Tsakiris-Mallas v OHMI - Seven (7 Seven Fashion Shoes) (Community trade mark) [2012] EUECJ T-244/10 (08 May 2012)

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(Community trade mark - Opposition proceedings - Application for Community figurative mark 7 Seven Fashion Shoes - Earlier national figurative marks Seven and 7seven - Partial refusal to register - Relative grounds for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 207/2009)

1 On 9 February 2007 the applicant - Tsakiris-Mallas AE - filed an application for a Community trade mark with 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 in respect of which registration was sought is the following figurative sign:

3 The goods in respect of which registration was sought are in Classes 18 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

4 The Community trade mark application was published in Community Trade Marks Bulletin No 63/2007 of 19 November 2007.

5 On 19 February 2008, the intervener - Seven SpA - 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 mark applied for, in respect of the goods in Class 18 referred to in paragraph 3 above.

7 The opposition was based on all the goods in Classes 14, 16 and 18 covered by the earlier national registrations. As regards Class 18, Italian registration No 769296 referred inter alia to goods corresponding to the following description: 'Leather and imitations of leather and goods made of these materials not included in other classes'; Italian registration No 928116 covered inter alia goods corresponding to the following description: 'Goods made from leather and imitations of leather not included in other classes'.

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

10 Concerning the existence of a likelihood of confusion, the Opposition Division found, first, that the visual, phonetic and conceptual similarity between the signs at issue was not enough to counteract the dissimilarities existing between the figurative elements, the fact that the weaker elements of the marks coincide being outweighed by the established differences between them, even where the earlier trade marks enjoy a reputation. Secondly, it found that numerals per se did not usually denote business origin, as consumers are accustomed to them being used to indicate technical features of goods, such as the weight, size or model. Thirdly, it found that the mere fact that the word 'seven' appeared in the marks at issue did not necessarily produce similarity and lead to confusion for consumers, who would look to other features of the marks in order to distinguish them.

11 As regards the ground based on Article 8(5) of Regulation No 207/2009, the Opposition Division noted that the intervener had failed to demonstrate that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

12 On 7 September 2009, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

13 By decision of 22 March 2010, the Second Board of Appeal of OHIM upheld the appeal, refusing registration of the mark applied for in respect of the goods in Class 18 referred to in the trademark application ('the contested decision').

14 The Board of Appeal found that the relevant public was composed of average consumers in Italy who are reasonably well informed and reasonably observant and circumspect. It upheld the finding of the Opposition Division that the goods covered by the signs at issue are identical. As regards the comparison of the signs at issue, the Board of Appeal found that they were visually, phonetically and conceptually similar. It took particular account of the very low inherent distinctive character of the word element 'seven', common to the signs at issue, drawing from this an inference which was different from the conclusion reached by the Opposition Division. According to the Board of Appeal, a global assessment of each of the signs at issue led to the conclusion that, in those signs, the element 'seven' is very prominent and clearly visible, an element which would be immediately recognisable for a substantial part of the relevant public. Although the element 'seven' did not dominate the signs at issue, it was liable to make an impression on consumers and be remembered by them, and the signs at issue should be regarded as visually similar. In consequence, the Board of Appeal found that there was a likelihood of confusion and held that there was no need to rule on whether Article 8(5) of Regulation No 207/2009 was applicable.

- dismiss the application for registration of the mark 7 Seven Fashion Shoes for the goods in Class 18;

- annul the contested decision and rule that the contested mark infringes Article 8(5) of Regulation No 207/2009;

- refuse the application for registration of the mark 7 Seven Fashion Shoes for the goods in Class 18;

18 In support of the action, the applicant puts forward two pleas in law: (i) infringement of Article 8(1)(a) and (b) of Regulation No 207/2009 and (ii) infringement of Article 65(2) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation.

19 It should be noted from the outset that the opposition was directed only against the goods in Class 18 covered by the mark applied for, as described in paragraph 3 above, and that the Opposition Division and the Board of Appeal ruled only in relation to those goods. Accordingly, the present dispute concerns only the refusal to register the mark applied for in respect of the goods in Class 18.

The first plea: infringement of Article 8(1)(a) and (b) of Regulation No 207/2009

20 Article 8(1)(a) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if it is identical to the earlier trade mark and if the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

21 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.

22 In addition, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, 'earlier trade marks' means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than that of the Community trade mark.

23 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 (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 account being taken of 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).

24 That global assessment implies some interdependence between the factors taken into account, in particular 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 23 above, paragraph 32).

25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).

