FSA v OHMI - Motokit Veiculos e Acessorios (FSA K-FORCE) (Judgment) [2015] EUECJ T-558/13 (04 March 2015)

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(Community trade mark — Invalidity proceedings — Community word mark FSA K-FORCE — Earlier Community word mark FORCE-X — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009)

FSA Srl, established in Busnago (Italy), represented by M. Locatelli and M. Cartella, lawyers,

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

ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 August 2013 (Case R 436/2012-2), relating to invalidity proceedings between Motokit Veículos e Acessórios, SA and FSA Srl,

composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,

having regard to the application lodged at the Registry of the General Court on 24 October 2013,

having regard to the decision of 2 July 2014 not to allow the lodging of a reply,

1 On 21 June 2010, the applicant, FSA Srl, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are, inter alia, in Classes 9 and 12 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:

– Class 12: ‘Bicycle and bicycle parts and accessories thereof, namely: bicycle frames and their parts, bicycle head tubes, bicycle front forks; bicycle wheels, bicycle hubs, bicycle spokes, bicycle rims; bicycle brake assemblies; bicycle cranks; bicycle chains, chain rings for bicycles; seat posts for bicycles, bicycle saddles; quick release devices for bicycle wheels; bottle cage; handlebars for bicycles, bicycle handlebar stem, headset bearings for bicycles; bicycle gears, derailleurs, sprockets for bicycles, bottom brackets for bicycles, axles for bicycles, bearing journals’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 145/2010 of 6 August 2010, and the mark was registered on 19 November 2010.

5 On 7 February 2011, Motokit Veículos e Acessórios, SA, filed an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, against the Community trade mark FSA K-FORCE in respect of the goods referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on the Community word mark FORCE-X, registered on 5 July 2007 under number 4 648 044, designating goods in Classes 9 and 12 and corresponding, for each of those classes, to the following description:

– Class 9: ‘Goggles, lenses for goggles; protective face masks; helmets; protective optical goods, headgear and clothing’;

– Class 12: ‘Bicycles, parts and fittings for bicycles, including handlebars, handlebar tape, handlebar grips, bar ends, handlebar stems, seats, crank sets, pedals, hubs and rims, air pumps for bicycles, except valve keys and pliers, tyres and inner tubes’.

7 By decision of 19 January 2012, the Cancellation Division declared the registration of the Community trade mark invalid for all the contested goods on the ground that, because of the presence of the element ‘force’ in the two marks, there was a likelihood of confusion in the mind of the relevant public.

8 On 7 March 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

9 By decision of 5 August 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It concluded, in essence, that there was a likelihood of confusion between the marks at issue in the mind of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009. Specifically, it found that the goods in question were identical and that the signs were similar to a low degree visually, to a certain degree phonetically and, for the part of the public understanding the meaning of the word ‘force’, conceptually. In addition, the Board of Appeal held that the word ‘force’, which alludes to the durability of the goods in question, was not totally devoid of distinctive character and that the evidence provided by the applicant on the banal nature of the word ‘force’ in relation to the goods concerned on the European market did not cause that word to be totally devoid of any distinctive character.

10 The Board of Appeal also held that the ‘k-force’ part of the contested mark, similar to the earlier mark FORCE-X, still had an independent distinctive role in the contested mark, even though that mark also incorporated the company name of its proprietor, namely ‘fsa’.

– declare that the sign FSA K-FORCE can be registered as a community trade mark ;

13 OHIM contends that the applicant’s second head of claim is inadmissible, in that the applicant requests the General Court to declare that the mark FSA K-FORCE can be registered as a Community trade mark.

14 In that regard, it must be pointed out that, pursuant to Article 65(3) of Regulation No 207/2009, the General Court has jurisdiction only to annul or to alter decisions of the Board of Appeal. By its second head of claim, the applicant seeks a declaratory judgment to the effect that the trade mark applied for can be registered. Consequently, the General Court does not have jurisdiction to rule on that head of claim, which is therefore inadmissible (see, to that effect, judgment of 1 July 2014 in You-View.tv v OHIM — YouView TV (YouView+), T‑480/13, EU:T:2014:591, paragraph 15 and the case-law cited).

15 In support of its application, the applicant relies on two pleas in law, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 75 thereof.

