JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

13 June 2012 (*)

(Community trade mark – Opposition proceedings – International registration – Application for territorial extension of the protection – Figurative mark SG SEIKOH GIKEN – Earlier Community word mark SEIKO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑519/10,

Kabushiki Kaisha Seikoh Giken, established in Matsudo-shi Chiba (Japan), represented by G. Marín Raigal, P. López Ronda and G. Macias Bonilla, lawyers,

applicant,

v

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

defendant,

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

Seiko Holdings Kabushiki Kaisha, established in Tokyo (Japan), represented by J. Fish, R. Miller, Solicitors, and A. Bryson, Barrister,

APPLICATION for annulment of the decision of the First Board of Appeal of OHIM of 12 August 2010 (Case R 1553/2009-1), relating to opposition proceedings between Seiko Holdings Kabushiki Kaisha and Kabushiki Kaisha Seikoh Giken,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 8 November 2010,

having regard to the response of OHIM lodged at the Registry on 23 February 2011,

having regard to the response of the intervener lodged at the Registry on 9 February 2011,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        The applicant, Kabushiki Kaisha Seikoh Giken, is the holder of international registration No 908461 for the figurative mark reproduced below, registered by the International Bureau of the World Intellectual Property Organisation (‘WIPO’) with effect from 8 November 2006:

2        The goods in respect of which the trade mark is registered are in Classes 3, 7 and 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 3: ‘Abrasive paper (sandpaper), abrasive cloth, abrasive sand, optical fibers scouring solutions containing abrasive powder (not including those for chemicals), optical fibers polishing film coated with abrasives for optical fibers’;

–        Class 7: ‘Optical fiber polishing machines and apparatus, and components and accessories thereof, plastic processing machines and apparatus, resin‑forming molds and dies for injection molding machines, repairing fixing machines and apparatus’;

–        Class 9: ‘Optical fiber components and accessories, including optical connectors, optical switches, optical attenuators, optical couplers, optical fiber arrays, optical fiber ferrules, wavelength filters, terminator, optical isolators, optical electric field sensors, optical modulators, optical modules, optical circulators, solid state laser illuminants, optical connector end-face cleaning apparatus, optical fiber end-face inspection equipment, optical meters, optical apparatus and instruments, active oxygen sensors, fuel cell separators, processed glass (not for building), measuring or testing machines and instruments, electric wires and cables’.

3        The applicant submitted to the International Bureau of WIPO an application for territorial extension of that trade mark to the European Union pursuant to 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), which was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 4 January 2007.

4        The request for territorial extension was published in Community Trade Marks Bulletin No 1/2007 of 8 January 2007.

5        On 27 June 2007, the intervener, Seiko Holdings Kabushiki Kaisha, the intervener, filed a notice of opposition under Article 42 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (OJ 1994 L 11, p. 1) (now Article 41 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark) (OJ 2009 L 78, p. 1) to the application for territorial extension.

6        The opposition was based on the earlier Community word mark SEIKO, registered on 14 November 2005 under No 2 390 953, for goods and services in Classes 1 to 42.

7        The opposition was based on all the goods covered by the earlier mark and was directed against all the goods covered by the application.

8        The grounds of the opposition were those laid down in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9        By decision of 18 November 2009, the Opposition Division upheld the opposition.

10      On 16 December 2009, the applicant filed a notice of appeal at OHIM against the Opposition Division’s decision under Articles 58 to 64 of Regulation No 207/2009.

11      By decision of 12 August 2010 (‘the contested decision’), the First Board of Appeal of OHIM upheld the Opposition Division’s decision, thus dismissing the applicant’s appeal. First, it noted that the relevant public consists of average consumers in all the Members States. It then found that, in the light of the identity of the goods covered by the marks at issue and the similarity, albeit to a low degree, between those marks, there was a likelihood of confusion on the part of the relevant public, which could be led to believe that the figurative mark SG SEIKOH GIKEN is a variant of the earlier mark SEIKO.

 Forms of order sought by the parties

12      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the opposition to registration of the mark applied for in respect of the goods in Class 25;

–        order OHIM to register the trade mark applied for;

–        order OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener claims that the Court should:

–        uphold the contested decision;

–        in the event that the Court does not uphold the contested decision, remit the opposition to OHIM for a decision on the additional plea in law as to highly distinctive character of the mark SEIKO;

–        order the applicant to the pay the costs of the opposition proceedings and the appeal before OHIM as well as those relating to the present proceedings, including those incurred by the intervener.

 Law

15      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16      Under that provision, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to 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 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.

17      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. Under that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

18      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).

19      In the present case, the applicant does not dispute the merits of the contested decision as regards the identity of the goods covered by the signs at issue.

20      Nor does it dispute, as correctly observed by the Board of Appeal, that the relevant public in respect of whom the likelihood of confusion must be assessed consists of average European Union consumers who are reasonably well-informed and reasonably observant and circumspect.

21      Only the Board of Appeal’s assessment regarding the similarity of the signs at issue is contested. It must therefore be examined whether the Board of Appeal correctly concluded that there was a low degree of similarity between those signs.

 Comparison of the signs

22      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).

23      The question whether the Board of Appeal correctly concluded that there was similarity, albeit weak, between the earlier mark SEIKO and the figurative mark SG SEIKOH GIKEN must be examined in the light of those considerations.

24      In the present case, the Board of Appeal concluded that the signs at issue had a low degree of visual and aural similarity and that a conceptual comparison of the signs was not relevant on account of their lack of meaning.

25      By contrast, the applicant submits, in essence, that the comparison of the two signs reveals visual, aural and conceptual differences and that, therefore, the Board of Appeal wrongly concluded that there was a likelihood of confusion.

