Ford Motor v OHMI - Alkar Automotive (CA) (Intellectual property) [2011] EUECJ T-486/07 (22 March 2011)

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(Community trade mark – Opposition proceedings – Application for figurative Community trade mark CA – Earlier Community word and figurative marks KA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

Ford Motor Company, established in Dearborn, Michigan (United States), represented by R. Ingerl, lawyer,

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

Alkar Automotive, SA, established in Derio (Spain), represented by S. Alonso Maruri, lawyer,

1 On 2 June 2003, Commercial Alkar, SA, now the intervener, Alkar Automotive, SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation No (EC) 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 for which registration was sought is the figurative sign reproduced below:

3 The goods in respect of which registration was sought are in Classes 9, 11 and 12 under 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:

4 The application for the Community trade mark was published in Community Trade Marks Bulletin No 8/2004 of 23 February 2004.

5 On 3 March 2004, the applicant, Ford Motor Company, filed a notice of opposition, pursuant to Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009), to registration of the mark applied for in respect of the goods listed in paragraph 3 above with the exception of mechanical signalling and apparatus for locomotion by air or water.

6 The opposition was based, first, on the Community word mark KA registered in respect of goods and services in Classes 12, 27 and 37, and corresponding to the following description:

7 The opposition was based, secondly, on the Community figurative mark reproduced below:

8 The goods covered by the earlier mark fall within Classes 9, 12, 14, 16, 18, 20, 21 and 32 and correspond, in respect of each of those classes, to the following description:

9 On 22 November 2005, the Opposition Division rejected the opposition in its entirety.

10 On 11 January 2006, the applicant filed with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), a notice of appeal against the Opposition Division’s decision.

11 By decision of 25 October 2007 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division. The Board of Appeal concluded, in essence, that the mark applied for and each of the earlier marks were sufficiently dissimilar to exclude any likelihood of confusion on the part of the relevant public no matter how similar the goods concerned were and despite the fact that the distinctiveness of the earlier trade marks was higher than average.

14 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

15 It is therefore appropriate to recall that Article 8(1)(b) of Regulation No 40/94 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, 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.

16 Furthermore, according to established 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 that same line of case-law, 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 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 there).

17 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the two marks 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 there).

18 The applicant stated at the hearing that it was withdrawing its complaints relating to the goods covered by the opposition.

19 The dispute between the parties at issue must be assessed in the light of the above.

20 The applicant considers that, in the present case, the relevant public had not been defined for the purposes of an analysis of the likelihood of confusion and consequently that the Board of Appeal did not take account of the fact that the goods concerned, in particular the motor vehicles and parts and fittings therefor, are intended for general consumption throughout the European Union. The relevant public therefore represents a very large part of the European population. According to the applicant, the broader the target public, the greater the risk of confusion since no particular interest, education or knowledge can be presupposed in such a large group regardless of the general principle that the average consumer of the category of goods concerned is deemed to be reasonably well informed, observant and circumspect.

21 The applicant contests the assessment in the contested decision according to which the level of attention of the relevant public is high when purchasing cars and car parts given the high price and the highly technological character of cars and the impact on safety of car parts (see paragraphs 17 and 24 of the contested decision).

22 According to the applicant, that assessment is incorrect in law and in fact, because the likelihood of confusion must be assessed in relation to all the goods in question. In the present case, the Board of Appeal took into consideration only parts and fittings necessary in order to avoid serious damage to the car and to ensure safe driving. However, the goods covered by the marks in question cover countless parts and fittings of vehicles which are intended for decorative purposes. As regards those other parts and fittings of vehicles, the applicant submits in essence that the relevant public does not display a high level of attention.

23 Consequently, the applicant considers that the Board of Appeal should have taken a lower level of attention of the average consumer into account and, on the basis of that standard of attention, should not have rejected the opposition.

