JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

9 September 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community figurative mark Archer Maclean’s Mercury – Earlier national word mark Merkur – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

In Case T‑106/09,

adp Gauselmann GmbH, established in Espelkamp (Germany), represented by P. Koch Moreno, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Archer Maclean, established in Banbury, Oxfordshire (United Kingdom),

ACTION brought against the decision of the First Board of Appeal of OHIM of 12 January 2009 (Case R 1266/2007-1), relating to opposition proceedings between adp Gauselmann GmbH and Archer Maclean,

THE GENERAL COURT (Seventh Chamber),

composed of N.J. Forwood, President, E. Moavero Milanesi (Rapporteur) and J. Schwarcz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 13 March 2009,

having regard to the response lodged at the Registry of the Court on 18 June 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,

gives the following

Judgment

 Background to the dispute

1        On 15 February 2005, Archer Maclean 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought on 15 February 2005 and which were subject to a restriction following Archer Maclean’s application of 24 November 2005 are inter alia in Classes 9 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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: ‘Computer game programs; game cartridges; cassettes and circuit boards containing game programs for use with hand-held or arcade video game machines’;

–        Class 28: ‘Arcade video game machines; coin, card or counter operated arcade game machines and amusement apparatus’.

4        So far as concerns both the goods in Class 9 and those in Class 28, it is stated that ‘none of the aforesaid goods relat[e] to the promotion of the sport of basketball and the field of music’.

5        The trade mark application was published in Community Trade Marks Bulletin No 35/2005 of 29 August 2005.

6        On 28 November 2005, the applicant, adp Gauselmann GmbH, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now 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.

7        The opposition was based on the earlier word mark Merkur, which was registered in Germany on 18 February 2002 and covers inter alia goods in Classes 9 and 28 corresponding to the following description:

–        Class 9: ‘Electrotechnical and electronic apparatus, devices, instruments and machines (included in Class 9); automatic machines providing services requiring payment; automatic machines, operated by coins, banknotes, tokens of value, magnetic cards, microprocessor chip devices or tickets; electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus; coin and token-operated entertainment machines; children entertainment machines and parts of these goods; betting apparatus; mechanisms for coin-operated apparatus including coin switching devices, banknote testing sets, money-changing apparatus; aforesaid goods also in connection with money and token-operated entertainment machines, gaming machines and sports machines; video game machines and instruments’;

–        Class 28: ‘Hand-held consoles for playing electronic games’.

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

9        On 26 June 2007, the Opposition Division rejected the opposition.

10      On 8 August 2007, the applicant filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

11      By decision of 12 January 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that the relevant public, which was made up, in German territory, of average consumers belonging to the younger generation as well as of licensees or purchasers of game machines or amusement apparatus, who are normally the owners of places such as shopping malls, cafes or amusement parks, was considerably more observant, attentive and circumspect than if the goods had been everyday consumer goods. Furthermore, the Board of Appeal found that, although the goods were similar and some of them were even identical visually, the signs were similar to a limited degree and were aurally and conceptually different. Consequently, there was no likelihood of confusion between the marks at issue, even in respect of possibly identical goods.

 Forms of order sought

12      The applicant claims that the Court should:

–        declare that the contested decision is contrary to Regulation No 40/94;

–        declare that the mark applied for is covered by the prohibition laid down in Article 8(1)(b) of Regulation No 40/94;

–        order OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 The first head of claim

14      By its first head of claim, the applicant requests the Court to declare that the contested decision is contrary to Regulation No 40/94. It is, however, apparent from the application that the applicant in essence seeks the annulment of the contested decision on the ground that the Board of Appeal erred in finding that there was no likelihood of confusion between the mark applied for and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 40/94 (see, to that effect, Case T-291/03 Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi (GRANA BIRAGHI) [2007] ECR II-3081, paragraph 19). It follows that the first head of claim must be understood as seeking the annulment of the contested decision.

 Admissibility of Annex 5 to the application, submitted for the first time before the Court

15      According to OHIM, the sworn declaration of Mr G. R., attached as Annex 5 to the application, was not submitted during the administrative procedure and must be declared inadmissible.

