JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)

1 July 2009 (*)

(Community trade mark – Invalidity proceedings – Community word mark CENTER SHOCK – Earlier national word marks CENTER – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009))

In Case T‑16/08,

Perfetti Van Melle SpA, established in Lainate (Italy), represented by P. Perani and P. Pozzi, lawyers,

applicant,

v

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

defendant,

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

Cloetta Fazer AB, established in Ljungsbro (Sweden), represented initially by J. Runsten and S. Sparring and subsequently by M. Treis, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 November 2007 (Case R 149/2006-4), relating to invalidity proceedings between Cloetta Fazer AB and Perfetti Van Melle SpA,

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

composed of M.E. Martins Ribeiro, President, N. Wahl (Rapporteur) 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 January 2008,

having regard to the response of OHIM lodged at the Court Registry on 13 May 2008,

having regard to the response of the intervener lodged at the Court Registry on 2 May 2008,

further to the hearing on 12 March 2009,

gives the following

Judgment

 Background to the dispute

1        On 15 February 2000, the applicant, Perfetti Van Melle SpA, was granted registration of the Community word mark CENTER SHOCK by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). That registration had been applied for on 22 October 1998.

2        The goods in respect of which registration was granted fall within Class 30 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 to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; chewing gum’.

3        On 2 July 2004, the intervener, Cloetta Fazer AB, filed an application for a declaration that the trade mark CENTER SHOCK was invalid on the basis of 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)) and, specifically, Article 8(1)(b), in conjunction with Article 52(1)(a) of Regulation No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009).

4        The earlier national marks relied on in support of the application for a declaration of invalidity are, inter alia:

–        the word mark CENTER registered on 24 October 1938 in Sweden in respect of the goods ‘caramels, cocoa, chocolate, confectionery, marmalade and other chocolate or sugar products, in the form of cakes, tablets, pralines, powder, and in any other form, liquorice, coffee, tea, yeast, baking-powder, biscuits, bread, honey, chewing gum, marzipan, sugar, treacle, glucose, salt and honey’ falling within Class 30;

–        the word mark CENTER registered on 27 August 1971 at the Benelux trade marks office in respect of the goods ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; chocolate, flour and preparations made from cereals, bread, biscuits, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces (except for salad dressing); spices; ice’ falling within Class 30.

5        The application for a declaration of invalidity was directed against all the goods covered by the CENTER SHOCK trade mark.

6        By decision of 24 November 2005, the OHIM Cancellation Division granted the application for a declaration that the CENTER SHOCK trade mark was invalid with regard to all the goods for which it had been registered.

7        On 24 January 2006, the applicant filed a notice of appeal before OHIM against the Cancellation Division’s decision.

8        By decision of 7 November 2007 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal held in substance that, having regard, first, to the identical nature of the goods designated by the CENTER and CENTER SHOCK trade marks and, secondly, to the visual, phonetic and conceptual similarities of those marks, a likelihood of confusion in Sweden and the Benelux countries had been established.

 Forms of order sought

9        The applicant claims that the Court should:

–        alter the contested decision in its entirety;

–        annul the decision of the OHIM Cancellation Division of 24 November 2005;

–        confirm the validity of the Community trade mark CENTER SHOCK;

–        order OHIM and the intervener to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the application as unfounded;

–        order the applicant to pay the costs.

11      The intervener contends that the Court should:

–        dismiss the application;

–        uphold the decision of the OHIM Cancellation Division of 24 November 2005 and the contested decision;

–        order the applicant to pay the costs.

12      At the hearing, the applicant declared that it was withdrawing its third head of claim, which was noted in the minutes.

 Law

13      In support of its action, the applicant puts forward two pleas. The first plea alleges that the evidence of the use and ownership of the earlier national word marks submitted by the intervener in support of the application for a declaration of invalidity is inadmissible. The second plea alleges that there is no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 in conjunction with Article 52(1)(a) of that regulation, between the marks at issue.

