Counrt of first instance of the european communities
(0 - CDAJAXVOTE_VOTE_COUNT)
COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (THIRD CHAMBER)
JUDGMENT OF THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES

 [2006] All ER (D) 426 (Nov), (Approved judgment)

 30 NOVEMBER 2006

 30 NOVEMBER 2006

 

CATCHWORDS: European community - Trade marks - Registration - Figurative trade mark 'BROTHERS by CAMPER' - Opposition proceedings - Likelihood of confusion - Existing figurative mark 'BROTHERS' - Opposition upheld - Basis of refusal - Council Regulation (EC) 40/94, art 8(1)(b).
 

HEADNOTE: This case digest has been summarised by LexisNexis UK editors.

The applicant, a Spanish company, filed an application for a Community trade mark under Council Regulation (EC) 40/94 (on the Community trade mark). The mark for registration was a figurative mark (comprising the words 'BROTHERS by CAMPER'), in respect of goods in, inter alia, class 25 (clothing, footwear and headgear). The intervener, a Swedish company and the proprietor of a figurative mark (comprising the words 'BROTHERS'), filed a notice of opposition stating, in respect particularly of the goods in class 25, that that mark had been registered, inter alia, in Finland and Denmark. The respondent's Opposition Division found that the opposition was well founded. The applicant unsuccessfully appealed to the Board of Appeal (the contested decision). The applicant applied to the Court of First Instance of the European Communities for an annulment of the contested decision.

The Court ruled:

The global assessment of the likelihood of confusion by the public had, as far as concerned the visual, aural or conceptual similarity of the marks in question, to be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components. A compound trademark, one of whose components was identical or similar to that of another mark, could not be regarded as being similar to that other mark, unless that component formed the dominant element within the overall impression created by the compound mark. That was the case where that component was likely to dominate, by itself, the image of that mark which the relevant public kept in mind, with the result that all the other components of the mark were negligible within the overall impression created by it. That assessment did not amount to taking into consideration only one component of the compound trade mark and comparing it with another mark, but rather, a comparison of the marks concerned had to be made by examining them, each considered as a whole. However, that did not mean that the overall impression created in the mind of the relevant public by a compound trade mark might not, in certain circumstances, be dominated by one or more of its components. In assessment of the dominant character of one or more given components of a compound trade mark, account had to be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. Moreover, account might be taken of the relative position of the various components within the arrangement of the compound mark.

In the instant case, having regard to the position, size and typeface of the word 'BROTHERS', even from a purely visual aspect, the word dominated the mark applied for. That assessment could not be called into question from a semantic point of view by the argument that 'CAMPER' referred to the commercial origin of the goods. Moreover, the assessment could not be called into question by the argument that 'BROTHERS' was descriptive of goods concerned and therefore had a weak distinctive character. The members of the relevant public had to be considered to understand the English meaning of the word 'brothers'. Moreover, the comparison between the dominant component of the mark applied for and the dominant component of the earlier mark revealed a clear visual similarity, notwithstanding their graphic differences. Further, the addition of the words 'by CAMPER' in the mark applied for to the word 'BROTHERS' was only secondary in relation to the latter because it was likely that those two words would not be pronounced by the relevant consumers, and, in any event, the aural similarity created by pronouncing 'BROTHERS' gave rise to a likelihood of confusion between them. Furthermore, it could not be said that the words 'by CAMPER' helped to give the mark applied for an impression which was conceptually different from that of the earlier mark. Moreover, the Board of Appeal's overall assessment of the likelihood of confusion could not be called into question.

The contested decision would not be annulled.

INTRODUCTION: This is the first approved version handed down by the court. An edited official transcript or report will follow.

PANEL: JUDGES JAEGER, AZIZI AND CREMONA

JUDGMENTBY-1: JUDGES JAEGER, J. AZIZI AND E. CREMONA

JUDGMENT-1: JUDGES JAEGER, J. AZIZI AND E. CREMONA:

Background to the dispute

1 On 15 November 2000, the applicant filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2 The mark for which registration was sought is the following figurative mark:

ARTWORK 06D426NOV1

3 The goods in respect of which registration of the trade mark was sought are in Classes 18, 25 and 39 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.

4 Those classes are described as follows:

- Class 18: 'Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery';

- Class 25: 'Clothing, footwear, headgear';

- Class 39: 'Transport; packaging and storing of goods; travel arrangement'.

5 The application for registration of a Community trade mark was published in Community Trade Marks Bulletin No 58/2001 of 2 July 2001.

6 On 30 August 2001, JC AB ('the intervener') filed a notice of opposition under Article 42(1) of Regulation No 40/94 against registration of the mark applied for in respect of the goods designated in the application, particularly those in Class 25.

