JUDGMENT OF THE GENERAL COURT (First Chamber)

21 April 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark ‘Fitcoin’ – Earlier national, international and Community figurative marks ‘coin’ – Relative ground for refusal – Relevant public – 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‑249/08,

Coin SpA, established in Venice (Italy), represented by P. Perani and P. Pozzi, lawyers,

applicant,

v

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

defendant,

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

Dynamiki Zoi AE, established in Athens (Greece),

ACTION brought against the decision of the First Board of Appeal of OHIM of 15 April 2008 (Case R 1429/2007‑1), relating to opposition proceedings between Coin SpA and Dynamiki Zoi AE,

THE GENERAL COURT (First Chamber),

composed of F. Dehousse, acting for the President, I. Wiszniewska-Białecka (Rapporteur) and K. O’Higgins, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Court Registry on 24 June 2008,

having regard to the response lodged at the Court Registry on 16 October 2008,

having regard to the written questions put to the parties by the Court,

having regard to the replies to the written questions lodged by the parties at the Court Registry on 2 and 9 October 2009,

further to the hearing on 24 November 2009,

gives the following

Judgment

 Background to the dispute

1        On 27 April 2004, Dynamiki Zoi AE 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        The mark for which registration was sought is the word mark ‘Fitcoin’.

3        The goods and services in respect of which registration was sought are in Classes 16, 25, 28, 35, 36 and 41 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 16: ‘Paper, cardboard and goods made from those materials; pamphlets, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers’ type; printing blocks’;

–        Class 25: ‘Clothing, including footwear and slippers’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles (except clothing); playing cards’;

–        Class 35: ‘Advertising, business management, business administration, office functions, stocking a variety of goods on behalf of third parties so that customers can examine at their leisure and buy the goods’;

–        Class 36: ‘Insurance, financial affairs, monetary affairs, real estate affairs’;

–        Class 41: ‘Education, providing of training, entertainment, sporting and cultural activities, gymnasiums; providing information on the aforesaid services via the Internet’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 40/2005 of 3 October 2005.

5        On 30 December 2005, the applicant, Coin SpA, gave notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of all the goods and services covered by the application for registration.

6        The opposition was based on a number of earlier rights, all containing the element ‘coin’. As is apparent from the case-file, the earlier trade marks and the goods and services covered by those marks, advanced in support of the opposition, are, in particular, the following:

–        the figurative mark represented below:

which is the subject of Community Registration No 109827, applied for on 1 April 1996 and granted on 26 October 1998, in respect of goods and services in Classes 16, 25, 28 and 35 and corresponding, for each of those classes, to the following description:

–        Class 16: ‘Paper, cardboard and goods made from these materials not included in other classes; printed matters; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards’;

–        Class 35: ‘Advertising, business management, business administration, office functions’;

–        the figurative mark represented below:

which is the subject of Italian Registration No 160126, applied for on 17 April 1962 and granted on 19 September 1962, in respect of goods in Class 25 and corresponding to the following description: ‘Clothes and clothing in general’;

–        the figurative mark represented below:

which is the subject of Italian Registration No 169548, applied for on 23 October 1963 and granted on 14 May 1965, extended under the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), to Austria, Benelux, France, Hungary and Portugal, in respect of goods in Classes 16 and 28 and corresponding, for each of those classes, to the following description:

–        Class 16: ‘Articles of stationery, books, newspapers, reviews and publications in general; articles for gifts’;

–        Class 28: ‘Toys and playthings in general’;

–        the figurative mark represented below:

which is the subject of Italian Registration No 240286, applied for on 18 July 1969 and granted on 23 September 1969, extended under the Madrid Agreement to Austria, Benelux, France and Hungary, in respect of goods in Class 25 and corresponding to the following description: ‘Clothes and clothing in general’;

–        the figurative mark represented below:

which is the subject of Italian Registration No 240305, applied for on 5 August 1969 and granted on 26 September 1969, in respect of goods and services in Classes 16, 25, 28, 35, 36 and 41 and corresponding, for each of those classes, to the following description:

