Rod Leichtmetallrader v OHMI - Rodi TR (ROD) (Judgment) [2016] EUECJ T-75/15 (21 January 2016)

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(Community trade mark — Invalidity proceedings — Community figurative mark ROD — Earlier national figurative marks RODI –– Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Earlier opposition proceedings — Rule 39(3) of Regulation (EC) No 2868/95)

Rod Leichtmetallräder GmbH, established in Weiden in der Oberpfalz (Germany), represented by J. Hellenbrand and J. Biener, lawyers,

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

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 17 December 2014 (Case R 281/2014-5) relating to invalidity proceedings between Rodi TR, SL and Rod Leichtmetallräder GmbH,

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

having regard to the application lodged at the Court Registry on 17 February 2015,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having therefore decided to rule on the action without an oral part of the procedure pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 23 May 2010, the applicant, Rod Leichtmetallräder GmbH, was granted registration by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of the Community figurative mark in black and white reproduced below:

2 The goods and services in respect of which registration was granted are in Classes 3, 12, 35 and 37 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, to the following description:

– Class 3: ‘Wheel rim cleaning preparations, wheel rim care preparations, lacquer care preparations; all goods exclusively for treating light metal wheels’;

– Class 35: ‘Trading in motor vehicle rims and motor vehicle accessories, except chains, in particular anti-skid chains, tyre protection chains, and parts for these chains, and auxiliary devices for fitting these chains’;

3 On 28 December 2011, Rodi TR, SL filed an application for a declaration of partial invalidity of that mark, inter alia pursuant to Article 53(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), in respect of all the goods and services referred to in paragraph 2 above, with the exception of those in Class 3.

4 The application for a declaration of partial invalidity was based, inter alia, on the following earlier national trade marks:

– The Spanish figurative mark reproduced below, filed on 13 June 2001 and registered on 7 March 2003 under No 2 407 494, designating services in Class 35 corresponding to the following description: ‘Business management services for vehicle tyre industry, services in retail stores and through global networks telematics vehicle tyre industry’:

– The Spanish figurative mark reproduced below, filed on 2 June 2006 and registered on 16 April 2007 under No 2 714 944, designating goods and services in Classes 12, 37, 39 and 42 for which a reputation was claimed in Spain, and corresponding, for each of those classes, to the following description:

– Class 12: ‘Vehicles and their accessories and spare parts included in this class; specially tyres and treads for retreading of tyres, with express exclusion of accessories for bicycles, chairs of security and seats for babies and children’;

– Class 37: ‘Services of conservation, repair and maintenance of vehicles; repair and installation of spare parts and accessories for vehicles, specially tyres; services of vulcanisation and retreading of tyres; vehicle breakdown assistance (repair services); services of lubrication, polishing and washing of vehicles’;

– Class 39: ‘Services of distribution, transport and storage of vehicles, accessories and spare parts for vehicles, specially tyres and treads for retreading of tyres; breakdown recovery and towing services; vehicle-rental services’;

– Class 42: ‘Technical control of automobile services; research services concerning mechanics’.

5 With regard to the earlier national trade marks, the grounds relied on in support of the application for a declaration of invalidity were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

6 On 22 November 2013, the Cancellation Division, basing its assessment of the likelihood of confusion, for the sake of procedural efficiency, only on the earlier Spanish trade mark No 2 714 944 (‘the earlier Spanish trade mark’), granted the application for a declaration of partial invalidity on the basis of Article 8(1)(b) of Regulation No 207/2009 and held that there was consequently no need to examine the other ground for invalidity relied on.

7 On 21 January 2014, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8 By decision of 17 December 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal and confirmed that there was a likelihood of confusion. It confirmed the Cancellation Division’s finding that the level of attention of the relevant public, comprising the general and professional Spanish public, was enhanced. As regards the comparison of the goods and services, the Board of Appeal confirmed the finding that the goods in Class 12 and the services in Class 37 designated by the marks at issue were identical. It found that the services in Class 35 of ‘trading in motor vehicle rims and motor vehicle accessories, except chains, in particular anti-skid chains, tyre protection chains, and parts for these chains, and auxiliary devices for fitting these chains’ covered by the contested mark had an average degree of similarity, not a low degree of similarity, to the ‘accessories and spare parts of vehicles’ in Class 12 designated by the earlier Spanish trade mark. As regards the comparison of the marks, the Board of Appeal concluded that there was a medium degree of visual similarity and a phonetic similarity. The Board of Appeal noted that, conceptually, neither word had a meaning in Spanish, and that it was therefore not possible to carry out a conceptual comparison. Having re-examined the evidence as to the distinctiveness of the earlier Spanish trade mark on the date of filing of the contested mark, namely 5 February 2007, the Board of Appeal found that the earlier Spanish trade mark had a normal level of distinctive character. The Board of Appeal concluded that, even if the level of attention of the relevant public was higher than average, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in the circumstances of the case.

