Compagnie des montres Longines, Francillon v OHMI - Staccata (QUARTODIMIGLIO QM) (Judgment) [2015] EUECJ T-76/13 (12 February 2015)

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(Community trade mark — Opposition proceedings — Application for the Community figurative mark QUARTODIMIGLIO QM — Earlier Community and international figurative marks representing two extended wings and earlier international figurative marks LONGINES — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — No damage to reputation — Article 8(5) of Regulation No 207/2009)

Compagnie des montres Longines, Francillon SA, established in Saint-Imier (Switzerland), represented by P. González-Bueno Catalán de Ocón, lawyer,

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

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 26 November 2012 (Case R 62/2012-5), relating to opposition proceedings between Compagnie des montres Longines, Francillon SA and Staccata Srl,

composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,

having regard to the application lodged at the Court Registry on 11 February 2013,

having regard to the response of OHIM lodged at the Court Registry on 13 May 2013,

1 On 20 July 2010, Staccata Srl, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the figurative sign represented, in black and white, as follows:

3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 14 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 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus’;

– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 176/2010 of 20 September 2010.

5 On 20 December 2010, the applicant, Compagnie des montres Longines, Francillon SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the international figurative mark No 401319, which is reproduced below, has effect in Germany, Austria, Benelux, Bulgaria, Spain, France, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovakia, Slovenia and the Czech Republic and covers, inter alia, goods in Classes 9 and 14 corresponding, for each of those classes, to the following description:

– Class 9: ‘Micromotors; micro spools, micro batteries; microcircuits; counters, timing installations; time display devices and panels; revolution counters; parking meters and tachometers; scientific time measuring instruments’;

– Class 14: ‘Watches, watch movements, cases, faces and bands, watchmaking materials; chronometers; chronographs; apparatus for timing sports events; pendulum clocks, pendulettes and alarm clocks; all chronometric instruments, jewellery watches, jewellery; timing installations, time display devices and panels’.

– the international figurative mark No 529334, which is reproduced below, has effect in Germany, Austria, Benelux, Bulgaria, Spain, France, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovakia, Slovenia and the Czech Republic and covers goods in Class 9 corresponding to the following description: ‘Scientific, nautical, surveying and electric apparatus and instruments included in this class, and photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic recording media, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data-processing equipment; fire extinguishers’.

– the Community figurative mark No 225714, which is reproduced below and covers goods in Classes 9 and 14 corresponding, for each of those classes, to the following description:

– Class 9: ‘Scientific, nautical, surveying and electric apparatus and instruments included in this class, and photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; spectacles and spectacle frames’;

– the international figurative mark No 610902, which is reproduced below, has effect in Germany, Austria, Benelux, Bulgaria, Spain, France, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovakia, Slovenia and the Czech Republic and covers, inter alia, goods in Classes 9 and 14 corresponding, for each of those classes, to the following description:

– Class 9: ‘Apparatus and instruments for light current engineering, namely for telecommunication, for the technique of high frequency control technology; apparatus for information processing (computers); scientific apparatus and instruments, nautical, surveying, electric irons, electric kettles, electric appliances, electric cleaning appliances for household use, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), emergency (rescue) and teaching; apparatus for recording, transmission or reproduction of sound or images; magnetic recording media, recording discs; vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and equipment for processing and computers, fire extinguishers’;

– Class 14: ‘Precious metals and their alloys and goods made thereof or coated therewith; jewellery, precious stones; horological and chronometric instruments’.

– the international figurative mark No 298063, which is reproduced below, has effect in Germany, Austria, Benelux, Bulgaria, Spain, France, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia and the Czech Republic and covers goods in Class 14 corresponding to the following description: ‘Watches and movements of clocks and watches of all kinds, cases, dials, straps, as well as all supplies and spare parts for clocks and watches, apparatus for measuring and recording time, counters and apparatus for sports-related timekeeping’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

8 By decision of 9 November 2011, the Opposition Division rejected the opposition both inasmuch as it was based on Article 8(1)(b) of Regulation No 207/2009 and inasmuch as it was based on Article 8(5) of that regulation.

9 On 3 January 2012, 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 Opposition Division.

10 By decision of 26 November 2012 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal, confirming the Opposition Division’s decision in its entirety.

13 The applicant puts forward two pleas in law in support of the action. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges infringement of Article 8(5) of that regulation.

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

14 The applicant claims, in essence, that there is a likelihood of confusion or association between the marks at issue. In its view, the mark applied for should be rejected in accordance with the provisions in Article 8(1)(b) of Regulation No 207/2009.

16 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 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.

17 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).

18 For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should, however, be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on an imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment in GIORGIO BEVERLY HILLS, cited in paragraph 17 above, EU:T:2003:199, paragraph 33 and the case-law cited).

19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

20 In addition, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether a likelihood of confusion exists (see judgment of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraphs 32 and 33 and the case-law cited; judgment of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, paragraph 67).

21 Lastly, it must be borne in mind that for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

22 It is in the light of the principles set out in paragraphs 16 to 21 above that the applicant’s first plea in law in the present case must be examined.

23 According to settled case-law, in assessing the similarity between the goods at issue, all the relevant factors relating to those goods 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).

24 In the contested decision, the Board of Appeal found that the Opposition Division’s assessment that the goods to which the opposition related and those on which that opposition was based were identical had not been disputed. For the sake of completeness, the Board of Appeal stated that the identity was only partial as regards international registration No 298063, given that that registration covered only goods in Class 14 and not goods in Class 9. Furthermore, it is apparent from the contested decision that the Board of Appeal referred to the fact that international registration No 529334, which relates to the same sign as international registration No 401319 and Community trade mark No 225714, covered only goods in Class 9.

25 The applicant submits, before the Court, that none of the parties disputes the abovementioned conclusion. OHIM did not express an opinion in that regard in its written statements, but confirmed that the goods were identical at the hearing.

26 Accordingly, in the absence of claims to the contrary and having regard to the descriptions of the goods at issue, it must be held that the Board of Appeal was right to find that those goods were identical, although it pointed out that that identity was only partial as regards earlier registrations Nos 298063 and 529334.

27 It must be borne in mind that, according to the case-law, the relevant public consists of consumers who are likely to use both the goods protected by the earlier mark and the goods covered by the mark applied for (see judgment of 30 September 2010 in PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, EU:T:2010:419, paragraph 28 and the case-law cited). Furthermore, it should also be borne in mind that it follows from the case-law that an examination of the grounds for refusal must be carried out in relation to each of the goods in respect of which the registration of the trade mark is sought (see, to that effect, judgment of 15 February 2007 in BVBA Management, Training en Consultancy, C‑239/05, ECR, EU:C:2007:99, paragraph 34).

