CheapFlights International v OHMI - Cheapflights (Cheapflights avec avion noir) (Intellectual property) [2011] EUECJ T-461/09 (05 May 2011)

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(Community trade mark – Opposition proceedings – Application for the Community figurative mark Cheapflights with a black aeroplane – Earlier national figurative mark Cheapflights – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

CheapFlights International Ltd, established in Ballybofey (Ireland), represented by A. von Mühlendahl and H. Hartwig, lawyers,

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

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being

Cheapflights Ltd, established in London (United Kingdom), represented by M. Edenborough QC,

1 On 13 January 2003, the intervener, Cheapflights Ltd, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), claiming a priority date of 24 July 2002, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The services in respect of which registration of the mark was sought are in Classes 38, 39 and 41 to 44 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.

5 The application for the Community trade mark was published in Community Trade Marks Bulletin No 9/2005 of 28 February 2005.

6 On 26 May 2005 the applicant, CheapFlights International Ltd, filed a notice of opposition to that application pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) in respect of the services referred to in paragraph 4 above.

7 The opposition was based, inter alia, on the international figurative mark No 754365, registered on 21 December 2000, with effect in Germany, Greece, France, Italy, Austria, Poland, Portugal, Finland, Sweden and the Benelux for services in Classes 35, 38, 39 and 42, reproduced below:

8 The services in question correspond, for each of those classes, to the following description:

10 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

11 On 10 August 2007, the Opposition Division upheld the opposition in its entirety.

12 On 9 October 2007, the intervener filed a notice of appeal, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.

13 By decision of 31 August 2009 (‘the contested decision’) the Fourth Board of Appeal of OHIM upheld the intervener’s appeal. As regards, first, the comparison of the services at issue, the Board of Appeal found that they were in part identical and in part similar. As regards, secondly, the comparison of the signs, it concluded that they had a low degree of similarity. Visually, notwithstanding the presence of common elements in some of the earlier rights and in the mark applied for, that is to say, the word ‘cheapflights’ and the representation of an aeroplane, the Board of Appeal found that, because of, first, the descriptive nature of those two elements and, second, the ‘stylistic’ differences between the signs, the signs were similar to a low degree only. As regards phonetic and conceptual similarity, the Board of Appeal took the view that a comparison of the signs was not relevant since it would be limited to those elements of the signs which were entirely descriptive. Consequently, the Board of Appeal concluded that the low degree of similarity between the signs and the low degree of distinctiveness of the earlier marks excluded any likelihood of confusion on the part of the relevant public, even though the services at issue were in part identical and in part similar.

16 OHIM and the intervener dispute the admissibility of Annex A.6 in so far as it was submitted for the first time before the General Court.

17 At the hearing, the applicant conceded that that annex had not been provided in the course of the proceedings before OHIM.

18 According to settled case-law, the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. It is thus not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence would be contrary to Article 135(4) of the Rules of Procedure of the General Court, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 18, and Case T-336/03 Editions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II-4667, paragraph 16).

20 In support of its claim for annulment of the contested decision, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

21 According to the applicant, the Board of Appeal erred in finding that there was no likelihood of confusion between the marks at issue.

22 OHIM contends that the Board of Appeal was right to conclude that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

23 As regards the comparison of the signs at issue, OHIM submits that, in so far as the applicant makes only a general and unsubstantiated criticism of the Board of Appeal’s findings relating to the descriptive character of the word ‘cheapflights’ and of the representation of an aeroplane, the General Court should not take it into account. In any event, it submits that the Board of Appeal was right to find that there is a low degree of similarity between the signs at issue. As their word and figurative elements are purely descriptive and are completely devoid of any distinctive character, those signs exhibit only a low degree of visual similarity and, aurally and conceptually, are incapable of indicating the origin of the services in question, even after registration.

24 The intervener submits that the Board of Appeal was right to find that there was a low degree of similarity between the signs at issue and no likelihood of confusion on the part of the public.

25 Article 8(1)(b) 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 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 relevant 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. For the purposes of Article 8(1) of Regulation No 207/2009, ‘earlier trade marks’ means international trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

26 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. 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 the goods or services concerned and account being taken of 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 Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

27 In that regard, it should be noted that, although the Board of Appeal compared the mark applied for with a number of earlier rights relied on by the applicant, it essentially based its analysis on the international figurative mark referred to in paragraph 7 above (‘the earlier mark’). In view of the circumstances of the present case, it appears to be sufficient to examine the existence of a likelihood of confusion in relation to that earlier mark alone.

28 According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

29 In the present case, having regard to the nature of the services in question, the Board of Appeal was right to find that the relevant public consisted of average consumers from the territories in which the earlier mark is protected, who were considered to be reasonably well informed and reasonably observant and circumspect.

30 The applicant, in essence, complains that the Board of Appeal did not carry out an evaluation of the way in which the relevant public perceives the signs in all the territories in which the earlier mark is protected. It complains that the Board of Appeal, first, examined of its own motion the issue of the relevant public’s understanding of English and, secondly, overlooked the part of that relevant public which does not have sufficient knowledge of English to understand the meaning of the word ‘cheapflights’.

32 The Board of Appeal was entitled to examine of its own motion the relevant public’s understanding of English. It is true that under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence which the parties have presented. However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see the judgment of 24 September 2008 in Case T-179/07 Anvil Knitwear v OHIM – Aprile e Aprile (Aprile), not published in the ECR, paragraph 71).

33 In that regard, the Board of Appeal was right to find in paragraph 34 of the contested decision that, in the light of their very frequent use in the air transport sector, the words ‘cheap’ and ‘flights’ could be understood by the relevant public, whether it had a knowledge of English or not.

