JUDGMENT OF THE GENERAL COURT (Single Judge)

19 February 2016 (*)

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

In Case T‑30/15,

Infinite Cycle Works Ltd, established in Delta (Canada), represented by E. Manresa Medina and J. Manresa Medina, lawyers,

applicant,

v

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

defendant,

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

Chance Good Ent. Co., Ltd, established in Changhua (Taiwan), represented by P. Rath and W. Festl-Wietek, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 October 2014 (Case R 2308/2013-2) relating to opposition proceedings between Chance Good Ent. Co., Ltd, and Infinite Cycle Works Ltd,

THE GENERAL COURT (Single Judge),

Judge: M.E. Martins Ribeiro,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 20 January 2015,

having regard to the response of OHIM lodged at the Court Registry on 15 May 2015,

having regard to the response of the intervener lodged at the Court Registry on 20 May 2015,

having regard to the decision of 26 June 2015 refusing leave to lodge a reply,

further to the hearing on 9 December 2015,

gives the following

Judgment

 Background to the dispute

1        On 25 April 2012, the applicant, Infinite Cycle Works Ltd, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the word sign INFINITY.

3        The goods in respect of which registration was sought are in Classes 12, 25 and 28 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 to the following description:

–        Class 12: ‘Bicycles; bicycle parts; bicycle accessories’;

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

–        Class 28: ‘Inline skates; exercise bicycles’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 100/2012 of 30 May 2012.

5        On 13 July 2012, the intervener, Chance Good Ent. Co., Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based, pursuant to Article 8(1)(b) of Regulation No 207/2009, on the following earlier Community figurative marks:

–        the Community trade mark filed on 12 July 2005 and registered on 29 August 2008 under No 4538476 covering goods in Classes 9, 11 and 12 corresponding, for each of those classes, to the following descriptions:

–        Class 9: ‘Reflectors exclusively for bikes’;

–        Class 11: ‘Lights exclusively for bikes’;

–        Class 12: ‘Bicycles; bicycle rims; rear view mirrors; lateral view mirrors; shock absorbers for vehicles’;

–        and the Community trade mark, filed on 9 April 2009 under No 8211153 covering goods in Classes 11, 18 and 25, inter alia, in respect of the goods in Class 11, ‘headlight for bicycle, flashlight, lantern, bicycle reflectors for attachment to spokes; direction indicators for cycles (lamps for-), headlamps for use on cycles’ reproduced below:

7        By decision of 10 October 2013, the Opposition Division partially rejected the opposition, and rejected the Community trade mark application for ‘bicycles; bicycle parts; bicycle accessories’ in Class 12 and ‘exercise bicycles’ in Class 28.

8        On 22 November 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the decision of the Opposition Division.

9        By decision of 30 October 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. As a preliminary point, in paragraph 17 of the contested decision, the Board of Appeal considered that the request for restriction of goods in Class 12 to ‘bicycles; bicycle parts; bicycle accessories, not including lightning [sic] devices specifically for bicycles’, was inadmissible on the ground that ‘lightning [sic] devices specifically for bicycles’ were not in Class 12 but Class 11, since goods which were not part of a class could not logically be excluded from it.

10      As regards the examination of the appeal in the light of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found, in paragraph 22 of the contested decision, that the relevant public was composed of average consumers belonging to the general public of the European Union.

11      As regards the comparison of the goods at issue, the Board of Appeal, in paragraph 27 of the contested decision, endorsed the Opposition Division’s view that the goods were identical or similar.

12      As regards the comparison of the signs at issue, the Board of Appeal concluded, in paragraph 34 of the contested decision that those signs were visually, phonetically and conceptually similar. As regards the likelihood of confusion, the Board of Appeal took the view, in paragraph 35 of the contested decision, that the degree of similarity between the signs at issue was high enough that French or Belgian consumers would believe that the goods at issue came from the same supplier and accordingly concluded that there was a likelihood of confusion between those signs.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        grant the application for registration of the mark applied for;

–        order OHIM and, if appropriate, the intervener to pay the costs.

14      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 The admissibility of documents produced for the first time before the Court

15      The applicant seeks to rely on a new document which consists of an extract from trade mark research carried out on the OHIM website entitled ‘eSearchPlus’, and not on Google, as it indicated, incorrectly, in the application, in order to demonstrate that the word ‘infini’ was in usual or common use.