28 In the present case, the Board of Appeal found, in essence, as far as the relevant public was concerned, that it was undisputed that the relevant goods in Classes 9 and 14 might all be aimed at the general public. According to the Board of Appeal, the average consumer of those goods was deemed to be reasonably well informed, observant and circumspect. The Board of Appeal also took the view that, in so far as ‘the purchase’ of the goods in question did not ‘usually take place on a frequent basis’, they were often purchased through a salesperson and all the goods in Class 14 and most of the goods in Class 9 had a relatively high price, the level of attention of the target public when purchasing most of the relevant goods had to be considered to be ‘higher than usual, and therefore fairly high’.

29 Furthermore, as regards the relevant territory, the Board of Appeal found that since the earlier rights were registered in the European Union and, as regards the earlier international registrations, in various Member States, reference had to be made to the perception of that public in the European Union and in the countries of the European Union designated by the international registrations.

30 According to the applicant, contrary to the assertion of the Board of Appeal, the relevant public’s level of attention is not high as the goods in question are not luxury goods, but goods which span the whole price range. It takes the view that even if the goods in question were considered to be luxury goods, that does not appear in the specification of the goods and, consequently, nothing would prevent the parties from launching a new range of those goods at low cost. It submits that the relevant public is therefore the general public with an average level of attention.

31 OHIM claims that the consumer will generally, when purchasing expensive goods, exercise a higher degree of care and will purchase goods only after careful consideration. He will often seek professional assistance or advice when choosing or purchasing certain types of goods and services. In OHIM’s view, his attention may be enhanced in the case of luxury goods and where the product is regarded as reflecting the social status of its owner. Furthermore, according to OHIM, purchases of expensive goods will normally be infrequent.

32 The Court finds, having regard to the broad descriptions of the categories of goods in Classes 9 and 14, which are referred to in the trade mark application and are identical to the goods on which the opposition is based (see paragraphs 23 to 26 above), that those categories mostly include goods which may be purchased by anyone, that is to say even by consumers who are members of the general public. Accordingly, even as regards a number of categories of goods which are aimed, more specifically, at certain professionals or at a scientific public, it cannot, in principle, be ruled out that those categories include goods purchased by the general public. However, that general consideration cannot be applied to categories of goods such as ‘… surveying, … signalling, checking (supervision), … apparatus and instruments’, ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ or ‘automatic vending machines and mechanisms for coin-operated apparatus; cash registers’ in, inter alia, Class 9. The goods in those categories are generally, if not exclusively, purchased by a public which consists of professionals or by scientists.

33 So far as concerns the relevant public’s level of attention, first, as regards the goods purchased by those professionals and scientists, it must be held to be high, on account of the technical nature and the cost of those goods.

34 Secondly, as regards the other goods, which are purchased by consumers who are members of the general public, it has already been held that, if they are goods which are not purchased regularly and are generally bought through a salesperson, the average consumer’s level of attention must be taken to be higher than usual, and therefore fairly high (see, to that effect, judgment of 12 January 2006 in Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, ECR, EU:T:2006:10, paragraph 63). The fact remains that that is not true of all the relevant goods in the present case, since certain horological goods, chronometric instruments, items of costume jewellery or calculating machines may be purchased without consumers even paying particular attention to them, in particular when they are ‘inexpensive’ goods.

35 Consequently, the Board of Appeal could not reasonably restrict the relevant public solely to the general public which generally has a level of attention that is ‘higher than usual, and therefore fairly high’.

36 For the purposes of Article 8(1)(b) of Regulation No 207/2009, 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 (see, to that effect, judgment of 25 November 2003 in Oriental Kitchen v OHIM — Mou Dybfrost (KIAP MOU), T‑286/02, ECR, EU:T:2003:311, paragraph 38 and the case-law cited).

37 The global assessment of the likelihood of confusion must, as far as the visual, phonetic or conceptual similarity of the marks in question is concerned, be based on the overall impression given by the marks, 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 the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35).

38 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. 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. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (see judgment of 12 November 2008 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 40 and the case-law cited.

39 In the present case, first of all, the Board of Appeal stated, in essence, that the existence of a similarity between the mark applied for and the earlier mark or marks was a precondition for the application of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. It also stated that those provisions differ, however, in terms of the degree of similarity required.

40 According to the Board of Appeal, it is also clear from the case-law that the reputation and distinctive character of the earlier mark or marks constitute relevant factors for the purposes of assessing, not whether the marks at issue are similar, but whether there is a likelihood of confusion, as regards Article 8(1)(b) of Regulation No 207/2009, or a link between those marks when Article 8(5) of that regulation is applied.

41 Next, in assessing the overall similarity of the marks in question, the Board of Appeal stated that some of the earlier marks were purely figurative, namely those consisting solely of the representation of a ‘winged hourglass’, whereas others were composite, comprising both word and figurative elements. It observed that it was unlikely that the public would easily recognise and ascribe an origin to the figurative elements of those composite marks. The Board of Appeal stated that consumers of the goods in question usually describe and recognise those goods by reference to the word element which identifies them. Thus, according to the Board of Appeal, the figurative element of those composite signs plays no independent distinctive role in the marks and would not, therefore, be considered in isolation.

42 The Board of Appeal stated that it is undisputed that the marks have no phonetic similarity whatsoever.

43 As regards the visual comparison, the Board of Appeal stated that the only common feature between the marks in dispute was the ‘wings’ device. However, according to the Board of Appeal, the wings are represented in a manner that is ‘quite different’ in the earlier marks as compared with the mark applied for. Consequently, the Board of Appeal, which also took account of the other elements of the marks analysed, in particular the word element ‘quartodimiglio’ and the letters ‘q’ and ‘m’ in the mark applied for and the word ‘longines’ in some of the earlier marks, as well as the stylised hourglass, found that the marks in dispute displayed, if any, only a very low degree of visual similarity.

44 Lastly, from the conceptual standpoint, the Board of Appeal stated that, first, the marks will be clearly distinguished by the Italian public, given that the expression ‘quartodimiglio’ in the mark applied for means ‘quarter of a mile’ in Italian.

45 Secondly, for the remaining public, neither that expression nor the word ‘longines’ will have any meaning. The marks have, according to the Board of Appeal, an analogous semantic content to the extent that they both include the depiction of a set of wings. However, there is only a low degree of conceptual similarity between the signs as the earlier marks refer, according to the Board of Appeal, to the wings of a soaring bird and the mark applied for refers to the wings of a different type of bird or creature. Furthermore, the Board of Appeal stated that, as it had already observed, the distinctiveness of the ‘wings’ device is clearly subordinate to that of the word element ‘quartodimiglio’ in the mark applied for and to the word element ‘longines’ in the earlier composite marks. Lastly, the Board noted that, for those consumers who will perceive the rectangular element of the earlier marks as the representation of an hourglass, the latter would introduce an element of conceptual differentiation between the marks at issue.