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

27 First, although the applicant claims that the Board of Appeal wrongly interpreted and applied Article 8(1)(a) of Regulation No 207/2009 in finding that the marks at issue were identical and that the goods covered by those marks were identical, it should be noted that the Board of Appeal merely stated, in paragraph 42 of the contested decision, that the finding made by the Opposition Division to the effect that Article 8(1)(a) of Regulation No 207/2009 was not applicable in the circumstances had not been challenged by the parties before the Board. In making that statement, the Board of Appeal neither interpreted nor applied Article 8(1)(a) of Regulation No 207/2009. Accordingly, that argument must be dismissed as lacking any factual basis.

28 The applicant also claims that the Board of Appeal interpreted Article 8 of Regulation No 207/2009 in an 'unwisely broad way' which was directly contrary to the principle of the free movement of goods and persons. However, it should be noted that the arguments put forward by the applicant in connection with that allegation relate only to its view that the signs at issue were not similar, that the goods covered by those signs were not identical and that, consequently, there was no likelihood of confusion: the applicant does not explain how those arguments lead to the conclusion that the contested decision was inconsistent with the above principle.

29 Accordingly, the arguments referred to in paragraph 28 above which seek only to dispute the existence of a likelihood of confusion between the signs at issue should be examined.

30 The applicant does not challenge the definition of the relevant public adopted by the Board of Appeal, according to which that public is composed of average consumers in Italy who are reasonably well informed and reasonably observant and circumspect. It must be held that the Board of Appeal was correct in reaching that conclusion.

31 According to settled case-law, in order to assess the similarity of goods, all the relevant features of the relationship between those goods should be taken into account. Those factors include, inter alia, the nature of the goods, their end users and their method of use, and whether they are in competition with one another or are complementary (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).

32 The applicant denies that the goods covered by the earlier marks and those covered by the mark applied for are identical, since the goods in Class 18 covered by the earlier marks do not include the 'dominant' good covered by the mark applied for: footwear. According to the applicant, its customers will not find, among the products which it offers for sale, goods covered by the earlier marks, and vice versa in respect of the intervener's products.

33 In the present case, the Opposition Division, whose analysis the Board of Appeal approved in paragraph 23 of the contested decision, found that the goods in Class 18 covered by the mark applied for, namely, 'leather goods', were identical to certain goods in the same class covered by the earlier marks, namely, 'leather and imitations of leather and goods made of these materials not included in other classes' and 'leather and imitations of leather not included in other classes'.

34 In the light of the wording, referred to in paragraph 33 above, respectively used to denote the goods covered by the marks at issue, the Board of Appeal was correct in finding that those goods were identical. The terms 'leather' and 'goods made of leather', to which the earlier marks relate, are equivalent to the term 'leather goods', to which the mark applied for relates.

35 That analysis is not affected by the facts that the goods in Class 18 covered by the earlier marks do not include footwear, the principal good marketed by the applicant, and that the customers of the applicant and the intervener respectively could not be able to find the same goods offered under the marks at issue.

36 It is indeed true that footwear, which belongs to Class 25, does not fall within the ambit of the goods in Class 18 covered by the earlier marks, comprising 'leather and imitations of leather and goods made of these materials not included in other classes'. Nevertheless, that consideration does not call into question the finding made in paragraph 34 above concerning the fact that the goods covered by the marks at issue are identical, that is to say, 'leather' and 'imitations of leather' or 'goods made of those materials not included in other classes'. Moreover, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest - that is, to prevent the relevant public from being exposed to the risk of being misled as to the commercial origin of the goods in question - cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors (Case T-147/03 Devinlec v OHIM - TIME ART (QUANTUM) [2006] ECR II-11, paragraph 104).

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

38 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards 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).

39 According to the applicant, there cannot be any similarity between the mark applied for and the earlier marks, as they differ in their key elements. The mark applied for includes the numeral 7, written in vivid red, and the word 'seven', written in black, whereas the earlier marks are represented in black and white. The key distinctive characteristic of the mark applied for is the expression 'fashion shoes', present only in that mark, identifying the goods in question and easily understood by Italian consumers. Lastly, the contested decision is vitiated by contradictions, since, on the one hand, it refers to a relevant public which is particularly circumspect and which would be difficult to confuse through parallel use of the marks at issue, given also that marks designated solely by numerals are of low distinctive character, circumstances which are not liable to create a likelihood of confusion, and, on the other hand, it applies Article 8(1)(b) of Regulation No 207/2009.