16      In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (see judgment of 10 February 2015 in Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, EU:T:2015:81, paragraph 18 and the case-law cited).

17      It follows from the foregoing that, as OHIM notes, the document referred to in paragraph 15 above must be declared inadmissible.

18      Moreover, at the hearing, the applicant lodged a further document, namely a submission put forward by the intervener in 2007 during opposition proceedings before OHIM, in which the intervener claimed, contrary to what it submits in the present case, that the word ‘infinite’ had no distinctive character and that the earlier marks were characterised solely by their figurative element. In reply to a question of the Court, the applicant indicated that, although it had produced that document only at the stage of the oral procedure, it was in reply to the argument in paragraphs 15 to 21 of the intervener’s response, in which the intervener claimed that the figurative element of those marks is negligible.

19      In that respect, it must be observed, first, that the potential weak distinctive character of the earlier marks is a matter which is necessarily at issue in the litigation where the applicant disputes the existence of a likelihood of confusion between the signs at issue, as in the present case. Since the applicant could have submitted that document in the context of the administrative procedure, as that document dates from 2007, the applicant may not now rely on new evidence in support of its arguments concerning the negligible character of the figurative element.

20      Secondly, it must be noted that, in its submission before the opposition division, the applicant referred to the existence of a visual difference between the signs at issue, on the ground that the earlier marks included a figurative element. The applicant also stressed, in that submission that ‘the earlier mark No 4538476 is a figurative trademark that present [sic] an evident complexity and distinctiveness’. That argument was repeated by the applicant in its submission before the Board of Appeal. In that context, the applicant could and therefore should have submitted, in accordance with the administrative procedure, the document in which it considered that the intervener recognised the weak distinctive character of the word element and the complexity of the figurative element of that sign.

21      It is therefore necessary, in accordance with the case-law referred to in paragraph 16 above, to declare the document referred to in paragraph 18 above inadmissible.

22      Moreover, even if that document could be taken into consideration, it must be noted that it is totally irrelevant, in so far as it merely concerns a submission put forward by the intervener in separate opposition proceedings in which the intervener allegedly claimed that the figurative element included in the earlier marks was in no way negligible and, on the contrary, that those marks were characterised by their sole figurative element.

23      However, it must be recalled that the legality of decisions of the Boards of Appeal of OHIM must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature (see, to that effect, order of 10 April 2014 in Metropolis Inmobiliarias y Restauraciones v OHIM, C‑374/13 P, EU:C:2014:270, paragraph 44 and the case-law cited), and not on the basis of a submission lodged by the intervener before the Opposition Division in the context of separate proceedings.

 Substance

24      In its application, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

25      The applicant claims, in essence, that the numerous visual differences between the signs at issue, which result, in particular, first, from the presence of graphic elements in the earlier marks and, secondly, the presence of the additional syllable ‘ty’ in the mark applied for prevent the relevant public from being able to confuse them. It also disputes the Board of Appeal’s finding of similarity between the goods at issue.

26      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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. Furthermore, under Article 8(2)(a)(i) of that regulation, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

27      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion (see judgment in ANGIPAX, cited in paragraph 16 above, EU:T:2015:81, paragraph 24 and the case-law cited; see also, by analogy, judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and 22 June 1999 Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 17).

28      Moreover, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment in ANGIPAX, cited in paragraph 16 above, EU:T:2015:81, paragraph 25; see also, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22; Canon, cited in paragraph 27 above, EU:C:1998:442, paragraph 16; and Lloyd Schuhfabrik Meyer, cited in paragraph 27 above, EU:C:1999:323, paragraph 18).

29      That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, 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 (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and 23 October 2002 Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, cited in paragraph 27 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 of Regulation No 207/2009, according to which the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment in ANGIPAX, cited in paragraph 16 above, EU:T:2015:81, paragraph 26 and the case-law cited).

30      Moreover, the global assessment must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 8(1)(b) of Regulation No 207/2009 — ‘there exists a likelihood of confusion on the part of the public’ — shows that the perception of the marks in the mind of the average consumer of the type of 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 (judgment in ANGIPAX, cited in paragraph 16 above, EU:T:2015:81, paragraph 27; see also, by analogy, judgment in SABEL, cited in paragraph 28 above, EU:C:1997:528, paragraph 23).