46 The applicant submits, in that regard, in particular, that the marks at issue are extremely similar from a visual standpoint, given that they all include a representation of wings, and that they are also similar conceptually. It also maintains that the goods at issue are small in size, with the result that the consumer will not, at first sight, perceive the term ‘quartodimiglio’ on the goods covered by the mark applied for, on account of the size of the graphic element, consisting of wings with a central element. Furthermore, when the goods are marketed under the trade mark applied for, the term ‘quartodimiglio’ is, according to the applicant, sometimes completely omitted. In that regard, it is, in the applicant’s view, appropriate to follow a decision delivered by the Swiss Tribunal Administratif Fédéral (Federal Administrative Court) in a case which is ‘very similar to the one at hand’.

48 The Court takes the view that the various claims of the applicant relating to the alleged strong similarities between the marks at issue, in particular from a visual standpoint and, to a lesser extent, from a conceptual standpoint, are not convincing.

49 First, contrary to what the applicant submits, it cannot, in the present case, be held that the graphic element, consisting of extended wings, is dominant either in the mark applied for or in the earlier composite marks. In the former case, it is necessary to point out the particularly significant impact of the letters ‘q’ and ‘m’, which are situated in the middle of the mark applied for, and the fact that the word ‘quartodimiglio’ is situated at the top of that mark and has the same breadth as the mark. In the latter case, in both of the earlier composite marks, the word ‘longines’ is also situated at the top of the marks and is written in sufficiently broad and easily legible characters to be capable of being easily remembered by the relevant consumers. Although it is true that in the earlier international mark No 298063, the element consisting of a ‘winged hourglass’ covers a larger part of that mark than the word ‘longines’, it must, however, be stated, first, that that word is still easily legible and memorisable and, secondly, that the enlarged graphic element enables consumers to perceive clearly the representation of an hourglass, which also facilitates the differentiation of that mark from the mark applied for.

50 Furthermore, it must be pointed out that the graphic element consisting of a stylised fir tree, which was the subject-matter of the Court’s analyses in the judgment referred to by the applicant in the application (judgment of 7 September 2006 in L & D v OHIM — Sämann (Aire Limpio), T‑168/04, ECR, EU:T:2006:245, confirmed by judgment of 17 July 2008 in L & D v OHIM, C‑488/06 P, ECR, EU:C:2008:420), was manifestly more important in the overall impression which the public had of the marks compared by the Court, on account of the amount of space which it occupied in those marks and of its artistic particularities, than the extended wings which feature, in the present case, in the earlier composites marks or in the mark applied for. Consequently, the reference to that judgment cannot be decisive.

51 Secondly, the Court takes the view that the Board of Appeal was right to carry out a meticulous comparison of the representations of the wings in the mark applied for and in the earlier marks and to find that there was a significant difference in the forms of stylisation of those wings. The relevant consumer will certainly have the impression, when seeing the mark applied for, that the wings represented around the letters ‘q’ and ‘m’ are rather short and thick. As for those letters, they are particularly easily visible in the mark applied for on account of their position in the centre and their size. By contrast, the stylisation of the wings in the earlier marks, in which those wings are thinner and longer, conveys the impression of a soaring bird, which is represented in such a way that consumers, to the extent that they do not perceive the hourglass as such on account of its small size, may feel that they are in front of or above that bird. If, on the contrary, they recognise the hourglass represented in the middle of the graphic device in question, that, as stated above, only reinforces the visual difference in relation to the mark applied for.

52 Thirdly, added to those differences is the presence of the word ‘quartodimiglio’ in the mark applied for, a word which, as the Board of Appeal rightly stated, is also perceived by consumers and distinguishes that mark even more both from the purely figurative earlier marks, which do not contain any word elements, and from the composite earlier marks, in which it is a different word, namely ‘longines’, which will be remembered by consumers.

53 In that regard, it must also be borne in mind that, according to settled case-law, where a mark is composed of word elements and figurative elements, the former must, as a rule, be considered to be more distinctive than the latter, as the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see, to that effect, judgment of 14 July 2005 in Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, ECR, EU:T:2005:289, paragraph 37, and judgment of 2 February 2011 in Oyster Cosmetics v OHIM — Kadabell (Oyster cosmetics), T‑437/09, EU:T:2011:23, paragraph 36 and the case-law cited).

54 Accordingly, it must be held that there is a very low degree of visual similarity between the marks at issue. In addition, it cannot be held that there is a high degree of conceptual similarity between those marks due to the fact that all the marks at issue contain representations of wings. As the Board of Appeal found, in particular in paragraph 26 of the contested decision, even though there is a certain semantic analogy between the mark applied for and the earlier marks, it is only low in degree, since the stylisations of the wings refer to different types of birds. Moreover, the conceptual differences between the marks at issue are marked for the consumers who perceive and pay attention to the hourglass in the earlier marks and for Italian-speaking consumers, for whom the word ‘quartodimiglio’ in the mark applied for will have a meaning.

55 In the light of the foregoing, the Board of Appeal was right in stating that the degree of visual similarity was, at most, very low and that the degree of conceptual similarity was low. Furthermore, it is not disputed that there are no phonetic similarities between the marks at issue.

56 Those findings are not invalidated, first, by the applicant’s reference to a decision delivered by the Swiss Federal Administrative Court in a case which it deems to be very similar to the present case. First of all, it must be borne in mind that it is apparent from the case-law that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system and the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 207/2009, as it is interpreted by the Courts of the European Union (see, to that effect, judgment of 3 December 2003 in Audi v OHIM (TDI), T‑16/02, ECR, EU:T:2003:327, paragraph 40, and judgment of 16 September 2009 in Gres La Sagra v OHIM — Ceramicalcora (VENATTO), T‑130/08, EU:T:2009:338, paragraph 52 and the case-law cited). It has also been held that OHIM is not required to base its assessment of the relevant public’s perception of a mark on a national decision (see, to that effect, judgment of 23 October 2008 in Adobe v OHIM (FLEX), T‑158/06, EU:T:2008:460, paragraph 50 et seq. and the case-law cited). Consequently, the applicant’s arguments relating to the existence of the abovementioned decision of the Swiss Federal Administrative Court are irrelevant, since they cannot invalidate the Board of Appeal’s assessment relating to the degree of similarity between the marks at issue in the present case and, therefore, its finding that there is no likelihood of confusion between them.

