JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

30 September 2015 (*)

(Community trade mark — Invalidity proceedings — Community word mark SEQUOIA CAPITAL — Earlier Community word mark SEQUOIA — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Likelihood of confusion)

In Case T‑369/14,

Sequoia Capital Operations LLC, established in Menlo Park, California (United States), represented by F. Delord, A. Rendle, Solicitors, and G. Hollingworth, Barrister,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by A. Pohlmann, and subsequently by S. Hanne, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal being

Sequoia Capital LLP, established in London (United Kingdom),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 18 March 2014 (Case R 1457/2013-4), concerning invalidity proceedings between Sequoia Capital LLP and Sequoia Capital Operations LLC,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 May 2014,

having regard to the response lodged at the Court Registry on 22 September 2014,

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 and pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 15 December 2008, the applicant, Sequoia Capital Operations LLC, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with 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        Registration as a mark was sought for the word sign SEQUOIA CAPITAL.

3        The services in respect of which registration was sought are in Classes 35 and 36 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 35: Business advice relating to financial re-organisation;

–        Class 36: Venture capital services; venture capital management services; venture capital fund management; venture capital funding services to start-up and emerging companies; providing financing to start-up and emerging companies; financing services for the securing of funds in respect of ventures; venture capital financing; project capital investment services; private equity fund services; operation and management of investment funds; advisory services relating to the above services.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 10/2009 of 23 March 2009 and the mark was registered on 29 July 2009 under number 7465347.

5        On 8 October 2011, Sequoia Capital LLP filed an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009 read in conjunction with Article 8(1)(b) of that regulation against the Community trade mark SEQUOIA CAPITAL in respect of all the services referred to in paragraph 3 above.

6        The application for a declaration of invalidity was based on the Community word mark SEQUOIA, which was filed on 26 October 2004 and registered on 27 November 2010 under No 4102141 in respect of goods and services in Classes 9, 16 and 36 corresponding, for each of those classes, to the following description:

–        Class 9: Electronic publications; online newsletters, printed publications in electronically, magnetically or optically recorded and readable forms; audio cassettes; sound, video and data recordings; films for display; projection apparatus; sound and music generating apparatus; video recording and reproduction apparatus; texts encoded in film/fiche form; tapes, disks and records, all bearing or for recordal of sound, video and data; storage and memory devices; all goods for use in the fields of futures and options trading, investment, namely trading in securities and derivatives and brokerage;

–        Class 16: Printed matter, books, newsletters, address books, appointment books, magazines, printed publications, pens, pencils, markers and crayons, pictures, photographs and prints, posters, memo and notice boards, book marks, calendars and diaries; all for use in the field of futures and options trading, investment via trading in securities and derivatives and brokerage;

–        Class 36: Futures and options trading services, brokerage services, trading bureau services, investment advisory services in respect of the foregoing services.

7        By decision of 30 May 2013, the Cancellation Division declared the registration of the Community trade mark No 7465347 invalid for all services covered by it on the ground that there was, because of the highly similar signs and similar services covered by the two marks at issue, a likelihood of confusion on the part of the relevant public.

8        On 30 July 2013, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

9        By decision of 18 March 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It concluded, in essence, that there was a likelihood of confusion between the marks at issue on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009. In particular, it found that the services covered by those marks were similar, inter alia, because they concerned high risk investments, with a possibility of high profitability and which were for investors with the same risk profile. Furthermore, the Board of Appeal found that the signs at issue were highly similar and that the distinctiveness of their common element ‘sequoia’, comprising the earlier mark, was average. It concluded that, in the present case, the consumers would presume that both types of investment, under the identical term ‘sequoia’, were offered by economically linked undertakings.

 Forms of order sought by the parties

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings, including those relating to the proceedings before OHIM.

11      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs incurred by OHIM.

 Law

12      In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. This plea is in two parts. Under the first part, the applicant claims that the Board of Appeal did not take into account all of the factors relevant to the assessment of the similarity between the services covered by the marks at issue. Under the second part, the applicant claims that the Board of Appeal failed to address the question whether there was a likelihood of confusion on the part of the relevant public at the crucial moment when the choice between those services and marks was made. The nature of the respective services negated the likelihood of confusion at that moment.

