JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)

11 June 2009 (*)

(Community trade mark – Opposition proceedings – Application for the Community figurative mark InvestHedge – Earlier Community figurative mark Hedge Invest – Relative ground for refusal – 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‑67/08,

Hedgefund Intelligence Ltd, established in London (United Kingdom), represented by J. Reed, Barrister, and G. Crofton Martin, Solicitor,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM having been

Hedge Invest SpA, established in Milan (Italy),

ACTION against the decision of the Second Board of Appeal of OHIM of 28 November 2007 (Case R 148/2007-2) relating to opposition proceedings between Hedge Invest SpA and Hedgefund Intelligence Ltd,

THE COURT OF FIRST INSTANCE
OF THE EUROPEAN COMMUNITIES (Eighth Chamber),

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and A. Dittrich, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 11 February 2008,

having regard to the response lodged at the Court Registry on 17 June 2008,

further to the hearing on 4 February 2009,

gives the following

Judgment

 Background

1        On 6 March 2003 the applicant, Hedgefund Intelligence Ltd, filed an application for 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 trade mark applied for is the following figurative sign, for which the colour Pantone 527 (violet) was claimed:

3        The goods and services in respect of which registration was sought fall within Classes 9, 16, 35, 36, 41 and 42 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 9: ‘data, databases, reports, publications, newsletters and directories in electronic format provided online’;

–        Class 16: ‘printed publications, newsletters, reports and directories’;

–        Class 35: ‘providing business information’;

–        Class 36: ‘information, advisory, consultancy and research services relating to finance and investments; preparation of reports relating to finance and investments’;

–        Class 41: ‘arranging and conducting of conferences and seminars relating to finance; publication of financial information’;

–        Class 42: ‘industrial analysis and research services’.

4        By letter of 9 May 2003, the applicant informed OHIM that it was limiting its application for registration to Classes 9, 16, 36 and 41 only.

5        That application was published in Community Trade Marks Bulletin No 3/2005 of 17 January 2005.

6        On 15 April 2005 Hedge Invest SpA filed an opposition against the trade mark applied for, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). That opposition was based on the registration of the following Community figurative trade mark No 2475291, which was filed on 23 November 2001 and registered on 20 March 2003:

7        Hedge Invest’s opposition was based on ‘financial affairs’ in Class 36 and directed against the services in Classes 36 and 41 covered by the Community trade mark application.

8        By decision of 27 November 2006, the Opposition Division upheld the opposition in respect of all of the services in Classes 36 and 41 on the ground that there was a likelihood of confusion.

9        On 19 January 2007 the applicant filed a notice of appeal against the decision of the Opposition Division. By decision of 28 November 2007 (‘the contested decision’), the Board of Appeal dismissed the appeal. It thus confirmed the decision of the Opposition Division, holding, in essence, that the signs in question were visually and phonetically similar and that the services in Class 36 were identical, and those in Class 41 were similar, to the services of the applicant. It therefore concluded that there was a likelihood of confusion in the non‑English-speaking Member States for the relevant public, which is made up of the average reasonably well-informed and reasonably observant and circumspect consumer.

 Forms of order sought by the parties

10      The applicant claims that the Court should:

–      annul the contested decision;

–      dismiss Hedge Invest’s opposition;

–        order OHIM and Hedge Invest to pay their own costs, and order Hedge Invest to pay those of the applicant before the Opposition Division, the Board of Appeal and the Court of First Instance.

11      OHIM contends that the Court should:

–      dismiss the application;

–        order the applicant to pay the costs.

 Law

12      The applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

 Arguments of the parties

13      In the first place, with regard to the services in Class 36, the applicant claims that, when determining the visual similarity of the respective marks in the eyes of non‑English-speaking consumers, the Board of Appeal was wrong in principle to take account of the ‘commercial impression’ and to form the view that, in practice, that commercial impression was the same for the two conflicting marks. By stating in paragraph 31 of the contested decision that ‘[t]he reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed mark creates a distinctly different commercial impression’ and that ‘[h]ere, the commercial impression is the same’, the Board of Appeal committed two errors.

14      First, it took into account, as part of the visual analysis, a consideration for which there was no evidential basis. Consequently, according to the applicant, the Board of Appeal was wrong to take into consideration the conceptual similarity in its assessment of the visual similarity, since the ‘commercial impression’ is a reference to the idea conveyed by the trade mark and not to its visual appearance.

15      Second, it held that the ‘commercial impression’ was the same when it was considering the group of non‑English-speaking consumers, for whom the marks had no meaning. Consequently, according to the applicant, the Board of Appeal appears to have lost sight of the fact that it was considering the situation in relation to non‑English-speaking consumers, that is to say, consumers for whom the words constituting the mark had no meaning. The Board of Appeal appears therefore to have taken the view that the individual words making up the mark were the essential elements, notwithstanding their complete lack of meaning for the relevant consumers. For that reason there was in neither sequence of the words any particular ‘commercial impression’.

