JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

2 October 2013 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark BOOMERANG – Earlier Community figurative mark BoomerangTV – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑285/12,

The Cartoon Network, Inc., established in Wilmington, Delaware (United States), represented by I. Starr, Solicitor,

applicant,

v

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

defendant,

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

Boomerang TV, SA, established in Madrid (Spain), represented by A. Canela Giménez, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 2 April 2012 (Case R 699/2011-2) concerning opposition proceedings between Boomerang TV, SA and The Cartoon Network, Inc.,

THE GENERAL COURT (Seventh Chamber),

composed, at the time of the deliberation, of A. Dittrich, President, I. Wiszniewska-Białecka (Rapporteur) and M. Prek, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 28 June 2012,

having regard to the response of OHIM lodged at the Court Registry on 23 October 2012,

having regard to the response of the intervener lodged at the Court Registry on 8 October 2012,

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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 19 October 1999, the applicant, The Cartoon Network, Inc., filed an application for registration of 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the word sign BOOMERANG.

3        The services in respect of which registration was sought fall within Classes 38 and 41 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 38: ‘Cable and television broadcasting services; broadcasting programmes directed to children and young adults via a global computer network’;

–        Class 41: ‘Entertainment services, namely a series of television and cable television programmes targeted primarily to children and young adults’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2000/088 of 6 November 2000.

5        On 21 November 2000, Mr Pedro Ricote Saugar and Mr Jose Matias Abril Sanchez filed a notice pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) opposing the registration of the mark for all the services specified in the application for registration.

6        The opposition was based, in particular, on the Community figurative mark, filed on 3 May 1999 and registered on 23 October 2009, under No 1160050, for ‘film and recording studios, rent of videos, concourse (scattering), installation of television and radio programmes; production of films’, in Class 41, represented below:

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

8        On 16 January 2008, the earlier mark was transferred to the intervener, Boomerang TV, SA.

9        By decision of 26 January 2011, the Opposition Division found that there was a likelihood of confusion and upheld the opposition.

10      On 25 March 2011, the applicant filed a notice of appeal at OHIM against the Opposition Division’s decision.

11      By decision of 2 April 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal considered that the relevant public consisted of both professionals and the general public throughout the territory of the European Union. It considered that there was a degree of similarity between the services, in Classes 38 and 41, referred to by the mark applied for and the ‘production of films’ services, in Class 41, referred to by the earlier mark. The Board of Appeal found that, as the conflicting signs were so similar, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even though certain consumers might have a higher than average level of attention. The Board of Appeal further noted that the new evidence adduced by the applicant did not demonstrate the peaceful coexistence on the market of the conflicting marks.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

13      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16      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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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).

17      In the present case, as regards the relevant public, the Board of Appeal considered that the services covered by the conflicting marks were directed at both professionals, whose level of attention is high, and the general public, whose level of attention is average.

18      The applicant disputes that assessment on the ground that the services referred to by the conflicting marks are directed to different publics with different levels of attention. It submits that the services referred to by the mark applied for are directed to the general public, which will be reasonably well-informed, observant and circumspect, whereas the services covered by the earlier mark are directed at a more specialised public, that is to say, to individuals and business entities involved in the production and commercialisation of films, with a high level of attention, and not to the general public.

19      It should be observed, as a preliminary point, that, according to the case-law, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 1 July 2008 in Case T‑328/05 Apple Computer v OHIMTKS‑Teknosoft (QUARTZ), not published in the ECR, paragraph 23, and judgment of 24 May 2011 in Case T‑408/09 ancotel v OHIMAcotel (ancotel.), not published in the ECR, paragraph 38).