13      OHIM disputes the applicant’s arguments.

14      Under Article 53(1)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid, on application to OHIM or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in Article 8(1) or (4) are fulfilled.

15      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. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16      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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, 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 judgment of 9 July 2003 in Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17      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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

18      The relevant factors mentioned in paragraph 16 above also include the distinctive character of the earlier trade mark, which it derives from the inherent qualities of that mark or its reputation. However, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between the signs at issue (see judgment of 29 April 2015 in Hostel Tourist World v OHIM – WRI Nominees (HostelTouristWorld.com), T‑566/13, EU:T:2015:239, paragraph 67 and the case-law cited).

19      Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

20      The present action must be examined in the light of the abovementioned principles.

 The relevant public

21      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the view of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. 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 of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

22      The Board of Appeal held that the relevant public consisted of business customers and private and institutional investors with some expertise in the financial field and companies needing capital. It considered the level of attention of that public to be high. As the applicant rightly points out, the Court has already had occasion to state that, in the case of financial services which generally put large sums at stake and require the assistance of accountants, lawyers and specialist bankers, the public concerned will be highly attentive (judgments of 13 April 2011 in Alder Capital OHIM – Gimv Nederland (ALDER CAPITAL), T‑209/09, EU:T:2011:169, paragraph 80, and of 11 May 2005 in CM Capital Markets v OHIM – Caja de Ahorros de Murcia (CM), T‑390/03, ECR, EU:T:2005:170, paragraph 26). Accordingly, that assessment must be endorsed.

23      As regards the territory concerned, the relevant public is that of the European Union in accordance with the case-law cited in paragraph 19 above; that is not contested by the applicant.

 Comparison of the services

24      According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

25      In the present case, it is necessary to consider whether the services in Classes 35 and 36 covered by the contested mark are similar to the services in Class 36 covered by the earlier mark. At the outset, it must be pointed out that the Board of Appeal carried out a detailed examination with regard to comparison of the services at issue without restricting itself solely to their class headings, contrary to the applicant’s claims referring to the judgment of 19 June 2012 in Chartered Institute of Patent Attorneys (C‑307/10, Rec, EU:C:2012:361), and it came to the conclusion that those services were similar.

26      First, the Board of Appeal distinguished, within Class 36, on the one hand, the various kinds of venture capital services and related services covered by the contested mark and, on the other, the futures and options trading services, brokerage services and related advisory services covered by the earlier mark. According to the Board of Appeal, although those latter services covered by the earlier mark concern a different asset class, they constitute an alternative investment vehicle for investors with the same high risk profile. All of the services at issue concerned investments where it cannot be excluded that substantial or even total loss of the initial investment can occur and, consequently, the nature and the purpose of the services are identical, while their method of use is similar to a low degree.

27      The applicant claims that the Board placed undue and incorrect emphasis on one characteristic of those services in Class 36, namely that it regarded the underlying asset classes as being ‘high risk’, and thus failed to have regard to other essential characteristics which differentiate those services and allow them to be distinguished, including the respective channels of trade and customers.

28      It should be noted that all the services in Class 36 covered by the signs at issue have the same intended purpose, namely to facilitate capital investment. As OHIM argues, the fact that the type of assets is different (publicly available derivatives versus long-term equity investments) does not render the nature of the services different. Furthermore, venture capital services, like brokerage services, involve the sale or purchase of shares, which the applicant does not contest. The applicant’s arguments, however, tend to differentiate the segments of the financial investment sector which cover the services at issue. As is apparent from the witness statement in annex A.8 of the application, the applicant and Sequoia Capital LLP ‘are involved in “financial investments” in the broadest sense of that term, [but] the two businesses are extremely different’.