31      For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to compare the different marks directly, so he must place his trust in his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment in ANGIPAX, cited in paragraph 16 above, EU:T:2015:81, paragraph 28 and the case-law cited; see also, by analogy, judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 27 above, EU:C:1999:323, paragraph 26).

32      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

33      In the present case, the earlier marks are Community trade marks. Consequently, as the Board of Appeal correctly found in paragraph 22 of the contested decision, a finding not contested by the applicant, the relevant territory is that of the European Union.

34      As regards the public targeted, it must be held that the public targeted consists of the average consumer, who is reasonably well informed and reasonably observant and circumspect (see paragraph 22 of the contested decision), which, moreover, was not disputed by the applicant.

 The similarity of the goods

35      The applicant disputes the Board of Appeal’s finding that the goods in question are identical or similar.

36      It must be noted at the outset that the Board of Appeal did not commit any error in respect of the comparison of the goods at issue.

37      As regards the goods in Class 12, it must be held that the ‘bicycles’ covered by the trade mark application are also included among the goods covered by the earlier mark No 4538476, with the result that the two are identical. Moreover, it cannot be disputed that the ‘bicycle rims; rear view mirrors; lateral view mirrors; shock absorbers for vehicles’ covered by the earlier mark No 4538476 are included in the category of ‘bicycle parts; bicycle accessories’ in the trade mark application, with the result that the goods in Class 12 are indeed identical.

38      In that regard, it must be observed that where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraph 51 and the case-law cited).

39      As regards the ‘exercise bicycles’ covered by the trade mark application and included in Class 28, it must be held, as the Board of Appeal rightly found in paragraph 26 of the contested decision, that there is similarity with the ‘bicycles’ covered by trade mark application No 4538476 and in Class 12.

40      In fact, ‘exercise bicycles’ have similar frames, a set of handle bars, two gears driven by a chain and a saddle for the rider; their mode of operation is identical and their use is often complementary in so far as a habitual cyclist will be likely to own an indoor bicycle in order to be able to practise that sport irrespective of the weather conditions. Finally, both goods may be sold in the same departments of large department stores or specialist shops (see, to that effect, judgment of 15 October 2013 in Electric Bike World v OHIM — Brunswick (LIFECYCLE), T‑379/12, EU:T:2013:529, paragraphs 44 to 48).

41      The fact that ‘exercise bicycles’ are in a different class to ‘bicycles’ is irrelevant, in so far as the similarity does not depend on that classification, but on the objective comparison between the goods concerned.

42      It follows that, despite the applicant’s objections, the contested decision must be upheld as regards the analysis of the similarity of the goods at issue, which are, in part, identical and, in part, similar.

 The similarity of the signs

43      In that regard, the signs to be compared are the following:

 

 

Earlier marks

Trade mark applied for

INFINITY

44      The Board of Appeal considered that the signs at issue were visually similar to the extent that the word element of the earlier marks was reproduced in full in the mark applied for.

45      That finding can only be endorsed and the presence of the figurative element, which appears at the end of the earlier marks and which is not particularly striking, does not allow for a finding that there is no visual similarity between those signs, as the applicant claims.

46      In that regard, first, it should be noted that the consumer normally attaches more importance to the first part of words (judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 40).

47      Secondly, the figurative element is not capable of being considered to be the dominant element, particularly since its characteristics cannot be considered to be original (see, to that effect, judgment of 15 July 2014 in Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, EU:T:2014:667, paragraph 40). It consists, as OHIM correctly noted, of simple geometric shapes, namely three quadrilaterals, which are frequently used in the market sector, with the result that they can only be regarded as commonplace and banal elements.

48      From a phonetic perspective, it must be noted that the signs at issue are pronounced with three and four syllables respectively. Since the first three syllables are identical, the difference lies solely in the presence of the final syllable ‘ty’ in the mark applied for. The presence of that final syllable in the mark applied for does not, however, prevent the existence of similarity between those signs.

49      Moreover, it should be acknowledged that, as OHIM noted at the hearing, when faced with the signs at issue, the French-speaking public will pronounce the first syllable common to both words in the same way and will not adopt English pronunciation for the word ‘infinity’ but will use French pronunciation for both words.