20      As regards the services covered by the conflicting marks, it should be observed that some of the services covered by the earlier mark are intended for professionals, such as ‘cinema and recording studios’ services, and others are intended for the general public, such as ‘rent of videos’ services. As regards the services covered by the mark applied for, these are programme broadcasting services aimed at the general public, viewers of programmes broadcast by cable, by television and on the Internet, but also at a specialised public. As OHIM observes, the ‘cable and broadcasting services’ and the services of ‘broadcasting programmes directed to children and young adults via a global computer network’, in Class 38, are also directed to other undertakings, by way of subcontracting or selling packages of deliverable broadcast content for re-transmission. Those services are also directed at broadcasters or at specialists for transmission via third party platforms. ‘Entertainment services, namely a series of television and cable television programmes targeted primarily to children and young adults’, in Class 41, may be supplied to television, cable and Internet broadcasters for re-transmission. In addition, audiovisual professionals, such as film or documentary directors, also use broadcasting services for their works. The applicant puts forward no argument to substantiate its assertion that the only audience for the services covered by the mark applied for would be television viewers.

21      It should be observed that the only services covered by the earlier mark that were taken into consideration by the Board of Appeal when it compared the services covered by the conflicting marks are film production services.

22      Film production services are aimed solely at professionals in the audiovisual sector. Although the general public watches the films produced, it does not itself use film production services.

23      Admittedly, as OHIM maintains, film production services also target the general public, in so far as those services may be provided to broadcasters who, in turn, are influenced by the general public, the production studios broadcast their name to the general public together with the produced content and that knowledge can shape the public’s expectations of the type of content they wish to be broadcast. However, that does not mean that the general public is itself the target of the ‘production of film’ services. It should be borne in mind that the relevant public for the assessment of the likelihood of confusion is composed of the audience for the services in question and not of other categories of persons who have only an indirect relationship with the provider of those services.

24      Accordingly, the Board of Appeal was wrong to take the view that the film production services covered by the earlier mark were also addressed to the general public.

25      Consequently, in accordance with the case-law cited at paragraph 19 above, the relevant public, which the Board of Appeal ought to have taken into consideration when assessing the likelihood of confusion, consists of professionals.

26      As regards the comparison of the services concerned, in order to assess the similarity between the goods or services in question, it is necessary, according to settled case-law, to take into account all the relevant factors relating to the way in which those goods or services are connected; those factors include, in particular, their nature, their purpose, their method of use and whether they are in competition which each other or are complementary, goods or services which are complementary being those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see Case T‑420/03 El Corte Inglés v OHIMAbril Sánchez and Ricote Saugar (BoomerangTV), [2008] ECR II‑837, paragraph 98 and the case-law cited).

27      In the present case, the Board of Appeal considered that the services of ‘production of films’, in Class 41, covered by the earlier trade mark, and the services in Classes 38 and 41 covered by the mark applied for had a certain degree of similarity. It considered that broadcasters also acted as film producers and that, although the nature and purposes of the services covered by the mark applied for and film production services covered by the earlier mark were somewhat different, those services could and did complement each other.

28      The earlier mark relates, in particular, to film production services. The mark applied for relates to broadcasting services via cable, television or the Internet, especially of programmes targeted at children or young adults.

29      Admittedly, as the Board of Appeal observed, the film production services covered by the earlier mark and the broadcasting services covered by the mark applied for are different in nature and purpose.

30      However, first, as the Board of Appeal also observed, film production services and broadcasting services are often carried out by the same undertakings, which act as both producer and broadcaster. That is the case of many television channels in Europe and the example of the BBC given by the Board of Appeal is relevant.

31      In addition, it should be observed that the applicant itself acknowledges that broadcast and production services may be supplied by the same undertakings where it maintains that, while television broadcasters may also be film producers, it is unlikely that a film producer will develop a broadcasting service. Furthermore, the applicant’s mere unsubstantiated contention that a film producer would not develop a broadcasting service is of no relevance and is contradicted by the example, provided by OHIM in its response, of Walt Disney Studios, which has set up a cable and satellite television network.

32      Secondly, from the point of view of the users of those services, it should be observed that professionals in the audiovisual sector, such as writers and directors of films, documentaries or television programmes, use production services in order to make their films or programmes and at the same time also use broadcasting services so that those films or programmes may be viewed by the public on television channels, on cable or on the Internet.