24 The applicant describes as contradictory – in a Community trade mark regime whose objective is to ensure undistorted competition in the single market (see the first recital in the preamble to Regulation No 40/94, now recital 2 of Regulation No 207/2009) – the current development of Community trade mark law, according to which, on the basis of the higher attention of the average consumer, the names and signs for valuable, technologically advanced or safety-relevant goods are accorded a smaller scope of protection than the names and signs for other less valuable, advanced or safety-relevant products. According to the applicant, the scope of protection of marks must be at least equal, if not higher, in the case of particularly valuable, advanced or safety-relevant goods. The applicant considers that regardless of whether there is an empirical basis for the current approach, from a legislative point of view, the system of Community trade marks is directed towards competition and calls for the taking into account of the economic importance of the consumer decision at issue in the global assessment of the likelihood of confusion. This latter approach resembles that of the Court of Justice with regard to the level of protection of marks having a reputation, according to which, despite all empirical uncertainties, marks with a greater distinctive character enjoy broader protection.

26 As recognised by the case-law, in the global assessment of the likelihood of confusion, account must be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It must 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).

27 In the present case, it must be held that, taking into account, in particular, the background to the contested decision as constituted by the goods in question and the geographic scope of the earlier marks, the reference made by the Board of Appeal to the relevant public must be understood as referring to the average consumer of goods intended for general consumption in the European Union.

28 The goods protected by the marks at issue are, as stated by the parties, vehicles, apparatus for locomotion by land and parts thereof, as well as goods and services for vehicles and drinks. Those goods are intended for general consumption and are therefore intended in particular for a public of final consumers. In addition, the earlier marks are Community marks and are accordingly protected throughout the territory of the European Union.

29 Consequently, the applicant is incorrect to claim that the Board of Appeal did not take into consideration the fact that the goods concerned are intended for general consumption throughout the European Union.

30 Furthermore, in so far as the applicant argues that there is a correlation between the size of the relevant public and the degree of the likelihood of confusion between marks, on the ground that no particular education, knowledge or interest can be presupposed in a very large group of persons, the Court finds that the applicant offers no evidence to support its argument. In addition, it must be recalled that the likelihood of confusion must be assessed by reference to a number of factors, including the attention of the relevant public in relation to the goods in question (see paragraphs 16 and 26 above). The attention of the relevant public may be a result of its interest. However, it cannot be excluded that the interest of the relevant public is high even if the relevant public is large and, conversely, it cannot be excluded that its interest is weak even if the relevant public is not large. Therefore, the applicant’s argument that there is a correlation between the size of the relevant public and the degree of a likelihood of confusion must be rejected.

31 In the contested decision, the Board of Appeal concluded that cars are high-priced products which will be purchased after careful consideration. This applies also to parts of cars, as the consumer is aware that those parts can cause serious damage to the car and that driving safety depends on their proper functioning (see paragraph 17 of the contested decision). In addition, the Board of Appeal found that the relevant public will be more attentive when buying high-priced products like cars or products that influence driving safety like apparatus for vehicles and will therefore pay increased attention to the trade mark under comparison (see paragraph 24 of the contested decision).

32 The applicant disputes that assessment, considering, essentially, that the Board of Appeal did not take into account certain goods for which the attention of the relevant public is not high.

33 In that respect, the parties correctly state that the likelihood of confusion must be assessed with regard to all of the goods in respect of which the proprietor of the earlier marks disputes the trade mark application. It is in relation to those goods that a likelihood of confusion between the marks at issue might occur. The likelihood of confusion must therefore be assessed by reference to the average consumer’s level of attention in relation to those goods.

34 In the present case, the opposition was directed against the following goods covered by the earlier mark: luminous signalling and, in particular, luminous signs and flashing lights for vehicles, lighting apparatus for vehicles, and in particular headlights, lamps and lights for vehicles, rear view mirrors, vehicles, as well as apparatus for locomotion by land.