16      The applicant submits, first, that, had the Board of Appeal applied the correct test, it would have concluded that there was very little visual similarity between the signs at issue and that their respective dominant and distinctive parts were, in fact, really rather different to a non‑English speaker. In addition, there are numerous visual differences between those two signs. For example, the inversion of the two syllables ‘tim’ and ‘don’ (TIMDON and DONTIM) creates a totally different overall impression and the same applies with regard to the signs at issue here. Further, other significant differences exist: the initial elements of the marks are completely different, the applicant’s mark is in a distinctive purple colour whereas the earlier mark is black and white. The latter also has a distinctive adornment around the first word, whereas the applicant’s mark has no such adornment.

17      Second, in assessing the phonetic similarity of the conflicting marks for non‑English-speaking consumers, the Board of Appeal improperly placed the onus on the applicant to establish phonetic dissimilarity of the conflicting marks and failed properly to consider the actual degree of phonetic similarity on the facts.

18      The Board of Appeal held in paragraph 32 of the contested decision that ‘the fact that the syllables will be pronounced in an inverted order cannot prevent the signs from being phonetically similar overall’.

19      However, the conflicting marks are made up of three, not two, syllables, and they are not in an inverted order, but in a completely different order. The earlier mark is made up of the syllables ‘hedge’, ‘in’ and ‘vest’, whereas the mark applied for is made up of the syllables ‘in’, ‘vest’ and ‘hedge’. Moreover, those syllables will not be perceived as words by non‑English speakers but merely as meaningless sounds.

20      In the second place, with regard to the services in Class 41, the applicant maintains that, in its global comparison in relation to non‑English-speaking consumers, the Board of Appeal erred in paragraph 35 of the contested decision in adopting in fact a method based on a conceptual similarity, which it demonstrates in finding that the two conflicting marks made the same ‘commercial impression’, which is inconsistent with its finding that there was not, in the minds of non‑English-speaking consumers, any conceptual similarity between the conflicting marks and that the latter were not descriptive. There was no evidence to justify it making that finding.

21      The applicant also alleges that the Board of Appeal took into account a consideration for which there was no evidential basis and which was inconsistent with its finding that there was only a very limited/remote degree of similarity between the services in Classes 36 and 41. After finding in paragraph 27 of the contested decision that the similarity between the services in Class 36 and those in Class 41 was very limited, the Board of Appeal failed to apply that finding in paragraph 35 of the contested decision, in which it notes that there was a ‘low’ degree of similarity. Moreover, the Board of Appeal contradicted the Opposition Division, in paragraph 35 of that decision, by taking account of a further factor, namely that ‘it is not uncommon that a provider of financial services in Class 36 provides or patronises conferences and publications on financial topics such as the contested services in Class 41’.

22      In any event, should that factor have been taken into consideration, this should have been done, at the very least, when the degree of similarity between the services at issue was being examined.

23      In addition, the applicant complains that the Board of Appeal included that element in the reasoning of the contested decision when there was no evidential basis for it, contrary to the requirements following from the case-law. It was incumbent on Hedge Invest to demonstrate precisely the extent to which the services at issue were similar in terms of their nature, intended purpose or method of use or the extent to which they were complementary or in competition. There is no such proof in the present case.

24      The applicant submits that the banking and financial service industry is prima facie completely separate from the conference industry. The fact that a banker or financier might attend a conference on finance does not make the services at issue similar.

25      OHIM contends that the plea in law should be rejected.

 Findings of the Court

26      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 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’.

27      In addition, under Article 8(2)(a) of Regulation No 40/94 (now Article 8(2)(a) of Regulation No 207/2009) the term ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than that of the Community trade mark.

28      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion (judgments in Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 25, and of 15 March 2006 in Case T‑31/04 Eurodrive Services and Distribution v OHIM – Gómez Frías (euroMASTER) (not published in the ECR), paragraph 28; also see, by way of analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).

29      In addition, the likelihood of confusion in the mind of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (Fifties, cited in paragraph 28 above, paragraph 26, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 35; also see, by way of analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 22, and Case C‑425/98 Marca Mode [2000] ECR I‑4861, paragraph 40).

30      That global assessment implies a degree of interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48; Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 25). The interdependence of those factors is referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on several factors, in particular the public recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the mark and the sign and between the goods or services identified.