 The first plea, alleging that the evidence of the use and ownership of the earlier marks relied on in support of the application for a declaration of invalidity is inadmissible

14      The applicant claims that the evidence relating to the validity and ownership of the earlier marks was not produced by the intervener in due time, that is, within the period specified by OHIM, in accordance with Rule 39(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), in order to remedy certain procedural deficiencies which affected the evidence previously produced in support of the application for a declaration of invalidity. That evidence was enclosed with a communication of 11 March 2005, whereas the period prescribed expired on 10 March 2005. The applicant claims that the documents sent to it by OHIM, pursuant to Rule 40(4) of Regulation No 2868/95, are all dated 11 March 2005 and therefore were submitted out of time, which renders them inadmissible under Rule 39(3) of that regulation.

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

16      The Court observes that Rule 37 of Regulation No 2868/95 requires, inter alia, that an application to OHIM for a declaration of invalidity of a Community trade mark pursuant to Article 55 of Regulation No 40/94 is to contain certain information as regards the registration in respect of which a declaration of invalidity is sought, the grounds on which the application is based and the applicant for a declaration of invalidity. Rule 39(3) of that regulation provides that, if OHIM finds that the application does not comply with Rule 37, it is to invite the applicant to remedy the deficiencies found within such period as it may specify. That provision also states that, if the deficiencies are not remedied within the period specified, OHIM is to reject the application as inadmissible. Lastly, Rule 40(4) of Regulation No 2868/95 provides that, save where Rule 69 otherwise provides or allows, all observations filed by the parties are to be sent to the other party concerned.

17      In the present case, OHIM invited the intervener, under Rule 39(3) of Regulation No 2868/95, to remedy the procedural deficiencies affecting its application for a declaration of invalidity before 10 March 2005. The intervener complied with that request by fax dated 10 March 2005, that is, within the period specified.

18      Consequently, the applicant cannot dispute the admissibility of the evidence submitted in support of the application for a declaration of invalidity or, as a result, the admissibility of the application for a declaration of invalidity as a whole, under Rule 39(3) of Regulation No 2868/95. The fact that OHIM forwarded to the applicant only on 11 March 2005 the documents sent by the intervener is not decisive, in so far as it is indisputable that those documents were in fact received by OHIM on 10 March 2005. As OHIM argues, Rule 40 of Regulation No 2868/95, which provides in paragraph 4 thereof that ‘all observations filed by the parties shall be sent to the other party concerned’, cannot be interpreted as requiring it to forward all the identical sets of documents provided by one party to the other party to the proceedings.

19      Furthermore, it must be observed that, by letter dated 4 April 2005, OHIM actually informed the applicant that it had received the relevant documents on 10 March 2005. The applicant is therefore incorrect in submitting that ‘the sole official communication concerning the receipt of the requested documents is the one indicating the date of March 11 2005’.

20      Having regard to all those factors, the first plea raised must be rejected as unfounded.

 The second plea, alleging infringement of Article 8(1)(b) and Article 52(1)(a) of Regulation No 40/94

21      The applicant submits that a likelihood of confusion between the trade marks at issue is not proved.

22      It submits, first, that there is an obvious difference between the goods for which each of the trade marks at issue is used, namely chocolate and chewing-gum. While the CENTER SHOCK and CENTER trade marks in theory cover similar goods, the goods in respect of which they are actually used and the related economic interests are clearly different. The applicant submits that the Board of Appeal, in disregard of the case-law, failed to take account of all the relevant factors which characterise the relationship between those goods. It submits, inter alia, that those goods cover different needs, are directed at different consumers, involve different production systems and have completely different channels of distribution.

23      The applicant secondly maintains that, contrary to what the Board of Appeal concluded, the CENTER SHOCK and CENTER trade marks are globally different, visually, phonetically and conceptually. It points out, in particular, that the word ‘center’ in the contested trade mark cannot be regarded as dominant in relation to the word ‘shock’ but that it is, on the contrary, that latter component which must be regarded as the dominant component of that mark. The Board of Appeal, it submits, thus failed to take account of the overall impression produced by the marks at issue, having regard to their distinctive and dominant components.

24      Lastly, the applicant makes the observation that the approach adopted by the Board of Appeal amounts to granting the intervener a sort of monopoly over all the trade marks consisting, in part, of the word ‘center’, even though that component must be regarded as devoid of any specific distinctive character. It also points out that there are many trade marks including the word ‘center’ registered for goods in Class 30.

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

26      The Court recalls that, under Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) of that regulation (now Article 8(2) of Regulation No 207/2009) and the conditions set out in Article 8(1) of that regulation are fulfilled. ‘Earlier trade marks’ should be understood to mean, inter alia, trade marks registered in a Member State or at the Benelux Trade Mark Office, provided that the date of application for registration of those marks is earlier than that for the contested Community trade mark.