The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

16 The applicant disputes, in essence, the Board of Appeal’s finding that there is a likelihood of confusion between the marks at issue. It claims, in particular, that the relevant factors, taken into account for the purposes of the global assessment of likelihood of confusion, including inter alia a well-informed relevant public, the weak distinctive character of the word ‘force’ and the reputation of the element ‘fsa’, make it possible to dismiss a likelihood of confusion between the marks at issue.

18 According to 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, an 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.

19 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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20 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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

21 When the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T 81/03, T 82/03 and T 103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

22 The present action must be examined in the light of the abovementioned principles.

23 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

24 The Board of Appeal found, in paragraph 18 of the contested decision, that the relevant public comprises European Union consumers who, although reasonably well informed, observant and circumspect, do not have a higher than average degree of attention.

25 According to the applicant, the level of attention of the relevant public, in respect of the goods concerned, is higher than average. It claims that professionals like distributors and retailers pay a high degree of attention in selecting the products to be assembled in a certain bicycle, know perfectly the brands of various products and study all the technical features and designs of the bicycle components before assembling them to form a particular bicycle.

26 In the present case, as the Board of Appeal correctly found, the relevant public is that of the European Union. As regards the bicycle helmets in Class 9, they must be considered to be goods intended for the general public. However, when the product at issue concerns consumer safety, it may be considered that the consumer will pay particular attention to it (see, to that effect, judgment of 22 March 2011 in Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, EU:T:2011:104, paragraph 36). For a cyclist, the wearing of a helmet is a safety necessity. Thus, when selecting such a product, the consumer will be more attentive. It follows that that consumer’s level of attention must be classified as higher than average.

27 As regards the goods in Class 12, they must be considered to be goods intended for professionals or professional distributors and retailers and also for the final consumers. As the applicant claims, the relevant public, whether professional or final consumer, will pay particular interest to the choice of a bicycle or its spare parts and accessories used in its assembly, owing to the technical and aesthetic characteristics of those goods. Technical characteristics will in particular be taken into account by the relevant public with regard to accessories and spare parts, for it is important that those should be compatible with the other parts of the bicycle for which they are intended. It follows that the level of attention of the relevant public, for the goods in Class 12, must be considered to be higher than average.

28 According to settled case-law, in order for the similarity of the goods or services concerned to be assessed, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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 judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

29 In the present case, the Board of Appeal, in paragraph 19 of the contested decision, endorsed the Cancellation Division’s finding that the goods concerned are identical.

30 As is apparent from the description, in paragraphs 3 and 6 above, of the goods covered by the marks at issue, the goods covered by the two marks must be considered to be the same and are, as a result, identical, an issue which has not been disputed by the applicant.

31 The global assessment of the likelihood of confusion, in relation to the visual, phonetic 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 elements. 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. In addition, account must 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 his imperfect recollection of them (see judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited, and GIORGIO BEVERLY HILLS, paragraph 19 above, EU:T:2003:199, paragraph 33 and the case-law cited).

32 In that regard, it should be pointed out, in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects. As the Court’s case-law indicates, the visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30 and the case-law cited).

33 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see, judgments in OHIM v Shaker, paragraph 31 above, EU:C:2007:333, paragraph 41 and case-law cited and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

34 First, in order to identify the elements to be taken into account for the purposes of the comparison of the marks, it is necessary to examine the analysis carried out by the Board of Appeal of the distinctiveness of the various elements of the signs in question.

35 In that regard, the Board of Appeal pointed out, in paragraphs 22 to 24 of the contested decision, that the word ‘force’ is not devoid of distinctive character and that the evidence adduced by the applicant does not show that the word ‘force’ has become banal on the European market, depriving it of any distinctive character given that the evidence refers mostly to the US market.

36 The applicant submits that the word ‘force’, synonymous with strength, energy and power, is descriptive of a characteristic of the goods concerned and that it has weak distinctive character, due to its banality, on the European market. It relies on, inter alia, several documents, such as printouts of web pages referring to marks for bicycle parts marketed in Europe or for online bicycle shops, which include several marks using the word ‘force’ to describe the characteristics of their products. Furthermore, the applicant criticises the Board of Appeal for not taking those documents into account.

37 OHIM does not directly dispute that the word ‘force’ can have a descriptive character or a weak distinctive character in respect of the marks at issue, but points out that, as it is the only component of both trade marks that conveys meaning, the consumer will focus on that word when seeing the marks at issue.

38 In the present case, it must be pointed out that the word ‘force’, synonymous with strength and power, can describe one of the characteristics of the goods concerned. Furthermore, for some goods in Class 12, it must be held that that word can also designate one of their purposes. For example, the purpose of the brakes is to offer increased power compared to the power of an ordinary component. Consequently, it must be considered to be descriptive for those goods.