57 Moreover and in any event, it must be stated that the mark in respect of which registration was sought in the case analysed by that Swiss court differed diametrically from the mark applied for in the present case. In particular, it must be pointed out that, in the case referred to by the applicant, a representation of ‘extended wings’ was situated in the upper part of the mark applied for, above its word element, namely ‘aviator’, that is to say in a particularly visible part of that mark. In addition those wings had a graphic design which was much closer, in its stylisation, to the wings contained in the earlier mark at issue in the case referred to. Consequently, the Court cannot draw any analogy between the abovementioned Swiss decision and the present case, in which the graphic designs have more marked differences. A similar conclusion applies, mutatis mutandis, to the general references the applicant made at the hearing to certain judgments of Spanish courts and to decisions of the Oficina Española de Patentes y Marcas (Spanish Patents and Trade Marks Office). First, the case-law referred to in paragraph 56 above remains applicable in that regard. Secondly, in the absence of more specific information on the applicant’s part regarding those judgments and decisions, the Court is not, in any event, in a position to draw any inferences from them in relation to the present case.

58 Secondly, as regards the applicant’s submission that the mark applied for was sometimes allegedly used by the trade mark applicant, Staccata, even without the word ‘quartodimiglio’, it is sufficient to state that any use, prior to the submission of the trade mark application at issue in the present case, of a sign which is more or less analogous to the mark applied for is irrelevant to the outcome of the present case, inasmuch as the present case relates solely to the sign as it appears on the application form. In other words, no legal inference may be drawn from the earlier use of a mark as described by the applicant, even if that use were held to be proved. If the applicant’s argument is to be understood as referring to possible future use of the mark applied for without the word ‘quartodimiglio’, it is sufficient to state that any intentions on the part of the trade mark applicant to that effect are not relevant in the present case, as the applicant may always use, if necessary, other legal remedies for the purpose of protecting its earlier marks, inter alia an action for infringement.

59 Thirdly, as regards the applicant’s claim relating to the fact that the goods at issue are small in size, with the result that the consumer will not, at first sight, perceive the term ‘quartodimiglio’ on the goods covered by the mark applied for, first, it must be pointed out that that argument clearly relates only to some of the categories of the goods at issue, such as the category ‘horological and chronometric instruments’ in Class 14. It must be stated that even in a situation where the consumer does not perceive that Italian word on goods to which only a relatively small-sized version of the mark applied for is affixed, the other differences between the marks, which are referred to in paragraphs 49 to 53 above, remain relevant. In particular, the consumer will still notice the differences as regards the way in which the extended wings are represented as well as, in the mark applied for, the central element consisting of the easily visible letters ‘q’ and ‘m’ and, in the earlier composite marks, the word ‘longines’. Those elements thus constitute, even in the abovementioned situation, elements of strong differentiation.

60 The Court observes, as a preliminary point, that, in the contested decision, the Board of Appeal analysed whether the applicant’s earlier marks had a reputation or enhanced distinctiveness on account of their use, inter alia for goods falling within the category of ‘horological and chronometric instruments’ in Class 14, before it assessed whether there was a likelihood of confusion or association in accordance with Article 8(1)(b) of Regulation No 207/2009. Such an approach is consistent with the principle which emerges from the case-law referred to in paragraph 20 above, in accordance with which the more distinctive the earlier marks, either per se or because of their recognition on the market, the greater will be the likelihood of confusion.

61 First, the Court finds that the applicant has not put forward any evidence or argument capable of substantiating the conclusion that the earlier marks have a high degree of inherent distinctiveness. In those circumstances, it is necessary to take into account a normal degree of inherent distinctiveness, inasmuch as it is not, moreover, apparent from the analysis of those marks that there are specific reasons for taking the view that the degree of inherent distinctiveness is low, for example as a result of the presence of elements which are descriptive of the goods at issue.

62 Secondly, even though the Board of Appeal certainly found that the earlier composite mark containing the word ‘longines’, in addition to the graphic element, and corresponding to international registration No 610902, was highly distinctive because of the recognition of that mark on the market, the Board of Appeal, by contrast, also rightly found, in view of the evidence provided by the applicant, that the earlier marks that consisted solely of the representation of a ‘winged hourglass’ did not have such a high degree of distinctiveness, as will be explained in paragraph 86 et seq. below. The applicant cannot therefore invoke the enhanced distinctiveness of its earlier marks which do not include the word ‘longines’. Furthermore, it was only on account of the presence of that word in international registration No 298063 that the Opposition Division, the assessment of which was reproduced by the Board of Appeal (see paragraphs 6, 37 and 40 of the contested decision), found that the reputation could also be applicable to that registration, on the basis of the evidence relating to the use of the composite mark corresponding to international registration No 610902. As regards the graphic device in the mark corresponding to international registration No 298063, the Opposition Division furthermore noted that it had been used in the past, in particular from 1942 until 1965, although, more recently, in the nineteen-eighties, the graphic device in the mark corresponding to international registration No 610902 had appeared. Accordingly, the Opposition Division found that the word element ‘longines’ was visually dominant in the composite mark as used.

63 As is apparent from paragraph 45 et seq. of the contested decision, the Board of Appeal, in assessing the existence of a likelihood of confusion, first of all took into account the fact that it had not been disputed that the goods at issue were identical or, as regards earlier international registration No 298063, partially identical, inasmuch as that registration covered only goods in Class 14.

64 Next, according to the Board of Appeal, it was necessary to take into account the fact there was only a slight visual and conceptual similarity (if any) between the marks in dispute owing to the fact that they included the depiction of a set of wings. The Board of Appeal added that that common feature was outweighed by the differences, in particular at the visual and phonetic levels, which the marks at issue displayed. In that regard, it referred in particular to the word element ‘quartodimiglio’ and the letters ‘q’ and ‘m’ in the mark applied for and the word element ‘longines’ in the earlier composite trade marks. The Board of Appeal thus stated, in relation to the earlier marks consisting only of a depiction of a pair of wings, that the presence of word elements in the mark applied for reduced the impact of the already low degree of visual and conceptual similarity (if any) between them. According to the Board of Appeal, that applied, a fortiori, to the earlier composite marks, by reason of the differences in the word elements.

65 In view of the foregoing, the Board of Appeal considered that there was no likelihood of confusion between the marks at issue. In its view, when contemplating the signs at issue, the relevant public, whose level of attention during the purchase of most of the goods concerned would, furthermore, be fairly high, would not conclude, despite the identity of those goods, that the mere depiction of wings indicates that the goods covered by those signs come from the same undertaking or from economically-linked undertakings.