– order OHIM to pay the costs, including the costs of the proceedings before the Board of Appeal.

11 In support of the action, the applicant raises two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of essential procedural requirements.

12 The applicant complains that the Board of Appeal committed errors of assessment at the stage of the comparison of the goods and services, the comparison of the marks, and of the global assessment of the likelihood of confusion.

13 Under Article 53(1)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark within the meaning of Article 8(2) of that regulation and, inter alia, the conditions set out in Article 8(1)(b) of that regulation are fulfilled. Under that latter provision, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

14 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 covered (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).

15 The Board of Appeal found that the goods and services in question were addressed to the general and professional Spanish public, comprising truck, coach and car drivers. Since the goods and services in question include parts and services which serve to ensure the safety of a vehicle, it found that the consumer’s level of attention was enhanced. The applicant does not dispute that definition.

16 According to settled case-law, in assessing the similarity of the goods or services at issue, 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).

17 It should be stated at the outset that the applicant has not submitted any argument of fact or of law for the purposes of showing that the Board of Appeal erred in concluding that the goods in Class 12 covered by the marks at issue were identical. Similarly, the applicant has not submitted any argument disputing the finding that the ‘vehicle maintenance and repair services’ in Class 37 designated by the marks at issue are identical.

18 The applicant merely asserts that the Board of Appeal was wrong in finding that the services covered by the contested mark in Class 35, namely ‘trading in motor vehicle rims and motor vehicle accessories, except chains, in particular anti-skid chains, tyre protection chains, and parts for these chains, and auxiliary devices for fitting these chains’, and the goods and services covered by the earlier Spanish trade mark, were similar.

19 First, the applicant states that the Cancellation Division, unlike the Board of Appeal, did not consider that the services of ‘trading in motor vehicle rims and motor vehicle accessories, except chains’ in Class 35 designated by the contested mark were similar to the ‘vehicle maintenance and repair services’ designated by the earlier Spanish trade mark.

20 That argument is ineffective since the Cancellation Division and the Board of Appeal did not compare the services of ‘trading in motor vehicle rims and motor vehicle accessories, except chains’ in Class 35 covered by the contested mark with the ‘vehicle maintenance and repair’ services in Class 37, but with the ‘accessories and spare parts of vehicles’ in Class 12 designated by the earlier Spanish trade mark.

21 Secondly, the applicant states that the Cancellation Division, unlike the Board of Appeal, considered merely that the services of ‘trading in motor vehicle rims and motor vehicle accessories, except chains’ in Class 35 covered by the contested mark were similar to a very low degree to the ‘accessories and spare parts of vehicles’ in Class 12 designated by the earlier Spanish trade mark.

22 That argument must also be rejected as a misreading of the Cancellation Division’s decision in so far as, first, the Cancellation Division found the degree of similarity between those goods and services to be ‘low’ and not ‘very low’ and, secondly, even a low degree of similarity is sufficient to conclude that there is a similarity between the goods and services. Furthermore, it must be pointed out that, in the contested decision, the Board of Appeal found that the retail services of trading in ‘motor vehicle rims and motor vehicle accessories, except chains’ in Class 35 covered by the contested mark had an average level of similarity, not a low degree of similarity, to the ‘accessories and spare parts of vehicles’ in Class 12 covered by the earlier Spanish trade mark. Indeed, the Board of Appeal found that since the goods at issue could be sold and retailed by the producers themselves, the connection between the goods and services at issue could not be regarded as low. Clearly, the applicant has not submitted any argument of law or of fact disputing that analysis by Board of Appeal.

23 Accordingly, the applicant’s arguments relating to the comparison of the goods and services designated by the marks at issue must be rejected.

24 The applicant claims that the signs at issue are visually, phonetically and conceptually different.

25 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, ECR, EU:T:2011:49, paragraph 26 and the case-law cited).