29      The applicant’s arguments are based on how the respective assets are acquired and operated and the timeframe in which they are held. For example, it argues that the services covered by the earlier mark facilitate trades of derivatives on a public market without forming a relationship with the relevant company, the transactions performed being carried out rapidly through trading platforms in a live trading environment, whereas the services covered by the contested mark require arranging and making investments in privately held growth companies and forming lasting relationships and strategic partnerships with investee companies. Such considerations regarding the different relationship with the underlying assets after the initial acquisition of the asset has been made cannot, however, demonstrate a different intended purpose of the services at issue, which facilitate capital investment with the possibility of high profitability. Even if the services at issue can be distinguished by their method of use and by the skills required by the professionals involved, there is a connection between them. There is an overlap between the investor public targeted by the applicant’s services and the investor public targeted by the earlier mark. That public can use alternative investment vehicles. For example, brokerage firms serve a clientele of investors who trade in shares and other securities. Without it being necessary to make any findings on the complementary nature of the services at issue, the Court finds that the connection between them is sufficiently evident that it cannot be ruled out that consumers may think that the services are provided by one and the same undertaking. There is therefore a certain degree of similarity between those services.

30      Secondly, as regards ‘project capital investment services’, also in Class 36, covered by the contested mark, the Board of Appeal considered that they could relate to any asset class, including futures and options, and, consequently, that they were analogous to the services covered by the earlier mark included in the same class. The applicant contests that assessment, stating merely that it is an artificial and incorrect interpretation of ‘project capital investment services’. Those services, it claims, relate to a specific investment in a specific project, rather than a generalised ‘investment project’ which could involve any type of asset.

31      That purely semantic argument cannot be upheld. It must be pointed out, as the Board of Appeal did, that because of the very broad wording and lack of precision in the Community trade mark application, those services may involve any type of capital investment target project, among which it is possible to find projects relating to futures and options trading services. The Board of Appeal was therefore right to find that the ‘project capital investment services’ and those covered by the earlier mark, also in Class 36, are similar.

32      Thirdly, as regards ‘business advice relating to financial re-organisation’ in Class 35 and covered by the contested mark, the Board of Appeal found that it had a certain degree of similarity with the business advice in Class 36 covered by the earlier mark. According to the Board of Appeal, although the type of asset featuring in the advisory services covered by the earlier mark was oriented towards trading and that covered by the contested mark towards financial re-organisation, their nature and method of use were the same.

33      The applicant claims that the Board of Appeal thus focused solely on the ‘advisory’ aspects of the respective services, without properly considering the implications of the various types of service to which that advice relates, which differences it had itself identified. According to the applicant, the services are different in nature, purpose and method of delivery, so that they are neither interchangeable nor complementary. The Board of Appeal oversimplified by considering all of the services to be business advice.

34      First, it should be noted that the relevant public in the present case is a professional public both for the services in Class 35 covered by the contested mark and for those in Class 36 covered by the earlier mark. Secondly, according to the explanatory notes to the list of classes of goods and services of the Nice Agreement, the services in Class 35 relate, inter alia, to help in the working or management of a commercial undertaking or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, whereas the services in Class 36 relate to services rendered in financial and monetary affairs (judgment of 26 September 2012 in IG Communications OHIM – Citigroup and Citibank (CITIGATE), T‑301/09, EU:T:2012:473, paragraph 54). The fact nevertheless remains that the services in Class 35 identified in paragraph 3 above are necessarily connected with the financial sector. Accordingly, there is nothing to suggest ― and the applicant, moreover, has provided no evidence to the effect ― that the ‘business advice relating to financial re-organisation’ could not extend to ‘investment advisory services’ concerning the services in Class 36 covered by the earlier mark. The former services will have financial implications for undertakings which intend, for example, to be apprised of the investments they will be required to make to consolidate their market position and the benefits which may derive therefrom. Indeed, the applicant itself claims that the services covered by the contested mark include advice on the re-organisation of the ‘financial position’ of the company. Accordingly, there is a certain connection between the services covered by the signs at issue. Finally, and in line with the reasoning set out in paragraph 29 above, that connection is sufficiently close that it cannot be ruled out that consumers may think that the services are provided by one and the same undertaking. The Board of Appeal was, therefore, correct to find in the contested decision that those two types of services presented a certain degree of similarity.