66 For the sake of clarity, the Board of Appeal pointed out that the same conclusion applied to international registrations Nos 401319 and 529334, which cover the same figurative mark as earlier Community trade mark No 225714, which, moreover, has a broader territorial extension.

67 According to the Board of Appeal, the foregoing conclusion is not called into question by the enhanced distinctiveness, for the purposes of reputation, of the earlier composite marks for certain goods, namely ‘horological and chronometric instruments’. In the Board of Appeal’s view, those earlier composite marks are the most far apart from the contested figurative sign, the differences between them being so evident that the aforementioned enhanced distinctiveness is not likely to influence the perception of the relevant consumers to the point of leading them to confuse the commercial origin of the goods at issue.

68 The applicant claims, in essence, that the ‘obvious’ similarity of the marks at issue goes hand in hand with the fact that the goods covered by those marks are identical and belong to the same classes of the International Classification and to the same area of trade. According to the applicant, that will give rise to a likelihood of confusion among consumers, who will confuse or associate the goods covered by the marks and will come to the inevitable conclusion that those goods come from the same undertaking or, at the very least, that they come from undertakings that are in some way linked. It also states that consumers rarely have the chance to compare various marks at the same time and that they have to rely on their mental image thereof, which is generally imperfect. In the applicant’s submission, consumers will focus their attention only on the parts that are ‘genuinely relevant’ and easiest to recall. It takes the view that, in the present case, consumers, above all non-Italian-speaking consumers for whom the word element of the mark applied for is fanciful, will not memorise that word element, but will focus on the wing device, ‘which is easy to recognise and recall’.

70 The Court holds that the applicant’s claims relating to the likelihood of confusion or association between the marks at issue must be rejected.

71 In the first place, as regards the comparison of the mark applied for with the earlier composite marks, it must be stated that the visual differences are particularly marked and outweigh the few visual similarities, which are low in degree (see paragraphs 49 to 59 above). In particular, first, it must be pointed out that, unlike the thin and long stylised extended wings represented in the earlier composite marks, the wings in the graphic device in the mark applied for are short and thick and constitute a kind of addition to the letters in the centre, the ‘q’ and the ‘m’, which are easily memorised by the relevant public on account of their size and the font used. Secondly, in the earlier marks analysed, that same public will also notice the presence of the word ‘longines’, which does not in any way refer to the mark applied for.

72 In the absence of any phonetic similarity between those marks, which are, on the contrary, phonetically dissimilar, and inasmuch as the degree of conceptual similarity between them is only low (see paragraph 54 above), neither the identity of the goods at issue nor the reputation which was found to exist on the basis of the use of the composite mark corresponding to international registration No 610902 can lead to the conclusion that there is a likelihood of confusion or association on the part of the relevant public, whether what is involved is the part of that public which displays a higher level of attention at the time of purchase or the part of that public whose level of attention is only average (see paragraphs 33 to 35 above).

73 In the second place, as regards the earlier marks which consist solely of the stylised representation of a ‘winged hourglass’, it must also be stated, for the reasons given in paragraphs 74 and 75 below, that the visual differences between them and the mark applied for outweigh any visual similarities. Consequently, given, first, the phonetic differences due, as the case may be, to the pronunciation of the word ‘quartodimiglio’ or of the letters ‘q’ and ‘m’ in the mark applied for, even though the aforementioned earlier marks will either not be pronounced by consumers or will be pronounced solely by a description of the image of which they consist, and given, secondly, a degree of conceptual similarity which is only low, those marks are also not, on the whole, sufficiently similar for it to be held that there is a likelihood of confusion or association on the part of the relevant consumer.

74 As well as the difference in the graphic design of the wings represented in the marks compared, the relevant consumer may, as the case may be, also notice, first, the representation of an hourglass and, secondly, the letters ‘q’ and ‘m’ as additional elements of differentiation.

75 To that may be added, on the part of at least some consumers, the fact that they will notice the presence of the word ‘quartodimiglio’ which, even if they do not take note of its meaning or remember it precisely, will nevertheless be retained by them as a word element, and which has no equivalent in the purely graphic earlier marks representing a ‘winged hourglass’.

76 Accordingly, it must be held, in the light of an overall assessment of the visual and phonetic differences between the marks under comparison, that the Board of Appeal was right to rule out, irrespective of a certain conceptual similarity, any likelihood of confusion or association, even where the goods are identical.

77 Having regard to all of the foregoing, the applicant’s first plea must be rejected.

The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

78 The applicant submits, in essence, that the Board of Appeal erred in finding that it had not been proved that the earlier figurative marks representing a ‘winged hourglass’ on its own were well known to a significant part of the relevant public. According to the applicant, the Board of Appeal should have applied Article 8(5) of Regulation No 207/2009, given that the necessary requirements for its application were met.

80 The Court points out that, in the contested decision, first, the Board of Appeal listed the evidence filed within the prescribed period in support of the opposition, and the evidence filed after the expiry of that period, but still before the Opposition Division and, lastly, the evidence submitted for the first time before the Board of Appeal. Next, having regard to the particular features of the case, the Board of Appeal found that all of that evidence was admissible.

81 In the context of the overall assessment of the evidence of reputation, the Board of Appeal found, in essence, that it was evident from an analysis of all the evidence submitted by the applicant that it had succeeded in proving the reputation of the earlier composite marks, that is to say, those which consisted of the word ‘longines’ and the graphic element depicting a stylised ‘winged hourglass’, for goods in the category ‘horological and chronometric instruments’.

82 By contrast, the Board of Appeal stated that the applicant had not succeeded in proving the existence of a reputation for the ‘winged hourglass’ device on its own, that is to say, independently of the word ‘longines’. In that regard the Board of Appeal found, in particular, that the documents produced by the applicant showed clearly that its goods did not bear, or only very rarely bore, the mark consisting of the figurative element on its own. In so far as reputation could not be determined ‘abstractly’, the Board of Appeal took the view that the applicant had not proved that the relevant public would effortlessly associate the element consisting of a ‘winged hourglass’ with the horological and chronometric instruments at issue. Moreover, the Board of Appeal stated that in the composite mark, as used, the word ‘longines’ was the visually dominant element.

83 The Board of Appeal also stated that ‘the finding’ might ‘have been different if, for instance, the device had consistently been represented in a different manner, as a combination of a large figure and a small verbal element, or if the [applicant] had provided any proof that consumers were indeed accustomed to focusing on the “winged hourglass” device rather than on the “Longines” component’. According to the Board of Appeal, the latter considerations had, however, to be set aside in view of the facts of the case.

84 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (see, by analogy, judgment of 27 September 2012 in El Corte Inglés v OHIM — Pucci International (Emidio Tucci), T‑373/09, EU:T:2012:500, paragraph 55).