26 Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, 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 engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

27 It should be observed at the outset that the earlier Spanish trade mark is a figurative sign composed of the word ‘rodi’ in blue stylised capital letters placed in a rectangle divided into two parts, which are yellow and blue, respectively, and that the letter ‘o’ appears as a rolling tyre with a humorous smiling face, with two arms protruding from the wheel, one holding a wrench. The contested mark is a figurative mark consisting of the word element ‘rod’ written in black stylised capital letters, in bold, across a circular background element with shading, giving the impression of a short tube, with a single thin black line surrounding all of the circular element and the script.

28 The Board of Appeal found, in paragraph 20 of the contested decision, that the marks at issue had the same beginnings, namely the sequence of letters ‘rod’. It noted that, according to the case-law, the beginning of a trade mark is generally the part that primarily attracts the consumer’s attention and is therefore remembered more clearly than the rest of the sign. The Board of Appeal found that the two signs were of approximately the same length, namely four and three letters, respectively, and that, even taking into consideration the design of the tyre with a humorous face of the earlier Spanish trade mark, the two marks could not be considered to be visually dissimilar, since the letters ‘r’, ‘o’ and ‘d’, common to the signs at issue, occupied a prominent position and were clearly perceptible in both signs. The Board of Appeal concluded from the foregoing that the differentiating elements, namely the additional figurative elements and the letter ‘i’ at the end of the word in the earlier Spanish trade mark, did not outweigh the common element ‘rod’, and that there was, therefore, a medium degree of visual similarity between the signs at issue.

30 In the first place, the applicant submits that the dominant element in the earlier Spanish trade mark is the figurative element representing a three-dimensional rolling tyre with a smiling face, and that it has no equivalent in the contested mark. It states in this connection that the ‘sweet and inviting’ impression of that face, reminiscent of that of the Smurfs, differs from the two black machete-shaped sickles of the contested mark, which — according to the applicant — resemble a circular saw, and give a more dynamic and aggressive impression. The applicant also refers to the differences in the colours and in the general shapes of the signs at issue: the earlier Spanish trade mark being horizontal and broad, the contested mark being circular and shorter.

31 First, as regards the figurative element representing a three-dimensional smiling tyre in the earlier Spanish trade mark, the applicant’s argument that that figurative element is the dominant element of that mark must be rejected.

32 That element constitutes merely a detail animating the letter ‘o’ of the word element ‘rodi’. Furthermore, it is a simple design that is not particularly noteworthy or striking as to how the earlier Spanish trade mark is perceived as a whole. That figurative element will therefore be perceived by the consumer as an element of decoration. Accordingly, it cannot be regarded as the dominant element of that mark.

33 Secondly, as regards the figurative element of the contested mark, it does not give rise to an impression of aggressivity as the applicant suggests. It is in fact a neutral geometrical design forming a stylised circle, the banality of which is confirmed by the use of black and white, and which does not particularly attract the attention of the consumer, in contrast to the word element ‘rod’, which is large in size, positioned in the centre of the circle, and which slightly ‘overflows’ the circle. Taking into consideration the overall impression resulting, in the case of the contested mark, from the combination of the word element and the figurative element, it must be concluded that the applicant is wrong in asserting that the term ‘rod’ is integrated into an element formed by the two sickles so as not to be visually distinguishable from it.

34 Thirdly, as regards the differences in the general shapes of the signs, they are not as pronounced as the applicant claims. Furthermore, it must be observed that the circular shape of the figurative element of the contested mark is likely to evoke the shape of the tyre of the earlier Spanish trade mark, which accentuates the visual resemblance of the two signs.

35 Fourthly, it must be stated that, although different, the colours of the signs at issue will also be perceived as an element of decoration and will not particularly attract the attention of the relevant public.

36 In the second place, the applicant argues that the two word elements of the marks at issue are different in length and have each a singular typeface.

37 In this connection, first, it must be observed that, as the Board of Appeal found, the signs at issue begin with the same sequence of letters ‘rod’. That is not disputed by the parties.

38 It is settled case-law that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (see judgment of 21 January 2015 in Schwerdt v OHIM — Iberamigo (cat&clean), T‑587/13, EU:T:2015:37, paragraph 24 and the case-law cited).

39 Furthermore, the Board of Appeal was correct in holding that, in general, the attention of the consumer is focused on the beginning of the word (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 83).

40 In the present case, in the two signs at issue, the word element occupies all of the space outlined by each sign. The central position of each word, the use of capital letters, and the large size of the letters in relation to the figurative elements in the two signs will indisputably attract the attention of the relevant public.