26      OHIM and the intervener dispute the applicant’s arguments.

27      Visually, as the Board of Appeal observes, the earlier mark is entirely contained in the mark applied for. That is an indication that the two marks are similar (see, to that effect, the judgment of 21 March 2011 in Case T‑372/09 Visti Beheer v OHIM–Meister (GOLD MEISTER), not published in the ECR, paragraph 27).

28      However, the Board of Appeal also notes several differences between the signs at issue. Firstly, it states that the word element ‘seikoh’ of the figurative mark ends in the letter ‘h’, unlike the single word element ‘seiko’ of the earlier mark. Secondly, it points out that, unlike the earlier mark which is composed of a single word element, the figurative mark is composed of three separate elements: a figurative circular element containing the letters ‘s’ and ‘g’, followed by two word elements ‘seikoh’ and ‘giken’. Thirdly, it observes that the figurative mark is blue. Fourthly, the Board of Appeal notes that the signs at issue are different in length, in that the figurative mark has 13 letters while the earlier mark consists of one word of five letters.

29      On the basis of those differences, the Board of Appeal concluded that, despite their common element ‘seiko’, the signs at issue have a low degree of similarity (see, to that effect, judgment of 1 July 2009 in Case T‑16/08 Perfetti Van Melle v OHMI – Cloetta Fazer (CENTER SHOCK), not published in the ECR, paragraphs 41 to 43, and GOLD MEISTER, paragraph 27 above, paragraphs 28 and 29). The applicant cannot therefore claim that the Board of Appeal ‘just focused its attention on the comparison of the words “seiko” and “seikoh”, [omitting] to evaluate the further relevant elements of the contested mark’. Had that been the case, the Board of Appeal would not have concluded that the signs at issue were similar only to a low degree.

30      Phonetically, it must be noted, as the Board of Appeal points out, that the pronunciation of the figurative mark in its entirety is longer as it contains, unlike the earlier mark, the letters ‘SG’ placed before the element ‘seikoh’, which is followed by the element ‘giken’. However, on account of the identical pronunciation of the elements ‘seiko’ and ‘seikoh’ in several languages of the EU, a fact which the applicant does not dispute, the Board of Appeal took the view that there was some aural similarity, albeit weak, between the two signs taken as a whole.

31      Even if the relevant public pronounced the letters ‘sg’ at the beginning of the figurative mark, as the applicant submits, the applicant cannot deny that, as a result of the central position of the element ‘seikoh’ in that mark, there is some aural similarity between that mark and the earlier word mark composed of the single word element ‘seiko’.

32      Since the Board of Appeal found that the signs at issue had only a low degree of aural similarity on account of several differences, the applicant cannot claim that the Board of Appeal concluded that there was a low degree of similarity between the marks by merely taking the similar pronunciation of the word elements ‘seiko’ and ‘seikoh’ into account.

33      Finally, with regard to the conceptual similarity of the signs at issue, it should be noted that, in accordance with the case-law, conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities existing between those marks. Such a counteraction requires, however, at least one of the marks at issue to have, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately, and the other mark to have no such meaning or an entirely different meaning (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 54).

34      In the present case, as the Board of Appeal corrected noted, neither of the signs has a clear and specific meaning. The applicant itself states in its application that the signs at issue have ‘[no] meaning in the languages of the EU’. Therefore, there was no need to compare the signs at issue on a conceptual level.

35      That conclusion cannot be undermined by the applicant’s claim that a conceptual difference can result when a word mark composed of a single word is compared with a composite mark, since the composite mark is examined as a whole and not by taking into account the common word element of the other mark. In the present case, the word elements of the signs at issue do not have any meaning. As the intervener points out, in the Board of Appeal decisions cited by the applicant, at least one common element of the signs at issue has a clear meaning.

36      It follows from the foregoing considerations that the Board of Appeal correctly concluded that there was a low degree of similarity between the signs at issue.

 Likelihood of confusion

37      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).

38      It should also be pointed out that the likelihood of confusion cannot be determined in the abstract, but must be assessed in the context of an overall analysis that takes into consideration all of the relevant factors of the case, especially the nature of the goods and services in question, marketing methods, whether the public’s level of attention is higher or lower and the habits of that public in the sector concerned (Case T‑385/09 Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), not yet published in the ECR, paragraph 50).

39      It has been found above that there is some visual and aural similarity, albeit weak, between the signs at issue. In addition, it should be recalled that the goods at issue are identical.

40      In those circumstances, in particular because the relevant public will have only an imperfect recollection of the marks at issue (see, to that effect, judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHMI – Allergan (BOTUMAX), not published in the ECR, paragraph 36), as recalled by the Board of Appeal, the latter was correct in concluding that there was a likelihood of confusion between the two signs at issue.

41      Contrary to the applicant’s submissions, the Board of Appeal did not find that there was a likelihood of confusion solely on the ground that the element ‘seiko’ is included in the mark applied for. The Board of Appeal took into account the identical nature of the goods, the average degree of attention of the relevant public, which will have only an imperfect recollection of the marks at issue, and the similarity, albeit weak, of the signs at issue.

42      In the light of the foregoing, it must be concluded that the Board of Appeal did not err in finding that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

43      It follows that the applicant’s single plea in law must be rejected and the action as a whole must be dismissed, without it being necessary to rule on the other heads of claim.

 Costs

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

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Kabushiki Kaisha Seikoh Giken to pay the costs.

Kanninen

Wahl

Soldevila Fragoso

Delivered in open court in Luxembourg on 13 June 2012.

[Signatures]