16      In the course of the procedure before OHIM, the applicant put forward the argument that, to a German consumer, the words ‘mercury’ and ‘merkur’ were very similar aurally and were conceptually identical. However, it did not file the said declaration attesting to such similarities, which had the same date as that on which this action was brought, namely 13 March 2009. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, such documents must be excluded, without it being necessary to assess their probative value (Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited). It follows that Annex 5 to the application is inadmissible.

 The single plea in law: infringement of Article 8(1)(b) of Regulation No 40/94

17      In support of its application for annulment, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94. It submits that there is a likelihood of confusion between the marks at issue claiming, first, that the goods covered by those marks are identical, secondly, that the word ‘mercury’ is dominant and that the word element ‘archer maclean’s’ is ancillary in the mark applied for and, lastly, that the words ‘mercury’ and ‘merkur’ are visually, aurally and conceptually similar. OHIM disputes the applicant’s arguments.

18      Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), earlier trade marks means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

19      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited). In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

20      In the present case, having regard to the goods concerned, the relevant public is made up, as the Board of Appeal pointed out in paragraph 19 of the contested decision, of consumers belonging to the younger generation who are interested in computer and video games, but also of professionals who specialise in that area and are owners of and/or operate, inter alia, shopping malls, cafes or amusement parks. Furthermore, the earlier mark on which the opposition is based is registered in Germany, which is therefore the relevant territory for the purpose of applying Article 8(1)(b) of Regulation No 40/94. Lastly, as the Board of Appeal also pointed out in paragraph 19 of the contested decision, the relevant public’s attention will necessarily be greater than for everyday consumer goods. Such a finding is based on the value of the goods in question and on the particular attention paid, first, by the professional public when what are involved are goods sold in its area of specialisation and, secondly, by consumers belonging to the younger generation, who have a definite interest in goods such as the goods at issue of which they have specific expectations, for example, at the technological level.

21      As regards the comparison of the goods concerned, it must be borne in mind that, in order to assess the similarity between the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited). Where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see, to that effect, ARTHUR ET FELICIE, paragraph 34 and the case-law cited).

22      In the present case, according to the applicant, the goods covered by the marks at issue are identical. OHIM shares the view of the Board of Appeal, according to which the goods designated by the mark applied for are similar to those covered by the earlier mark, if not identical, as regards ‘coin, card or counter operated arcade game machines and amusement apparatus’.

23      In that regard, it must be held that, first, as the Board of Appeal found, the ‘coin, card or counter operated arcade game machines and amusement apparatus’ covered by the mark applied for, in Class 28, are identical to the ‘automatic machines, operated by coins, banknotes, tokens of value, magnetic cards, microprocessor chip devices or tickets’ and to the ‘coin and token-operated entertainment machines’ in Class 9 designated by the earlier trade mark. The latter, which cover all sorts of machines, whether having an entertainment purpose or not, operated by inserting something which has a value, include the abovementioned goods covered by the mark applied for, which relate specifically to games. Secondly, and contrary to what the Board of Appeal found, the ‘arcade video game machines’ in Class 28 covered by the mark applied for and the ‘electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus’ in Class 9 designated by the earlier mark are also identical. The latter goods, which are of the same kind as the former, include all kinds of machines for game and entertainment purposes, like arcade video game machines, which are intended for use in places which are open to the public.

24      Lastly, as the Board of Appeal found, the ‘computer game programs; game cartridges; cassettes and circuit boards containing game programs for use with hand-held or arcade video game machines’ in Class 9 covered by the mark applied for are complementary to the ‘electric and electronic machines and apparatus for game, amusement and entertainment purposes; Gaming and entertainment apparatus; coin and token-operated entertainment machines; children entertainment machines’ and ‘hand-held consoles for playing electronic games’ in Classes 9 and 28 designated by the earlier mark. The machines and apparatus for game and entertainment purposes and hand-held consoles for playing electronic games enable games programs as well as cassettes and circuit boards containing game programs to be read and are therefore important for the use of the latter. The relevant public will therefore perceive that there is a close connection between the abovementioned goods covered by the marks at issue and may think that the same undertaking is responsible for their manufacture or supply (see, to that effect, Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraphs 57 and 58 and the case-law cited). On account of their complementarity, those goods must also be regarded as having a certain degree of similarity.

