JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

19 May 2010 (*)

(Community trade mark – Invalidity proceedings – Community figurative mark EDUCA Memory game – Earlier national and international word marks MEMORY – Relative ground for refusal – Lack of similarity between the signs – Articles 8(1)(b) and (5), 74 and 75 of Regulation (EC) No 40/94 (now Articles 8(1)(b) and (5), 76 and 77 of Regulation (EC) No 207/2009))

In Case T‑243/08,

Ravensburger AG, established in Ravensburg (Germany), represented by G. Würtenberger and R. Kunze, lawyers,

applicant,

v

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

defendant,

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

Educa Borras, SA, established in Barcelona (Spain), represented by I. Valdelomar Serrano, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 April 2008 (Case R 597/2007-2) relating to invalidity proceedings between Ravensburger AG and Educa Borras, SA,

THE GENERAL COURT (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 on 23 June 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 17 October 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 3 October 2008,

further to the hearing on 10 December 2009,

gives the following

Judgment

 Background to the dispute

1        On 20 March 1997, the intervener, Educa Borras SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the following figurative sign:

3        The goods in respect of which registration was sought fall within Class 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: ‘games and playthings’.

4        On 7 October 2002, the mark was registered as a Community trade mark (‘the mark at issue’).

5        On 8 October 2003, the applicant, Ravensburger AG, filed an application for a declaration that the mark at issue was invalid. In support of its application for a declaration of invalidity, the applicant relied on Article 52(1)(a) and Article 8(1) and (5) of Regulation No 40/94 (now Article 53(1)(a) and Article 8(1) and (5) of Regulation No 207/2009).

6        The application for a declaration of invalidity was based on a number of earlier rights for which the applicant also claimed a reputation in the territories concerned. Those earlier rights included:

–        the international word mark MEMORY, registered on 14 November 1972 under the reference R393512 for a range of goods in Class 28 and having effect inter alia in Austria;

–        the national word mark MEMORY, registered in Germany on 15 November 1977 under the reference 964625 for placing card games in Class 28.

7        Those two earlier word marks MEMORY are hereinafter jointly referred to as ‘the earlier marks’.

8        By decision of 22 February 2007, the Cancellation Division granted the application for the declaration of invalidity made by the applicant on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), declared the mark at issue invalid and ordered the intervener to pay the costs.

9        The Cancellation Division found that, although the relevant German‑speaking public understands the meaning of the words ‘memory’ and ‘game’, it could not be assumed that that public would perceive the word element ‘memory game’ of the mark at issue as a compound noun, meaning ‘Gedächtnisspiel’. On the contrary, according to the Cancellation Division, a significant part of the relevant German‑speaking public will probably perceive the word element as two separate words, namely ‘memory’ and ‘game’.

10      Next, the Cancellation Division observed that, although the word ‘educa’ may constitute overall the ‘strongest element’ of the mark at issue, the word ‘memory’ still has an independent distinctive role in that mark.

11      Finally, while finding that the goods at issue were identical, the Cancellation Division held that the fact that a part of the mark at issue (the word ‘memory’) was identical to the earlier marks made the signs in question visually, phonetically and conceptually similar and gave rise to a likelihood of confusion.

12      On 18 April 2007, the intervener filed a notice of appeal against the decision of the Cancellation Division. In the course of the proceedings before the Board of Appeal, the applicant requested an oral hearing in order to underline the well‑known character and high degree of distinctiveness of the earlier marks.

13      By decision of 8 April 2008 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the decision of the Cancellation Division, dismissed the application for the declaration of invalidity of the mark at issue, rejected the request for an oral hearing and ordered the applicant to pay the costs.

14      Specifically, the Board of Appeal found that the word ‘educa’ constituted the dominant element of the mark at issue and that the word ‘memory’ did not have an independent distinctive role in that mark, because, where it appears with the component ‘game’, it will simply be perceived as a compound noun meaning ‘memory game’, that is to say as a descriptive expression referring to the kind of game in question.

15      For these reasons, the Board of Appeal concluded that the signs in question were visually, phonetically and conceptually different and that, therefore, one of the essential conditions for the application of Article 8(1)(b) of Regulation No 40/94 and Article 8(5) of that regulation (now Article 8(5) of Regulation No 207/2009) had not been met.

16      In rejecting the request for an oral hearing, the Board of Appeal found that the alleged reputation or enhanced distinctiveness of the earlier marks would not have affected its conclusion that the signs in question were visually, phonetically and conceptually different.

 Forms of order sought by the parties

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

18      OHIM and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

19      In support of its action, the applicant raises four pleas in law alleging infringement of, respectively, Article 8(1)(b) of Regulation No 40/94, Article 8(5) of that regulation, Article 74 of the regulation (now Article 76 of Regulation No 207/2009) and Article 75 of the regulation (now Article 77 of Regulation No 207/2009).