34 As regards, in the first place, comparison of the services at issue, the Board of Appeal found that they were in part identical and in part similar. The applicant has not disputed that assessment.

35 In the second place, so far as comparison of the signs at issue is concerned, it should be noted that, according to settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, aural 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 components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation 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 (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

36 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 OHIM v Shaker, paragraph 35 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 35 above, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).

37 In the present case, the earlier mark is made up of the representation of an aeroplane and the word element ‘cheapflights’ written in orange and in italics, the whole being represented on a purple background. The mark applied for is made up of the word element ‘cheapflights’, written in bold letters, and of the figurative element consisting of a black aeroplane represented in a filled-in circle and placed above the letter ‘i’ of the word element. The mark applied for is represented in black and white.

38 The Board of Appeal found, in essence, that the word ‘cheapflights’ and the representation of an aeroplane, both of which are present in the signs at issue, were entirely descriptive of the services in question and deduced from that that there was only a low degree of similarity between the marks.

39 As regards, firstly, the reference made by OHIM to the insufficient nature of the applicant’s criticism of the Board of Appeal’s findings relating to the descriptive character of the word ‘cheapflights’ and the representation of an aeroplane, and its effects on the comparison of the marks at issue, it must be understood as seeking a declaration from the General Court that that criticism is inadmissible on the basis of Article 44(1)(c) of the Rules of Procedure.

40 However, the fact remains that the passages of the application relating to the comparison by the Board of Appeal of the marks at issue are sufficiently clear and precise to enable OHIM and the intervener to prepare their defence and to enable the General Court to rule on the applicant’s criticism. It follows that the applicant’s arguments satisfy the conditions for admissibility under Article 44(1)(c) of the Rules of Procedure.

41 As regards, secondly, the reasoning followed by the Board of Appeal in the contested decision, it should be pointed out that it is based on the premiss that the word ‘cheapflights’ and the representation of an aeroplane are descriptive of the services in question. The signs at issue are therefore entirely descriptive of the nature and value of those services, namely the offer of cheap flights.

42 However, it must be stated that, in order to arrive at that finding, the Board of Appeal, rather than examining the various services covered by the marks at issue, based its reasoning, in essence, on the circumstances that, first, the word ‘cheapflights’ and the representation of an aeroplane referred to cheap flights and, secondly, the services in question all had a connection with travel arrangements.

43 The fact remains that such general findings are not sufficient to show that those elements are descriptive of all the services in question.

44 It was for the Board of Appeal to ascertain, with regard to each of the services in question, whether the word ‘cheapflights’ or the representation of an aeroplane could serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production or of rendering of the service or other characteristics of those services.

45 As regards, for example, the services of ‘providing and/or operating search engines’ in Class 38 covered by the mark applied for or the ‘telecommunication’ services covered by the earlier mark, it does not seem obvious that the word ‘cheapflights’ and the representation of an aeroplane will be perceived by the relevant public as describing those services or their characteristics. The mere fact that such services have in common, with the offer of cheap flights, the fact that they concern travel arrangements is not sufficient in itself to show that the elements of the marks at issue will be understood as a description of those services.

46 Likewise, the word ‘cheapflights’ and the representation of an aeroplane cannot be regarded as descriptive of the ‘organisation of competitions’ service, ‘weather information’ services and services connected with the booking of accommodation in Classes 41, 42 and 43 respectively, covered by the marks applied for, on the sole ground that such services may have a connection with travel arrangements. The same criticism may be made as regards the services connected with advertising and the reservation of accommodation in Classes 35 and 42 respectively covered by the earlier mark.

47 Furthermore, the incomplete nature of the analysis of the possibly descriptive character of the elements common to the marks at issue is borne out by the finding in paragraph 37 of the contested decision, to the effect that the word ‘cheapflights’ and the representation of an aeroplane are descriptive ‘for large parts’ of the services concerned, which does not however give further particulars about the services to which reference is being made.

48 By proceeding in that manner, the Board of Appeal did not sufficiently substantiate its view regarding the descriptive character of the word ‘cheapflights’ and the representation of an aeroplane with regard to all the services covered by the marks at issue. Consequently, its finding as to the absence of a likelihood of confusion between the marks at issue, in so far as it is based on the allegedly descriptive character of the elements common to those marks, is based on a premiss the truth of which has not been proved to the required legal standard.

49 Consequently, the single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be upheld and the contested decision annulled.

The claim for dismissal of the appeal against the decision of the Opposition Division

50 By its claim for dismissal of the appeal against the decision of the Opposition Division, the applicant seeks the alteration of the contested decision.

51 In the present case, it must be held that the applicant’s interests are sufficiently safeguarded by the annulment of the contested decision without there being any need to give a ruling on that claim for alteration.

52 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In addition, under that same provision, where there are several unsuccessful parties the Court is to decide how the costs are to be shared.

53 In the present case, since OHIM and the intervener have been unsuccessful, they must be ordered to pay the costs incurred by the applicant in the proceedings before the Court, in accordance with the form of order sought by the applicant.

54 The applicant also applied for OHIM and the intervener to be ordered to pay the costs incurred by it for the purposes of the proceedings before the Board of Appeal. In that connection, it should be recalled that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Therefore, since OHIM and the intervener have been unsuccessful, they must also be ordered to pay the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal, in accordance with the form of order sought by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 31 August 2009 (Case R 1607/2007-4);

3. Orders OHIM and Cheapflights Ltd to pay the costs including those incurred by CheapFlights International Ltd in the proceedings before the Board of Appeal.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> CheapFlights International v OHMI - Cheapflights (Cheapflights avec avion noir) (Intellectual property) [2011] EUECJ T-461/09 (05 May 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T46109.html Cite as: [2011] EUECJ T-461/9, [2011] EUECJ T-461/09

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