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Cite as: [2011] EUECJ T-525/9, [2011] EUECJ T-525/09

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JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

8 September 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark METRONIA – Earlier national figurative mark METRO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-�525/09,

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, 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 of OHIM being

Metronia, SA, established in Madrid (Spain),

ACTION brought against the decision of the First Board of Appeal of OHIM of 8 October 2009 (Case R 1315/2006-�1) concerning opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG et Metronia, SA,

THE GENERAL COURT (Eighth Chamber),

composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and H. Kanninen, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the General Court on 28 December 2009,

having regard to the response lodged at the Court Registry on 17 May 2010,

further to the hearing on 17 February 2011,

gives the following

Judgment

Background to the dispute

1 On 9 October 2003 Metronia, SA filed an application for registration of a Community trade mark with 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 in respect of which registration was sought is the following figurative sign:

3 The goods and services in respect of which registration was sought fall within Classes 9, 20, 28 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, after restriction, to the following description:

– Class 9: ‘Computer applications and identification systems for general use or which can be used directly or indirectly in any kind of game, whether for simple entertainment, betting or gaming, sound and video apparatus, computer programs, scientific apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, data processing equipment and computers’;

– Class 20: ‘Amusement arcade furniture’;

– Class 28: ‘Games, automatic and coin-operated games machines, automatic games not coin-operated and other than those adapted for use with television receivers only, electronic games other than those adapted for use with television receivers only, counters for games’;

– Class 41: ‘Providing amusement arcade facilities, games provided online (from a computer network), gaming’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 31/2004 of 2 August 2004.

5 On 1 November 2004 the applicant, MIP Metro Group Intellectual Property GmbH & Co. KG, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods and services set out at paragraph 3 above, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). That opposition was based on the following figurative mark:

6 That mark was filed in Germany on 15 April 1995 and registered on 17 November 1995 under No 39516389, inter alia for the following goods and services in Classes 9, 20, 28 and 41 of the Nice classification, which correspond, for each of those classes, to the following description:

– Class 9: ‘Data processing apparatus and computers, machine-�readable data carriers with programs recorded thereon, data processing programs’;

– Class 20: ‘Furniture’;

– Class 28: ‘Games, in particular electrical and electronic games’;

– Class 41: ‘Public entertainment’.

7 By decision of 10 August 2006 the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion in Germany. The Opposition Division considered that the goods in Classes 9, 20 and 28 covered by the Community mark applied for and the earlier national trade mark were identical and that the services in Class 41 were similar. The Opposition Division considered that the signs at issue were similar because the earlier trade mark was distinctive per se and the trade mark applied for reproduced the applicant’s mark. The Opposition Division held that there was a likelihood of confusion, since the public concerned could take the trade mark applied for to be a modification of the earlier mark based on the same distinctive element ‘metro’.

8 On 9 October 2006 Metronia, SA filed a notice of 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 Opposition Division’s decision.

9 By decision of 29 May 2007 (‘the first decision’) the Second Board of Appeal upheld the appeal and annulled the decision of the Opposition Division. The Board of Appeal observed, in essence, that the goods and services covered by the signs at issue were identical and that the signs were visually, phonetically and conceptually dissimilar. Accordingly, notwithstanding the fact that those goods and services were identical, the Board of Appeal held that an essential condition for applying Article 8(1)(b) of Regulation No 40/94, namely the identity or similarity of the signs, was lacking and therefore there could not be any likelihood of confusion.

10 On 31 July 2007 the applicant, pursuant to Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), appealed against the first decision.

11 By judgment of 10 December 2008 in Case T-�290/07 MIP Metro v OHIM – Metronia (METRONIA) (not published in the ECR), the General Court annulled the first decision and ordered OHIM to pay the applicant’s costs. The Court held that, while there was no visual or conceptual similarity between the signs at issue, there was, contrary to the Board of Appeal’s findings, a certain aural similarity between those signs, so that the Board of Appeal had been wrong to find that there was a complete lack of similarity between the signs at issue and not to analyse the likelihood of confusion between the signs. The Court recalled that for the purpose of the assessment of the likelihood of confusion, the overall impression created by the two signs at issue had to be considered and the signs’ aural, visual and conceptual similarities and the similarity of the goods had to be weighed up, taking into account such factors as, in particular, the nature of the goods or services, the way in which they are marketed and the public’s level of attention.

12 By decision of 21 April 2009 the Presidium of the Boards of Appeal decided to re-open the case and sent it to the First Board of Appeal.

13 On 6 July 2009 the Board of Appeal invited the parties to submit their observations on the global assessment of the likelihood of confusion and, in particular, on the relevance of the aural element of the comparison between the signs at issue having regard to the nature of the goods and services concerned. Only the applicant submitted such observations.