35 In so far as the goods consist of ‘vehicles’ or ‘apparatus for locomotion by land’, the Board of Appeal correctly concluded that the relevant consumer will exercise great care when purchasing them. Since the price of those goods is generally high, the consumer will pay particular attention to them.

36 In addition, in so far as the goods in question include parts which serve to ensure the safety of the vehicle’s users, such as rear view mirrors and luminous signalling, the Board of Appeal was also correct to consider that the relevant consumer will display a high level of attention when purchasing them. When the product at issue concerns consumer safety, it may be considered that the consumer will pay particular attention to it.

37 Finally, it is true, as the applicant maintains, that some of the goods in question, such as additional rear view mirrors, luminous signalling and vehicle lights, could be purchased for purely decorative purposes. The use of those goods nevertheless implies that they are compatible with the vehicle so that they may be attached to the vehicle and/or in order to ensure their proper functioning, and accordingly the attention of the consumer is high when purchasing them. Moreover, the purchase of goods for purely decorative purposes implies aesthetic appraisal by the relevant consumer. Such an appraisal entails a high level of attention on the part of the consumer. Consequently, even for the goods in question which are not vehicles or apparatus for locomotion by land and which do not contribute to consumer safety, the consumer will display increased attentiveness.

38 Therefore, the applicant’s plea alleging incorrect assessment in fact and in law of the level of attention of the relevant consumer in respect of the contested goods covered by the trade mark applied for must be dismissed. All of the goods in question may be deemed to require a high degree of attention on the part of the relevant public.

39 The applicant requests, as a matter of principle, greater protection for the trade marks covering goods which are of particular value, technologically advanced or which have a value in terms of safety.

40 However, contrary to the applicant’s claims, the protection of a trade mark covering less expensive or less sophisticated goods is not broader than the protection afforded to a trade mark covering goods in a higher price category, technical goods or goods which have an impact on safety.

41 Although the level of attention of the consumer of those trade marks may differ and may affect the likelihood of confusion with similar trade marks covering identical or similar goods, the level of protection conferred by a trade mark with regard to the likelihood of confusion remains unchanged. In all cases, the Community trade mark’s function as an identifier of the origin of the goods and/or services in question is secured. Thus, when the value, sophistication or impact on safety of goods covered by a trade mark result in an increase in the relevant consumer’s level of attention, the attention paid by the relevant consumer will reduce the likelihood of confusion between that trade mark and another trade mark and the scope of protection of that mark is not affected.

42 It must also be noted that the system of Community trade marks as such constitutes a restriction on free competition by reserving certain rights to operate on the market to certain operators. However, it contributes to the objective of promoting a harmonious development of economic activities throughout the European Union, which includes the development of a single market where there is no distortion of competition by establishing a uniform and transparent system of Community trade marks.

43 Accordingly, the first recital in the preamble to Regulation No 40/94 stresses the importance of the availability to undertakings of ‘trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers’ for the establishment of this single market.

44 That general objective does not require, contrary to what the applicant claims, that account be taken of the economic importance of the consumer’s decision as one of the factors in the global assessment of the likelihood of confusion. In any event, the applicant does not indicate the reason for such a requirement in light of the objective of creating a single market where there is no distortion of competition.

45 The applicant’s approach enhances the protected position of the holders of a Community trade mark right instead of enhancing competition. To be in conformity with the Treaty such an additional restriction on competition would have to be objectively justified. The applicant does not however put forward any such justification.

46 Finally, it must be noted that it has already been held that, for the purposes of assessing whether there is any likelihood of confusion between marks relating to motor vehicles, account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods. That assessment has been justified on the ground that, where it is established in fact that the objective characteristics of a given product mean that the average consumer purchases it only after a particularly careful examination, it is important in law to take into account that such a fact may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made (see, to that effect, Case C-�361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-�643, paragraphs 38 to 40). That assessment can be applied to the present case and confirms the merits of the approach taken by the Board of Appeal.