–        Class 16: ‘Paper, cardboard and goods made from these materials not included in other classes; printed matters; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards’;

–        Class 35: ‘Advertising, business management, business administration, office functions’;

–        Class 36: ‘Insurance, financial affairs, monetary affairs, real estate affairs’;

–        Class 41: ‘Education and entertainment services’;

–        the figurative mark represented below:

which is the subject of Italian Registration No 253233, applied for on 25 May 1971 and granted on 4 August 1971, in respect of goods and services in Classes 16, 25, 28, 35, 36 and 41 and corresponding, for each of those classes, to the following description:

–        Class 16: ‘Paper, cardboard and goods made from these materials not included in other classes; printed matters; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards’;

–        Class 35: ‘Advertising, business management, business administration, office functions’;

–        Class 36: ‘Insurance, financial affairs, monetary affairs, real estate affairs’;

–        Class 41: ‘Education and entertainment services’;

–        the figurative mark represented below:

which is the subject of International Registration No 381015, applied for on 4 August 1971, valid in Germany in respect of goods and services in Classes 16, 25, 28, 35, 36 and 41, in Austria in respect of services in Class 35, in Benelux in respect of goods in Classes 16, 25 and 28, in Spain in respect of services in Class 36, in Hungary in respect of goods and services in Classes 16, 25, 28, 35, 36 and 41, in Portugal in respect of goods in Classes 16, 25 and 28, and in Slovenia in respect of goods and services in Classes 16, 25, 28, 35, 36 and 41. That international registration was based on the Italian Registration No 253233. The goods and services correspond, for each of those classes, to the following descriptions:

–        Class 16: ‘Paper and paper goods, cardboard and cardboard goods; printed matter; newspapers and periodicals; books; bookbinding material; photographs; stationery objects and goods, adhesive materials for stationery; artists’ supplies; paint brushes; typewriters and office requisites (except furniture); instructional or teaching material (except apparatus); playing cards; printing type; printing blocks’;

–        Class 25: ‘Clothing, including shoes, boots and slippers’;

–        Class 28: ‘Games and toys; gymnastic and sports articles (except for clothing); Christmas tree ornaments and decorations’;

–        Class 35: ‘Advertising and business services, such as: advertising agencies, marketing, consultancy services for companies’ (for Germany, Hungary and Slovenia), and ‘Advertising and consultation services, business organisation, monitoring, direction, inspection and surveillance; business information; expert reports on efficiency, productivity and yield; cost price analysis; business consultations’ (for Austria);

–        Class 36: ‘Real estate agencies, insurance and financial services’;

–        Class 41: ‘Instruction and show services’.

7        The grounds invoked in support of that opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8        By decision of 9 July 2007, the Opposition Division rejected the opposition. The Opposition Division confined itself to assessing the likelihood of confusion by taking into consideration, on the one hand, the mark ‘Fitcoin’ for which registration was sought and, on the other hand, the single earlier international registration No 381015 of the mark ‘coin’, on the ground that the latter mark had been registered in respect of categories of goods and services which were wider than those covered by the other earlier trade marks and that it was ‘closer’ to the ‘Fitcoin’ mark than the other earlier trade marks. It took the view, in essence, that even if the goods and services covered by the application for registration were identical or similar to those covered by the mark ‘coin’, the marks at issue were dissimilar visually and phonetically and, conceptually, had no meaning. The Opposition Division concluded that any likelihood of confusion was excluded.

9        On 4 September 2007, the applicant filed an appeal with OHIM, pursuant to 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, claiming that there was a likelihood of confusion on the part of the public throughout the territories to which the earlier rights extend, that is, pursuant to the earlier national registrations and the earlier international registration, the territories of ‘Italy, Benelux, Germany, Spain, France, Hungary, Austria, Portugal, Slovenia, as well as the entire European Community by virtue of its prior [Community Trade Mark] Registration No 109827’.

