JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

3 February 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark ENERCON – Earlier Community word mark TRANSFORMERS ENERGON – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

In Case T‑472/07,

Enercon GmbH, established in Aurich (Germany), represented by R. Böhm and V. Henke, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), intervener before the Court, being

Hasbro, Inc., established in Pawtucket, Rhode Island (United States), represented by M. Edenborough, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 25 October 2007 (Case R 959/2006‑4), relating to opposition proceedings between Hasbro, Inc. and Enercon GmbH,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij (Rapporteur) President, V. Vadapalas and L. Truchot, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 21 December 2007,

having regard to the response of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) lodged at the Registry of the Court on 6 June 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 6 June 2008,

further to the hearing on 14 October 2009,

gives the following

Judgment

 Background to the dispute

1        On 25 August 2003, the applicant, Enercon GmbH, submitted an application for a Community trade mark to OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) under 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 trade mark for which registration is sought is the word sign ENERCON.

3        The goods for which registration is sought are in, inter alia, Classes 16, 18, 24, 25, 28 and 32 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 are described as follows:

–        Class 16: ‘Paper, cardboard and goods made from these materials (included in Class 16); printed matter, in particular brochures, catalogues, prospectuses; office requisites, stickers, labels; stationery, in particular pencil lead holders, pencils; packaging material and packing films, included in Class 16’;

–        Class 18: ‘Umbrellas, travelling bags and travelling sets; bags, in particular rucksacks, pouches, shoulder bags’;

–        Class 24: ‘Textile goods, in particular bath linen, bed blankets, bed linen, household linen, covers for cushions, coverlets; furniture coverings and fabrics; banners and flags’;

–        Class 25: ‘Clothing, in particular scarves, ties, cuffs, shirts, jackets, headbands, sweatshirts, T-shirts; headgear, in particular baseball caps and hats’;

–        Class 28: ‘Games and playthings, in particular puzzles, board games, cups for dice, card games, electronic games, dolls, teddy bears, toy balls ; sporting articles, in particular golf accessories’;

–        Class 32: ‘Beers, mineral and table waters; fruit juices and drinks; vegetable juices; non-alcoholic drinks’.

4        The application was published in Community Trade Marks Bulletin No 35/2004 of 30 August 2004.

5        On 30 November 2004 the intervener, Hasbro, Inc., filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for.

6        The opposition was based on the following earlier trade marks:

–        Community word mark TRANSFORMERS ENERGON, registered under number 3 152 121 for goods in Classes 16, 18, 24, 25, 28, 30 and 32;

–        unregistered trade marks TRANSFORMERS ENERGON and ENERGON, used in the United Kingdom for toys and games.

7        The opposition covered all the goods for which the earlier marks had been registered and used, and was directed against all the goods set out in the application for registration.

8        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and 8(4) and (5) of Regulation No 40/94 (now Article 8(1)(b) and 8(4) and (5) of Regulation No 207/2009).

9        By decision of 26 May 2006, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. Consequently, it did not examine the opposition in so far as it was based on Article 8(4) and (5) of Regulation No 40/94.

10      On 17 July 2006, the applicant filed a notice of appeal at 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 25 October 2007 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It confirmed the findings of the Opposition Division, first, that the goods covered by the trade marks at issue were identical and, second, that the trade marks at issue were similar enough to give rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

 Procedure and forms of order sought

12      By a document lodged on 6 June 2008, the intervener applied to be represented by a certified Trade Mark and Design Litigator. By letter of 11 September 2008, the Registrar of the Court informed it that that application could not be granted on the ground that a Trade Mark and Design Litigator was not a lawyer within the meaning of Article 19 of the Statute of the Court of Justice of the European Union.

13      On 9 December 2008, the intervener brought an appeal before the Court of Justice against the letter of the Registrar of the General Court of 11 September 2008 (Case C-59/09 P).

14      By order of 12 May 2009, the President of the Sixth Chamber of the General Court stayed the proceedings pending a ruling from the Court of Justice on the appeal in Case C-59/09 P.

15      By order of 10 July 2009, the Court of Justice dismissed the appeal as clearly inadmissible and, on the same date, the proceedings before the General Court were resumed.

16      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

17      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Arguments of the parties

18      In support of its appeal, the applicant puts forward a single plea alleging that Article 8(1)(b) of Regulation No 40/94 has been infringed. It submits, in essence, that the trade marks at issue cannot be considered to be similar visually, phonetically or conceptually.