27      The relative ground for invalidity arising under Article 52(1)(a) of Regulation No 40/94 in conjunction with Article 8(1)(b) of that regulation corresponds to the relative ground for refusal of registration laid down in the latter provision. Accordingly, the case-law relating to a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation is also relevant in the present context (Case T-288/03 TeleTech Holdings v OHIMTeletech International(TELETECH GLOBAL VENTURES) [2005] ECR II-1767, paragraph 75, and judgment of 16 January 2008 in Case T‑112/06 Inter-Ikea v OHIMWaibel (idea), not published in the ECR, paragraph 31).

28      It is settled case-law that 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. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, inter alia the interdependence between the similarity of the signs and the similarity of the goods or services covered (Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33, and idea, paragraph 27 above, paragraph 32). 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; Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 19; Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 27).

29      In the present case, having regard to the nature of the goods at issue and the fact that the earlier marks were registered in Sweden and the Benelux countries, it must be held that the relevant public consists of average consumers resident in those countries who are reasonably well informed and reasonably observant and circumspect.

30      The comparison made by the Board of Appeal in respect of the goods concerned and the signs at issue must be examined in the light of those considerations.

31      It must first be assessed whether the Board of Appeal correctly defined the goods covered by the trade marks at issue, for the purposes of examining whether there is a likelihood of confusion between those marks.

32      In that regard, it should be noted that the comparison of the goods required by Article 8(1)(b) of Regulation No 40/94 must relate to the description of the goods covered by the earlier mark and not to the goods for which the trade mark is actually used unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 56(2) and (3) of Regulation No 40/94 (now Article 57(2) and (3) of Regulation No 207/2009), such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (Case T-346/04 Sadas v OHIMLTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 35, and Case T‑364/05 Saint-Gobain Pam v OHIMPropamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 85).

33      In the present case, the Board of Appeal correctly pointed out in paragraph 23 of the contested decision, without being contradicted by the applicant, that that party had not expressly submitted in due time a request for proof of genuine use of the earlier marks.

34      Moreover, as regards the goods covered by the Community trade mark, it must be observed that, in the context of invalidity proceedings, OHIM may only take account of the list of goods as it appears in the registration document of the Community trade mark, subject only to any subsequent amendments to that list. Accordingly, the applicant’s statements relating to the specific goods for which it uses the Community trade mark are irrelevant in this case since the applicant did not amend the list of the goods covered by that trade mark. The Board of Appeal was therefore correct, in the contested decision, in order to assess the likelihood of confusion in this case, to have regard to all the goods covered by the Community trade mark (see, by analogy, PAM PLUVIAL, paragraph 32 above, paragraph 89 and the case-law cited).

35      Therefore, the Board of Appeal was fully entitled in the contested decision to take into account, for the purposes of the comparison of the goods concerned, all the goods and services for which the Community trade mark and the earlier trade marks were registered and on which the application for a declaration of invalidity is based.

36      As regards the assessment, in the strict sense, of the similarity of the goods at issue, it is settled case-law that all the relevant features of the relationship between those goods or services should be taken into account, those features including, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Canon, paragraph 28 above, paragraph 23, and the judgment of 13 December 2007 in Case T-242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 40). Other factors may also be taken into account such as the distribution channels of the goods concerned (Case T-443/05 El Corte Inglés v OHIM– Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37; see also, to that effect, Case T-164/03 Ampafrance v OHIM– Johnson & Johnson (monBeBé) [2005] ECR II-1401, paragraph 53).

37      It not disputed in the present case that the goods covered by the Community trade mark CENTER SHOCK (see paragraph 2 above) are identical to those covered by the earlier CENTER marks (see paragraph 4 above).

38      Secondly, as regards the comparison of the signs at issue, the Court has held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and judgment of 26 January 2006 in Case T-317/03 Volkswagen v OHIM – Nacional Motor (Variant), not published in the ECR, paragraph 46).

39      The global assessment of the likelihood of confusion must, so far as the visual, phonetic or conceptual similarity of the marks in question is concerned, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23, and judgment of 23 May 2007 in Case T-342/05 Henkel v OHIM – SERCA (COR), not published in the ECR, paragraph 38).