35      In the light of all of the foregoing considerations, it must be concluded that there is a certain degree of similarity between the services at issue. Consequently, the first part of the single ground of appeal must be rejected.

 The comparison of the signs

36      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, in particular, their distinctive and dominant elements. 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. In addition, account must 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 rely on his imperfect recollection of them (see judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited, and GIORGIO BEVERLY HILLS, paragraph 16 above, EU:T:2003:199, paragraph 33 and the case-law cited).

37      In that regard, it should be noted that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law of the Court of Justice, the visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30 and the case-law cited).

38      In the present case, the marks to be compared are, on the one hand, SEQUOIA CAPITAL and, on the other, SEQUOIA.

39      As regards the element ‘capital’ in the contested mark, it must be noted that it will be perceived as ancillary (ALDER CAPITAL, paragraph 22 above, EU:T:2011:169, paragraph 87). As the Board of Appeal held, without being challenged on that point by the applicant, it is descriptive of the services at issue, at least for consumers with a sufficient knowledge of English, as it means capital or equity. The services at issue all relate to the financial field and imply material assets or resources. It should be pointed out that that element is all the more unlikely to attract attention since it is the second element of the mark. The consumer normally attaches more importance to the first part of words (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81).

40      As regards the element ‘sequoia’, it is common to both of the marks at issue, which are therefore phonetically and visually similar to a high degree and convey the same conceptual content. A sizeable part of the consumers will understand that element as describing a huge coniferous tree of the west coast of the United States.

41      The Board of Appeal was therefore right in finding that there was a high degree of similarity between the marks at issue. Moreover, that conclusion is not disputed by the applicant.

 The likelihood of confusion

42      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the 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 (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and VENADO with frame and Others, paragraph 19 above, EU:T:2006:397, paragraph 74).

43      In the present case, the medium degree of similarity between the services and the high degree of similarity between the signs at issue create a likelihood of confusion, despite the fact that the degree of attention of the relevant public is high. In accordance with the case-law cited in paragraph 18 above, it must be concluded that the medium distinctiveness of the earlier Community mark is not such as to prevent a likelihood of confusion between the marks at issue.

44      That conclusion cannot be called into question by the applicant’s argument that, given the highly specialised nature of the services at issue, it would be inconceivable that a member of the relevant sophisticated public would be confused as to the identity of the party with whom they are contracting at the crucial moment he enters into such a transaction. That argument is based on the assertion that the kinds of transactions undertaken when the services at issue are used require exceptionally detailed and considered thought. As such, they are liable to be entered into by professionals with appropriate training or appropriate professional guidance. It must be stated that, in order for invalidity to be declared, it is not necessary to demonstrate that there has been confusion, but merely that there is a likelihood that the public might believe that the goods or services in question originate from the same undertaking or from economically linked undertakings.

45      In that regard, it must be pointed out that the reasoning followed in the judgment of 12 January 2006 in Ruiz-Picasso and Others v OHIM (C‑361/04 P, ECR, EU:C:2006:25, paragraphs 40 to 43), put forward by the applicant, cannot completely rule out any likelihood of confusion. From a phonetic perspective, use of the sign is not limited to situations where the services at issue are being marketed, but may extend also to other situations where the professionals in question make oral reference to those services, for example when using them or discussing their use and, in particular, when referring to the benefits and drawbacks of those services. The Court of Justice has not, however, excluded the possibility of situations other than the purchase itself being taken into account when assessing the existence of a likelihood of confusion (see, to that effect, judgment of 26 September 2014 in Koscher + Würtz v OHMI – Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, ECR, EU:T:2014:829, paragraph 81).

46      It follows from the foregoing that the second part of the single plea in law must be rejected.

47      Accordingly, the Board of Appeal was entitled to find that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 in relation to the services in Classes 35 and 36.

48      In the light of all the foregoing considerations, the Court must reject the single plea in law and, accordingly, dismiss the action in its entirety.

 Costs

49      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.

50      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 Sequoia Capital Operations LLC to pay the costs.

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 30 September 2015.

[Signatures]