7 The intervener is the proprietor of the following figurative mark:

ARTWORK 06D426NOV2

8 The intervener stated, in respect of the goods in Class 25, that that mark was registered in Sweden on 20 August 1993 (Registration No 250877), in Finland on 15 August 2000 (Registration No 218305), and in Denmark on 24 May 2000 (Registration VR 200002263).

9 The opposition was based on Article 8(1)(b) of Regulation No 40/94.

10 By decision of 30 January 2004, the Opposition Division of OHIM dismissed the opposition, in so far as it was based on the mark allegedly registered earlier in Sweden in the absence of proof that that mark had been registered. However, it upheld the opposition in respect of all the goods in Class 25, namely clothing, footwear and headgear, in so far as it was based on the intervener's mark registered earlier in Finland and Denmark ('the earlier mark'). The Opposition Division held that the opposition was well founded on the ground that, because of the identity of the goods covered by the earlier mark with some of the goods covered by the mark applied for, and because of the similarity between the marks at issue, there was a likelihood of confusion on the part of the public in Denmark and Finland between the mark applied for and the earlier mark. Therefore, the Opposition Division dismissed the application for registration of the mark applied for in respect of all the goods in Class 25.

11 On 3 March 2004 the applicant lodged an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 against the Opposition Division's decision.

12 By decision of 29 November 2004 ('the contested decision') the First Board of Appeal of OHIM dismissed the applicant's appeal. In that decision the Board of Appeal held that the Opposition Division's decision was correct, in so far as it refused the application for registration for the goods in Class 25.

Forms of order sought by the parties

13 The applicant claims that the Court should:

- accept its action against the contested decision together with its copies and annexes, and declare possible the registration of the figurative mark BROTHERS by CAMPER in respect of all the goods in Class 25;

- order each party to bear its own costs and half of the common expenses.

14 The defendant contends that the Court should:

- dismiss the action as inadmissible or, in the alternative, as unfounded;

- order the applicant to pay the costs.

15 The intervener contends that the Court should uphold the contested decision.

Law

I - Admissibility

A - Admissibility of the action

1. Arguments of the defendant

16 The defendant takes the view that the action is inadmissible, since the applicant does not expressly base its action on infringement of any rule of law and does not rely on any other valid ground such as lack of competence, infringement of an essential procedural requirement, or misuse of power.

17 The defendant acknowledges that it may be inferred from the form of order sought by the applicant, according to which there is no likelihood of confusion between the signs because of their dissimilarity, that the applicant is in fact seeking annulment of the contested decision on the ground that it infringes Article 8(1)(b) of Regulation No 40/94. However, the defendant argues that neither that head of claim nor the pleas in law in support of it were properly pleaded by the applicant, so that the application should be dismissed for failure to comply with the essential procedural requirements applicable to such an action.

2. Findings of the Court

18 First of all, the Court observes that the defendant's plea of inadmissibility is itself characterised by a certain lack of precision. Although the defendant claims that the action is inadmissible both because of the lack of precision of the pleas relied on and the form of order sought - without referring to a specific provision - it acknowledges that it was able to infer from the application that the applicant seeks annulment of the contested decision on the ground that Article 8(1)(b) of Regulation No 40/94 was infringed.

19 Assuming that the defendant claims that the action is inadmissible on the ground that the applicant has failed to formulate precisely in the application the pleas and forms of order sought, in accordance with Article 44(1)(c) and (d) of the Rules of Procedure of the Court of First Instance, the Court recalls that under Article 21 of the Statute of the Court of Justice, applicable to proceedings before the Court of First Instance by virtue of the first paragraph of Article 53 of the Statute, and Article 44(1)(c) of the Rules of Procedure, an application must contain a summary of the pleas in law relied upon, and that that statement must be sufficiently clear and precise to enable the defendant to prepare its defence and to enable the Court to give judgment in the action without the need to seek further information (Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 17). The same considerations must apply to all forms of order, referred to by Article 44(1)(d) of the Rules of Procedure, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity (Case T-43/92 Dunlop Slazenger v Commission [1994] ECR II-441, paragraph 183, and Case T-123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II-3979, paragraph 26).

20 In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible the essential points of fact and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided the statement is coherent and comprehensible (see CARGO PARTNER, paragraph 27 and the case-law cited).

21 In this case, the form of order sought by the applicant includes a request that the Court declare possible the registration of its mark for all the goods in Class 25.

22 Furthermore, it is clear from the application that, having identified Article 8(1)(b) of Regulation No 40/94 as the legal basis for the refusal to register its trade mark in the contested decision, the applicant states that it is necessary to 'focus again on the comparison of the trade marks [which are the] object of this discussion'. Following that statement the applicant goes on to analyse the marks at issue. From that analysis it concludes that, having regard to the differences between the marks at issue, it is clear that there is no likelihood of confusion between the two marks on the part of the public.