47 In view of the above, the Court must reject the applicant’s argument that the criteria for assessing the likelihood of confusion should be altered when the goods in question are valuable, technologically advanced or safety-relevant.

48 As regards the visual similarity between the signs at issue, the applicant considers that the Board of Appeal distorted the facts by taking the view that the mark applied for would not be recognised as a graphical variation of the group of letters ‘ca’ but rather as representing the number 4 in a semi-circle.

49 The applicant submits, in that context, that the number 4 requires, unlike the representation of the mark applied for, a horizontal stroke perpendicular to its vertical axis and a diagonal stroke on its left side. In addition, the intervener itself acknowledged in its application for registration that the mark applied for consists of the group of letters ‘ca’. In assessing the likelihood of confusion between two marks, the Board of Appeal cannot disregard that description accompanying a trade mark application under Rule 3(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), because it is part of the representation of the mark.

50 The applicant also maintains that the Board of Appeal is wrong to consider that, even if the relevant public perceived the mark applied for as the letters ‘c’ and ‘a’ and as ‘ca’, there are striking visual differences between the marks at issue due to the fact that generally the public pay more attention to the first letter of a sign. Case-law recognises that the rule that the public generally pays more attention to the first letter of a sign does not apply automatically in all cases. The applicant contends that the rule does not apply to extremely short words such as ‘ca’ and ‘ka’, because the average consumer reads them quickly and has no reason to distinguish between them in terms of their position at the end or at the beginning of such a short word.

51 Lastly, the applicant claims that the Board of Appeal distorted the facts by erroneously basing itself on ‘the striking graphical differentiation’ of the letters ‘c’ and ‘a’ of the mark applied for. Those two letters are not separated by their particular graphic representation in the mark applied for but are fused together to one sign and one word by way of their overlapping and the insertion of ‘a’ in the ‘c’.

52 As regards phonetic similarities between the signs at issue, the applicant considers that where the second letter in a two-letter word is the only vowel it is even less appropriate to assume a dominance of the first letter just because of its position. It is the vowel that dominates the overall phonetic impression of such a word and not the consonant, regardless of their respective positions.

54 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 components. 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 (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited there).

55 In the contested decision, the Board of Appeal concluded that there was an important difference between the marks at issue. According to the Board of Appeal, the earlier word mark is comprised of the letters ‘k’ and ‘a’, whereas the mark applied for is comprised of two graphic components, one consists of an open circle and the other resembling a number 4 in a semi-circle open to the right. The Board of Appeal considers that although, according to the description of the trade mark applied for, it consists of the syllable ‘ca’, those letters are not necessarily recognisable in the reproduction of the trade mark applied for. Furthermore, it considers that even if the mark applied for was perceived, in accordance with the intervener’s intention, as a group of letters ‘ca’ written in very fancy lettering, that would not cause a similarity with the earlier word mark. According to the Board of Appeal, since ‘ca’ and ‘ka’ are very short combinations of letters, the different first letter is a strong argument against the recognition of a similarity between the marks at issue, in particular, because the public will pay it increased attention (see paragraph 21 of the contested decision). The Board of Appeal found that that reasoning was also applicable to the comparison between the mark applied for and the earlier figurative mark KA, which includes in addition a special graphic, which further emphasises the visual differences (see paragraphs 25 and 26 of the contested decision).

56 In light of the applicant’s arguments, it must first be recalled that it is not disputed that the relevant public will perceive the letters ‘k’ and ‘a’ or the sign KA in the earlier marks. In the earlier figurative mark, the public will also perceive the particular stylised character of the letters and the larger size of the letter ‘k’ in relation to the letter ‘a’.