41 Secondly, as regards the alleged differences in the length of those word elements, it must be stated that a difference of only one letter and of only one syllable is not such as to counteract the similarity found in paragraph 37 above. In that regard, the applicant is incorrect in stating, relying on the judgment of 11 May 2005 in CM Capital Markets v OHIM — Caja de Ahorros de Murcia (CM) (T‑390/03, ECR, EU:T:2005:170), that a difference of one letter has a greater impact in the case of short words than in the case of long words. No such proposition is set out in that judgment.

42 Similarly, as regards the different typefaces of the words ‘rod’ and ‘rodi’, it must be stated that these do not constitute a significant difference likely to attract the attention of the relevant public, since both signs have large capital letters that are quite banal in style.

43 Consequently, in the light of the case-law cited in paragraphs 38 and 39 above, the Court is of the view that the Board of Appeal was fully entitled to find, in paragraphs 20 and 21 of the contested decision, that the elements that differentiate the marks, considered as a whole, do not outweigh those marks’ common element ‘rod’.

44 The Court finds, considering each of the earlier Spanish trade mark and the contested mark as a whole, that those marks’ common element ‘rod’, which is clearly perceptible, at the beginning of the words and in a central position, outweighs the differences between the two signs which are considerably less perceptible, namely the figurative elements of the two signs, in particular, the smiling tyre and the presence of the vowel ‘i’ at the end of the word ‘rod’ in the earlier Spanish trade mark, the different lengths of the signs at issue and the differences in general shape, typeface and colours.

45 Accordingly, the Board of Appeal did not err in concluding that there was a medium degree of visual similarity between the signs.

46 The Board of Appeal found, in paragraph 22 of the contested decision, that the common element ‘rod’ would be pronounced according to Spanish pronunciation rules, that is to say, in an identical manner in the case of both marks. Although it accepted, in paragraph 23 of the contested decision, that the additional vowel ‘i’ created a different sound in the case of the earlier Spanish trade mark, in particular, when compared to the sound of the letter ‘d’, the Board of Appeal none the less found that that differentiating verbal element did not outweigh the common word element situated at the beginning of the signs, just as the fact that the contested sign consisted of one syllable whereas the earlier sign had two did not outweigh the common word element. It stated in that regard that a difference in length and in the number of syllables was not per se sufficient, according to the case-law, to rule out a phonetic similarity. Moreover, it observed that the first syllable of the earlier Spanish trade mark was reproduced identically in the contested mark and that the second syllable had the same beginning, namely the letter ‘d’, as the last letter of the element ‘rod’ of the contested mark.

47 The applicant disputes any phonetic similarity and submits, first, that the pronunciation of the two words is different in several languages because the word ‘rod’ will be spelled out, and, secondly, that because of the different number of syllables and the presence of the vowel ‘i’ at the end of the earlier Spanish trade mark, the intonation of the two marks differs notably.

48 First, the applicant’s assertion that the contested mark will be pronounced letter by letter is unfounded. It is in fact unlikely that the relevant public will spell out each letter, since the simplest and shortest possible pronunciation in Spanish is of the whole word. As for the argument based on the pronunciation of the contested mark in German and English, it must be rejected in any event on the ground that German or English pronunciations are not relevant to the present case, since the relevant public is Spanish.

49 Secondly, it must be stated that the same considerations as those set out in paragraphs 38 to 41 above in relation to the visual comparison apply to the phonetic comparison of the signs at issue. It follows that the relevant public will remember in particular the common word element ‘rod’, at the beginning of the word, the pronunciation of which is not significantly altered by the addition, in the earlier Spanish trade mark, of the letter ‘i’.

50 Although the vowel ‘i’ at the end of the earlier Spanish trade mark is pronounced distinctly and results in a difference in the sounds produced by the marks at issue, that difference is not sufficient to offset the phonetic similarity of the beginning of the words. OHIM is correct in contending that, in Spanish, when a word ends with a vowel, as in ‘rodi’, the stress is on the penultimate syllable, that is, in the present case, on the sequence of letters ‘ro’.

