable to confuse the marks at issue because of their common element. The Board of Appeal therefore found that there was a likelihood of confusion.

33 It must therefore be held that the contested decision is not based on the dominant character of the word ‘polo’ and that the Board of Appeal did not make its assessment by comparing the signs at issue in the light of that one element. On the contrary, the Board of Appeal took into consideration all the elements of the mark applied for, but held that, although they distinguished the mark applied for from the earlier Community mark, the initials ‘U.S.’ and the abbreviation ‘ASSN.’ were not sufficient to remove a certain amount of visual similarity between those signs. Also, at the phonetic level, the Board of Appeal took into consideration the abovementioned elements and stated that they would be pronounced letter by letter, in particular in those parts of the European Union where they would not be recognised as such, and as for the word ‘polo’, it would be pronounced identically in each of the signs at issue.

34 The applicant’s argument is therefore factually incorrect and must be rejected.

35 As regards the visual similarity between the signs at issue, the earlier Community mark is made up of two occurrences of the word ‘polo’, linked by a hyphen, whereas the mark applied for comprises three elements, including a set of initials and an abbreviation.

36 In that regard, in the first place it should be observed that the fact that the earlier Community mark is made up of two occurrences of the word ‘polo’, linked by a hyphen, and is thus liable to produce a specific visual impression is neither such as to prevent its being compared, visually, with the mark applied for, on the ground that that mark includes only one occurrence of the same word, nor such as to exclude any visual similarity between the signs at issue. The Board of Appeal was therefore right to hold that the marks at issue included a common element which is also the only, repeated, element of the earlier Community mark and is placed in the middle of the mark applied for.

37 In the second place, as regards the applicant’s argument that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention, it should be pointed out that the validity of that argument cannot be assessed independently of the facts of the present case, and in particular the specific characteristics of the signs at issue. In that regard, the element ‘u.s.’ corresponds to the acronym US, which stands for the United States of America. Although that acronym is frequently used in a variety of fields, it will be perceived by the non-English-speaking section of the relevant public at most as relating to the geographical origin of the goods, and cannot therefore be regarded as being particularly distinctive.

38 In the third place, the applicant’s arguments that the signs at issue are distinguishable in that they are of different lengths and have different structures, and in particular in that the mark applied for is composed of seven different letters whilst the earlier Community mark is composed of only three, provide no basis for considering that there is no visual similarity between those signs since, first, they contain the word ‘polo’ and, second, the other two elements of the mark applied for are short, being initials and an abbreviation, and have no meaning as such. Those factors are capable of giving that word an independent distinctive role in the mark applied for considered overall. Therefore, as stated in the contested decision, the relevant public is in a position visually to recognise the mark applied for by the element that it has in common with the earlier Community mark.

39 The Board of Appeal was therefore right to find that the signs at issue were visually similar to a medium degree.

40 At the phonetic level, the fact that the earlier Community mark is in particular made up of a single word, repeated, provides no basis for considering that there is no similarity between the signs at issue, even if it is not disputed that such repetition of a single word is likely to produce a particular impression. In each of those signs the word ‘polo’ is the only element that will be pronounced with separate syllables, although the applicant has not demonstrated that when it is pronounced that word is accentuated differently in the earlier Community mark, as it maintained at the hearing. Moreover, as the elements ‘u.s.’ and ‘assn.’ in the mark applied for are perceived as an acronym or abbreviations by the English-speaking section of the relevant public, as the Board of Appeal found, they will be pronounced by that public letter by letter, or even left unsaid by the majority of that public. Lastly, the fact that those signs contain a different number of syllables and letters is secondary on the phonetic level, due to the presence in the mark applied for of the elements ‘u.s.’ and ‘assn.’, which will be pronounced letter by letter or simply left unsaid.

41 The Board of Appeal was therefore right to hold that the signs at issue were phonetically similar to a medium degree.

42 According to the applicant, the Board of Appeal was wrong to limit the comparison of the signs at issue at the conceptual level only to the reference to the word ‘polo’, understood as a sport. It failed to take into account the lack of descriptiveness of the elements ‘u.s.’ and ‘assn.’ appearing in the mark applied for, and thus of their distinctiveness.

43 It is necessary first of all to examine the applicant’s argument that the elements ‘u.s.’ and ‘assn.’ are distinctive since they are not descriptive of the goods covered by the mark applied for.

44 In that regard, it should be noted that even if a sign is not descriptive of the goods covered by the mark applied for, that does not automatically mean that it is distinctive. Distinctiveness may also be lacking if the relevant public cannot perceive in that sign an indication of the commercial origin of the goods (Case T-360/00 Dart Industries v OHIM (UltraPlus) [2002] II-3867, paragraph 30, and judgment of 17 April 2008 in Case T-294/06 Nordmilch v OHIM (Vitality), not published in the ECR, paragraph 22).