57 Next, it follows from an examination of the mark applied for that it is made up of two separate components, the component on the left predominating over the component on the right due to its larger size and the fact that it encircles it. The component on the left could be perceived both as the letter ‘c’ and as a circle open on the right. Within the component on the left, both the capital letter ‘a’ and the diagonal number 4 may be perceived. The latter cannot be excluded, because the component on the right has the essential features of the number 4, even if it is stylised, diagonal and with a flattened tip. It follows that the applicant was wrong to claim that the Board of Appeal distorted the facts by finding that the mark applied for was perceived by the relevant public as the number 4.

58 The description given by the intervener in its application for registration of the mark applied for does not affect the above assessment. The option, provided for by Rule 3(3) of Regulation No 2868/95, for an applicant for Community trade marks to add a description of the mark to the application provides information on the perception of the mark by the applicant for the mark, not on the perception of the mark by the relevant public. The likelihood of confusion between the trade marks must be assessed in relation to the perception of the marks by the relevant public. Consequently, the applicant’s argument based on the description of the mark in the application for its registration must be declared ineffective.

59 As regards the global visual comparison of the marks at issue, the Board of Appeal was correct to find that when the trade mark was perceived as ‘c a’ by the relevant public and the earlier marks were perceived as ‘k’ and ‘a’, the group of letters ‘ca’ written in very fancy lettering allowed the relevant public to distinguish the mark applied for from both the earlier word mark and the earlier figurative mark.

60 The ‘c’ of the mark applied for may be distinguished from the ‘k’ of each of the earlier marks. Furthermore, the letters ‘k’ and ‘a’ of each of the earlier marks are written one after the other whereas, in the mark applied for, the letter ‘a’ is inserted in the letter ‘c’. Those differences suffice for the relevant public to distinguish, when the signs are globally compared visually, the mark applied for from earlier marks.

61 That visual difference is even more significant when the mark applied for, perceived as ‘ca’, is compared to just the earlier figurative mark perceived as ‘ka’. In addition to the aforementioned differences, it must be noted that for each of those marks the first letter is larger than the second. The large first letters accentuates the difference between the marks by highlighting the two different letters ‘c’ and ‘k’ while relegating their only common component namely the letter ‘a’, to the background. In addition, when the relevant public compares the marks, it will also observe the difference in the lettering between the mark applied for, more rounded and compact, and the earlier figurative mark, more angular and leaning towards the right.

62 In addition, if the mark applied for is perceived by the relevant public as a circle open to the right in which is written the letter ‘a’, it will perceive significant differences between those marks. The differences between the open circle of the mark applied for and the letter ‘k’ of each of the earlier marks as well as the particular positioning of the two components of the mark applied for will be perceived by the relevant public.

63 Finally, in so far as the mark applied for is perceived as a circle open on the right or the letter ‘c’ in which the number 4 is written diagonally, the Board of Appeal was correct to find that there was a significant visual difference between the marks at issue. It must be held that the relevant public will perceive the difference between the circle or the letter ‘c’ of the mark applied for and the letter ‘k’ of the earlier marks. Furthermore, the relevant public will also perceive the obvious difference between the diagonal number 4 of the mark applied for and the letter ‘a’ of the earlier marks.

64 Each of the foregoing assessments applies irrespective of the merits of the assessment of the Board of Appeal that the relevant public will pay more attention to the first letters of the marks at issue due to the fact they are a combination of only two letters.

65 In the light of the foregoing, it must be concluded that, for each of the possible perceptions by the relevant public of the mark applied for, that public will perceive significant visual differences in relation to each of the earlier marks.

66 The Board of Appeal found that the fact that the group of letters ‘ca’ could be recognised in the mark applied for did not create a notable similarity with the earlier word mark. The striking graphical differentiation between those two letters in the mark applied for will cause, according to the Board of Appeal, the relevant public to read them separately, as an abbreviation. It further found that the earlier mark would be read as an abbreviation or as one word. The striking differences regarding the first letter will therefore remain in the phonetic comparison (see paragraph 22 of the contested decision). According to the Board of Appeal, the foregoing reasoning applies equally to the comparison between the mark applied for and the earlier figurative mark (see paragraphs 25 and 26 of the contested decision).

