JUDGMENT OF THE GENERAL COURT (First Chamber)

23 February 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark James Jones – Earlier Community word mark JACK & JONES – 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‑11/09,

Rahmi Özdemir, residing in Dreieich (Germany), represented by I. Hoes, M. Heinrich, C. Schröder, K. von Werder and J. Wittenberg, lawyers,

applicant,

v

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

defendant,

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

Aktieselskabet af 21. november 2001, established in Brande (Denmark), represented by C. Barrett Christiansen, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 November 2008 (Case R 858/2007-2), concerning opposition proceedings between Aktieselskabet af 21. november 2001 and Rahmi Özdemir,

THE GENERAL COURT (First Chamber),

composed of I. Wiszniewska-Białecka (Rapporteur), President, F. Dehousse and H. Kanninen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 14 January 2009,

having regard to the response of OHIM lodged at the Court Registry on 16 April 2009,

having regard to the response of the intervener lodged at the Court Registry on 7 April 2009,

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 rule without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,

gives the following

Judgment

 Background to the dispute

1        On 20 November 2003, the applicant, Mr Rahmi Özdemir, filed an application for a Community trade mark at 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)), claiming priority of German trade mark No 303 26 412.8 filed on 24 May 2003.

2        The mark for which registration was sought is the word sign James Jones.

3        The goods in respect of which registration was sought are in Class 25 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: ‘Clothing, footwear, headgear’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 44/2004, of 1 November 2004.

5        On 25 January 2005, the intervener, Aktieselskabet af 21. november 2001, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark James Jones in relation to the goods referred to at paragraph 3 above.

6        The opposition was based on the following earlier marks:

–        the Community word mark JACK & JONES which, after the application for registration was filed on 16 March 1999, was registered on 14 June 2000 under number 1 107 747 in respect of goods in Classes 3, 18 and 25, and corresponding, for each of those classes, to the following description:

–        Class 3: ‘Perfumery, essential oils, cosmetics, hair lotions’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; bag, trunks and travelling bags; umbrellas, walking sticks’;

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

–        the word mark JACK JONES registered in the United Kingdom on 22 March 1996 under number 2 063 437, for goods in Class 25, namely: ‘Men’s, women’s and children’s suits, jackets, trousers, skirts, blouses, dresses, sweaters, vests, underpants, shorts, articles of sports clothing, hats and headgear, neckties, scarves, jeans, caps, gloves, belts, aprons, swimwear, sleeping garments, knitted articles of clothing and articles of clothing made from knitted material; but not including any such goods being footwear’;

–        the word mark JACK JONES registered in Benelux on 24 November 1989 under number 0474 622, for goods in Class 25, namely: ‘Clothes, including leisure wear, footwear and headgear’;

–        the word mark JACK & JONES registered in Denmark on 28 September 1990 under reference VR 1990 06569 for goods in Class 25 and corresponding to the following description: ‘Clothing, footwear, headgear’.

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8        On 16 May 2007, the Opposition Division upheld the opposition.

9        On 1 June 2007, the applicant filed a notice of appeal at OHIM against the decision of the Opposition Division.

10      By decision of 3 November 2008 (‘the contested decision’) the Second Board of Appeal of OHIM dismissed the appeal. In order to assess whether there was a likelihood of confusion, the Board of Appeal compared the trade mark applied for, James Jones, and the earlier Community trade mark JACK & JONES. Since the earlier trade mark is a Community trade mark and the goods in question articles of clothing intended for the general public, the Board of Appeal found that the relevant consumer was the average consumer in all the Member States. Since both marks designate all goods in Class 25, it concluded that the goods in question were identical. It took the view that since the goods in question are for everyday consumption and are generally offered at an affordable price, the relevant public does not display a particularly high level of attention. As regards the comparison of the marks, the Board of Appeal found that they were visually and phonetically similar, and that a certain conceptual similarity could not be totally excluded. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, since the relevant public might associate the marks at issue, both of which contain the surname Jones, and believe that they belong to economically‑linked undertakings. Lastly, the Board of Appeal found that that conclusion was reinforced by the evidence of use of the earlier mark filed by the intervener, which showed sufficiently that that mark enjoyed at least a certain degree of enhanced distinctiveness in several Member States.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the opposition;

–        order the intervener to pay the costs, including those incurred in the course of the opposition proceedings.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should:

–        uphold the contested decision;

–        uphold the decision of the Opposition Division of 16 May 2007;

–        order the applicant to pay the costs.