51 Although the word element of the earlier Spanish trade mark is composed of two syllables, whereas the contested mark has only one, the fact remains that the two signs have in common their first syllable and the beginning of the second syllable of the earlier Spanish trade mark, namely the letter ‘d’, as the Board of Appeal correctly noted. The judgment cited by the applicant in support of its argument relating to the number of syllables (judgment of 12 December 2002 in Vedial v OHIM — France Distribution (HUBERT), T‑110/01, ECR, EU:T:2002:318) is not relevant to the present case. In the HUBERT case, the earlier trade mark had seven syllables and the contested mark had two, which represented a difference of five syllables, whereas in the present case, the difference is of one syllable only, and, moreover, the second syllable of the earlier Spanish trade mark begins in the same way as the last part of the element ‘rod’ of the contested mark, namely with the letter ‘d’.

52 Accordingly, the Board of Appeal did not err in concluding that there was a phonetic similarity between the signs at issue.

53 The Board of Appeal found, in paragraph 24 of the contested decision, that neither of the two words had a meaning in Spanish and that, therefore, it was not possible to carry out a conceptual comparison. It inferred that this could not affect the degree of similarity or dissimilarity between the marks.

54 Although the applicant does not dispute that the contested mark has no meaning, it nevertheless submits that the earlier Spanish trade mark does have a meaning. It submits, in essence, that since the word ‘rodi’ is identical in its pronunciation to the English word ‘roadie’, the Spanish relevant public will associate the earlier Spanish trade mark with a technician who accompanies musicians on tour, and will therefore associate the earlier Spanish trade mark with ‘road’ and ‘road traffic’. The applicant refers in this connection to the definition of the term ‘roadie’ taken from the Spanish Wikipedia website. It states, moreover, that the intervener itself claimed, before the Cancellation Division, that the earlier Spanish trade mark referred to the Catalan term ‘roda’, meaning ‘wheels’. The applicant refers, lastly, to the case-law according to which conceptual differences between two signs can counteract phonetic and visual similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 98 and the case-law cited) and concludes that there is no likelihood of confusion in the present case.

55 That line of argument must be rejected on the ground that, as the Board of Appeal correctly found in paragraph 26 of the contested decision, it is based on the incorrect assumption that the Spanish relevant public will understand the English word ‘roadie’. It must be stated that the Spanish public will have, at most, a basic knowledge of English, and that the word ‘roadie’ is not a word that forms part of basic vocabulary. The Board of Appeal noted that the word ‘roadie’ did not appear in any Spanish dictionary, and correctly held that the mere fact that the word appears in the Spanish version of the Wikipedia encyclopaedia did not prove that it would be understood by the relevant consumer, inter alia, in the light of the fact that the reliability of the content of that encyclopaedia had to be treated with caution (judgment of 10 May 2012 in Amador López v OHIM (AUTOCOACHING), T‑325/11, EU:T:2012:230, paragraph 26). Furthermore, OHIM correctly observes that the pronunciation of the English word ‘roadie’ is far removed from that of the word ‘rodi’ in Spanish.

56 As for the argument based on the supposedly Catalan origin of the word ‘rodi’, it must be rejected also, since ‘roda’ is different from the term ‘rodi’.

57 It follows from the foregoing that the Board of Appeal was correct in finding that the earlier Spanish trade mark had no particular meaning in Spanish, and that, therefore, no conceptual comparison could be made.

58 In conclusion, the Board of Appeal was fully entitled to conclude that there was an average degree of overall similarity between the marks at issue.

59 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 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 (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 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 74).

60 The Board of Appeal held that since the goods and services designated by the marks at issue were identical or similar, the differences between the marks had to be high to exclude a likelihood of confusion. Taking account of the fact that the marks at issue had an average degree of similarity, that the earlier Spanish trade mark had a normal distinctive character, and although, in the present case, the relevant public would have a higher than average level of attention, the Board of Appeal was correct in finding that there was a likelihood of confusion.

61 In order to show that there is no likelihood of confusion, the applicant puts forward arguments based successively on its analysis of the distinctiveness of the earlier Spanish trade mark; the differences between the marks at issue; the existence of an earlier decision of the Opposition Division concerning the same marks and the same parties, which concluded that there was no likelihood of confusion; and OHIM’s decision-making practice.

62 First, the applicant’s argument that, because of its conceptual meaning, the earlier Spanish trade mark has only a low degree of distinctiveness must be rejected, since it is apparent from paragraph 57 above that it has not been established that the earlier Spanish trade mark has a meaning for the relevant public. Accordingly, it must be held that the Board of Appeal was correct in finding that the earlier Spanish trade mark had a normal distinctive character.