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

 Arguments of the parties

20      The applicant claims that, in its analysis of the similarity of the marks in question, the Board of Appeal did not take into account the fact that the element ‘memory’ in the mark at issue was not a generic term, but was a trade mark registered earlier, with enhanced distinctive character and enjoying a reputation.

21      The applicant also claims that, even disregarding the fact that the element ‘memory’ is a mark of reputation, the contested decision must be annulled, since the Board of Appeal failed to take account of a number of relevant factors, in particular the graphical representation of the mark at issue and the manner in which the goods at issue are generally marketed.

22      The applicant also challenges the Board of Appeal’s conclusion that the relevant German‑speaking public would perceive the words ‘memory game’ as a whole corresponding to the English translation of the German word ‘Gedächtnisspiel’.

23      OHIM and the intervener submit that the present plea should be rejected and state, essentially, that the marks in question are not similar.

 Findings of the Court

24      It must first be noted that, in so far as the earlier marks have effect in German‑speaking countries and in so far as the goods in question are everyday consumer goods, the relevant public by reference to which the likelihood of confusion must be assessed is average German‑speaking consumers, who are reasonably well-informed and reasonably observant and circumspect, and whose level of attention in relation to the goods in question is neither particularly high nor particularly low.

25      Next, it is important to point out that the conclusion of the Board of Appeal, set out in paragraphs 39 and 40 of the contested decision, that there was no likelihood of confusion between the marks in question, was based on the assessment that those marks were visually, phonetically and conceptually neither identical nor similar.

26      In that regard, first, the applicant maintains that, in its analysis of the similarity of the marks in question, the Board of Appeal failed to take proper account of the fact that the earlier marks enjoyed a reputation and had enhanced distinctive character.

27      It is appropriate at the outset to reject that complaint as unfounded. The reputation of an earlier mark or its particular distinctive character must be taken into consideration for the purposes of assessing the likelihood of confusion, and not for the purposes of assessing the similarity of the marks in question, which is an assessment made prior to that of the likelihood of confusion (see, to that effect, judgment of 27 November 2007 in Case T‑434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), not published in the ECR, paragraphs 50 and 51).

28      Secondly, the applicant complains that the Board of Appeal failed to recognise that the words ‘memory game’ in the mark at issue fulfilled the role of a trade mark. In this respect, it challenges the conclusion of the Board of Appeal that the relevant German‑speaking public understands the meaning of the word element ‘memory game’ and therefore perceives it as being descriptive.

29      The applicant also claims that the graphical representation and style of the mark at issue and the manner commonly used to market the goods in the sector in question enable the relevant public to perceive the expression ‘memory game’ as an independent identifying sign indicating commercial origin.

30      In this context, it has to be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by them, 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 appreciation of that likelihood of confusion. In this 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).

31      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41, and the case-law cited).

32      However, beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element (Case C‑120/04 Medion [2005] ECR I‑8551, paragraph 30). In such a case, the composite sign and the earlier mark may be regarded as similar.

33      In the present case, it must be noted that the earlier marks and the element ‘memory’ in the mark at issue are identical. However, and as follows from the case-law cited in paragraphs 30 to 32 above, the importance of the word ‘memory’ in the mark at issue must be examined, in order to assess the similarity of the marks in question, that is, whether that word is a dominant element of the mark at issue or, at least, has an independent distinctive role.

34      In this context, it is important to recall that the Board of Appeal concluded, in paragraphs 35 to 38 of the contested decision, that the element ‘educa’ was the dominant element of the mark at issue and that the element ‘memory’ did not have an independent distinctive role in that mark. That conclusion must be endorsed.

35      In that regard, the Court finds that the element ‘memory’ in the mark at issue is strongly linked with the word which follows it, namely the word ‘game’.

36      The words ‘memory’ and ‘game’, the typeface and the size of the characters of which are identical, are placed inside the same rectangle below a red rectangle containing the word ‘educa’ in capital letters. That creates a genuine dichotomy visually and phonetically between the word ‘educa’, on the one hand, and the combination of the words ‘memory’ and ‘game’, on the other.

37      With regard to the conceptual aspect, it is important to note that the Board of Appeal found that the relevant German‑speaking public understands the meaning of the English words ‘memory’ and ‘game’. The applicant does not dispute that finding, but solely the fact that the Board of Appeal concluded that that public perceived those two words as a whole and as a compound word, namely ‘memory game’.

38      In that regard, it should be pointed out that ‘memory’ and ‘game’ are two common English words and, taking into account their graphical representation in the mark at issue, the conclusion must be that they are easily perceived by the German‑speaking public as being distinct from the element ‘educa’ and as forming a logical whole, namely ‘Gedächtnisspiel’, which is a German word meaning memory game.

39      Furthermore, that public, faced with the words ‘memory game’ in relation to the marketing of games, perceives them as referring to the type of games offered for sale. It is not disputed that the goods in question cover, in particular, memory games in which the key element for success is that the participants use and develop their memory. It is therefore clear that the word combination ‘memory game’ describes directly and specifically one of the characteristics and the purposes of the goods at issue.