19      According to the applicant, the Board of Appeal erred in shortening the earlier Community word mark to the element ‘energon’, thus overlooking the overall impression created by that mark, in which ‘transformers’ is the dominant element. ‘Transformers’ is, in fact, the first part of the sign and longer than the second element, and hence the part more likely to catch the consumer’s attention, taking into account as well the way it is actually presented when it is used. The applicant adds that, since it is acknowledged that the element ‘energon’ is close to the English word ‘energy’, ‘energon’ is less distinctive than the element ‘transformers’.

20      OHIM and the intervener dispute the merits of the applicant’s arguments.

 Findings of the Court

21      Under Article 8(1)(b) of Regulation No 40/94, the trade mark applied for is not to be registered, upon opposition by the proprietor of an earlier trade mark, 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.

22      It is settled case-law that 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.

23      According to the same line of 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, taking into account all factors relevant to the circumstances of the case (Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33 and the case-law cited, and Case T-185/02 Ruiz-Picasso and Others v OHIM – Daimler Chrysler (PICARO) [2004] ECR II-1739, paragraphs 49 and 50).

24      That global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, so that a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17; Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 19; and Joined Cases T-81/03, T-82/03 and T-103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame) [2006] ECR II‑5409, paragraph 74).

25      In the present case, in the contested decision the Board of Appeal ruled only on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. In so far as, under Article 8(2) of Regulation No 40/94 (now Article 8(2) of Regulation No 207/2009), the earlier unregistered trade marks used in the United Kingdom are not earlier trade marks for the purposes of the application of Article 8(1) of Regulation No 40/94, it is necessary to refer to the earlier Community word mark TRANSFORMERS ENERGON only.

26      Moreover, the consideration set out in paragraph 15 of the contested decision, according to which the relevant public is composed of the general public in the European Union, is not disputed by the applicant. Likewise, the fact that the goods in question are identical is not disputed by the parties.

27      Only the Board of Appeal’s assessment as regards the similarity of the trade marks at issue is disputed. In this connection, it is settled case-law that the assessment of the visual, phonetic 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 elements (see Case T-292/01 Philips-Van Heusen OHIM – Pash Textilvertrieb und Einzelhandel(BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited).

28      In the context of consideration of the likelihood of confusion, 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 (Case C-334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41).

29      In the present case, as the Board of Appeal observed, the earlier Community trade mark is composed of the words ‘transformers’ and ‘energon’, while the trade mark applied for is composed of the single word ‘enercon’.

30      The applicant calls into question the merits of the contested decision, submitting essentially that the ‘transformers’ element is the dominant element of the earlier mark and that, by examining the similarity between the ENERCON trade mark applied for and the single element ‘energon’ of the earlier trade mark, the Board of Appeal failed to take into account the overall impression produced by the earlier sign.

31      It is therefore necessary to consider the applicant’s arguments as regards the relative importance of the ‘transformers’ and ‘energon’ elements in the overall impression produced by the earlier mark.

32      In this connection, whilst it is true that the ‘transformers’ element is the first part of the sign and is longer than the ‘energon’ element, the word ‘energon’ cannot be regarded as playing only a marginal part in the overall impression produced by the earlier mark. To the contrary, that element plays a significant part in the overall impression produced by the earlier trade mark and consequently cannot be ignored. As the Board of Appeal pointed out in paragraph 19 of the contested decision, both of the elements of which the earlier mark consists are distinctive in character, neither being more dominant or distinctive than the other in the overall impression created by the earlier mark.

33      Contrary to what the applicant claims, the fact that the ‘energon’ element of the earlier trade mark may evoke the English word ‘energy’ does not affect that assessment, since it does not make that element descriptive of the goods designated, or otherwise less distinctive with regard to those goods.

34      Furthermore, the applicant cannot argue that the word ‘transformers’ is the dominant element of the earlier trade mark because of the font and its larger size compared to that of the ‘energon’ element in the way in which that trade mark is used. It must be pointed out that the consideration of the similarity of the trade marks at issue takes into account those marks as a whole, as they are registered or applied for. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see, to that effect, Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II-1297, paragraphs 33 and 37; judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74; and judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43). It is therefore not appropriate to take into account, for the purposes of the consideration of the similarity between the trade marks at issue, the font and size in which the ‘transformers’ element of the earlier word sign may be presented.