23 Finally, in response to a question put by the Court at the hearing, the applicant indicated clearly that it sought annulment of the contested decision, and subsequently directed its pleadings solely to the absence of any likelihood of confusion between the marks at issue.

24 In the light of the foregoing, the Court finds that the applicant's intention to obtain the annulment of the contested decision on the basis of an alleged infringement of Article 8(1)(b) of Regulation No 40/94 is sufficiently clear from its pleadings.

25 Furthermore, the Court notes that the contested decision is based on Article 8(1)(b) of Regulation No 40/94 and that the applicant identifies that provision in its application as the legal basis of the contested decision, and that it goes on to challenge various aspects of the assessment made by the Board of Appeal on the basis of that provision concerning the likelihood of confusion between the marks at issue. The Court considers, therefore, that it is sufficiently clear from the application that the applicant puts forward a single plea against the contested decision of infringement of Article 8(1)(b) of Regulation No 40/94, having regard to the alleged absence of any likelihood of confusion between the marks at issue.

26 Finally, the Court observes that the applicant's request to declare possible the registration of its trade mark in respect of all the goods in Class 25 necessarily implies a request for annulment of the contested decision. It has already been held that if, despite the wording of the form of order sought in the application, it is clear from the application that the applicant seeks, in substance, the annulment of the contested decision, the application must be considered to be admissible (order in Case T-107/94 Kik v Council and Commission [1995] ECR II-1717, paragraphs 30 and 32; Case T-169/94 PIA HiFi v Commission [1995] ECR II-1735, paragraph 17; and CARGO PARTNER, paragraph 34).

27 The Court considers, therefore, that the application satisfies the requirements for admissibility in Article 44(1)(c) and (d) of the Rules of Procedure of the Court of First Instance, and therefore that this action cannot be declared inadmissible on the basis of that provision.

B - Admissibility of some of the forms of order sought

1. Arguments of the defendant

28 The defendant takes the view that the applicant's request to the Court to declare possible the registration of its trade mark in respect of all the goods in Class 25 is inadmissible. The defendant contends that it is required, under Article 63(6) of Regulation No 40/94, to take the measures necessary to comply with the judgments of the Court, so that it is for the defendant to draw the appropriate inferences from the operative part of the judgment and the grounds on which it is based (Case T-390/03 CM Capital Markets v OHIM - Caja de Ahorros de Murcia (CM) [2005] ECR II-1699, paragraph 13 and the case-law cited).

2. Findings of the Court

29 The Court observes that the admissibility of the applicant's request to declare possible the registration of its trade mark in respect of all the goods in Class 25 falls to be assessed only if the application for annulment of the contested decision is at least partially founded. The Court will therefore examine, first of all, that application for annulment.

C - Admissibility of some of the arguments put forward by the intervener

30 The Court observes that, in support of its argument that this action must be dismissed as unfounded, the intervener refers inter alia to the arguments it has already put forward before OHIM.

31 However, an application which contains a general reference to the arguments set out in the written pleadings submitted during the administrative procedure before OHIM does not satisfy the requirements of Article 44(1)(c) of the Rules of Procedure and therefore cannot be taken into account (see, to that effect, Case T-316/03 M nchener R ckversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II-1951, paragraph 23 and the case-law cited).

32 That applies to the reference by the intervener to the arguments contained in the observations it submitted in the administrative procedure before OHIM (see, to that effect, Case T-169/03 Sergio Rossi v OHIM - Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraph 30 and the case-law cited).

33 Therefore, the Court considers that the intervener's arguments in the statement in intervention which are set out in the form of a reference to previous observations are inadmissible.

II - Substance

A - Infringement of Article 8(1)(b) of Regulation No 40/94

1. Arguments of the parties

34 The applicant states, first of all, that Article 8(1)(b) of Regulation No 40/94 is the basis for the refusal by the Board of Appeal to register its trade mark, and relies on the judgment in Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23.

35 Next, the applicant submits that an overall visual comparison between the marks at issue reveals clear and sufficient differences enabling consumers to distinguish between them.

36 Thus, it draws attention to the presence in its mark of the additional words 'by CAMPER' and the black shape in which the word 'CAMPER' is inserted, which gives it a specific design. However, the earlier trade mark has a different distinctive design, which consists of the image of two persons inserted in the letter 'O' of the word 'BROTHERS'. The applicant argues that the difference in design of the marks at issue will be noticed by the average consumer, especially because design is particularly important in the clothing sector.

37 The word 'BROTHERS' has thus only weak distinctive character as a trade mark for the goods concerned and, therefore, it has less importance in a comparison of the marks at issue. Furthermore, the less distinctive the earlier mark, the less the likelihood of confusion (see, in contrast, Joined Cases T-183/02 and T-184/02 El Corte Ingl s v OHIM - Gonzalez Cabello and Iberia Lineas A reas de Espana (MUNDICOLOR) [2004] ECR II-965, point 67, and Case T-164/02 Kaul v OHIM - Bayer (ARCOL) [2004] ECR II-3807, paragraph 35).