25      The identical nature of certain goods covered by the marks at issue, accepted in paragraph 23 above, is not called into question by the fact that goods in different classes were found to be identical. The same consideration applies as regards the similarity of certain goods covered by the marks at issue, which is accepted in paragraph 24 above. Furthermore, as the Board of Appeal found, the fact that the goods in Classes 9 and 28 covered by the mark applied for do not relate to the promotion of the sport of basketball and the field of music (see paragraph 4 above) does not detract from the identity or similarity of the goods covered by the marks at issue. In view of the foregoing, it must be held that the goods designated by the marks at issue are in part identical and in part similar.

26      As regards the comparison of signs, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43).

27      In the present case, after pointing out the accessory nature of the word element ‘archer maclean’s’ in the mark applied for, the applicant argues that the element ‘mercury’ is the dominant and distinctive element of that mark. It submits that the element ‘archer maclean’s’ should not be taken as a basis for comparing the signs at issue visually, particularly since it corresponds to the name of the company which filed the trade mark application and taking such an element as a basis would mean that any natural person or company could, in order to register its own mark, use the mark of a competitor by adding its own name to the name of that mark and then claim that there were differences between those two marks. The applicant stresses that the signs at issue are visually similar by comparing the words ‘merkur’ and ‘mercury’ and claiming that the relevant public would attach greater importance to the word ‘mercury’ than to its graphic elements. It adds that the abovementioned words are aurally similar, having regard to the fact that the word ‘mercury’ wholly incorporates the word ‘merkur’ and that their pronunciation by the relevant public is ‘clearly similar’. Lastly, those words are identical conceptually. OHIM disputes all those arguments.

28      In that regard, it must be borne in mind that the marks at issue are, first, the word mark Merkur and, secondly, the figurative mark Archer Maclean’s Mercury. As regards the latter, the word ‘mercury’ is written in printed characters in a novel font with large letters, which are stylised and give the impression that the word is written in mercury. Furthermore, the first letter ‘m’, which is written as a capital in a specific style, is not, at least as regards the first stroke of that letter, placed exactly at the same level as the rest of the word and therefore dominates it. As for the element ‘archer maclean’s’, it is written in printed characters in a smaller font than that mentioned above, but it is positioned above the letters ‘ercury’ of the word ‘mercury’ and therefore next to the high part of the initial capital letter ‘M’ of that word.

29      In view of the characteristics of the element ‘mercury’ connected with the size of its letters, its novel font and the specific features of the initial capital letter ‘M’, the importance of that element in the mark applied for cannot be disputed. However, it is not the only element which members of the relevant public will keep in their minds. The relevant public will not be able to overlook the word element ‘archer maclean’s’, which is clearly visible and cannot escape their attention. Consequently, since the element ‘archer maclean’s’ is not negligible, the marks at issue must be compared on the basis of the overall impression made, without brushing aside any of their elements but according greater weight, as regards the mark applied for, to the word ‘mercury’. In that regard, the applicant’s argument in respect of the risks connected with the fact that the element ‘archer maclean’s’ is the name of the company which filed the trade mark application must be rejected since, in the present case, that element is not being taken as a basis for declaring that there are differences between the marks at issue, but is merely being taken into account, among other elements, in particular the element ‘mercury’, in the overall comparison which must be carried out.

30      First, as regards the visual comparison, it must be pointed out that the words ‘mercury’ and ‘merkur’, which consist of seven and six letters respectively, have the first three letters, ‘m’, ‘e’ and ‘r’ in common, as well as the letters ‘u’ and ‘r’, which occupy the fifth and sixth positions respectively in the two abovementioned words. It may therefore be deduced from those elements that there is some visual similarity between the marks at issue.

31      However, the words ‘mercury’ and ‘merkur’ differ by reason of the letters ‘c’ and ‘k’, which are positioned in the middle of those words, and the letter ‘y’, which is positioned at the end of the element in the mark applied for. The presence of the element ‘archer maclean’s’, consisting of 14 letters, which contributes visually to the overall impression made by the mark applied for and which members of the relevant public will keep in their minds, further weakens the visual similarity of the marks at issue.