35      Consequently, the Board of Appeal was correct in finding that the ‘transformers’ and ‘energon’ elements of the earlier trade mark were equally distinctive and dominant.

36      Thus, so far as visual similarity is concerned, the Board of Appeal did not disregard the overall impression produced by the earlier mark when it held that, taking into account the high degree of similarity between the ‘energon’ element of the earlier trade mark and the single element ‘enercon’ of the trade mark applied for, there was a certain degree of visual similarity between the trade marks at issue.

37      The Board of Appeal therefore correctly found that the trade mark applied for and the ‘energon’ element of the earlier mark were very similar, which is, furthermore, not contested by the applicant, and that the trade marks at issue, each considered as a whole, thus presented a certain visual similarity.

38      As far as phonetic similarity is concerned, the Board of Appeal was also fully entitled to find that the marks resembled each other. Having regard, first, to the fact that the first two syllables – ‘e’ and ‘ner’, of the single element ‘enercon’ of the trade mark applied for and the ‘energon’ element of the earlier trade mark – are identical and, secondly, to the high degree of similarity of the third syllables ‘con’ and ‘gon’ of those words, the Board of Appeal rightly pointed out that those words were phonetically similar and that, as a result, the signs at issue ENERCON and TRANSFORMERS ENERGON had, as a whole, a certain degree of similarity.

39      The applicant cannot in this connection criticise the Board of Appeal for having concentrated exclusively on the single element ‘enercon’ of the trade mark applied for and the ‘energon’ element of the earlier mark, since the Board of Appeal expressly accepted, in paragraph 21 of the contested decision, that the signs at issue were similar, considered as a whole. It is, moreover, incorrect, contrary to what the applicant claims, that the Board of Appeal referred to visual similarities for the purpose of finding the signs to be phonetically similar. In fact, the Board stated that there was a certain degree of phonetic similarity between the trade marks at issue, each considered as a whole, because of the high degree of similarity observed in that regard between the trade mark applied for and the ‘energon’ element of the earlier mark, a fact which also led it to hold that the signs were visually similar.

40      Lastly, as regards conceptual similarity, the Board of Appeal pointed out, in paragraph 22 of the contested decision, that neither the earlier trade mark nor the trade mark applied for had any particular meaning with regard to the designated goods. It thus observed that the word ‘transformers’ in English referred to devices changing the characteristics of electrical currents, while the words ‘energon’ and ‘enercon’ did not have any particular meaning. The Board of Appeal nevertheless accepted that the words ‘energon’ and ‘enercon’ were likely to be perceived as evoking the notion of energy, which might create a certain conceptual link between the trade marks at issue. In paragraph 24 of the contested decision it stated, however, that that conceptual similarity was low.

41      The applicant essentially maintains that the ‘transformers’ element is dominant. However, as observed in paragraph 32 above, that assertion must be rejected, since neither of the two elements of which the earlier mark consists is more dominant or distinctive than the other in the overall impression created by the earlier mark.

42      It also submits that the mere fact that the signs at issue contain the same first syllable is insufficient to make them conceptually similar. However, in so far as the Board of Appeal found a low degree of conceptual similarity, that was because, in its view, the words ‘enercon’ and ‘energon’ would probably be perceived as evoking or related to the notion of energy. Clearly it was not on the basis that the first syllable of both those words was identical that the Board of Appeal found there to be a low degree of conceptual similarity.

43      Consequently, the applicant’s argument that the fact that the first syllable of the words ‘enercon’ and ‘energon’ is identical is not sufficient to identify conceptual similarity must be rejected as ineffective.

44      Having regard to all the foregoing, it must be held that the Board of Appeal was right to hold, following a visual, phonetic and conceptual analysis, that the signs at issue, each considered as a whole, bore a certain degree of similarity for the purpose of Article 8(1)(b) of Regulation No 40/94.

45      Consequently, as regards the global assessment of the likelihood of confusion, the applicant has not demonstrated that the Board of Appeal erred when it held that, taking into account, first, the similarity of the signs at issue and, secondly, the fact that the designated goods were identical, the target public might be led to believe that the goods at issue came from the same undertaking or undertakings which were economically linked.

46      Having regard to all the foregoing considerations, the single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected and the action must be dismissed.

 Costs

47      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.

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

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Enercon GmbH to pay the costs.

Meij

Vadapalas

Truchot

Delivered in open court in Luxembourg on 3 February 2010.

[Signatures]