14 By decision of 8 October 2009 (‘the contested decision’) the Board of Appeal rejected the opposition and ordered the applicant to pay the costs. In essence, the Board of Appeal held that, notwithstanding a certain aural similarity between the signs at issue, there was no likelihood of confusion, having regard to the nature of the goods and services concerned and the way in which they are marketed. Effectively, it held that the goods and services at issue were purchased after visual inspection, meaning that the visual element of the comparison was more important than the aural element. The Board of Appeal concluded that there was no likelihood of confusion because of the importance of the visual element and the fact that the signs at issue were visually and conceptually different.

Arguments of the parties

15 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs, including those of the opposition and appeal proceedings before the Board of Appeal.

16 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to bear the costs.

Law

17 The applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

18 The applicant challenges the Board of Appeal, in essence, firstly, for having found that the signs at issue were conceptually different, whereas the Court merely stated that there was no conceptual similarity between them and, secondly, for having under-estimated the significance of the aural similarity, which is, in this case, having regard to the goods and services at issue, determinative.

19 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 is not to be registered if ‘because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’. Moreover, according to Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks as well as 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.

20 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see METRONIA, paragraph 11 above, paragraph 32 and case-law cited).

21 Furthermore, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see METRONIA, paragraph 11 above, paragraph 33 and case-law cited).

22 That global assessment 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 covered. 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. The interdependence of these factors is expressly referred to in the eighth recital in the preamble to Regulation No 207/2009, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on a variety of factors which include recognition of the trade mark on the market, the association which may be made of it with the sign as used or registered and the degree of similarity between the mark and the sign and between the goods or services covered (see METRONIA, paragraph 11 above, paragraph 34 and case-law cited).

23 Furthermore, the global assessment of the visual, aural or conceptual similarity of the signs at issue must be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 207/2009, (‘there exists a likelihood of confusion on the part of the public’), shows that the perception of marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the 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 METRONIA, paragraph 11 above, paragraph 35 and case-law cited).

24 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on an imperfect recollection of them. 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 METRONIA, paragraph 11 above, paragraph 36 and case-law cited).

25 It must be added that, in the context of that global assessment, the visual, aural or conceptual similarity of the signs at issue do not always carry the same weight and therefore the objective conditions under which the marks may be marketed must be analysed (Case T-�242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artisano) [2007] ECR II-�175, paragraph 79 and case-law cited).

26 Thus, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, a visual similarity between the signs will as a general rule be more important (see el charcutero artisano, paragraph 25 above, paragraph 80 and case-law cited).

27 Similarly, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (see el charcutero artisano, paragraph 25 above, paragraph 81 and case-law cited).

28 The Board of Appeal’s assessment as to the likelihood of confusion between the signs at issue must be examined in the light of the foregoing considerations.

29 It should be recalled that the Court has already held, in METRONIA, paragraph 11 above, that the relevant public is the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (paragraph 37) and the territory concerned is that of Germany (paragraph 38). Moreover, the goods and services covered by the earlier mark are identical to those covered by the mark applied for (paragraph 40). Lastly, according to that judgment there is a certain aural similarity (paragraph 52) and a lack of visual (paragraph 47) and conceptual similarity (paragraph 54) between the signs at issue.

30 As a preliminary point, it should be noted that, even though a lack of reasoning in the contested decision is raised in the application, on the ground that the said decision does not comply with Article 8(1)(b) of Regulation No 207/2009, it must be noted that the applicant, as was acknowledged by the applicant at the hearing and was recorded in the transcript of the hearing, does not allege an infringement of an essential procedural requirement, but an error in law in respect of the application of that provision. It follows that that error in law must be analysed in the context of the examination of the complaints raised by the applicant.

31 Firstly, the applicant claims that the Board of Appeal erred in holding that the signs at issue are conceptually different, whereas the Court merely stated that there was no conceptual similarity between them. The lack of inherent meaning of the signs at issue does not mean that the signs are conceptually different or dissimilar. A conceptual difference exists only if both signs contain distinct concepts which allow relevant consumers to distinguish them conceptually or by their meaning, which is not the case in this instance. The Board of Appeal therefore did not follow the judgment in METRONIA, paragraph 11 above, as regards the question of whether the signs to be compared could be confused, since it based its assessment on not just visual differences, but also conceptual ones.

32 In that regard, not only did the Court hold, at paragraph 53 of METRONIA, paragraph 11 above, that it was common ground that there is a conceptual difference between the signs at issue, as the mark applied for might call to mind a fictitious place, such as ‘Metropolis’, or be regarded as a neologism, unlike the earlier mark, but it must be noted that the Board of Appeal recalled, at paragraph 19 of the contested decision, that the question as to the similarity between the signs at issue had been addressed by the Court and that the ‘applicant’s mark is not similar to the earlier mark, either visually or conceptually’. The Board took note accordingly.

