JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

29 September 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark LOOPIA – Earlier Community word marks LOOP and LOOPY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑150/10,

Telefónica O2 Germany GmbH & Co. OHG, established in Munich (Germany), represented by A. Fottner and M. Müller, lawyers,

applicant,

v

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

defendant,

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

Loopia AB, established in Västerås (Sweden), represented by P. Håkon-Schmidt and N. Ringen, lawyers,

ACTION brought against the decision of the First Board of Appeal of OHIM of 12 January 2010 (Case R 1812/2008-1), concerning opposition proceedings between Telefónica O2 Germany GmbH & Co. OHG and Loopia AB,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 26 March 2010,

having regard to the response of OHIM lodged at the Court Registry on 27 July 2010,

having regard to the response of the intervener lodged at the Court Registry on 6 July 2010,

having regard to the reply lodged at the Court Registry on 30 September 2010,

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

gives the following

Judgment

 Background to the dispute

1        On 16 March 2005, the intervener, Loopia AB, filed an application for registration of 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)).

2        The mark in respect of which registration was sought is the word sign LOOPIA.

3        The services in respect of which registration was sought are in Class 42 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: ‘Hosting computer sites (web sites/webhotels)’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 28/2005 of 11 July 2005.

5        On 11 January 2006, the applicant, Telefónica O2 Germany GmbH & Co. OHG, filed a notice of opposition to the registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).

6        The opposition was based, inter alia, on the following earlier marks:

–        Community registration under number 1957372 of the word mark LOOP on 5 September 2002, covering goods and services in, inter alia, Classes 38 and 42 of the Nice Agreement and corresponding, for each of those classes, to the following description:

–        Class 38: ‘Rental of telecommunication equipment’;

–        Class 42: ‘Engineering services; providing of expert opinion; research (technical and legal) into industrial property matters; technical consultancy and providing of expertise; rental of data processing equipment and computers; … research in the field of telecommunications engineering’;

–        Community registration under number 1583004 of the word mark LOOPY on 12 June 2001, covering goods and services in Classes 9, 38 and 42 of the Nice Agreement and corresponding, for each of those classes, to the following description:

–        Class 9: ‘ … electronic data processing and telecommunications software; telecommunications equipment, in particular for the fixed network and mobile radio sectors’;

–        Class 38: ‘Telecommunications; rental of telecommunications equipment’;

–        Class 42: ‘Engineering services; computer programming; programming services; providing of expert opinion; research (technical and legal) into industrial property matters; technical consultancy and providing of expertise; rental of data processing installations and computers; … design and planning of telecommunications equipment’.

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 22 October 2008, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion. The Opposition Division, having examined the opposition solely on the basis of the Community registration of the mark LOOPY, considered that the goods and services concerned were either identical or highly similar and that the signs LOOPY and LOOPIA were highly similar, visually and phonetically.

9        On 19 December 2008, the intervener filed an appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

10      By decision of 12 January 2010 (‘the contested decision’), the First Board of Appeal of OHIM, considering that the services covered by the application for the mark LOOPIA are not similar to the goods and services covered by the marks LOOP and LOOPY and that there can, therefore, be no likelihood of confusion regarding the commercial origin of the goods and services in question, even if the marks at issue are visually and phonetically similar, allowed the intervener’s appeal and annulled the Opposition Division’s decision.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs, including those relating to the appeal 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:

–        confirm the contested decision;

–        order the applicant to pay the costs, including those relating to the appeal proceedings.

 Law

 Admissibility of documents produced for the first time before the Court

14      Annexed to its application, the applicant has produced a list of definitions and examples of Internet site hosting services which offer goods and services that are complementary to those services.

15      Those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, Case T‑346/04 Sadas v OHIMLTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and case-law cited).

 Substance

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

17      The applicant claims, in essence, that the Board of Appeal infringed that provision due to an erroneous assessment of the identity or similarity of the services in question, to insufficient statements and erroneous conclusions regarding the degree of similarity between the marks at issue and, lastly, to erroneous conclusions regarding the targeted consumers and the level of attention of the relevant public.