63 Secondly, as regards the applicant’s argument that, in the absence of any visual, phonetic or conceptual similarity, and taking account of the fact that the earlier Spanish trade mark has, on account of its conceptual meaning, only a low degree of distinctiveness, the global assessment ought to lead to the conclusion that the differences between the marks prevail and are sufficient to avoid any likelihood of confusion, suffice it to observe — in order to reject that argument — that it is apparent from paragraphs 58 and 62 above that the Board of Appeal was fully entitled to conclude that there was an average degree of similarity between the marks at issue and that the earlier Spanish trade mark had a normal distinctive character.

64 Thirdly, the applicant argues that other decisions of OHIM concluded, in similar circumstances, that there was no likelihood of confusion, and it relies, in particular, on the decision of the Opposition Division concerning the same parties and the same marks dated 22 February 2010.

65 Those arguments based on OHIM’s decision-making practice must be rejected on the ground that, in accordance with settled case-law, the decisions concerning the registration of a sign as a Community trade mark which the Boards of Appeal of OHIM take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions 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 decision-making practice (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraphs 64 and 65). Although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for legality (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 75).

66 In the present case, it follows from the foregoing that the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion.

67 As regards, more specifically, the decision of the Opposition Division of 22 February 2010 concerning the same parties and the same marks, it must be pointed out that the Board of Appeal was not bound by that decision (see, to that effect, judgments of 14 October 2009 in Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, ECR, EU:T:2009:400, paragraph 36, and 23 September 2014 in Tegometall International v OHIM — Irega (MEGO), T‑11/13, EU:T:2014:803, paragraph 12 and the case-law cited).

69 The applicant claims that there has been an infringement of Rule 39(3) and Rule 37(b)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), on the ground that it never received a colour copy of the registration of the earlier Spanish trade mark. It states that the Cancellation Division merely claimed that a colour copy was provided to OHIM, but the applicant disputes that claim on the ground that such a colour copy was never forwarded to it, despite its repeated requests. It states that the Board of Appeal failed to comment on that infringement of essential procedural requirements.

‘An application to the Office for revocation or for a declaration of invalidity pursuant to Article [56 of Regulation No 207/2009] shall contain:

(ii) in the case of an application pursuant to Article [53(1) of Regulation No 207/2009], particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity’.

71 Rule 39(3) of that regulation provides that ‘[i]f the Office finds that the application does not comply with Rule 37, it shall invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office shall reject the application as inadmissible’.

72 It must be stated that, by its line of argument, the applicant is contesting, first, the admissibility of the application for a declaration of invalidity in so far as, according to the applicant, OHIM’s file did not contain a colour reproduction of the earlier Spanish trade mark and, secondly, the fact that such a colour copy was not forwarded to it.

73 First, it should be pointed out that the Cancellation Division stated that page 4 of the application for a declaration of invalidity dated 28 December 2011 contained a colour reproduction of the earlier Spanish trade mark and that that colour copy was also present in the observations filed by Rodi TR with the application for a declaration of invalidity. That is confirmed by a reading of OHIM’s file.

74 Consequently, since OHIM’s file shows that the application for a declaration of invalidity contained a colour copy, the Cancellation Division was fully entitled to hold that the application for a declaration of invalidity was admissible. Therefore, no infringement of essential procedural requirements, and, accordingly, no failure to rule on the issue, can be imputed to the Board of Appeal. Consequently, the applicant cannot contest the admissibility of the application for a declaration of invalidity under Rule 39(3) of Regulation No 2868/95.

75 Secondly, even if OHIM had not forwarded the applicant the colour copy of the earlier Spanish trade mark sent by Rodi TR, that would not be decisive, since it is indisputable that that copy was in fact received in colour by OHIM and that that was sufficient for the application for a declaration of invalidity to be admissible. Furthermore, it is apparent from the certificate of registration of the earlier Spanish trade mark, which certificate was annexed to the application for a declaration of invalidity and sent to the applicant in connection with that application, that the colours of the earlier Spanish trade mark were expressly described therein as follows: ‘blue pantone RAL, 5002, yellow pantone, RAL, 1016, white’. Accordingly, the applicant cannot claim that it did not know that the earlier Spanish trade mark included colours.

77 Since none of the pleas in law raised by the applicant are well founded, the action must be dismissed in its entirety.

78 Under Article 134(1) 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 OHIM.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Rod Leichtmetallrader v OHMI - Rodi TR (ROD) (Judgment) [2016] EUECJ T-75/15 (21 January 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T7515.html Cite as: EU:T:2016:26, [2016] EUECJ T-75/15, ECLI:EU:T:2016:26

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