39 Furthermore, as is apparent from the evidence adduced by the applicant, the word ‘force’ is commonly used, on the European market, in trade marks in the domain of cycling, thus rendering it banal. The Board of Appeal was therefore wrong to find that the documents produced by the applicant were not relevant for the purpose of demonstrating the banality of the use of that word on the European market. Contrary to the findings of the Board of Appeal in paragraph 24 of the contested decision, the evidence produced by the applicant does not relate, almost exclusively, to the US market but constitutes sufficient proof of the banality of the word ‘force’ on the European market.

40 As regards the element ‘fsa’, included in the contested mark, the applicant claims that it occupies, owing to its reputation, a dominant position in the contested mark, precluding a likelihood of confusion between the marks at issue.

41 In that regard, it must be noted that the evidence adduced by the applicant demonstrates the use and not the reputation of the element ‘fsa’ and in no way enables the relevant public to interpret it as meaning ‘Full Speed Ahead’. Even if it is not inconceivable that the element ‘fsa’ is known in certain professional cycling circles, it is not apparent from the file that it is well known to all the relevant public, composed also of the general public. The Board of Appeal was therefore correct to find, in paragraph 26 of the contested decision, that the reputation of the element ‘fsa’ had not been demonstrated and, therefore, to reject the applicant’s argument.

42 It follows that, in the present case, all of the elements of the signs at issue must be taken into account. Even though the word ‘force’ has a weak distinctive character, it cannot be disregarded completely for the purposes of the comparison of the signs at issue.

43 Secondly, the visual, phonetic and conceptual similarity of the signs must be assessed.

44 As regards the visual comparison of the signs, the Board of Appeal found, in paragraph 27 of the contested decision, that they had a low degree of similarity.

45 The applicant submits that the contested mark, FSA K-FORCE, is longer than the earlier mark, FORCE-X. It points out that the consumer attaches less importance to the end of a mark and that the element ‘force’ is located at the end of the contested mark. Finally, the element ‘fsa’ and the capital letter ‘K’ assist, according to the applicant, in distinguishing the marks at issue.

46 In the present case, it must be pointed out that the marks at issue have the element ‘force’ in common. That element is placed in the middle of the contested mark and at the start of the earlier mark. It must also be pointed out that the other elements, namely ‘fsa-k’ for the contested mark and ‘x’ for the earlier mark, are different. As is apparent from paragraph 38 above, the element ‘force’ has a weak distinctive character in respect of the goods concerned. Consequently, it must be held that the marks at issue give a different overall impression.

47 As regards the phonetic comparison of the marks, the Board of Appeal found, in paragraph 28 of the contested decision, that the position of the ‘x’ and ‘k’ consonants and the element ‘fsa’ at the beginning of the contested mark had a slight effect in terms of rhythm and intonation, but that the ‘force’ element, common to both marks, gives rise to a certain degree of phonetic similarity.

48 The applicant claims that the marks at issue have a very different sound, despite the presence of the word ‘force’. ‘FSA K-FORCE’ is longer than ‘FORCE-X’, is distinct from that mark and their pronunciation is different. Thus, the marks have a low degree of phonetic similarity.

49 In that regard, it must be pointed out that, when the marks are compared phonetically, it becomes apparent that their pronunciation differs in length. The marks have the element ‘force’ in common. However, as has already been observed in paragraph 38 above, the word ‘force’ has a weak distinctive character for the goods concerned. Consequently, the marks at issue must be held to be phonetically similar to a low degree.

50 As regards the conceptual comparison of the marks, the relevant public which might understand the meaning of the marks at issue must be distinguished from that public which does not. In that regard, the Board of Appeal found, in paragraph 30 of the contested decision, that a significant proportion of European Union consumers were capable of understanding that the word ‘force’ is a synonym of strength and that English, French, Portuguese and Italian speakers would understand that word, because it is spelled in a very similar way in those languages. It therefore found that the marks at issue were conceptually similar for those consumers, while specifying that not much weight may be given to this similarity due to the strongly suggestive character of the word ‘force’. As regards the other consumers, who do not understand the meaning of the word ‘force’, the marks at issue would appear to them to be devoid of meaning.