33      Audiovisual content is generally produced and made so that it can then be broadcast to the public. Film production services and broadcasting services are important for each other and there is therefore indeed a close connection between those services. Accordingly, those services must be considered to be complementary, within the meaning of the case-law cited at paragraph 26 above.

34      In that regard, it should be observed that the applicant acknowledges that entertainment and media services professionals will perceive the theoretical complementarity of content production and delivery. The fact, as the applicant maintains, that they will be aware of their different positions in the ‘supply chain’ and that they will see them as distinct services is of no relevance for the assessment of their complementarity.

35      When it is taken into account that the services in question may be supplied by the same undertakings and that they are complementary from the point of view of those who receive the services, the Board of Appeal was therefore correct to take the view that the services covered by the mark applied for, in Classes 38 and 41, and the services of ‘production of films’, in Class 41, covered by the earlier mark had a degree of similarity.

36      That finding is not called into question by the applicant’s other arguments.

37      First, the applicant claims that the services in question are different in their nature and purpose, as the broadcasting services covered by the mark applied for relate to the transmission or distribution to the general public of video and audio content, while the film production services covered by the earlier mark involve the creation of content. That argument does not call into question the finding of the Board of Appeal, referred to at paragraph 27 above, which itself found that there was a difference in nature and purpose between the services in question, but considered that they were complementary.

38      Second, the argument relating to the perception of the services in question by viewers, in particular children and young adults, is irrelevant, since it was found at paragraph 25 above that they were not part of the relevant public in the present case.

39      Third, as regards the earlier decisions of OHIM to which the applicant refers, it is sufficient to observe that the decisions which the Boards of Appeal are led to adopt, under Regulation No 207/2009, concerning the registration or the protection of a sign as a Community trade mark, come within the exercise of competence in which they have no 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 Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (Case C-37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47, and Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 36).

40      As regards the comparison of the signs, it should be observed that the applicant does not dispute the Board of Appeal’s finding that the conflicting marks are similar.

41      According to the case-law, the global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).

42      Furthermore, as the relevant public is composed solely of professionals, it is therefore necessary to assess the likelihood of confusion on the basis of a higher than average level of attention. The specialised public is likely to display a higher than average degree of attention in the selection of the goods and services in question (see, to that effect, Case T‑211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II‑1297, paragraph 24 and the case-law cited).

43      In the present case, the Board of Appeal, taking into account that the services in question are similar and that the conflicting marks are similar, found that, even though certain consumers might have a higher than average level of attention, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 could not be excluded.

44      It follows that the Board of Appeal found that there was a likelihood of confusion both for the general public and for the part of the relevant public composed of professionals with a high level of attention.

45      The Court agrees with the Board of Appeal, that owing to the existence of a strong similarity between the conflicting marks and a similarity between the services in question there is a likelihood of confusion for professionals. The error which the Board of Appeal made in including the general public in the definition of the relevant public therefore has no consequence for that finding.

46      The applicant puts forward no argument capable of calling into question that finding of the existence of a likelihood of confusion.

47      First, the applicant maintains that the Board of Appeal’s assertion that the similarity between the signs ‘reinforces’ the degree of similarity between the services is not consistent with the case-law cited at paragraph 41 above, which states that a lesser degree of similarity between the services may be offset by a greater degree of similarity between the marks, and vice versa.

48      In that regard, as OHIM observes, although the form of words used by the Board of Appeal does not correspond precisely to the words used in the case-law, there can be no doubt that, in using the word ‘reinforces’, the Board of Appeal is referring to the idea of the interdependence of factors and ‘offsetting’ in the case-law cited by the applicant. In addition, the applicant does not explain how a different interpretation of that assertion of the Board of Appeal would call into question its finding that there was a likelihood of confusion.

49      Second, the applicant also disputes the Board of Appeal’s use of the expression that a likelihood of confusion ‘cannot be excluded’. In the applicant’s submission, the existence of a likelihood of confusion cannot be presumed, but must be based on a positive finding, particularly where, as in the present case, the earlier trade mark has a normal level of distinctiveness. It is sufficient to observe that, as OHIM submits, the form of words used by the Board of Appeal means that ‘a likelihood of confusion exists’.