31      Moreover, as to the visual, phonetic or conceptual similarity of the conflicting signs, the global assessment must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components. It follows from the wording of Article 8(1)(b) of Regulation No 40/94, which provides that ‘there exists a likelihood of confusion on the part of the public’, that the perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Fifties, cited in paragraph 28 above, paragraph 28, and Case T‑355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II‑791, paragraph 41; also see, by way of analogy, SABEL, cited in paragraph 29 above, paragraph 23, and Lloyd Schuhfabrik Meyer, cited in paragraph 28 above, paragraph 25).

32      For the purposes of that global assessment of the likelihood of confusion, the average consumer of the goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. 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 (Fifties, cited in paragraph 28 above, paragraph 28, and DIESELIT, cited in paragraph 29 above, paragraph 38; also see, by way of analogy, Lloyd Schuhfabrik Meyer, cited in paragraph 28 above, paragraph 26).

33      In the present case, first, it must be pointed out that the Board of Appeal took into consideration the public in the non‑English-speaking Member States, in which the earlier mark has a stronger distinctive character. Second, it noted that, if the relevant public for the services in question is made up of specialised consumers as well as average consumers, the target public, in respect of which that likelihood of confusion must be assessed, is rather the average consumer of those Member States, who is deemed to be reasonably well informed and reasonably observant and circumspect, since the average consumer is more likely to confuse the marks. That premiss, which moreover is not challenged by the applicant, must be upheld.

 The similarity of the signs

34      First, with regard to the visual comparison, that Board of Appeal correctly found in paragraph 31 of the contested decision that the signs in question were similar.

35      It must be stated that each of the signs in question is composed of two identical and clearly identifiable elements, since, in the earlier mark, they are separated by a space and, in the mark applied for, they stand out because of the use of the upper case letters ‘I’ and ‘H’. Notwithstanding the absence of separation in the mark applied for, the unavoidable conclusion is that the use of those upper case letters allows separation immediately into two distinctive parts, namely ‘invest’ and ‘hedge’, which correspond to the elements which make up the earlier mark, used in inverse order. The mere inversion of the elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity.

36      Furthermore, contrary to what the applicant claims, the figurative elements of the signs in question, namely the colour for the mark applied for and the geometric figures around the word ‘hedge’ in the earlier mark, are insignificant inasmuch as the attention of the public is attracted to the verbal elements (see, to that effect, inter alia, Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraphs 41 and 42). Likewise, the characters of the signs in question, despite the use of lower case for the trade mark applied for and upper case for the earlier mark, are not sufficient for the purposes of distinguishing them.

37      Therefore, as the Board of Appeal rightly observed in paragraph 31 of the contested decision, even though the elements ‘hedge’ and ‘invest’ appear, in the mark applied for, in inverted order and written in slightly different characters, the signs do present visual similarities.

38      It follows from the foregoing that the Board of Appeal reached that conclusion on the basis of a simple visual analysis of the signs at issue. That analysis is sufficient for the purpose of finding that there is a visual similarity between the signs concerned. It was only in response to the example which the applicant derived from the comparison of the signs ParDon and DonPar, the relevance of which, accordingly, need not be established, that the Board of Appeal added the following final three sentences to paragraph 31 of the contested decision:

‘The reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed mark creates a distinctly different commercial impression. Here, the commercial impression is the same. Consequently, the signs are visually similar as the ?Opposition Division’s? decision found.’

39      Second, with regard to the phonetic similarity of the signs in question, the Board of Appeal correctly held in paragraph 32 of the contested decision that the elements ‘hedge’ and ‘invest’ of both signs will be pronounced identically in all of the Community languages. As is clear from the contested decision, both signs consist of the same syllables and the same number of syllables, and they are phonetically identical in length. The fact that the syllables are pronounced in an inverted order cannot prevent the signs from being similar overall. Consequently, there is a certain phonetic similarity between them.

40      In that respect, the applicant’s claim that that inversion precludes a phonetic similarity cannot be accepted.

41      The modification of the signs does not result, in the present case, from the inversion of the syllables, but from the shifting of the element ‘hedge’ from the first place to the last place, in such a way that, phonetically, a non‑English-speaking public would perceive immediately and without any difficulty that the difference between the two signs lies in that shift alone.

42      Third, with regard to the conceptual similarity, the Board of Appeal found in paragraph 33 of the contested decision that, for the non‑English-speaking part of the public, those signs, which are not made up of descriptive words for them, are neither similar nor dissimilar from a conceptual point of view. Thus, in the non‑English-speaking Member States, those words cannot be understood as being descriptive, with the result that the earlier mark enjoys an average degree of inherent distinctiveness.

43      That finding, which has not been challenged by the applicant, must be upheld.

 The similarity of the services

44      The Board of Appeal found, in paragraph 34 of the contested decision, that the services in Class 36 were identical, which the applicant does not contest, and, in paragraph 35 of that decision, that the services falling within Class 41 were ‘remotely similar to those of the earlier mark, the low degree of similarity [being] offset by a greater degree of similarity between the marks consisting of the same words conveying the same commercial impression’.