10      By decision of 15 April 2008 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. For its analysis of the similarity of the signs and the likelihood of confusion, the Board of Appeal took only the earlier Italian figurative trade marks ‘coin’ Nos 169548, 240305 and 253233 into account as earlier rights. In essence, the Board of Appeal found that the relevant public was the Italian general public, which has a varying degree of attentiveness. According to the Board of Appeal, the goods and services in respect of which registration of the mark ‘Fitcoin’ is sought are identical to those goods and services covered by ‘most of the earlier registrations, namely: Italian registrations Nos [169548, 240305 and 253233]’. With regard to the comparison of the conflicting signs, the Board of Appeal found that there was a low degree of visual similarity between the signs and a manifest phonetic difference, and that a conceptual comparison of the signs was not possible, since the words ‘coin’ and ‘fit’ have no meaning for the majority of Italian consumers. The Board of Appeal concluded that, assessed globally, the conflicting signs were not similar and that there was therefore no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

 Forms of order sought by the parties

11      In its application, the applicant claims that the Court should:

–        ‘totally alter’ the contested decision;

–        reject the application for registration of the ‘Fitcoin’ mark in its entirety;

–        order OHIM to pay the costs, including the costs of the opposition and appeal proceedings before OHIM.

12      At the hearing, the applicant stated that its first head of claim was to be understood as an application for annulment of the contested decision, withdrew its second head of claim and partially withdrew its third head of claim, requesting, subsequently, that OHIM be ordered to pay the costs. The Court took formal notice of those matters. Furthermore, as the minutes of the hearing indicate, the parties expressed their agreement with the presentation of the facts as set out in the report for the hearing.

13      OHIM contends 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 breach of Article 8(1)(b) of Regulation No 40/94.

 Arguments of the parties

15      The applicant submits, first, that the Board of Appeal erred in identifying the relevant public as consisting of Italian consumers, even though the protection of its earlier trade marks extends to several Member States, and indeed even to the European Union as a whole, and, secondly, that the conflicting signs are very similar visually and phonetically. It follows that there is a likelihood of confusion, all the more so as the earlier trade marks have a highly distinctive character acquired through their use and the element ‘coin’ maintains an independent distinctive role in the mark ‘Fitcoin’ for which registration is sought.

16      OHIM takes issue with that argument, claiming that, although the Board of Appeal took account only of the Italian public, any comparison of the conflicting signs from the point of view of the public in other territories would not alter the conclusion in relation to the assessment of the similarities of the signs and the likelihood of confusion. It takes the view that the conflicting signs are visually and phonetically very different, that they have little conceptual similarity for an English-speaking public, and that a conceptual comparison is not possible in respect of a non-anglophone public. Since the earlier ‘coin’ trade marks are not highly distinctive, and the element ‘coin’ in the mark ‘Fitcoin’ does not have an independent distinctive role within that mark, the conflicting signs give a different overall impression. OHIM adds that the assessment of the distinctive character of the earlier trade marks may be based only on an analysis of their inherent distinctiveness, as the reputation and/or distinctiveness of the earlier trade marks acquired through use was not relied on by the applicant in the proceedings before OHIM. OHIM concludes that the Board of Appeal correctly held that there was no likelihood of confusion.

 Findings of the Court

17      Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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. Under Article 8(2)(a)(i), (ii) and (iii) of Regulation No 40/94 (now Article 8(2)(a)(i), (ii) and (iii) of Regulation No 207/2009), the term ‘earlier trade marks’ is to be understood to refer to Community trade marks, trade marks registered in a Member State or at the Benelux Trademark Office, and trade marks registered under international arrangements which have effect in a Member State or the European Union, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

18      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the products or services at issue, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services identified (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32 and the case-law cited).

19      In the present case, it is apparent from the file relating to the proceedings before OHIM that the opposition was based on several earlier Community and national rights, as well as on international registrations, all containing the element ‘coin’ and covering, in particular, a number of goods and services in Classes 16, 25, 28, 35, 36 and 41. However, in support of its action, the applicant relied merely on some of those earlier rights, that is to say, those referred to by the Board of Appeal in the contested decision and set out in paragraph 6 above. Therefore, only those rights will be taken into account by the Court.