 Law

14      As a preliminary point, it should be noted that since the Board of Appeal upheld the Opposition Division’s decision, the intervener’s second head of claim requesting that the Court uphold the Opposition Division’s decision must be understood as being included in its first head of claim requesting that the Court uphold the contested decision. Given that upholding the contested decision is tantamount to dismissing the action, the form of order sought by the intervener should be understood as requesting, in essence, that the action be dismissed.

15      In support of his first head of claim, which seeks the annulment of the contested decision, the applicant relies on two pleas in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94 and of Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).

 First plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94

16      The applicant submits that the mark James Jones for which registration is sought and the earlier Community trade mark JACK & JONES are not similar and that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

17      OHIM and the intervener do not accept the applicant’s arguments.

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

19      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. According to the same line of case‑law, likelihood of confusion must be assessed globally, according to the perception the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to 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 case-law cited, and the judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM – Editorial Planeta (FOCUS Radio), not published in the ECR, paragraphs 24 and 25).

20      In the present case, it is not disputed that the goods in question are identical.

21      In addition, the applicant does not challenge the Board of Appeal’s finding that, since the goods in question, that is to say clothing, footwear and headgear, are intended for the general public, the relevant public is composed of average consumers in all the Member States whose level of attention is not particularly high.

22      As regards the comparison of the marks, it must be borne in mind that, according to the case-law, 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 the judgment of 10 December 2008 in Case T-290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 41).

23      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components. 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 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 (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35, and the judgment of 4 March 2009 in Case T-168/07 Professional Tennis Registry v OHIM – Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY), not published in the ECR, paragraph 28).

24      In addition, account should 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 (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26, and Case T-355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-791, paragraph 41).

25      In the present case, the Board of Appeal compared the word mark James Jones for which registration is sought and the earlier Community word mark JACK & JONES.

26      Visually, the mark James Jones and the trade mark JACK & JONES are composed of two monosyllabic words, the first word in both beginning with the letters ‘ja’, and the second word ‘Jones’ being identical. The two marks differ in the ending of the first word (‘ck’ and ‘mes’) and also in the presence in the earlier mark of an ampersand between the words ‘Jack’ and ‘Jones’. Thus, as the Board of Appeal found, the marks at issue are visually similar.

27      That finding is not called into question by the applicant’s arguments that the marks at issue are not visually similar on the grounds that the ampersand is easily remembered by the consumer, that it characterises the overall visual impression of the JACK & JONES trade mark and that the word ‘James’ is longer than the word ‘Jack’.

28      Taking into account that the marks at issue comprise a very short first word, composed of four and five letters respectively, the first two of which, ‘j’ and ‘a’, are identical and a second word, ‘Jones’, which is identical, the Court finds, as the Board of Appeal did, that the difference between those marks attributable to the ampersand in the JACK & JONES trade mark is not enough to conclude that those marks are not visually similar.

29      In addition, as OHIM rightly points out, the ‘&’ symbol in the earlier mark is a standard representation of the ampersand. Since the average consumer must rely on his imperfect recollection of the marks, there is no reason why he should pay greater attention to the differences between the marks at issue than to their common points.

30      Phonetically, the marks at issue are composed of two monosyllabic words. The beginning of the first word of both marks (‘James’ and ‘Jack’) is pronounced in a very similar manner, and the second word of both marks (‘Jones’) is identical. It must be found that those common points are sufficient to establish that the marks at issue are phonetically similar. Therefore, the Board of Appeal rightly found that there was a phonetic similarity between the marks at issue.

31      Contrary to the applicant’s contention, the fact that the consumer pronounces the ampersand and that the earlier mark therefore contains three syllables, whereas the mark for which registration is sought contains two, is not sufficient to outweigh the phonetic similarities between the marks at issue. In fact, the ampersand will be pronounced by the consumer either as ‘and’ in his own language or as ‘and’ in English. The word ‘and’ is commonly used and will not be very striking phonetically.

32      Given that whether the marks at issue are similar must be assessed according to their overall impression, that the consumer pays greater attention to the beginning of a mark than to the ending and that ‘Jones’ is not dominant in the marks at issue, the applicant also submits that it may be concluded from the difference between the words ‘Jack’ and ‘James’ that the marks at issue are not similar.