67 Therefore, contrary to what the applicant submits, the Board of Appeal did not base its assessment of phonetic similarity between the marks at issue on the alleged rule that the first letter of a word is the most important. Consequently, that argument by the applicant must be declared ineffective.

68 In addition, in so far as the applicant argues that, independently of the position of the letters of a word made up of a consonant and a vowel, it is the vowel and not the consonant which dominates the overall phonetic impression of such a word, it must be noted that although a vowel is indeed more audible than a consonant the phonetic prominence of a vowel in a word composed only of a consonant and a vowel does not render the consonant negligible in the pronunciation and in the phonetic perception of that word. The overall perception of the consonant and the vowel must therefore be taken into account in the assessment of the phonetic similarity of the marks at issue.

69 In the present case, despite the particular graphics of the mark applied for, the mark could also be perceived by the relevant public as the word ‘ca’ and not as an abbreviation. In addition, even though the trade mark applied for might in that case be pronounced differently depending on the relevant language, that trade mark might be pronounced and perceived phonetically as ‘ka’, that is to say in the same manner as the earlier marks. Therefore, a degree of phonetic similarity between the marks at issue must be recognised.

70 However, the Board of Appeal was correct to find that the relevant public will perceive the mark applied for as an abbreviation rather than a word and that therefore it will not be pronounced or perceived phonetically as ‘ka’.

71 Therefore, some degree of phonetic similarity between the marks at issue must be recognised but it is not very high. Without making an error, the Board of Appeal therefore could find that the phonetic similarity between the marks at issue was not ‘notable’.

72 The parties are correct not to contest the assessment of the Board of Appeal that there cannot be a conceptual comparison of the marks at issue. As indicated by the Board of Appeal, none of the marks at issue have a meaning.

73 The applicant contests the Board of Appeal’s global assessment of the likelihood of confusion.

74 According to the applicant, in its global assessment of the likelihood of confusion the Board of Appeal overlooked the similarity of the goods at issue which are not identical, because it erroneously came to the conclusion that the similarity between the signs was so low that neither the identity of the goods nor the high distinctiveness of the earlier marks mattered anymore.

75 The applicant considers, moreover, that the Board of Appeal did not take proper account of the distinctiveness acquired through the particularly intensive use of the earlier word mark.

76 First, the applicant is of the view that the Board of Appeal wrongly appraised the facts, by holding in the present case that the earlier word mark enjoys a distinctiveness which is more than average. The very intensive and wide use of the earlier marks demonstrated during the opposition proceedings (see proof of the sale of more that 600 000 cars with the names of models corresponding to the earlier marks in 17 Member States of the European Union) justifies the recognition of considerably higher distinctive character. The applicant refers in that context both to the fact that a car is a product which serves as a natural platform for constant presentation of its model name to the public whenever it is driven on the streets or is just parked there, during all its lifetime, and the fact that all of the names of the widely sold models of the main vehicle manufacturers in Europe enjoy attention throughout the general public.

77 Second, the applicant considers that the Board of Appeal did not really take into account the distinctive character of the earlier marks in the global assessment of the likelihood of confusion. The applicant observes that the above-average distinctiveness of the earlier word mark was only mentioned twice in the contested decision and did not have a real impact on the analysis of the Board of Appeal.

78 Furthermore, the applicant considers that the Board of Appeal did not take an approach based on the overall impression given by the marks at issue but took an analytical approach, splitting the trade marks up artificially in a manner in which the average consumer would not view, interpret or remember trade marks.

79 If the Board of Appeal had applied the rule on the importance of the overall impression of the mark and the prohibition on splitting it up, it would have compared the term ‘ka’ with the term ‘ca’, each considered as a whole. Throughout the European Union ‘ca’ is pronounced as ‘ka’ and is therefore pronounced identically to the sign KA. Consequently, the similarity of the marks concerned is phonetically extremely high. In addition, the Board of Appeal properly found that none of the trade marks at issue has a meaning. Consequently, the phonetic similarity of the trade marks at issue is not cancelled out by their conceptual difference and it therefore suffices to create a likelihood of confusion.