33 It follows that, as it is based upon an erroneous premise, the applicant’s complaint on that point cannot be upheld.

34 Secondly, the applicant submits that the Board of Appeal should have found that there was a likelihood of confusion because, primarily, the aural similarity is, in this case, equally relevant to the assessment of a likelihood of confusion since, even if certain of the goods at issue are normally sold in showrooms or in self-service shops, the relevant public has to rely on an imperfect picture of the marks from memory. Moreover, the consumer may equally be led to purchase goods or services following a television advertisement or a verbal recommendation. Therefore it should not be presumed, as the Board of Appeal did at paragraph 24 of the contested decision, based on the general experience that the goods and services in issue are purchased only upon visual inspection.

35 This line of argument cannot be upheld.

36 It should be noted that the consumer’s level of attention may vary according to the category of goods or services in question (Joined Cases T-�117/03 to T-�119/03 and T-�171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-�3471, paragraph 34, see also, by analogy, Case C-�342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 16).

37 Moreover, account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention when purchasing them (see, to that effect, Case C-�361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-�643, paragraph 39).

38 In this case, it must be held, in particular in relation to the goods at issue, that the consumers will buy them after a comprehensive examination of their respective specifications and technical characteristics, firstly upon the basis of information that appears in specialist catalogues or on the internet, and then at the point of sale, which indicates that there will be a visual examination both of the goods and of the mark which they bear.

39 It must be stated that the goods at issue cannot be considered as being goods which may be purchased impulsively, but rather following a comparison between the various offers and after some reflection. The consumers referred to, whether they acquire those goods in shops or on the internet, will have the chance to compare them directly, in particular after their respective examinations.

40 The applicant itself acknowledged in the application, as well as in its response to the Court’s questions during the hearing, that the goods at issue were not goods for everyday consumption, which already distinguishes this case from that which gave rise to the judgment of the Court in Case T-�99/06 Phildar v OHIM – Comercial Jacinto Parera (FILDOR) [2009] ECR II-�164, relied upon by the applicant, in particular during the hearing, and which related to precisely such goods.

41 In light of the foregoing, it must be held that the aural similarity is less important than the visual similarity, notwithstanding the fact that the public must rely on an imperfect recollection of the mark at issue.

42 Therefore, the Board of Appeal’s conclusion at paragraph 24 of the contested decision, according to which the visual aspect of the comparison is more important than the aural aspect, must be endorsed, and that conclusion applies, having regard to the nature of the goods and services at issue, to all of the classes for which registration of the sign at issue has been applied.

43 In relation, in particular, firstly, to the goods in Class 9, which include, in addition to consumer electronics, scientific monitoring apparatus and, inter alia, apparatus for recording, transmission or reproduction of sound or images, the sale of which the applicant claims is preceded by specialist advice or a verbal recommendation, it must be noted, as the applicant itself observes, that those goods, which ‘are not purchased every day, but only every few years’, are acquired on the basis of specific information, which implies that the consumers in question are visually confronted by the goods which bear the marks at issue. Therefore the consumer will be even more vigilant at the time of their acquisition and would not only rely on his aural recollection of the mark.

44 While, as is noted by the applicant, customers may be assisted by sales personnel, such that verbal information on the product and the mark is not to be excluded, the choice of the product is generally made visually. As OHIM rightly notes, even in the case where there is verbal information, the consumer is, at all stages of the selection process, visually confronted by the goods, allowing the consumer to examine their characteristics and to make his choice. Therefore, the visual perception of the marks in question will generally take place prior to purchase (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 36 above, paragraph 50). The visual perception of the signs in question therefore plays a predominant role.

45 Moreover, even though there is a certain aural similarity between the signs at issue, it must be noted that that similarity is not very strong, having regard to the fact that the mark applied for contains an extra syllable. Therefore, the degree of aural similarity between the signs at issue is compensated for by the lack of visual similarity between them.

46 In relation, secondly, to amusement arcade furniture in Class 20 and games in Class 28, the same conclusion applies. Even if, as the applicant claims, the mark does not appear on the furniture itself or on the games, it cannot be claimed that such goods are acquired after a simple verbal recommendation and without taking account of information appearing in brochures or written documentation upon which the marks in question appear, and therefore, in any event, following a visual comparison of the various goods including, at that stage, a visual comparison of the marks at issue.

47 In relation, thirdly, to the services in Class 41, they are acquired, as the Board of Appeal rightly noted at paragraph 26 of the contested decision, either in a shop or online, such that the choice of the service in question will be made following a comparative analysis between several offers. In that regard, it must be stated, like the goods at issue, such services are relatively expensive, such that they are acquired after reflection and comparison of the various offers. It must be therefore held that, in the context of various offers, the different marks will be presented to the consumer so that they can make an informed choice.

48 It follows from all the above that the single plea and, therefore, the action in its entirety, must be rejected.

Costs

49 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1. Dismisses the action;

2. Orders MIP Metro Group Intellectual Property GmbH & Co. KG to pay the costs.

Truchot

Martins Ribeiro

Kanninen

Delivered in open court in Luxembourg on 8 September 2011.

[Signatures]

* Language of the case: English.