85 According to the case-law, the purpose of Article 8(5) of Regulation No 207/2009 is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it. The objective of that provision is, notably, to enable the proprietor of an earlier national mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark, or to take unfair advantage of that repute or distinctive character (see, to that effect, judgment in Emidio Tucci, cited in paragraph 84 above, EU:T:2012:500, paragraph 56 and the case-law cited).

86 It is necessary to assess the applicant’s claim that all of its earlier marks, that is to say, including those which consist solely of a representation of stylised wings with a design in the middle and do not contain the word element ‘longines’, have been proved to have a reputation.

87 In that regard, it must be pointed out that, according to the case-law, in order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see, to that effect, judgment in Emidio Tucci, cited in paragraph 84 above, EU:T:2012:500, paragraph 58 and the case-law cited).

88 In the present case, it is apparent from the examination of the numerous documents provided by the applicant before OHIM that a composite mark, including the word ‘longines’ and corresponding, in essence, to earlier international registration No 610902, has a significant presence at the very least on some of the markets at issue which are referred to in paragraph 29 above. Those items of evidence contain sufficient proof of a significant intensity and a broad geographical extent of use of that composite mark (see also paragraph 91 et seq. below). As mentioned above, the Board of Appeal expressly emphasised that fact by confirming the Opposition Division’s finding that a reputation had been proved in respect of that mark. In that regard, the Opposition Division, the analysis of which was endorsed by the Board of Appeal in paragraph 37 of the contested decision, stated that the composite marks including the word element ‘longines’ or the word ‘longines’ on its own were traditionally used on the relevant markets, in particular to designate watches. Furthermore, the Opposition Division stated that those marks had been shown to have a significant presence, at the very least, in France, Germany, Italy and Spain.

89 However, as pointed out in paragraphs 82 and 83 above, the Board of Appeal took the view that the goods at issue were not generally marketed using the purely figurative earlier marks.

90 The applicant claims, in essence, that all of its earlier marks enjoy a worldwide reputation in connection with goods in Class 14, as is proved by all of the documents submitted to OHIM. First, it submits that it furnished ample proof of the use of the mark consisting solely of the representation of a ‘winged hourglass’, for example, on the buckles of leather watch straps and the winding buttons of watches. Secondly, all the evidence that was sufficient for OHIM to take the view that the composite figurative mark was a mark with a reputation should, according to the applicant, also serve as proof of the reputation of the figurative mark which does not include the word ‘longines’. The applicant claims that that figurative mark is ‘extremely well known’ not only to watch professionals, but also to the general public, since the affixing of that trade mark enables them to verify whether a product is original.

91 First of all, the Court holds, in view of the items of evidence submitted, that, as the Board of Appeal rightly stated, the applicant did not provide specific evidence which makes it possible to establish that consumers were accustomed to focusing, in particular, on the ‘winged hourglass’ element in the earlier composite marks as used. By way of example, it must be pointed out that that evidence does not contain any opinion polls of the relevant public relating, inter alia, to its perception of the composite marks used or the question of which elements were memorised or, at the very least, recognised by that public, when faced with various marks in the course of its shopping, as referring to the applicant’s goods. In particular, the applicant has not, in addition, submitted opinion polls in which target persons who were shown only the figurative sign representing a ‘winged hourglass’ had to state whether they knew that sign and, if so, what they associated it with.

92 Next, contrary to the applicant’s claims, the Court holds that the evidence which the applicant put forward before OHIM regarding the use of the earlier marks consisting of a ‘winged hourglass’ is not sufficient for it to be held that they have been proved to have a reputation or enhanced distinctiveness. First, it is apparent from that evidence that when the earlier marks consist solely of the representation of a ‘winged hourglass’ they do not occupy a visually important position on the goods at issue in Class 14.

93 Secondly, it is not, in addition, apparent from the evidence which the applicant submitted before OHIM that the earlier marks consisting solely of a representation of a ‘winged hourglass’ were displayed in promotional material, on invoices or in magazines in a way which is sufficiently significant, whether assessed from a quantitative or qualitative point of view, and consistent over a period of time for it to be capable of having an effect on the assessment of their reputation. As the Board of Appeal rightly found, it is apparent from the evidence that, apart from certain exceptions, it is the earlier composite marks that are regularly used.

94 Accordingly, the question still arises of whether the relevant public, which has on numerous occasions been faced with advertisements, documents or even goods in which or on which a composite mark consisting of the representation of a ‘winged hourglass’ and the word ‘longines’ appears, has also noticed and memorised the graphic element on its own in a sufficiently consistent way for it to be possible to deduce from that that the earlier marks that consist of that element, to the exclusion of any others, also have a reputation in accordance with the criteria set out in paragraph 87 above.

95 First, in that regard, the Court must take into account the fact that the evidence submitted by the applicant shows, inter alia, that the abovementioned advertisements appeared in all kinds of magazines or newspapers, which are written in various languages and marketed, inter alia, in the Member States of the European Union which are relevant in the present case. Furthermore, the Board of Appeal stated, in that regard, in the sixth indent of paragraph 28 of the contested decision, that 31 of those cuttings come from magazines and newspapers from Member States of the European Union.

96 Secondly, it is necessary to take into account the fact that the great majority of the magazines are not aimed at a public which consists solely of professionals, but that the target consumers are members of the general public, whether they are consumers who are interested in fashion, in news about people or those who are seeking information about their hobbies, including various sports. Some advertisements were published in magazines for collectors and others were published in general-interest magazines. The Court also notes that, on a number of occasions, those advertisements took up a whole page or half a page in those magazines or newspapers.

97 Thirdly, it is apparent from the evidence which the applicant submitted to OHIM that the advertisements for the composite marks at issue, or the goods covered by those marks, were often presented in a context or in connection with celebrities from the world of culture or sport. To that effect, it is apparent from various documents provided by the applicant that its advertisements benefit from cooperation with personalities who are known throughout the world, including actors, poets, tennis players, sportspersons from the field of equestrian sports, skiers, cyclists, archers, gymnasts and even certain models. The goods at issue have thus been worn, for advertising purposes, by sportspersons or actors with a reputation throughout the world such as André Agassi, Audrey Hepburn and Humphrey Bogart.

98 Fourthly, the Court also takes into consideration the fact, which is apparent from the evidence, that, on numerous occasions, advertisements for the composite mark at issue, which consists of the graphic element of a ‘winged hourglass’ and the word ‘longines’, were displayed in the course of various sports competitions, some of which at least were broadcast on television.