45      The conclusion in paragraph 34 of the contested decision, to the effect that the services in Class 36 are identical, must be upheld.

46      With regard to the services in Class 41, the arranging and conducting of ‘conferences and seminars relating to finance’ and the ‘publication of financial information’ are clearly associated with the ‘financial affairs’ in Class 36, since those conferences, seminars and publications specifically cover the financial sector.

47      Moreover, as the Board of Appeal correctly held in paragraph 35 of the contested decision, it is not uncommon for a provider of financial services in Class 36 to provide or patronise conferences and publications on financial topics.

48      Financial affairs are clearly linked to conferences, seminars and publications in the case where the latter are expressly carried out in the financial sector, with the result that those services are, at the very least, similar (see, to that effect, the judgment of 17 September 2008 in Case T‑10/07 FVB v OHIM – FVD (FVB) (not published in the ECR), paragraph 40).

49      With regard to the applicant’s argument that the similarity found to exist is not substantiated by any evidence and, in particular, that there is no evidence that the providers of financial services also give conferences, it should be borne in mind that, as has been held in paragraphs 46 to 48 above, the conferences, seminars or publications of information covered by the mark applied for specifically relate to the financial sector.

50      With regard to the applicant’s claim that the Board of Appeal could not, on the one hand, find in paragraph 27 of the contested decision that there was very limited similarity between the services at issue and, on the other hand, find in paragraph 35 of the same decision that they had a low degree of similarity, it must be noted that, in addition to the fact that it is clear from paragraph 48 above that those services are, at the very least, similar, the view cannot be taken that the Board of Appeal contradicted itself. As OHIM has correctly pointed out, it follows rather from the contested decision that, even though the Board of Appeal used two forms of wording, it identified the same degree of similarity.

51      Finally, as regards the complaint that the Board of Appeal committed another error in taking the ‘commercial impression’ into consideration, that complaint is clearly invalid in so far as, contrary to what the applicant claims, the reference to that impression is not connected to the examination of the similarity between the services, but rather to the finding that there is a greater degree of similarity between marks made up of the same words, to which that reference is attached, as is clear from paragraph 35 of the contested decision, in which the Board of Appeal, at the same time, carried out an analysis of the similarity between the services and pointed out the similarity of the signs.

52      It follows that the Board of Appeal was correct to conclude, with regard to the services in Class 36 covered by the marks at issue, that they were identical and that the services in Class 41 covered by the mark applied for and the services in Class 36 covered by the earlier mark were similar.

 The likelihood of confusion

53      Having regard to the fact that some of the services at issue are identical and others are similar, as well as to the high degree of similarity between the signs at issue, the Board of Appeal acted correctly in concluding that the overall impression given by the marks at issue was likely to give rise to a likelihood of confusion on the part of the relevant public. To the extent to which the similarity of the signs results, in the present case, from the simple shifting of a word element, there is a likelihood of confusion with regard to both the average consumer and the specialised public.

54      Moreover, as the applicant rightly observed during the hearing, with reference to the fact that the word ‘invest’ is understood by even the non‑English-speaking public, the attention of the public in general is normally attracted by the distinctive element of a complex mark and not by its descriptive element.

55      According to established case-law, an element of a complex mark which is descriptive cannot be regarded as its dominant element (see, to that effect, Case T‑129/01 Alejandro v OHIMAnheuser Busch (BUDMEN) [2003] ECR II‑2251, paragraph 53, and Case T‑202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraph 55).

56      However, even if the word ‘invest’ were, as the applicant claims, recognised and understood by all consumers in the Community, the fact none the less remains that the likelihood of confusion would not in this case be removed, since the element which might have allowed all likelihood of confusion to be removed is the element ‘hedge’, which is also common to both signs and which cannot be considered descriptive for non‑English-speaking consumers. From that point of view, there is thus no real difference between the signs, with the exception of their figurative elements, which have already been held to be insignificant in the context of the overall impression given by the signs.

57      In so far as none of the applicant’s heads of complaint against the contested decision has been upheld, the sole plea in law must be rejected.

58      In those circumstance, it follows from all of the foregoing that, without it being necessary for the Court to rule on the admissibility of the head of claim requesting that the Court reject the opposition, the action must be dismissed (see, to that effect, the judgment of 22 May 2008 in Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! BizCard Reader) (not published in the ECR), paragraph 70).

 Costs

59      Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 of OHIM, in accordance with the form of order sought by the latter.

On those grounds,

THE COURT OF FIRST INSTANCE (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hedgefund Intelligence Ltd to pay the costs.

Martins Ribeiro

Papasavvas

Dittrich

Delivered in open court in Luxembourg on 11 June 2009.

[Signatures]