38 From the aural perspective, the applicant also submits that there are obvious differences between the marks at issue.

39 The applicant points out in that regard, that, apart from the word 'BROTHERS' which is common to the two marks, the mark applied for contains an indication of the applicant's name, 'by CAMPER', so that, unlike the earlier mark which contains only one word with two syllables, the mark applied for contains three words and five syllables.

40 Furthermore, the aural impact of a mark relating to goods corresponding to footwear, clothing and headgear is less important than its visual impact because the goods are chosen by consumers on the basis of their appearance. Therefore, for the reasons set out in paragraphs 36 and 37 above, the marks at issue are sufficiently different.

41 As regards the conceptual comparison of the marks, the applicant states that the term 'camper' has a particular meaning in English, namely a person who camps or a vehicle, which differentiates the mark applied for conceptually from the earlier mark.

42 Furthermore, the expression 'by CAMPER' also refers to the applicant's name which is the origin of the goods marketed under that trade mark. Therefore, the mark applied for is also for that reason conceptually different from the intervener's mark

43 The applicant states, in that regard, that the mark CAMPER is a trade mark well known for goods in Class 25 and that it would be absurd if the proprietor of that trade mark included a name different from its own when it promotes its own goods (see Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 37). On those grounds the applicant challenges the conclusion of the Board of Appeal, in paragraph 22 of the contested decision, that the words 'by CAMPER' do not refer to the commercial origin of the goods.

44 Furthermore, the applicant takes the view that as the word 'CAMPER' in its mark is a trade name within the meaning of Article 8 of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, Vol. 828, No 11847, p. 108) ('the Paris Convention'), it must be protected in all the countries of the Union without the obligation of filing or registration.

45 As far as concerns the word 'brothers', the applicant takes the view that it means or refers to a particular relationship between two persons, objects or facts. That relationship concerns many goods covered by the marks at issue, namely goods available in pairs, like socks, shoes, gloves and so on. The descriptive or even generic character of the word 'brothers' with respect to the goods concerned shows that it has weak distinctive character and diminishes the likelihood of confusion when comparing the mark applied for with other marks containing that word and should permit the use by other undertakings of that word for the goods concerned (see, to that effect, Case T-129/01 Alejandro v OHIM - Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 53).

46 The applicant further submits that the mark applied for benefits from the fact that the trade mark CAMPER is well known. The words 'by CAMPER' thus enable consumers to recognise the origin of the goods and to distinguish even better the mark applied for from the earlier mark. As evidence of the fact that CAMPER is a well-known trade mark, the applicant relies on the numerous registrations of the word 'camper' as a Community trade mark and the registration of the mark as a Finnish mark. Moreover, it refers to press cuttings containing advertising for the mark in Denmark and the list of more than 40 CAMPER shops in Finland, Denmark and Sweden.

47 Finally, the applicant invokes various Community and international trade marks registered on behalf of different proprietors, including the word 'brother' or 'brothers' in respect of goods in Classes 18 and 25. The coexistence of the different marks shows that the word 'brothers' is merely a common word or a generic or descriptive term which does not identify the mark. Those marks also show the need to add words to 'brother' or 'brothers' in order to distinguish them.

48 In support of its arguments, the applicant relies on various decisions of the Boards of Appeal and the Opposition Division which ought to have been taken into consideration by the Board of Appeal.

49 The defendant and the intervener submit, essentially, that the Board of Appeal correctly decided that there was a likelihood of confusion between the marks at issue, and that the application must therefore be dismissed as unfounded.

2. Findings of the Court

a) Statements of principle

50 In the words of Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, a trade mark is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

51 Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94, earlier trade marks means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

52 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraph 30 and the case-law cited).

53 According to the same line of case-law, the likelihood of confusion must be assessed globally by reference to the perception which the relevant public has of the signs and the goods and services in question, 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 GIORGIO BEVERLY HILLS, paragraphs 31 to 33 and the case-law cited).

b) The relevant public

54 It is common ground between the parties that the relevant public is, in accordance with the findings of the Board of Appeal, constituted by the average Danish or Finnish consumer.