45 Therefore, even if the elements ‘u.s.’ and ‘assn.’ are not descriptive of the goods covered by the mark applied for, that does not automatically mean that they are distinctive. The applicant has not demonstrated that such is the case as regards the two elements of the mark applied for which it relies upon. As was stated in paragraph 37 above, the element ‘u.s.’ corresponds to the acronym US, which stands for the United States of America, will be perceived by the non-English-speaking section of the relevant public at most as relating to the geographical origin of the goods, and cannot therefore be regarded as being particularly distinctive. Thus, although that element constitutes an additional element of conceptual differentiation in relation to the earlier Community mark, the acronym US cannot be considered to be sufficiently distinctive to remove all conceptual similarity between the signs at issue. Similarly, as regards the element ‘assn.’, the applicant has not shown that the meaning of that abbreviation would be perceived by the non-English-speaking section of the relevant public. Therefore, for a section of the relevant public that element does not have any particular conceptual connotation enabling it to establish a difference or a similarity between the signs at issue, and hence it cannot be considered to be sufficiently distinctive to remove all conceptual similarity between the signs at issue.

46 As regards the applicant’s argument that the relevant public perceives that the mark applied for consists of the name of an American institution in the field of the sport of polo, suffice it to state that, the majority of the relevant public will not perceive the meaning of the abbreviation ASSN. and will not realise that the mark applied for refers to the name of an American institution in that field.

47 As regards the applicant’s argument that, as the word ‘polo’ has several meanings in Spanish and corresponds to a family name in that language, it has not been shown that that word will be perceived by the relevant public as a reference to a sport, it should be recalled that the Court found in paragraph 26 above that the relevant public was composed of average consumers in the European Union. Therefore, the fact that, for the Spanish-speaking section of the relevant public, that word may mean something other than a sport of hockey on grass, played on horseback using long-handled mallets and a wooden ball, is not such as to invalidate the Board of Appeal’s finding as regards the conceptual similarity of the signs at issue.

48 Moreover, the earlier Community mark is made up of two occurrences of the word ‘polo’ linked by a hyphen, and the meaning of that word is easily perceived by the relevant public (see paragraph 47 above). Therefore, it is not a fanciful word whose meaning might differ from that of the word ‘polo’.

49 The Board of Appeal was therefore right to find that the signs at issue were conceptually similar to a medium degree.

50 It is clear from all the foregoing that the signs at issue are similar to a medium degree.

Likelihood of confusion

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 that of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa. In the present case, the Court finds that the goods covered by the marks at issue are identical and that the respective signs of those marks are similar to a medium degree.

52 In the light of the fact that the goods covered by the marks at issue will be purchased by average consumers in the European Union and that, as the Board of Appeal found, consumers will not generally pay particular attention when buying this type of goods, the similarity of the signs at issue creates a likelihood of confusion, including the likelihood of association, between those marks within the European Union.

53 The various arguments and evidence put forward by the applicant in order to challenge that finding must be rejected.

54 This applies with regard to the applicant’s reference to opposition proceedings B 959 884 and B 1 021 254 between the applicant and the opponent concerning, respectively, registration of the word sign U.S. Polo Association and registration of the figurative sign U.S. POLO ASSN. since 1890, designating goods in the same class as those covered by the mark applied for. Without there being any need to rule on the admissibility of the argument based on the Opposition Division’s decision concerning registration of the latter sign, raised when the applicant requested that a hearing be held and developed at that hearing, it should be noted that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of OHIM (see Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 45, and Case T-402/07 Kaul v OHIM – Bayer (ARCOL) [2009] ECR II-737, paragraph 98).

55 As for the applicant’s argument that average consumers in the European Union are familiar with its name since it is the proprietor of Community trade marks designating goods in Classes 14, 18 and 25, it should be noted that, by that argument, it is claiming in essence that there can be no likelihood of confusion between the marks at issue since the earlier Community mark coexists with other marks which it owns.

56 Admittedly, the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the Board of Appeal finds as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (Case T-31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 86, and judgment of 11 December 2007 in Case T-10/06 Portela & Companhia v OHIM – Torrens Cuadrado and Sanz (Bial), not published in the ECR, paragraph 76).

57 In the present case, during the administrative proceedings the applicant produced a list containing the various earlier Community marks of which it is the proprietor in support of the assertion that those registrations coexist on the market with the opponent’s earlier mark. However, that information is insufficient to demonstrate that the likelihood of confusion between the marks at issue is reduced, let alone removed. Among those various registrations, only two relate to the same mark as that for which registration has been sought in the present case, and one of those indeed relates to a figurative mark. Nor are the other documents which were produced before the Opposition Division, consisting of advertising material and extracts from a clothing catalogue, sufficient to reduce or remove the likelihood of confusion, since either they do not contain the mark applied for, or the mark concerned differs in several respects from the mark applied for.

58 Moreover, although the applicant claims that the relevant public is aware of the fact that there are many names of polo clubs and other institutions in the field of polo which have already been registered as trade marks, in particular for goods in Classes 24 and 25, it does not provide any evidence to that effect.

59 Lastly, the applicant’s argument that the opponent could have filed the earlier Community mark, even though the well-known POLO mark existed, owned by a third undertaking, must be declared inadmissible since it was not raised before either the Opposition Division or the Board of Appeal.

60 The Board of Appeal was therefore correct in finding that there was a likelihood of confusion between the marks at issue.

61 It follows from all of the foregoing that the action must be dismissed.

Costs

62 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must 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 (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders United States Polo Association to pay the costs.

Forwood

Dehousse

Schwarcz

Delivered in open court in Luxembourg on 13 April 2011.

[Signatures]

* Language of the case: English.