99 Fifthly, it is also apparent from the tables and other items of evidence which the applicant submitted to OHIM that, for many years, and in particular from 2002 to 2010, it spent large sums on advertising in various countries such as France, Spain or Italy, which are relevant in the present case. The applicant also provided examples of invoices relating to the sale of the goods in question, in particular watches. Those invoices always bear the composite mark corresponding to international registration No 610902 and show that the applicant has a significant presence on the European market, in particular in France, Germany, Italy and Spain. Lastly, the applicant also submitted certain market surveys concerning the penetration of the market by the composite mark in some of the Member States of the European Union, including France, Germany, Italy and the United Kingdom.

100 Accordingly, consistent items of evidence show the long-term use of a composite mark corresponding, in essence, to earlier international registration No 610902, not only in Switzerland, but also in certain Member States of the European Union which are relevant in the present case.

101 The Court holds that the abovementioned considerations, taken as a whole, do not invalidate the findings of the Board of Appeal referred to in paragraphs 82 and 83 above.

102 In the absence of specific evidence showing that consumers were accustomed to focusing, in particular, on the ‘winged hourglass’ element in the composite mark as used, it is necessary to assess, by carrying out a global analysis of that mark and its various components, what perception the relevant public has of it. In that regard, it must be stated that the evidence submitted by the applicant relates, in essence, to the use of a composite mark corresponding to international registration No 610902, or even of a composite mark which departed from that mark only in some minimal details (see also paragraph 88 above). In particular, the abovementioned evidence does not make it possible to conclude directly, on account of its use as such, that the composite mark corresponding to earlier international registration No 298063 has a reputation (see also paragraph 62 above).

103 Accordingly, it must be held, as was found by the Board of Appeal, that it is apparent from the evidence which the applicant submitted to OHIM relating to the use of the composite mark that it was clearly its word element, which consists of the word ‘longines’, which was dominant in the overall impression created by that sign, in particular from a visual point of view.

104 First, that is so on account of the location of that word within the composite mark used, namely, in the upper half of that mark, and on account of the fact that it is both longer and broader than the graphic element, which consists of a ‘winged hourglass’ and is considerably smaller in size.

105 Next, the word ‘longines’ is easily legible as it is written in capital letters and in a font the graphic form of which does not deviate particularly from those of generally used fonts. The only graphic element which is somewhat specific to the word ‘longines’ is a certain extension, through the addition of a small stroke, to the ends of the capital letters of which it consists.

106 It must also be stated that the graphic element consisting, according to the applicant, of a ‘winged hourglass’, although it cannot be held to be negligible in the composite mark as used, nevertheless remains clearly ancillary and in the background in the overall impression which consumers perceiving that mark will have, not only on account of its size, which is smaller than that of the word ‘longines’, but also on account of its rather complicated nature, in the sense that it consists of a representation of outstretched wings containing in their middle a kind of rectangle, which rests on its short side and is divided by two diagonals. Those diagonals are themselves linked together by two horizontal lines and the whole is not easily memorisable. That same analysis holds good in respect of the few variations on that graphic device which are used by the applicant.

107 Moreover, the Court holds that it is by no means established that the relevant public, which does not focus its attention on the details of the composite mark used, necessarily perceives the part situated in the middle of the graphic device as constituting a kind of stylised ‘hourglass’. Although such an evocation may, as the case may be, occur more readily to consumers who are aware of the fact that a figurative mark consisting of a ‘winged hourglass’, albeit with a different graphic design, had already been used by the applicant in the nineteenth century and was subsequently one of the first international registrations with the World Intellectual Property Organisation (WIPO), a point to which the applicant refers, it must be stated that that is not something which may be regarded as well-known to the public concerned, which, it must be borne in mind, does not consist solely of professionals from the horological sector (see also paragraph 112 below). Consequently, there are also no reasons linked to the conceptual content of the graphic element in question which would lead a substantial part of the relevant public to memorise that element in particular.

108 In the light of all of the foregoing, the Court holds that the Board of Appeal did not err in finding that it had not been proved that the earlier marks that consisted solely of a ‘winged hourglass’, taken as registered, have a reputation. In spite of the continuous quantitatively and qualitatively significant use over a period of time of a composite mark consisting of the graphic element of a ‘winged hourglass’ and the word ‘longines’, corresponding, in essence, to international registration No 610902, it is the latter word which will attract the attention of consumers and will probably be retained by them, and it has not been shown that a substantial part of the relevant public, in one or more of the Member States of the European Union in respect of which a reputation has been claimed, is also aware of the earlier marks consisting solely of the graphic element of a ‘winged hourglass’ and associates them, without effort, with the applicant’s horological and chronometric goods, which are the only goods to which the claim in respect of reputation relates.

110 In the first place, it is true, as the applicant submits, that it is not inconceivable, in theory, that the use of an earlier mark in a composite mark may be sufficient for it to be held that that earlier mark has a reputation, notwithstanding the fact that it has not, or not much, been used on its own, independently of the composite mark.

111 Such a possibility is apparent from the application, by analogy, of the case-law according to which a mark can acquire a particular distinctive character on account of its prolonged use and of its renown as part of another registered trade mark, provided that the target public perceives the mark as indicating that the goods come from a specific undertaking (see, to that effect, judgment in Aire Limpio, cited in paragraph 50 above, EU:T:2006:245, paragraph 74). However, in the present case, as the Board of Appeal rightly stated in paragraphs 39 and 40 of the contested decision, for the possible conclusion to be reached that the earlier marks consisting solely of the graphic element of a ‘winged hourglass’ have a reputation, it would have been necessary to represent them differently, so that they would be memorised by the relevant public.

112 In the second place, the applicant’s various claims highlighting the long history and the consistent use of the earlier marks consisting of the graphic element of a stylised ‘winged hourglass’ are not, in the absence of sufficiently specific evidence that a substantial part of the relevant public was aware of those marks, conclusive for the purpose of proving that they have a reputation. In particular, as regards certain articles which the applicant submitted and which relate to the long-standing nature of the use and registration of the abovementioned sign, it must, first, be stated that some of them are articles aimed more at a public which consists of professionals and others are articles aimed at Swiss readers, and it has not been shown that they actually reached a significant part of the relevant public in the present case. In any event, it must be pointed out that the graphic device of the ‘winged hourglass’ which was used historically and was executed in a particularly detailed manner, differs notably from the graphic device which is currently used in the earlier marks.

113 In the third place, for reasons analogous to those stated in paragraph 112 above, it is necessary to reject as unproved the applicant’s claim that not only professionals but also the general public were aware of the fact that it was through the graphic device of the ‘winged hourglass’ that the original goods of the applicant were recognisable and could be distinguished from counterfeit goods. In particular, the Court holds that, for a significant part of the relevant public, it is the actual use of the word ‘longines’ on the goods in question that fulfils that function.