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

19      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.

20      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, 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, 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 covered (see Case T‑162/01 Laboratorios RTB v OHIMGiorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and case-law cited).

21      In the global assessment of the likelihood of confusion, account should be taken 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 Case T‑256/04 Mundipharma v OHIMAltana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and case-law cited).

–       Relevant public

22      As regards the definition of the relevant public, both the applicant and OHIM consider that the Board of Appeal correctly noted, in paragraph 24 of the contested decision, that Internet site hosting services are of interest to both the professional public and the average consumer.

23      In that regard, it should be noted that, although the Board of Appeal considered, in paragraph 24 of the contested decision, that the relevant public for Internet site hosting services is not only the professional public, but also the average consumer, given that it is quite possible that an individual seeking to establish a personal Internet site might require an Internet host that stores data on his behalf, it did not take account of the public concerned by the earlier marks LOOP and LOOPY.

24      The services in Class 42 covered by the mark LOOP include, inter alia, the ‘rental of data processing equipment and computers’. As regards the services covered by the mark LOOPY, they include, inter alia, in that class, ‘computer programming’ and ‘rental of data processing installations and computers’, which, indisputably, are of interest not only to professionals, but also to the general public.

25      Moreover, the mark LOOPY covers, inter alia, in Class 9, ‘electronic data processing and telecommunications software; telecommunications equipment, in particular for the fixed network and mobile radio sectors’. Similarly, in Class 38, ‘rental of telecommunication equipment’ is covered by the mark LOOP and, in the same class, ‘telecommunications; rental of telecommunications equipment’ are covered by the mark LOOPY. Those goods and services are of interest not only to professionals, but also to the general public.

26      As regards the level of attention of the relevant public, the Board of Appeal referred, in paragraph 24 of the contested decision, to Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraphs 70 and 73, according to which consumers may constitute a very attentive public where the services are relatively technical, as in the present case.

27      Although the applicant considers that that level of attention has been overestimated by the Board of Appeal, given that services connected with the Internet are part of everyday life, OHIM argues that the average consumer pays greater attention when paying for services which require technical knowledge not possessed by everyone.

28      In that regard, it should be emphasised that the level of attention of the average consumer must not be overestimated, given not only that it is customary to pay for a service, but also that there are hosting sites which are very low-priced, or even free of charge, thus making those services highly accessible to the average consumer.

29      Moreover, the use of such a site for, for example, storing and making available personal photos does not necessarily require special technical knowledge.

30      Therefore, it must be considered that the Internet site hosting services covered by the mark applied for, like some of the goods and services covered by the earlier marks LOOP and LOOPY, are of interest both to professionals and to the general public. All those goods and services involve a higher than average level of attention on their part.

–       Comparison of the goods and services

31      In essence, the applicant disputes the Board of Appeal’s finding that there is no similarity between the computer site hosting services covered by the mark applied for and the goods and services covered by its marks LOOP and LOOPY. Moreover, the applicant submits that some decisions of the Opposition Division and the Board of Appeal of OHIM have concluded that such goods and services are similar because they are complementary.

32      OHIM and the intervener argue that the goods and services covered by the earlier marks are different from Internet site hosting services. Moreover, none of the goods and services covered by the earlier marks is necessarily provided with Internet site hosting services, and they are neither interchangeable, nor in competition with each other.

33      According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant features of the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Case C-39/97 Canon [1998] ECR I-5507, paragraph 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (Case T‑164/03 Ampafrance v OHIMJohnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 53, and Case T‑443/05 El Corte Inglés v OHIMBolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37).

34      In that regard, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or the provision of those services lies with the same undertaking (Case T‑169/03 Sergio Rossi v OHIMSissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 60, and PiraÑAM diseño original Juan Bolaños, paragraph 48).

35      The goods and services listed in paragraphs 24 and 25 above, namely, inter alia, ‘rental of data processing equipment and computers’, ‘computer programming’ and ‘rental of data processing installations and computers’, are essential for the setting up and use of Internet site hosting services which, as the Board of Appeal explained in paragraph 38 of the contested decision, enable documents, pictures, videos or banners to be placed on the server of the Internet site host provider so that they can be accessed by Internet users.