55 It follows from that definition of the relevant public that the assessment of the meaning of the marks at issue must be made in Danish, Finnish, Swedish and English. The average Danish and Finnish consumer generally also understands English in addition to Danish, Finnish and/or Swedish.

c) Comparison of the goods

56 As regards the comparison of the relevant goods, the Board of Appeal held that the goods covered by the earlier trade mark and those covered by the mark applied for were identical and that they corresponded to clothing, footwear and headgear in Class 25 of the Nice Agreement (see paragraph 18 of the contested decision). That assessment has not been challenged by the parties. It is clear, therefore, that the goods are identical.

d) Comparison of the signs

Preliminary considerations

57 As regards the comparison of the signs, it must be recalled that, according to settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-VanHeusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited, and Case T-33/03 Osotspa v OHIM - Distribution & Marketing (Hai) [2005] ECR II-763, paragraph 47).

58 It must also be recalled that a compound trade mark, one of whose components is identical or similar to that of another mark, cannot be regarded as being similar to that other mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 33, confirmed on appeal by the order in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657; see also, to that effect, Case T-117/02 Grupo El Prado Cervera v OHIM -Debuschewitz's heirs (CHUFAFIT) [2004] ECR II-2073, paragraph 45).

59 That assessment does not amount to taking into consideration only one component of the compound trade mark and comparing it with another mark. On the contrary, a comparison of the marks concerned must be made by examining them, each considered as a whole. However, that does not mean that the overall impression created in the mind of the relevant public by a compound trade mark may not, in certain circumstances, be dominated by one or more of its components (MATRATZEN judgment, paragraph 34).

60 In the assessment of the dominant character of one or more given components of a compound trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the compound mark (MATRATZEN, paragraph 35).

Dominant components

61 In this case, as regards the earlier mark, the Board of Appeal held that the word 'brothers' was the dominant component of that trade mark because it is the only word component in that mark, which is both a word mark and a figurative mark, and that the figurative component placed inside the letter 'o' had only a secondary impact in the overall impression of the mark (see paragraph 21 of the contested decision).

62 That assessment must be confirmed. The word 'BROTHERS' in the earlier mark dominates both the visual and linguistic impression that the average Danish or Finnish consumer will remember when that mark is considered as a whole. The figurative insertion in the 'o' of the earlier mark has only minor importance in relation to the word 'BROTHERS'.

63 As far as concerns the mark applied for, the Board of Appeal also found that the word 'BROTHERS' was the dominant word in that trade mark. It justifies that assessment by the fact that the word is presented in black capital letters and that its size and position stand out in the general impression of the mark applied for. It explains that that impression is due to the fact that the word 'BROTHERS' represents over 60% of the mark applied for, and that it is placed first. Consumers normally pay more attention to the beginning of marks when perceiving them. Furthermore, the Board of Appeal considers that the position of the words 'by CAMPER' after the word 'BROTHERS', together with the smaller size of the typeface of the words 'by CAMPER', reinforces the dominance of the word 'BROTHERS'. Moreover, in its view the words 'by CAMPER' will be perceived by the relevant public as subsidiary terms, since they will be understood as a mere indication of the undertaking producing the goods in question. Therefore, the Board of Appeal takes the view that the relevant consumer will focus his attention on the word 'BROTHERS', which does not refer to the name of the producer (see paragraphs 21 and 22 of the contested decision).

64 Having regard to the position, size and typeface of the word 'BROTHERS', the Court considers that, even from the purely visual aspect, the Board of Appeal rightly held that that word dominates the mark applied for.

65 That assessment cannot be called into question from a semantic point of view by the applicant's argument that the Board of Appeal wrongly held that the words 'by CAMPER' do not refer to the commercial origin of the goods. That argument has no factual basis and does not correspond to the content of the contested decision. Thus, in paragraph 22 of the contested decision, the Board of Appeal merely stated the following:

'[T]he element "by CAMPER" will be perceived as subsidiary, also due to the fact that the relevant public will perceive it as a mere indication of the undertaking producing the goods in question. Thus, the relevant consumer will focus [his] attention on the word "BROTHERS", which does not refer to the name of the producer.'

66 Furthermore, that assessment can also not be called into question by the applicant's argument that the word 'BROTHERS' is descriptive of the goods concerned and has therefore weak distinctive character.

67 In that connection, the Court confirms once again what was impliedly acknowledged both by the applicant in that argument and by the Board of Appeal in the contested decision (see paragraph 26 of the contested decision), that is, that the members of the relevant public, composed of average Danish and Finnish consumers, usually understand English as well as Danish, Finnish and/or Swedish. Therefore, that public must be considered to understand the English meaning of the word 'brothers'.

68 The applicant takes the view, however, that the relevant public will not generally consider a descriptive element forming part of a compound mark as the distinctive or even dominant element of the overall impression conveyed by that mark (BUDMEN, paragraph 53, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM - Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 34), and that the less distinctive the earlier mark the less the likelihood of confusion between that mark and another mark (see, a contrario, MUNDICOLOR, paragraph 67, and Case T-34/04 Plus v OHIM - B lz and Hiller (Turkish Power) [2005] ECR II-2401, paragraph 42).