114 In the fourth place, as regards the applicant’s claim relating to a comparison of the situation in the present case with that in which a famous bottle of fizzy drink is protected as a figurative and/or three-dimensional mark, even though that bottle is always used on the market concomitantly with a word mark designating that fizzy drink, the applicant claiming that the Court would prevent the registration of any new mark which sought to encroach on the visual representation of the famous bottle independently of the word element affixed to it, it is sufficient to state that, even if the veracity of the latter assertion were to be accepted, that bottle, unlike the ‘winged hourglass’ used together with the word ‘longines’, is easily perceived and memorised by consumers notwithstanding the concomitant presence of the word element. Consequently, the applicant cannot draw inferences from it in respect of the present case.

115 In the light of the foregoing, it is necessary to reject the applicant’s claim that even the earlier marks consisting solely of the representation of a ‘winged hourglass’ have a reputation and enhanced distinctiveness on account of their use.

116 The Court points out first that, in paragraph 53 of the contested decision, the Board of Appeal stated that the earlier marks consisting solely of the representation of a ‘winged hourglass’ had to be excluded from the examination in the context of Article 8(5) of Regulation No 207/2009 since it had not been proved that they had a reputation.

117 Furthermore, the Board of Appeal stated that the differences between the earlier composite marks and the mark applied for were so huge that they clearly outweighed the low (if any) visual and conceptual similarities between them arising out of the presence of the device of a set of wings.

118 Accordingly, the Board of Appeal found that, when confronted with the marks in question, the relevant public would not establish a link between them. Furthermore, according to the Board of Appeal, the word element of a sign usually has a stronger impact on the consumer than the figurative component. The totally different word elements in the signs at issue, namely ‘quartodimiglio’ and ‘longines’, militate, in the Board of Appeal’s opinion, against the consumer making any connection whatsoever between the marks, irrespective of either the identity or proximity of the relevant trade sectors or the degree of reputation of the opponent’s marks.

119 According to the Board of Appeal, in the absence of such a link in the mind of the target consumer, the use of the contested trade mark would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks.

120 The applicant submits that there is a link between the marks at issue on account of their visual and conceptual similarities, the identity of the goods and the reputation of the earlier marks in the field of watch and jewellery products. According to the applicant, the use of the mark applied for could be detrimental to the image and prestige that the earlier marks have acquired in the eyes of the public, diluting the ability of representations of wings to identify a single undertaking and to stimulate consumers to purchase the applicant’s high-quality goods. That would be the case in particular if the mark applied for were used for goods of lower quality. Furthermore, the mark applied for would also take unfair advantage of the reputation of the earlier marks which reflect, in the applicant’s view, an image ‘of excellence, reliability and quality’ and ‘of luxury, lifestyle, exclusivity and elegance’. That would remain true even if the mark applied for were affixed to mass-consumption goods. The applicant submits that the earlier composite figurative marks have an intrinsic value that is separate and distinct and goes far beyond the goods covered in Class 14, also applying to the goods in Class 9, which are clearly linked with those goods.

121 In the first place, the Court holds that the Board of Appeal was right to exclude the earlier marks consisting solely of the representation of a ‘winged hourglass’ from the examination in accordance with Article 8(5) of Regulation No 207/2009. As is apparent from the actual wording of that provision, the existence of a reputation is an essential condition for that provision to apply (see also, to that effect, judgment in Emidio Tucci, cited in paragraph 84 above, EU:T:2012:500, paragraph 55).

122 In the second place, it has already been stated that the reputation of the earlier composite marks including the word ‘longines’ was regarded as proved, in principle, on the basis of evidence relating to the use of a graphic device corresponding to international registration No 610902. In that regard, the Court holds that the Board of Appeal was also right in finding that Article 8(5) of Regulation No 207/2009 was not applicable, on account of the significant differences between those marks and the mark applied for.

123 It must be borne in mind, first, that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them (see, by analogy, judgment of 27 November 2008 in Intel Corporation, C‑252/07, ECR, EU:C:2008:655, paragraph 30; judgment of 12 March 2009 in Antartica v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 43; and order of 30 April 2009 in Japan Tobacco v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 25).

124 Next, it must be borne in mind that the existence of such a link must be assessed globally, taking into account all the factors relevant to the circumstances of the case. Among those factors are the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services; the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see, to that effect, judgment of 25 January 2012 in Viaguara v OHIM — Pfizer (VIAGUARA), T‑332/10, EU:T:2012:26, paragraph 23 and the case-law cited).

125 Lastly, it must be stated that, in the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks (see, by analogy, judgment in VIAGUARA, cited in paragraph 124 above, EU:T:2012:26, paragraph 24 and the case-law cited).

126 In the present case, without there even being any need to rule on the admissibility of the arguments which OHIM put forward for the first time before the Court and which relate to the allegedly well-known fact that many watchmakers’ logos frequently include a reference to wings, which means that that graphic element does not have any particular relevance for the purposes of the relevant public’s establishing a link between various marks in the horological sector, it is sufficient to state that the earlier composite mark at issue differs visually and conceptually from the mark applied for in such a significant manner that no link may be made between them, notwithstanding the reputation of that earlier mark and the identity of the goods at issue. The Court draws attention, in that regard, in particular, to the notable differences resulting both from the actual design of the wings at issue, short and thick in one case and thin and longer in the others, and from the presence of the word elements ‘longines’ and ‘quartodimiglio’ (see paragraphs 71 and 72 above). The same conclusion applies in respect of international registration No 298063 inasmuch as it has also been accepted indirectly that it has a reputation (see paragraph 62 above).

127 In such circumstances the Board of Appeal was right to find that the registration of the mark applied could neither be detrimental to, nor take unfair advantage of, the repute or the distinctive character of the earlier marks.

128 Lastly, it must be held that that finding cannot be invalidated by the applicant’s reference to the judgment in VIAGUARA, cited in paragraph 124 above, EU:T:2012:26. As is apparent from paragraph 42 of that judgment, the marks which were compared in that case, VIAGRA and VIAGUARA, were actually held by the Court to be highly similar overall, contrary to what has been held in respect of the marks at issue in the present case.

129 In the light of all of the foregoing, the applicant’s second plea must also be rejected and the action must be dismissed in its entirety.

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

131 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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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Compagnie des montres Longines, Francillon v OHMI - Staccata (QUARTODIMIGLIO QM) (Judgment) [2015] EUECJ T-76/13 (12 February 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T7613.html Cite as: [2015] EUECJ T-76/13, EU:T:2015:94, ECLI:EU:T:2015:94

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