40 Although it is true that the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Canon, paragraph 23 above, paragraph 24), it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion, in particular on account of a similarity between the signs and between the goods or services covered (see, to that effect, Case T-112/03 L'Oréal v OHIM - Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 61, and judgment of 13 September 2010 in Case T-72/08 Travel Service v OHIM - Eurowings Luftverkehrs (smartWings), not published in the ECR, paragraph 63).

41 The Board of Appeal found, in paragraphs 26 and 27 of the contested decision, that the marks at issue contained the word 'seven' and that the mark applied for and one of the two earlier marks also had the numeral 7 in common. It therefore found the signs at issue to be similar.

42 The Board of Appeal continued its analysis of the similarity of the signs at issue by adopting, in paragraph 28 of the contested decision, the finding of the Opposition Division that the word 'seven' possessed very low inherent distinctive character, as is generally the case with numerals and numbers used in marks. However, in paragraph 29 of the contested decision, the Board of Appeal noted that, despite its very low distinctive character, the word 'seven' could not be regarded as completely lacking in distinctive character and also stated that, although the addition of further elements, even of low distinctive character, may be capable of dispelling any likelihood of confusion, that was not always the case.

43 Moreover, the Board of Appeal recalled in paragraph 30 of the contested decision that it could not be inferred from case-law that, for a mark composed of a distinctive element and a descriptive element, the assessment of whether there is a likelihood of confusion had to be made in the light only of the distinctive element, since the assessment of the marks at issue had to be global.

44 It must be held that the Board of Appeal was correct in finding that the examination of the similarity of the signs at issue had to be carried out by taking into consideration each of those signs as a whole, including their least distinctive elements. Accordingly, the applicant is not justified in claiming that the contested decision is contradictory in that the Board of Appeal undertook a comparison of the similarity of the signs at issue despite the fact that the earlier marks, designated solely by the word 'seven' and the numeral 7, had a relatively low distinctive character.

45 Accordingly, the question whether the signs at issue are similar must be examined, in particular, in the light of the findings made by the Board of Appeal recalled in paragraphs 41 to 43 above.

46 The applicant claims that there is no similarity between the mark applied for and the earlier marks, since they differ in their key elements, the mark applied for containing the numeral 7, written in vivid red, and the word 'seven' written in black, whereas the earlier marks are represented in black and white.

47 It should be noted that, after stating that an element with very low distinctive character may be taken into consideration when the similarity of the signs at issue is assessed, even where there are elements of low distinctive character (see paragraphs 41 to 43 above), the Board of Appeal analysed the visual aspect of the signs at issue in paragraphs 31 and 32 of the contested decision.

48 As regards the earlier marks, the Board of Appeal found that a substantial part of the relevant public would immediately recognise the word element 'seven' in them, without it being possible to say that the numeral 7 in earlier mark No 769296, the word element referred to above, the typeface used or the stylisation of those marks is likely to dominate the overall impression created by those marks. However, it found that, in each of those marks, the word 'seven' was perfectly visible.

49 As regards the mark applied for, the Board of Appeal found that a substantial part of the relevant public would also be able to recognise the word 'seven' immediately, as well as the numeral 7 partially hidden by the letter 's' of that word. It found that none of the elements of the mark applied for dominated the overall impression created by that mark, but that the word element 'seven' was perfectly visible, as the numeral 7 was in the background and the word element 'fashion shoes' was written in a smaller typeface.

50 Accordingly, the Board of Appeal concluded in paragraph 34 of the contested decision that, in view of the fact that the word 'seven' was prominently displayed in each of the signs at issue, they were visually similar.

51 By claiming that the signs at issue are different because, first, the mark applied for contains the numeral 7, written in vivid red, and the word 'seven' written in black, whereas the earlier marks are represented in black and white, and, secondly, the key distinctive character of that mark is the expression 'fashion shoes', the applicant has not succeeded in calling into question the conclusion of the Board of Appeal. Neither of those arguments contradicts the finding that the word 'seven' is clearly visible in the earlier marks and the mark applied for or the fact that, in the mark applied for, that word is more important than the other word elements. Lastly, it should be noted, as did the Board of Appeal when assessing the phonetic similarity of the signs at issue, that the word element 'fashion shoes' is only of secondary importance in the mark applied for, not only because of its smaller size as compared with the word 'seven' but also because of its very low distinctive character for the goods covered by that mark, that is to say, 'leather goods'.