69 However, that case-law can only be applied in this case if the term 'BROTHERS' is descriptive of the goods concerned. Contrary to the meaning given by the applicant to the word 'brothers', however, it does not describe, in English and in the singular, a relationship between two objects or facts such as exists between two shoes or two socks. As the Board of Appeal states in the contested decision, that word signifies a male person having the same parents as another person (see paragraph 26 of the contested decision). It is true that that word has other meanings. However, they all relate to a male person or a number of persons principally male belonging to a type of community. Not one of those meanings concerns a relationship between two objects or two facts.

70 Accordingly, the applicant's argument based on the descriptive character of the word 'BROTHERS' for the goods concerned must be dismissed.

Visual comparison

71 The Board of Appeal held that the comparison between the dominant component of the mark applied for and the dominant component of the earlier mark reveals a clear visual similarity. It explained that the difference constituted by the words 'by CAMPER' and the black rectangular frame of the mark applied for is not significant enough to eliminate the similarity created by the fact that the essential part of the two signs, the word 'brothers', is identical (see paragraph 23 of the contested decision).

72 The Court considers that that assessment cannot be challenged. The two signs are constituted by a single word composed of the same letters, namely the word 'brothers'. Furthermore, that word constitutes the predominant visual component of the two signs. Therefore, there is a visual similarity between the marks at issue notwithstanding their graphic differences, the addition of the words 'by CAMPER' in the mark applied for and the importance of design in the clothing sector. Furthermore, it has already been stated that consumers generally take more note of the beginning of a sign than its ending (Case T-112/03 L'Or al v OHIM - Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65).

73 Therefore, the applicant is wrong to submit that the design and different visual impressions of the marks at issue distinguish them sufficiently to avoid any likelihood of confusion.

Aural comparison

74 The Board of Appeal held that, having regard to the findings with respect to the similarity of the dominant component of the mark applied for to the dominant component of the earlier mark, the two signs were aurally similar. The incorporation of the earlier sign as the dominant component in the mark applied for justifies, according to the Board of Appeal, the finding that there is a significant aural similarity between the marks. The Board of Appeal explained that it was likely that the other verbal components in the mark applied for, namely 'by CAMPER', would not be pronounced by consumers since they occupy a subsidiary position within the mark and appeared in smaller lettering than the dominant component 'BROTHERS' (see paragraph 24 of the contested decision). Furthermore, the Board of Appeal found that, since the figurative components were not taken into consideration when comparing the aural aspects of the marks, the similarities between them stood out even more clearly in the aural comparison (see paragraph 25 of the contested decision).

75 The Court considers that that assessment is not vitiated by error. The addition of the words 'by CAMPER' in the mark applied for (two words and three syllables) to the word 'BROTHERS' of the earlier mark is only secondary in relation to the latter because, as the Board of Appeal states, it is likely that those two words will not be pronounced by the relevant consumers. A mark which includes several words will generally be abbreviated orally to something easier to pronounce. The mark BROTHERS by CAMPER will therefore easily be mentioned orally as BROTHERS, which gives rise to an obvious likelihood of confusion with the earlier mark.

76 Furthermore, even if the words 'by CAMPER' of the mark applied for are pronounced by the relevant consumers, the aural similarity created by pronouncing the word 'BROTHERS', both in the mark applied for and in the earlier mark, gives rise to a likelihood of confusion between them.

77 The applicant's argument that the goods concerned are chosen by consumers on the basis of their appearance, so that the aural aspect of the marks is less important, does not affect the assessment by the Board of Appeal as regards the degree of aural similarity between the marks. Even if it were found to be correct that the visual aspect takes precedence over the aural aspect of the marks at issue having regard to the nature of the goods concerned, that argument only confirms the finding that the marks at issue are visually similar, without affecting the existence of the aural similarity between them.

Conceptual comparison

78 The Board of Appeal considers that the word 'brothers' has a clear and precise semantic content. It takes the view that in Finland and Denmark, the relevant territory, consumers of clothing will understand the word as referring to a male person having the same parents as another person. It bases that finding on the definition of the word 'brothers' as set out in Collins English Dictionary, 1998. It states further that the other verbal components of the mark applied for are also, on account of their subsidiary nature, of secondary importance conceptually. Moreover, the word 'camper' does not have any meaning in the relevant languages and the expression 'by CAMPER' will be perceived as a subsidiary indication of the manufacturer's name. Therefore, the Board of Appeal considers that the marks at issue are conceptually identical or at least very similar (see paragraphs 26 and 27 of the contested decision).