80 The applicant considers that that conclusion is confirmed by the fact that the Board of Appeal failed to recognise the importance of the well established rule that mere phonetic similarity between trade marks may create a likelihood of confusion. According to the applicant, the letters and the words are not just recognised by the mind as visual graphics but are automatically associated with their sound image and stored in that manner in memory, even if they have never been heard before. Actually, thinking in words and remembering words is closer to speaking, that is to say, more a phonetic process of the mind than a visual experience.

81 In addition, the Board of Appeal failed to have regard to the fact that the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind. If the Board of Appeal had applied that rule, a likelihood – primarily phonetic – of confusion could not have been excluded because of the highly distinctive character of the earlier marks and the fact that most of the goods covered were identical.

83 With regard to the arguments of the parties, it is to be remembered that Article 8(1)(b) of Regulation No 40/94 is intended to apply only if, by reason of the identity or similarity both of the marks and of the goods which they designate, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. The assessment of that likelihood of confusion depends on numerous factors and must be assessed globally taking into account all the factors relevant to the circumstances of the case. The global assessment of the visual, phonetic or conceptual similarity of the marks at issue must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, by analogy, Case C-�251/95 SABEL [1997] ECR I-�6191, paragraphs 18, 22 and 23).

84 The 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 (Case C-�39/97 Canon [1998] ECR I-�5507, paragraph 17, and Joined Cases T-�81/03, T-�82/03 and T-�103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-�5409, paragraph 74).

85 As is apparent from the seventh recital in the preamble to Regulation No 40/94 (now recital 8 in the preamble to Regulation No 207/2009), an assessment of the likelihood of confusion depends on numerous factors and, in particular, on the public’s recognition of the trade mark on the market in question. Since the more distinctive the earlier mark, the greater will be the likelihood of confusion, marks with a highly distinctive character, either per se or because of the public’s recognition of them, enjoy broader protection than marks with a less distinctive character (see, by analogy, SABEL, paragraph 83 supra, paragraph 24; Canon, paragraph 84 supra, paragraph 18; and Case C-�342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-�3819, paragraph 20).

86 In the contested decision, the Board of Appeal found that the appellant had provided wide documentation demonstrating that the earlier word mark was used intensively in 19 countries, in particular in 17 countries of the European Union, for cars. The Board of Appeal further pointed out that the applicant had supplied several examples of the advertising it carried out for its trade mark. The Board of Appeal took the view that the documents demonstrated that the earlier word marks enjoy a distinctiveness which is more than average (see point 18 of the contested decision).

87 After stating that some of the goods covered by the marks at issue are identical, expressing its views on the visual and phonetic similarities of the marks at issue and finding that they are not of particular significance, the Board of Appeal found that the comparison of the signs at issue revealed significant visual and phonetic differences and that their similarity was limited to one coincident letter, the letter ‘a’. From this it inferred that the difference between the marks at issue sufficed to exclude a likelihood of confusion, even for identical goods and taking into consideration that the distinctiveness of the earlier word mark is higher than average. The Board of Appeal concluded that that finding was supported by the fact that the relevant public will be more attentive when buying high-priced goods like cars or products that influence driving safety, such as apparatus for vehicles, and will therefore pay an enhanced attention to the trade mark under comparison (see point 24 of the contested decision).

88 Finally, the Board of Appeal found that the assessment of the likelihood of confusion between the mark applied for and the earlier figurative mark was similar to the likelihood of confusion between the mark applied for and the earlier word mark, and that the likelihood of confusion could be ruled out even for identical goods and taking into consideration the enhanced distinctiveness of the earlier figurative trade mark (see point 25 of the contested decision).