52 The Board of Appeal was therefore correct in finding that the signs at issue are visually similar.

53 In paragraph 36 of the contested decision, the Board of Appeal found, first, that the earlier marks would be read as consisting of one word, 'seven', whereas the mark applied for consists of the series of words 'seven fashion shoes'. However, the presence of the words 'fashion shoes' does not rule out the phonetic similarity of the signs at issue as a result of the presence of the word 'seven' in each of those signs and in view of the very weak distinctive character of the words 'fashion shoes' for the goods in question.

54 Since the applicant has not put forward any arguments on the phonetic similarity of the signs at issue and on whether the Board of Appeal's assessment on that point was well founded, it must be held that the Board of Appeal was correct in concluding that the signs at issue were phonetically similar.

55 Contesting the conceptual comparison of the signs at issue made by the Board of Appeal, the applicant claims that the words 'fashion shoes', identifying the goods in question, would be easily understood by Italian consumers, who constitute a relevant public which is particularly circumspect and which would be difficult to confuse through parallel use of the marks at issue.

56 As regards the conceptual aspect, the Board of Appeal found in paragraph 35 of the contested decision that average Italian consumers would understand the meaning of the word 'seven', which forms part of basic English vocabulary, and accordingly the meaning of the numeral 7. It also found that average Italian consumers would understand the meaning of the words 'fashion shoes', which form part of basic English vocabulary. Those consumers would therefore recognise that there was a conceptual link between the signs at issue, since they refer to the same numeral, and the similarity resulting from that link cannot be weakened by the expression 'fashion shoes' in the mark applied for, which can be seen only as an indication of very weak distinctive character for the goods covered by the mark applied for.

57 Although, as the applicant states, the words 'fashion shoes' are easily understood by the relevant public, that does not make it possible to divert that public's attention from the word 'seven', which the signs at issue have in common and which, along with the numeral 7 reproduced in the mark applied for and in earlier mark No 769296, refers to one and the same concept: 'seven'. Accordingly, the Board of Appeal was correct in finding that the signs at issue were conceptually similar.

58 In essence, the applicant claims that the contested decision is vitiated by contradictions since that decision found there was a likelihood of confusion between the marks at issue, while at the same time finding that the relevant public, which is particularly circumspect, would be difficult to confuse, the earlier marks, designated solely by those numerals, having a relatively low distinctive character.

59 The Board of Appeal found that, in view of the fact that the goods covered by the marks at issue were identical and that those marks were similar, the relevant public may believe that the goods in question come from the same undertaking or from economically linked undertakings.

60 That conclusion does not contradict the finding made by the Board of Appeal regarding the degree of attention of the relevant public, which is only reasonably circumspect. In view of the fact that the goods covered by the marks at issue are identical and that those marks are visually, phonetically and conceptually similar (see paragraphs 46 to 57 above), the relevant public is likely to confuse the origin of the goods covered by the marks at issue.

61 As regards the low distinctive character of the earlier marks, in that they are composed solely of numerals, it should be recalled that that argument cannot dispel all likelihood of confusion, since the elements making up those marks are not completely lacking in distinctive character, the signs at issue are similar and the goods in question are identical (see paragraphs 40 to 44 above).

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

The second plea: infringement of Article 65(2) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation

63 By its second plea, the applicant claims, in essence, that the Board of Appeal failed to examine whether Article 8(5) of Regulation No 207/2009 applied in the present case, and that it referred to the assessment made by the Opposition Division on that point, namely that the earlier marks were not marks with a reputation within the meaning of that provision.

64 It should be noted that, in paragraph 42 of the contested decision, the Board of Appeal held that, since there was a likelihood of confusion between the mark applied for and the earlier marks so far as the goods covered are concerned, there was no need to determine whether Article 8(5) of Regulation No 207/2009 was applicable.

65 In those circumstances, the argument relating to the fact that the Board of Appeal referred to the assessment of the Opposition Division regarding the lack of reputation of the earlier marks must be dismissed as lacking any factual basis, whatever the significance that the applicant sought to attribute to that argument. Moreover, since the Board of Appeal was correct in finding that there was a likelihood of confusion between the marks at issue, which led it to uphold the opposition and to refuse registration of the mark applied for, it was not required to rule on the application of Article 8(5) of Regulation No 207/2009.

67 Accordingly, the application for annulment of the contested decision must be dismissed, as must in consequence the application for registration of the Community trade mark 7 Seven Fashion Shoes, without there being any need to rule on its admissibility.

68 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 form of order sought by the OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Tsakiris-Mallas v OHMI - Seven (7 Seven Fashion Shoes) (Community trade mark) [2012] EUECJ T-244/10 (08 May 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T24410.html Cite as: [2012] EUECJ T-244/10

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