20      First of all, it must be noted that the Board of Appeal analysed the likelihood of confusion by taking into consideration, on the one hand, the mark ‘Fitcoin’ and, on the other, only the earlier Italian ‘coin’ trade marks Nos 169548, 240305 and 253233.

21      With regard to the assessment of the similarity of the goods and services at issue, the Board of Appeal found that the goods and services in respect of which registration of the mark ‘Fitcoin’ is sought are identical to the goods and services covered by those earlier Italian marks. That finding is not disputed by the parties.

22      With regard to the assessment of the similarity of the signs, the Board of Appeal confined itself to taking into account the perception of the Italian public. Accordingly, phonetically, it took the view that an Italian consumer would pronounce the word ‘coin’ in two syllables and the word ‘fitcoin’ in three syllables. Conceptually, it noted that the word ‘coin’ does not have any meaning for the vast majority of Italian consumers and that the word ‘fit’ also has no meaning in Italian. In the light of those factors, it found that there was no similarity between the conflicting marks and, consequently, no likelihood of confusion.

23      It must, however, be held, in the light of paragraph 6 above, that the protection afforded on the basis of the earlier Community trade mark No 109827 extends to all of the European Union and covers all goods and services in Classes 16, 25, 28 and 35, including the goods and services in those classes which are covered by the earlier Italian marks Nos 169548, 240305 and 253233. The protection afforded on the basis of International Registration No 381015 extends, in relation to the services in Classes 36 and 41, first, to German, Spanish, Hungarian and Slovenian territory for the services ‘real estate agencies, insurance and financial services’ (Class 36) and, secondly, to German, Hungarian and Slovenian territory for the services ‘Instruction and show services’ (Class 41). That description is not significantly different to that of the services covered by the earlier Italian marks Nos 240305 and 253233, namely ‘Insurance, financial affairs, monetary affairs, real estate affairs’ (Class 36) and ‘Education and entertainment services’ (Class 41). Furthermore, as International Registration No 381015 is based on the Italian Registration No 253233, the view must be taken that they do not cover different services.

24      It must be borne in mind that, under Article 8(1)(b) of Regulation No 40/94, the existence of a likelihood of confusion must be assessed on the part of the public in the territory in which the earlier mark is protected. It follows that, in order to reject an opposition, it is necessary to establish that there is no likelihood of confusion on the part of the public throughout the territory in which the earlier mark/marks is/are protected.

25      The Board of Appeal thus erred in concluding that there was no likelihood of confusion by confining itself to an analysis of the similarity of the signs and the likelihood of confusion in relation solely to the Italian public, without taking account of the average consumer in the European Union with respect to the goods and services in Classes 16, 25, 28 and 35, of average German, Spanish, Hungarian and Slovenian consumers with respect to the services in Class 36, and of average German, Hungarian and Slovenian consumers with respect to the services in Class 41.

26      It follows that, by taking account only of earlier Italian marks and by finding that there was no likelihood of confusion on that basis alone, even though the applicant had, in support of its opposition, also invoked earlier trade marks enjoying protection outside Italy and covering goods and services which are essentially identical to those covered by the earlier Italian marks, the Board of Appeal breached Article 8(1)(b) of Regulation No 40/94.

27      That conclusion cannot be brought into question by OHIM’s argument that the approach taken by the Board of Appeal of assessing the likelihood of confusion in relation only to Italian consumers should be upheld on the ground that a comparison of the conflicting signs from the point of view of the other relevant consumers would not alter the conclusion regarding the assessment of the similarity of the marks and the likelihood of confusion. Indeed, it cannot be ruled out that a full examination in relation to all of the relevant consumers might alter that conclusion.

28      In light of all of the foregoing, the single plea raised by the applicant must be upheld and the contested decision accordingly annulled, without there being any need to rule on the other arguments put forward by the applicant.

 Costs

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

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 15 April 2008 (Case R 1429/2007‑1);

2.      Orders OHIM to pay the costs.

Dehousse

Wiszniewska-Białecka

O’Higgins

Delivered in open court in Luxembourg on 21 April 2010.

[Signatures]