40      It must be pointed out in that connection that the consumer only rarely has the chance to make a direct comparison between the different marks and must therefore place his trust in the imperfect picture that he has kept in his mind. In general, it is the dominant and distinctive characteristics of a sign which are most easily memorised (judgment of 14 December 2005 in Case C-169/04 Arysta Lifescience v OHIM – BASF (CARPOVIRUSINE), not published in the ECR, paragraph 50).

41      In the present case, what is at issue are the word signs CENTER SHOCK and CENTER. The Board of Appeal concluded in paragraph 41 of the contested decision that the common element ‘center’ gave the signs an overall phonetic, visual and conceptual similarity which is such that the relevant public, when faced with those trade marks in respect of identical goods, might believe that the trade marks have a common commercial origin.

42      That conclusion must be approved.

43      Although, visually and phonetically, the trade marks at issue are of a different length and consist of a different number of words, the overall impression produced by those trade marks leads to the finding that there is a certain visual and phonetic similarity between them owing to their common component.

44      Conceptually, the trade marks at issue, which refer, on account of their common component ‘center’, to the same idea, must be regarded as similar. The fact that the CENTER SHOCK trade mark is also composed of the word ‘SHOCK’ does not affect that finding. As the Board of Appeal pointed out in paragraph 38 of the contested decision, where a composite mark is composed by juxtaposing one component and another trade mark, that latter mark, even if it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and that other mark may be considered to be similar (see, to that effect and by analogy, Case C-120/04 Medion [2005] ECR I-8551, paragraphs 30 and 37).

45      None of the arguments raised by the applicant casts doubt on that finding.

46      As regards, first, the applicant’s statement that, in the CENTER SHOCK trade mark, the word ‘center’, which is used descriptively and which therefore has an extremely weak descriptive character, is only perceived as a qualifier of ‘shock’, it is sufficient to observe that the word ‘center’, which has its own distinctive character, cannot be used as an adjective, but only as a verb or a noun. In any event, the applicant has failed to prove in what way the component ‘center’ is descriptive or, at the very least, suggestive of a quality of all the goods in respect of which the marks at issue were registered.

47      As regards, secondly, the arguments based on the applicant’s ownership of other marks containing the component ‘center’ and the existence of such marks in the food sector, they cannot be considered relevant. Even were such arguments to be declared admissible in that they are based on documents actually produced before OHIM, it must be stated that the Community and international trade mark registrations on which the applicant is relying, apart from the fact that some of them have been contested or withdrawn, are not capable of proving whether and to what extent signs containing the word ‘center’ are actually commonly used in the food sector.

48      As regards, thirdly, the arguments developed at the hearing that the contested decision diverges from the assessment of the similarity of the trade marks adopted in the judgment of 10 December 2008 in Case T‑228/06 Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), not published in the ECR, paragraph 28, it must be stated that the components at issue in that case are different from those at issue in the present case. First, unlike the words ‘beverly hills’, which refer to a particular geographical place with which the target public is familiar, the word ‘shock’ in the CENTER SHOCK trade mark does not have a strong semantic value which, combined with that of the word ‘center’, produces a whole that is conceptually different from the CENTER mark. Secondly, contrary to what was concluded concerning the use of Italian forenames and surnames, such as Giorgio, in the clothing sector, in the present case the consumer may infer from the use of the word ‘center’, which is not frequently used in the sector under consideration, that there is an economic link between all the proprietors of the trade marks including that word.

49      It follows from all the foregoing that there are significant similarities between the trade marks at issue when each is considered as a whole.

50      As regards, lastly, the assessment of the likelihood of confusion in the present case, in the light of the fact that the goods at issue are identical and the signs at issue are similar, it must be held that the Board of Appeal did not err in any way in concluding that there was a likelihood of confusion between the Community trade mark and the earlier national marks on the part of the relevant public.

51      The second plea must therefore be rejected as unfounded and the action in its entirety must be dismissed.

 Costs

52      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 and OHIM and the intervener have applied for costs, the applicant must be ordered to pay the costs.

On those grounds,

THE COURT OF FIRST INSTANCE (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Perfetti Van Melle SpA to pay the costs.

Martins Ribeiro

Wahl

Dittrich

Delivered in open court in Luxembourg on 1 July 2009.

E. Coulon

Registrar

      President