33      That argument cannot be accepted. In that connection, it must be pointed out that even if ‘Jones’ is not dominant in the marks at issue, it must be taken into consideration in the overall assessment of whether the marks are similar. It is found at the same position in those marks and is pronounced identically. Furthermore, the words ‘Jack’ and ‘James’ also have a certain similarity in that they begin with the ‘dj’ sound and are monosyllabic.

34      Conceptually, the mark James Jones is composed of a forename followed by a surname and the trade mark JACK & JONES by a forename and a surname linked by an ampersand. Jack and James will be recognised by the consumers of most Member States as being common English forenames. The surname Jones will also be recognised by a large proportion of the relevant public as being a common English surname. Thus, as the Board of Appeal stated, both marks at issue refer to people’s names and contain the surname Jones. The Board of Appeal was therefore correct to find that it was conceivable that consumers might interpret the marks at issue as referring to the same person, and that the presence of the ampersand symbol did not exclude all conceptual similarity between the signs.

35      That finding is not called into question by the applicant’s argument that the marks are not conceptually similar in that the JACK & JONES trade mark will be perceived as the surnames of two people, linked by an ampersand, whereas the James Jones mark will be perceived as the forename and surname of one person only.

36      As the Board of Appeal and OHIM point out, even if the JACK & JONES trade mark were understood as being composed of two surnames, the lack of a forename associated with the surname Jones in that mark reinforces the similarity with the James Jones mark. Thus, it is conceivable that the relevant public might take the marks at issue to refer to the same person.

37      The Board of Appeal was correct to find that the James Jones mark for which registration is sought and the earlier trade mark JACK & JONES were similar visually and phonetically and relatively similar conceptually. It must therefore be held that those marks are similar overall.

38      As regards the likelihood of confusion, taking into account that the goods in question are identical, that the marks at issue are similar, and that the relevant public comprises the average consumer of the European Union whose level of attention is not particularly high and who places his trust in the imperfect picture of the marks at issue that he has kept in his mind, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion.

39      That finding is not called into question by the applicant’s argument that the evidence adduced by the intervener before the Board of Appeal was insufficient to prove that the trade mark JACK & JONES had enhanced distinctiveness, with the result that the Board of Appeal erred in concluding on that basis that there was a likelihood of confusion.

40      It must be pointed out that, in the contested decision, the Board of Appeal stated that its conclusion in relation to the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 was reinforced by the proof of genuine use of the earlier JACK & JONES trade mark furnished by the intervener showing that that mark enjoyed a certain degree of enhanced distinctiveness in several Member States, in particular in Scandinavian countries. The Board of Appeal therefore took account of the enhanced distinctiveness of the earlier mark only for the purpose of corroboration and consequently the applicant cannot claim that the Board of Appeal found that there was a likelihood of confusion in view of the enhanced distinctiveness of the earlier mark.

41      In the light of all the foregoing, the Board of Appeal did not err in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. Consequently, the first plea must be rejected.

 Second plea in law, alleging infringement of Article 43(2) and (3) of Regulation No 40/94

42      The applicant states that this plea is raised ‘as a mere precaution’ in the event that the Court considers that the earlier JACK JONES trade mark registered in the United Kingdom ought to be taken into consideration. He submits that it has not been proved that that mark has been put to genuine use.

43      Since, as the applicant acknowledges, the Board of Appeal assessed whether there was a likelihood of confusion only on the basis of the earlier Community trade mark JACK & JONES and did not take into consideration the earlier JACK JONES mark registered in the United Kingdom, the Board of Appeal did not examine pursuant to Article 43(2) and (3) of Regulation No 40/94 whether the intervener had substantiated that that mark had been put to genuine use.

44      Therefore, since the Board of Appeal did not apply Article 43(2) and (3) of Regulation No 40/94, it cannot have infringed that article. Consequently, this plea must be rejected together with the first head of claim in its entirety.

45      In the light of all the foregoing, the action must be dismissed, and it is not necessary to rule on the applicant’s second head of claim.

 Costs

46      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. As the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Rahmi Özdemir to pay the costs.

Wiszniewska-Białecka

Dehousse

Kanninen

Delivered in open court in Luxembourg on 23 February 2010.

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