51 In the present case, the element common to the two marks, ‘force’, would be perceived in a very similar manner by a not inconsiderable number of European Union consumers, namely English, French, Portuguese and Italian speaking consumers. Furthermore, given that the word ‘force’ is an English word, it must be held that it will be understood by the relevant public in countries that have English as an official language such as Malta, the United Kingdom or Ireland, but also in countries where the basic comprehension of English by the general public is well known, such as the Netherlands, Finland, Cyprus or the Scandinavian countries (see, to that effect, judgment of 9 December 2010 in Earle Beauty v OHIM (NATURALLY ACTIVE), T‑307/09, EU:T:2010:509, paragraph 26 and the case-law cited). However, as was observed in paragraph 37 above, the word ‘force’ has a weak distinctive character for the goods covered by the marks at issue.

52 As regards the elements which differ in the two marks, the relevant public will attribute no meaning to them. In short, in the present case, the conceptual similarity of the marks, for a not inconsiderable part of the relevant public, resides in the element with a weak distinctive character. Consequently, the conceptual similarity of the marks at issue must be characterised as low.

53 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 (judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and VENADO with frame and Others, paragraph 21 above, EU:T:2006:397, paragraph 74).

54 In the present case, the Board of Appeal found, in paragraph 33 of the contested decision, given the identity between the goods concerned and the similarities between the marks, that there was a likelihood of confusion on the part of the relevant public.

55 As is apparent from all of the foregoing, the Board of Appeal did not take into account the fact that, due to the specific technical characteristics of the goods in Class 12 and the protective objective of the cycle helmets in Class 9, the relevant public’s level of attention, in respect of those goods, is higher than average. Similarly, it must be noted that the word ‘force’, due to its descriptive character and its banality inter alia on the European market, has a weak distinctive character in respect of the goods concerned. Consequently, the marks at issue, taken as a whole, have only a low degree of similarity.

56 It follows that, despite the identity of the goods covered by the marks at issue, there is no likelihood of confusion between those marks.

57 Furthermore, the Board of Appeal, in paragraph 32 of the contested decision, when globally assessing the likelihood of confusion, maintained that the ‘k-force’ element of the contested mark and the ‘force-x’ element of the earlier mark were similar and that the latter had an independent distinctive role in the contested mark, leading the relevant public to believe that the goods covered by the marks at issue derive from companies which are linked economically, in which case the likelihood of confusion must be held to be established (judgment of 6 October 2005 in Medion, C‑120/04, Rec, EU:C:2005:594, paragraphs 30 and 31).

58 In that regard, it must be noted that where the goods or services are identical, there may be a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (judgment in Medion, paragraph 57 above, EU:C:2005:594, paragraphs 30 and 31, and judgment of 10 December 2013 in Colgate-Palmolive v OHIM — dm-drogerie markt (360º SONIC ENERGY), T‑467/11, EU:T:2013:633, paragraphs 42 and 43).

59 In the present case, the two marks at issue have the single element ‘force’ in common and even though the earlier mark is ‘FORCE-X’, the contested mark does not contain the earlier mark. It follows that the Board of Appeal was incorrect to apply the judgment in Medion, paragraph 57 above (EU:C:2005:594, paragraphs 30 and 31).

60 Equally fruitless is OHIM’s reliance, during the hearing, on the judgment of 8 May 2014 in Bimbo v OHIM (C‑591/12 P, ECR, EU:C:2014:305), and the judgment of 27 June 2013 in MOL v OHIM — Banco Bilbao Vizcaya Argentaria (MOL Blue Card) (T‑367/12, EU:T:2013:336), in order to demonstrate that an element with a weak distinctive character could nevertheless have an independent distinctive role. It must be pointed out that, in the judgments relied on, none of the elements was considered to have a weak distinctive character. On the contrary, the arguments of the parties to this effect were expressly rejected (judgments in Bimbo v OHIM, EU:C:2014:305, paragraph 27, and MOL Blue Card, EU:T:2013:336, paragraph 55).

61 Having regard to all the foregoing, the present plea must be upheld and the contested decision must be annulled, without there being any need to examine the second plea in law.

62 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.

63 Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 August 2013 (Case R 436/2012-2);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> FSA v OHMI - Motokit Veiculos e Acessorios (FSA K-FORCE) (Judgment) [2015] EUECJ T-558/13 (04 March 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T55813.html Cite as: [2015] EUECJ T-558/13, EU:T:2015:135, ECLI:EU:T:2015:135

Court of Justice of the European Communities (including Court of First Instance Decisions)