79 In that regard, it must be conceded that the Board of Appeal made an error in holding that the word 'camper' has no particular meaning in the relevant languages. As stated, in paragraph 67 above, it may be considered that the relevant public also normally understands English and that to that extent English is also a relevant language. The word 'camper' has a meaning in English, that is, a person who camps, a camping car or a folding caravan. Therefore, the word 'camper' has a specific meaning in the relevant languages. In the same way, it must be held that 'by' also has for the relevant public the meaning it has in English. Finally, having regard to the applicant's name, it may be considered that the expression 'by CAMPER' is understood by the relevant public as an indication that the goods concerned originate from the applicant.

80 However, those clarifications do not affect either the dominance of the word 'BROTHERS' in the marks concerned or the fact that they are conceptually identical. Therefore, the applicant is wrong to submit that the words 'by CAMPER' help to give the mark applied for an impression which is conceptually different from that of the earlier mark.

Overall assessment of the likelihood of confusion

81 The Board of Appeal stated that since the average consumer retains only an imperfect image of the mark, its predominant component is of major importance. Accordingly, the Board of Appeal found that the word 'BROTHERS', as the dominant component, plays an important role in the overall assessment of the likelihood of confusion. Furthermore, since the relevant consumer will retain in his mind the verbal component of the mark applied for, the word 'BROTHERS', when he finds clothing, footwear or headgear designated by the earlier mark he might think that that product has the same commercial origin as the goods covered by the mark applied for. Consequently, the Board of Appeal held that even if the consumer detects certain differences between the two signs, the risk that he may associate the two marks with each other is real. The Board of Appeal held that that conclusion is confirmed both by the fact that the mark CAMPER is well known, which reinforces the likelihood of confusion between the marks at issue, and the application in this case of the principle of interdependence of the various factors to be taken into consideration. As regards the latter principle, the Board of Appeal held more particularly that, as the goods are identical and the signs are conceptually identical, any visual or aural differences between them are attenuated (see paragraphs 28 to 35 of the contested decision).

82 However, the applicant submits essentially that, since the mark CAMPER is very well known, the earlier mark BROTHERS to which the words 'by CAMPER' are added, together with a particular design, cannot be confused with the earlier mark BROTHERS. The applicant also relies on the fact that, as the proprietor of the trade mark and trade name CAMPER, it must be guaranteed protection of its trade mark and trade name (Vedial v OHIM, paragraph 37, and Article 8 of the Paris Convention, paragraph 44 above).

83 Even if the word 'CAMPER' is a trade name within the meaning of Article 8 of the Paris Convention and the mark CAMPER is well known, the applicant's argument does not call into question the overall assessment of the likelihood of confusion made by the Board of Appeal.

84 As regards the status as a trade name of the word 'CAMPER', it must be recalled that Article 8 of the Paris Convention merely states that 'a trade name shall be protected in all the countries [to which the convention applies] without the obligation of filing or registration, whether or not it forms part of a trademark'. The wording does not define either the extent of or the conditions for the protection conferred on a trade name, but merely sets out the requirement to implement such protection (see also, to that effect, Case T-279/03 Galileo International Technology and Others v Commission [2006] ECR II-0000, paragraphs 53 and 54). The lack of precision in the text itself prevents the creation of rights which the applicant could rely on before the Community judicature. Therefore, the applicant cannot rely solely on Article 8 of the Paris Convention in order to claim protection of its trade name and challenge the assessment made by the Board of Appeal of the likelihood of confusion between the earlier mark 'BROTHERS' and its mark 'BROTHERS by CAMPER'.

85 As regards the fact that the mark CAMPER is well known, the applicant appears to ignore the fact that the earlier mark BROTHERS deserves at least the same protection as its mark CAMPER.

86 If the relevant average consumer purchasing clothing, footwear or headgear bearing the mark BROTHERS by CAMPER understands that those goods originate from the manufacturer CAMPER, the familiarity of the mark CAMPER will not prevent the relevant average consumer who is accustomed to buying clothing, footwear or headgear bearing the mark BROTHERS from also associating those goods with the manufacturer CAMPER when the mark BROTHERS by CAMPER is registered.

87 Therefore, even if the mark BROTHERS is also well known, there is a risk that a consumer satisfied with goods of the mark BROTHERS who wishes to purchase other goods of that mark will purchase goods of the mark BROTHERS by CAMPER, making the applicant benefit from the familiarity of the similar earlier mark.

88 Therefore, the relevant average consumer will, in any event, tend not to distinguish between the two marks at issue.

89 Furthermore, as the Board of Appeal stated in paragraph 33 of the contested decision, it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it covers and for the same undertaking to use a sub-brand to distinguish various production lines. In such circumstances, it is conceivable that the relevant consumer may regard the products covered by the conflicting signs as belonging, admittedly, to two distinct ranges of products but as coming, none the less, from the same undertaking (Case T-104/01 Oberhauser v OHIM - Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 49; BUDMEN, paragraph 57; and NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 51).