50      Third, the applicant disputes the Board of Appeal’s finding of a likelihood of confusion on the ground that it failed to take into account all the factors listed in the case-law. It is sufficient to recall that, in the present case, in order to find that a risk of confusion existed, the Board of Appeal took as its basis a global assessment which took into account the existence of similarity between the conflicting marks and at the same time the existence of similarity between the services in question and that it took into account a relevant public having a higher than average level of attention. The applicant does not explain how that reasoning would not be consistent with the requirements of the case-law and it cannot claim that the Board of Appeal found that there was a likelihood of confusion solely on the basis of the similarity between the conflicting marks without taking other factors into account.

51      Fourth, the applicant claims that the Board of Appeal did not take a key factor into account in assessing the likelihood of confusion, namely the time when the confusion might arise in relation to the conflicting marks. For the ‘production of films’ services, covered by the earlier mark, the applicant submits that the likelihood of confusion must be assessed at the time when the services are evaluated and purchased and that media and entertainment services professionals display a particularly high level of attention. The applicant merely asserts that, owing to their high level of attention, the professionals will distinguish between the applicant’s services and those of the intervener, irrespective of the use of similar trade marks.

52      In that regard, it should be observed that the applicant adduces no evidence to show that an audiovisual professional would not conclude that film production services and broadcasting services, covered by similar marks, come from the same undertaking or from economically-linked undertakings, when there are numerous examples in the European Union of companies, such as the BBC, referred to in the contested decision, that pursue both activities. Contrary to the applicant’s assertion, the mere fact that the relevant public has a higher than average level of attention is not sufficient to preclude the likelihood of confusion when both the conflicting marks and the services in question are similar.

53      Last, the applicant disputes the Board of Appeal’s assessment concerning the coexistence of the conflicting marks.

54      The Board of Appeal considered that the applicant had adduced no evidence of the way in which the consumer encountered the conflicting marks on the market and the services which they covered and that the evidence did not show that there was no confusion during the time when the trade marks were marketed. The Board of Appeal further stated that although in certain circumstances it might consider evidence of the coexistence of the conflicting marks on the market, such additional information did not exist in the present case and that evidence of coexistence in the trade mark registers was irrelevant.

55      It is sufficient to bear in mind that, admittedly, the possibility cannot be entirely precluded that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the conflicting marks are identical (Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86, and Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑89, paragraph 68).

56      It is clear from that case-law that, contrary to the applicant’s contention, it was required to demonstrate that the coexistence of the marks on which it relied was based on the absence of a likelihood of confusion on the part of the relevant public.

57      As regards the evidence adduced by the applicant before the Board of Appeal, the applicant claims that it was sufficient to demonstrate the coexistence of the conflicting trade marks in several countries of the European Union.

58      In that regard, it should be observed that the evidence adduced by the applicant consists in extracts from national registers and an affidavit from one of its directors stating the dates of first use of the trade mark BOOMERANG in certain Member States (the earliest such date being 27 May 2000), advertising expenditure incurred in some Member States since 2001, examples of advertising materials from 2003 and viewing figures in several Member States from 2008 for the BOOMERANG television channel.

59      It is sufficient to state, as the Board of Appeal found, that that evidence relates solely to the mark applied for, but gives no indication of the way in which the relevant public encountered the conflicting marks on the market and the services for which they were used. Nor can use of the signs on the market be inferred from the national registers, and the affidavit from the applicant itself is disputable evidence which is not substantiated by additional evidence from independent sources. The Board of Appeal was therefore correct to consider that that evidence was insufficient to demonstrate the coexistence of the conflicting marks.

60      It follows that the single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.

61      The action must therefore be dismissed.

 Costs

62      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders The Cartoon Network, Inc. to pay the costs.

Dittrich

Wiszniewska-Białecka

Prek

Delivered in open court in Luxembourg on 2 October 2013.

[Signatures]