36      There is, therefore, a functional complementarity between those goods and services, which all, by their nature, belong to the field of information technology, in the sense that Internet site hosting services cannot exist without some of the goods and services covered by the earlier marks. It follows from this that the Board of Appeal should have held, like the Opposition Division, that those hosting services were connected with computer programming services.

37      Moreover, OHIM concedes that the services covered by the earlier marks may be offered by a company providing Internet site hosting services.

38      Furthermore, all the goods and services listed in paragraphs 24 and 25 above are sold via the same distribution channels as Internet site hosting services, since they are offered for sale on the Internet and in the same specialist IT shops.

39      Therefore, it must be held that there is a close connection between some of the goods and services covered by the earlier marks and Internet site hosting services, with the result that the general public may think that those goods and services are provided by the same undertaking.

40      In that regard, it should also be observed, as the applicant correctly noted, that the Second Board of Appeal of OHIM, in its decision of 11 March 2005 (Case R 0585/2004-2 SYNEXION v Synavion), considered that services such as Internet site hosting, telecommunications and rental of data processing equipment were identical or covered by the same concept.

41      Moreover, the circumstances of the present case differ from those referred to by OHIM which gave rise to the decision of the Board of Appeal of OHIM of 19 June 2007 (Case R 1295/2006-2), whose findings on the comparison of the services in question were confirmed in Case T‑316/07 Commercy v OHIMeasyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraphs 51 to 54. In that judgment, the Court held that there was no similarity between, on the one hand, ‘[c]omputer software for the production of platform-independent [I]nternet shops and [I]nternet authoring systems chiefly for the reservation, booking and payment of accommodation’ and ‘[d]evelopment and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation’ in Classes 9 and 42 respectively and, on the other hand, ‘[i]nformation services relating to transportation services, including information services provided on-line from a computer database or the internet; travel reservation and travel booking services provided by means of the world wide web’ and ‘[c]omputerised hotel reservation services’ in Classes 39 and 42 respectively, since the former are computer-related whereas the latter use computer technology only to support the transmission of information or to make it possible to reserve hotel accommodation or travel. The former are especially intended for businesses in the hotel and travel sector whereas the latter are intended for the public at large.

42      In the present case, some of the goods and services covered by the signs at issue are likely to be used by the general public. Moreover, although computerised hotel reservation services use computer technology only to support the provision of reservation services, Internet site hosting services are the services themselves, which the client will use to store information or documents.

43      Therefore, it must be held that there is, at least for the general public, a similarity between Internet site hosting services and some of the goods and services covered by the earlier marks, since all of those goods and services belong to the field of information technology, are complementary and use the same distribution channels.

44      The Board of Appeal, which described the marks at issue as visually and phonetically similar, was therefore wrong to find that there was a complete lack of similarity between the goods and services in question.

45      It is clear from the contested decision that it is because of the lack of similarity between the goods and services in question that the Board of Appeal held that, despite the similarity between the signs at issue, there was no likelihood of confusion.

46      Under those circumstances, the single plea must be upheld and, consequently, the contested decision annulled.

 Costs

47      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. As OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. As the intervener has been unsuccessful, it must bear its own costs, in accordance with the third subparagraph of Article 87(4) of the Rules of Procedure.

48      Moreover, the applicant has claimed that OHIM should be ordered to pay the costs of the appeal proceedings before OHIM. In that regard, it should be recalled that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Therefore, as OHIM has been unsuccessful, it must also be ordered to pay the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 January 2010 (Case R 1812/2008-1);

2.      Orders OHIM to bear its own costs and to pay the costs of Telefónica O2 Germany GmbH & Co. OHG;

3.      Orders OHIM to pay the costs necessarily incurred by Telefónica O2 Germany for the purposes of the proceedings before the First Board of Appeal of OHIM;

4.      Orders Loopia AB to bear its own costs.

Papasavvas

Vadapalas

O’Higgins

Delivered in open court in Luxembourg on 29 September 2011.

[Signatures]