40      Whether, on the relevant market, the combination ‘memory game’ was or was not generically used is not relevant in this context, since it follows from the above that in the present case the combination ‘memory game’, having regard to the relevant circumstances, is descriptive (see, to that effect and by analogy, Case C-265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 38, and Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 46). Similarly, the fact that it is common practice in the sector concerned to place two signs on the goods, which enable the origin to be identified, namely the name of the company, first, and the product’s trade mark, second, does not invalidate the conclusion that the word element ‘memory game’ constitutes, in the present case, a descriptive element.

41      With regard to the element ‘educa’, the Board of Appeal rightly found, in paragraph 37 of the contested decision, that it was the dominant element in the mark at issue. It is more distinctive than the element ‘memory game’. Moreover, as the Board of Appeal correctly found, the element ‘educa’ has a dominant position in the structure and layout of the mark at issue.

42      It follows from all of the foregoing that the Board of Appeal cannot be criticised for concluding that the dominant element of the mark at issue was the word ‘educa’ and that the element ‘memory’ did not have an independent distinctive role in that mark. Therefore, by comparing the mark at issue, considered as a whole, with the earlier marks, the Board of Appeal correctly concluded, in paragraph 39 of the contested decision, that the marks in question were visually, phonetically and conceptually neither identical nor similar.

43      The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of Article 8(5) of Regulation No 40/94

44      By its second plea in law, the applicant submits in essence that the Board of Appeal erred in law in requiring, for the purposes of applying Article 8(5) of Regulation No 40/94, that there be a likelihood of confusion between the marks in question.

45      In that regard, it is important to point out that the legal framework of the examination of the applicability of Article 8(5) of Regulation No 40/94 carried out by the Board of Appeal is set out in paragraphs 42 to 44 of the contested decision. The Board of Appeal did not in any way indicate therein that there should be a likelihood of confusion between the marks in question for Article 8(5) of Regulation No 40/94 to be applicable.

46      In paragraph 46 of the contested decision, when examining the applicability of Article 8(5) of Regulation No 40/94, the Board of Appeal refers to its finding, previously set out in that same decision, that the marks in question are not similar. It should be recalled that that finding was set out in paragraph 39 of the contested decision in the context of the analysis of the applicability of Article 8(1)(b) of Regulation No 40/94.

47      Therefore, and as follows from reading paragraphs 43 and 47 of the contested decision together, the applicant is wrong to claim that the Board of Appeal rejected the application of Article 8(5) of Regulation No 40/94 on the ground that there was no likelihood of confusion between the marks in question. On the contrary, it is clear from those paragraphs that the application of Article 8(5) of Regulation No 40/94 was rejected, because the first condition under that provision, namely the similarity of the marks in question, had not been satisfied.

48      The second plea in law must accordingly be rejected.

 The third plea in law, alleging infringement of Article 74 of Regulation No 40/94

49      By its third plea, the applicant claims that the Board of Appeal infringed Article 74 of Regulation No 40/94, by failing to take account of the manner in which the goods at issue are generally marketed and sold.

50      In that regard, it must be pointed out that, as is clear from paragraphs 35 to 42 above, the manner in which the goods in question are marketed cannot influence the fact that the expression ‘memory game’ is, in the present case, descriptive, and is not important in order to determine whether the mark at issue, considered as a whole, is similar to the earlier marks.

51      Consequently, the third plea in law cannot be upheld.

 The fourth plea in law, alleging infringement of Article 75 of Regulation No 40/94

52      By its fourth plea, the applicant criticises the Board of Appeal for having refused to grant it an oral hearing in the course of the proceedings before the Board. According to the applicant, the oral hearing requested was important in order to underline the well-known character and high degree of distinctiveness of the earlier marks, which was essential for assessing the merits of its arguments before the Board of Appeal.

53      It is important to state at the outset that this plea is unfounded. It is evident, both from the wording of Article 75 of Regulation No 40/94 and the case-law, that the Board of Appeal enjoys a discretion as to whether, where a party requests that they be held, oral proceedings before it are really necessary (Case T‑115/02 AVEX v OHIMAhlers (a) [2004] ECR II-2907, paragraph 30).

54      In the present case, it follows from the contested decision that the Board of Appeal had all the information needed to justify the operative part of the contested decision. As regards in particular the complaint that the applicant could have explained its reasoning with respect to the importance of taking account of the well-known character and high degree of distinctiveness of the earlier marks, the Court finds that, having regard to the findings in paragraph 27 above, the applicant has not shown how oral submissions on that point supplementing submissions made in its written pleading before the Board of Appeal would have prevented the adoption of such an operative part.

55      It follows that the fourth plea must also be rejected.

56      Therefore, the action must be dismissed in its entirety.

 Costs

57      Under Article 87(2) 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. Since the applicant has been unsuccessful, it 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 (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Ravensburger AG to pay the costs.

Martins Ribeiro

Wahl

Dittrich

Delivered in open court in Luxembourg on 19 May 2010.

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