32      The specific figurative features of the element ‘mercury’ are not negligible. However, there is no need to take them into consideration since, as the earlier mark is a word mark, there is nothing to prevent it from being used in different scripts, even in a form comparable to that used by the mark applied for (see judgment of 29 October 2009 in Case T-386/07 Peek & Cloppenburg v OHIM – Redfil (Agile), not published in the ECR, paragraph 27 and the case-law cited).

33      Secondly, as regards the aural comparison, although it is true that the sign Merkur features in the word ‘mercury’, the fact none the less remains that those words are distinguished by the final letter ‘y’, which appears only in the word ‘mercury’. Therefore, whether the words are pronounced according to English or German phonetics, their pronunciation will be different since, first, the word ‘merkur’ consists of two syllables, while the word ‘mercury’ consists of three syllables, and, secondly, their endings differ. Furthermore, it must be admitted that most of the relevant public, in particular the younger members of the public concerned in the present case, but probably also the professionals who specialise in the games and entertainment area, will perceive ‘mercury’ to be an English word, with the result that it will be pronounced according to English phonetics, that is to say, differently from the word ‘merkur’. Therefore, even if, as the Board of Appeal found in paragraph 27 of the contested decision, the word element ‘archer maclean’s’ is not pronounced, nevertheless, as the Board of Appeal stated in the same paragraph of that decision, the signs at issue are different aurally.

34      Thirdly, as regards the conceptual comparison, it is common ground that the relevant public will immediately perceive the different meanings of the German word ‘merkur’, which refers to the planet and to the Roman god of the same name. However, contrary to what the Board of Appeal stated in paragraph 28 of the contested decision, that word does not refer to the metal ‘mercury’, which, in German, is translated as ‘Quecksilber’. As regards the word ‘mercury’, which has no meaning in German, there is no doubt that the relevant public will immediately perceive that it is an English word, which will require translation in order to be understood. Nevertheless, it is possible that some of the relevant public will not manage to translate that word and will therefore not understand its meaning. At the very most, as the Board of Appeal stated in paragraph 28 of the contested decision, that public will think it refers to a surname of English origin.

35      As regards the part of the relevant public which will understand the meanings of the word ‘mercury’ in English, namely referring to the planet, to the Roman god and to the metal of the same name, it must be pointed out at the outset that no connection can be established between that word and the sector to which the goods at issue belong. By contrast, in view of certain figurative aspects of the sign applied for, namely the liquid appearance of the writing and the silvery grey colour, which give the impression that the word is written in mercury, it can be considered that the meaning attached to the metal will be that perceived first by the abovementioned part of the public. Since the German word ‘merkur’ does not refer to the metal, the words in question will not be associated conceptually by that part of the relevant public. It follows that the sign applied for and the earlier sign are conceptually different. That finding can only be strengthened by the presence of the element ‘archer maclean’s’, which must be taken into account in the analysis.

36      The assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Joined Cases T‑81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74). A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 45).

37      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited).

38      In the present case, the Board of Appeal found that, having regard to the visual, aural and conceptual differences and the degree of attention on the part of the relevant public, there was no likelihood of confusion between the marks at issue, even in respect of possibly identical goods. The applicant claims that, because of the identical nature, visually, aurally and conceptually, of those marks, there is a likelihood of confusion, which is strengthened by the identical nature of the goods at issue.

39      In that regard, it is apparent from the analysis carried out in paragraphs 30 to 35 above, which served to show that the signs at issue were slightly similar visually and that they were different both aurally and conceptually, that the relevant public, even so far as concerns the identical products, will not perceive those signs as having the same commercial origin, namely that the goods covered by the mark applied for come from the undertaking which is the proprietor of the earlier trade mark or from an undertaking economically linked to that undertaking. That finding is reinforced by the high degree of attention on the part of the relevant public, which was mentioned in paragraph 20 above.

40      Consequently, the Board of Appeal was right to find that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 40/94. The single plea in law put forward by the applicant in support of its claims and, consequently, the action in its entirety must therefore be rejected as unfounded, without there being any need to rule on the admissibility of the second head of claim.

 Costs

41      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders adp Gauselmann GmbH to pay the costs.

Forwood

Moavero Milanesi

Schwarcz

Delivered in open court in Luxembourg on 9 September 2010.

[Signatures]