50      From a conceptual perspective, the Board of Appeal did not err in taking the view that the signs at issue were conceptually identical in at least part of the relevant territory, namely Belgium and France, in so far as the French word ‘infini’ is the root of the English word ‘infinity’, with the result that, for the French-speaking public, that word will be understood in the same way, without even needing to understand the corresponding English word (see, to that effect, judgment of 13 June 2012 in Organismos Kypriakis Galaktokomikis Viomichanias v OHIM — Garmo (HELLIM), T‑534/10, ECR, EU:T:2012:292, paragraphs 39 to 42).

51      The applicant claims, however, that although the word ‘infini’ has meaning for the part of the public with a certain level of knowledge of French, that part is not representative of the relevant territory.

52      In that respect, it must be observed that since the earlier marks are Community trade marks, it is sufficient that there is a likelihood of confusion in relation to part of the relevant public, which in the present case is the French public (see, to that effect, judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 74, and 10 November 2011 Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, EU:T:2011:651, paragraphs 120 and 121).

53      It follows from the foregoing that the Board of Appeal did not err in concluding, in paragraph 34 of the contested decision, that the signs at issue were visually, phonetically and conceptually similar overall.

 The likelihood of confusion

54      It should be recalled that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgments in MATRATZEN, cited in paragraph 29 above, EU:T:2002:261, paragraph 45, and 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, ECR, EU:T:2010:256, paragraph 42).

55      In the present case, it was held, in paragraph 42 above, that the goods in question were in part identical and in part similar and, in paragraph 53 above, that the signs at issue were similar overall.

56      It must therefore be held that, considered cumulatively, the degree of similarity between the signs at issue and the degree of similarity between the goods covered by those signs are sufficiently high. The Board of Appeal was therefore right to find, in paragraph 36 of the contested decision, that there is a likelihood of confusion between those signs.

57      However, the applicant disputes that finding, on the ground that the earlier marks have weak distinctive character and, with reference to the decision of the Fourth Board of Appeal of OHIM in a different case, namely Case R 1824/2011-4, Caframe SL v KappAhl Sverige AB, draws the conclusion that the mark applied for should have been registered.

58      In that regard, it should be recalled that, even if those marks had weak distinctive character, while the distinctive character of the earlier marks must be taken into account for assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving earlier marks of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment in BÜRGER, cited in paragraph 46 above, EU:T:2012:432, paragraph 62; see also, to that effect, judgment of 22 September 2005 in Alcon v OHIM — Biofarma (TRAVATAN), T‑130/03, ECR, EU:T:2005:337, paragraph 78).

59      Moreover, it must be observed that the approach taken by the applicant would have the effect of disregarding the factor of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier marks are only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of those marks by the mark applied for, whatever the degree of similarity between the signs at issue. Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (judgment of 21 January 2015 in Schwerdt v OHIM — Iberamigo (cat&clean), T‑587/13, EU:T:2015:37, paragraph 37; see also, to that effect, judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 71 and the case-law cited).

60      As regards the applicant’s reference to the decision of the Fourth Board of Appeal of OHIM in a different case, namely Case R 1824/2011-4, Caframe SL v KappAhl Sverige AB, it must be recalled that it is settled case-law that the legality of decisions of the Boards of Appeal of OHIM must be assessed not on the basis of their decision-making practice, but solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature (see order in Metropolis Inmobiliarias y Restauraciones v OHIM, cited in paragraph 23 above, EU:C:2014:270, paragraph 44 and the case-law cited).

61      Consequently, the applicant could not validly rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on the decision of the Fourth Board of Appeal in Case R 1824/2011-4 (see, to that effect, order in Metropolis Inmobiliarias y Restauraciones v OHIM, cited in paragraph 23 above, EU:C:2014:270, paragraph 45).

62      In the light of the above considerations, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

63      Under Article 134(1) 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. In the present case, OHIM and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, the form of order sought by OHIM and the intervener must therefore be granted and the applicant ordered to pay the costs incurred by OHIM and the intervener in the proceedings before the Court.

On those grounds,

THE GENERAL COURT (Single Judge)

hereby:

1.      Dismisses the action;

2.      Orders Infinite Cycle Works Ltd to pay the costs.

Delivered in open court in Luxembourg on 19 February 2016.

[Signatures]