89 In the light of the foregoing, the Court must reject the applicant’s claim that the Board of Appeal adopted an analytical approach resulting in splitting up the marks at issue artificially.

90 The assessment of the overall impression of the marks for the purpose of assessing the likelihood of confusion between them presupposes an analysis first of the various components of the marks. Contrary to the applicant’s submissions, for trade marks composed of several components, the overall impression of the marks arises from the importance attached by the relevant consumer to some components of the marks rather than others. Its assessment therefore necessarily requires an analysis of those various components.

91 Furthermore, the Board of Appeal was right to consider that the overall impression made by the marks revealed important visual (see paragraph 55 above) and phonetic (see paragraph 66 above) differences and that there was no conceptual comparison of the marks in the assessment of the likelihood of confusion (see paragraph 72 above).

92 Taking account of the fact that the goods at issue will normally be purchased after having been seen, of the high attentiveness of the consumers at issue, of the visual and phonetic differences of the marks at issue and of the fact that the marks at issue have no meaning, the Board of Appeal was entitled to take the view, without making an error, that there was no likelihood of confusion by the relevant public of the mark applied for and the earlier marks. The differences between the mark applied for and the earlier marks are sufficiently significant to ensure that the fact that the goods at issue are partially identical cannot create a likelihood of confusion.

93 That conclusion is not called into question by the fact that it may be considered that a part of the relevant public pronounces the mark applied for ‘ka’, which would give rise to significant phonetic similarity between the marks at issue. The visual differences between the marks at issue, the high attentiveness of the relevant public, and the fact that the goods at issue are purchased in the majority of cases after having been seen, serve to exclude a likelihood of confusion between the marks at issue. The fact that it has already been held that mere phonetic similarity between trade marks may create a likelihood of confusion does not affect this assessment. It is important to consider the particular circumstances of each individual case. In the present case, for the above reasons, the phonetic similarity is not enough to create a likelihood of confusion.

94 As regards the taking into account of the distinctiveness of the earlier marks, it must first be noted that, contrary to the submissions of the applicant, the Board of Appeal took that factor into consideration by stating in the contested decision that the earlier marks had an above-average distinctive character. Next, it must be stated that, even taking into account the fact that the earlier marks had very significant distinctive character which, in accordance with the case-law cited in paragraph 85 above, would result in a greater likelihood of confusion, it cannot be considered that the relevant public will confuse the marks at issue. The similarity between the marks at issue is sufficiently low and the level of attention of the relevant public is sufficiently high that the Board of Appeal could have considered, without committing any error, that the relevant public would not confuse them.

95 Furthermore, while it is important for the Board of Appeal to take account of the fact that the relevant consumer only rarely has the chance to make a direct comparison between the different signs but must rely on an imperfect recollection of them, as the applicant has submitted (see paragraph 81 above), in the present case, given the important visual differences between the marks at issue, the fact that the goods at issue are generally purchased after they have been seen and the high level of attention of the relevant consumer, it must be held that the relevant consumer will not confuse the marks at issue despite the lack of direct comparison between the different marks.

96 Finally, the applicant’s complaint alleging a failure to take into account similar goods covered by the mark must be declared ineffective. If the Board of Appeal rightly found that there was no likelihood of confusion between the marks at issue when taking account of identical goods covered by the marks, that conclusion applies all the more to goods covered by the marks at issue which are only similar.

97 In the light of the foregoing, the Court must reject the applicant’s complaints alleging errors in the global assessment of the likelihood of confusion between the marks at issue.

98 The action must therefore be dismissed in its entirety and it is not necessary to rule on the admissibility of the second head of claim in the application.

99 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

100 As the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by 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) >> Ford Motor v OHMI - Alkar Automotive (CA) (Intellectual property) [2011] EUECJ T-486/07 (22 March 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T48607.html Cite as: [2011] EUECJ T-486/7, [2011] EUECJ T-486/07

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