90 Furthermore, the differences between the two signs at issue, due to the typeface and to the characters in the earlier mark, on one hand, and the typeface, frame and darkened areas in the mark applied for, on the other, cannot alter that assessment.

91 In the context of the overall assessment of the likelihood of confusion, it must be remembered that the average consumer has only occasionally the opportunity to carry out a direct comparison of the various trade marks and must rely on his imperfect mental image of them (see, by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26). As the average consumer retains only an imperfect mental image of the trade mark, the dominant element of the mark in question is of major importance (Fifties, paragraph 47). In the overall assessment of the marks at issue, the figurative components and design do not prevent the likelihood of confusion between those marks, taking account of their similarity which results from the visually and aurally dominant component, the word 'BROTHERS'.

Reliance on previous practice in the European Union

92 In support of its arguments, the applicant relies on many previous decisions of OHIM, some concerning marks including the word 'brothers', and on international trade marks containing the word 'brothers'. The failure by the Board of Appeal to take account of those previous decisions by OHIM and of international practice also affects the validity of the contested decision.

93 As regards previous decisions of OHIM, it is sufficient to recall that, even if the grounds of fact or law in a previous decision of OHIM may constitute arguments in support of a plea alleging infringement of a provision of Regulation No 40/94, the decisions which the Boards of Appeal are called on to take under that regulation in relation to registration of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of practice in previous decisions of those boards (Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 47; Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 48; Case T-19/04 Metso PaperAutomation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 39). That said, there is of course no reason why the Community judicature may not approve and adopt any argument derived from the previous practice of OHIM in its decisions.

94 There are two possibilities. If in accepting in a previous case the registrability of a sign as a Community trade mark the Board of Appeal correctly applied the relevant provisions of Regulation No 40/94 and in a later comparable case the Board of Appeal has adopted a contrary decision, the Community judicature will be required to annul the latter decision for infringement of the relevant provisions of Regulation No 40/94. In this first case a plea alleging breach of the principle of non-discrimination would therefore be irrelevant (Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 67).

95 By contrast, if in accepting in an earlier case the registrability of a sign as a Community mark the Board of Appeal erred in law and in a later comparable case the Board of Appeal adopted a contrary decision, the first decision cannot successfully be relied on to support an application for annulment of the latter decision. It is clear from the case-law of the Court of Justice that the principle of equal treatment can be invoked only in the context of observance of the principle of legality (Joined Cases 55/71 to 76/71, 86/71, 87/71 and 95/71 Besnard and Others v Commission [1972] ECR 543, paragraph 39, and Case T-90/92 Magdalena Fernandez v Commission [1993] ECR II-971, paragraph 38) and that no person may rely, in support of his claim, on unlawful acts committed in favour of another (Case 188/83 Witte v Parliament [1984] ECR 3465, paragraph 15, and Case T-22/99 Rose v Commission [2000] ECR-SC I-A-27 and II-115, paragraph 39). In this second case, a plea alleging breach of the principle of non-discrimination would therefore likewise be irrelevant (STREAMSERVE, paragraph 67).

96 As regards the international marks relied on by the applicant, it must be observed that those marks were put forward for the first time before the Court and that the applicant's argument is therefore inadmissible insofar as it is based on those marks, without it being necessary to assess their probative value (see, to that effect, Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraph 49, and BUDMEN, paragraph 67).

97 Furthermore, even if the international marks could be relied on and related to the applicant's claim, the legality of the decisions of the Boards of Appeal must be assessed in any event solely on the basis of Regulation No 40/94, as interpreted by the Community judicature. Therefore, those marks cannot affect, in this case, the assessment of the likelihood of confusion between the marks at issue.

98 It follows that the complaints alleging failure to take account of the practice of OHIM in previous decisions are not germane.

99 For the reasons given above, this action for annulment must therefore be held to be unfounded. Since the annulment of all or part of a decision constitutes a necessary prerequisite in order to allow an application for alteration of a decision within the meaning of Article 63(3) of Regulation No 40/94, the Court considers that, even if the application to declare possible registration of the mark applied for was to be treated as a request to alter a decision, that application could not be granted. There is therefore no need to give a ruling on the admissibility of the application to declare possible the registration of the mark applied for.

Costs

100 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for.

101 In the present case, the applicant has been unsuccessful and OHIM has applied for costs against it. The applicant must therefore be ordered to pay the costs incurred by OHIM.

102 Since the intervener has not applied for costs against the applicant, the intervener shall bear its own costs.

On those grounds,

THE COURT OF FIRST INSTANCE (Third Chamber)

hereby:

1. Dismisses the action;

2. Orders the applicant to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs);

3. Orders the intervener to bear its own costs.

Delivered in open court in Luxembourg on 30 November 2006.

Language of the case: English.



[2006] All ER (D) 426 (Nov), (Approved judgment)

 
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