Lan Airlines SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-194/09)

Contents

Judgment of the General Court (Fourth Chamber)8 February 2011^noteIn Case T-194/09,Lan Airlines, SA, established in Renca (Chile), represented by E. Armijo Chávarri and A. Castán Pérez-Gómez, lawyers,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,the other party to the proceedings before the Board of Appeal of OHIM beingAir Nostrum, Líneas Aéreas del Mediterráneo, SA, established in Manises (Spain),THE GENERAL COURT (Fourth Chamber),composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and M. van der Woude, Judges,Registrar: E. Coulon,having regard to the application lodged at the Registry of the General Court on 13 May 2009,having regard to the response lodged at the Court Registry on 10 September 2009,having regard to the reply lodged at the Court Registry on 30 November 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 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

1On 14 June 2005, Air Nostrum, Líneas Aéreas del Mediterráneo, 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) 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)).

2The trade mark in respect of which registration was applied for is the word sign LINEAS AEREAS DEL MEDITERRANEO LAM.

3The services in respect of which registration was applied for are in Class 39 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: ‘Transport; packaging and storage of goods; travel arrangement’.

4The Community trade mark application was published in Community Trade Marks Bulletin No 47/2005 of 21 November 2005.

5On 20 February 2006 the applicant, Lan Airlines, SA, 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 applied for in respect of the services referred to in paragraph 3 above.

6The opposition was based on the following earlier rights:— the earlier word mark LAN, the subject of Community registration No 3350899, dated 17 December 2004;— the earlier figurative mark, in colour, the subject of Community registration No 3694957, dated 4 August 2005, reproduced below:

7The earlier marks were registered for goods and services which are in Classes 35, 39 and 43, for the word mark, and in Class 39, for the figurative mark, and correspond, for each of those classes, to the following description:— Class 35: ‘Publicity; business management’;— Class 39: ‘Transport of passengers, goods, documents and valuables by any medium; storage, safekeeping, warehousing, packing and distribution of goods, documents and valuables of all kinds, by all means; information on travel or the transport of goods by intermediaries; courier services’;— Class 43: ‘Providing of food and drink; temporary accommodation’.

8The opposition was based on all the goods and services protected by the earlier marks.

9The 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).

10On 30 October 2007 the Opposition Division rejected the opposition, finding in essence that there was no likelihood of confusion between the signs in question.

11On 2 January 2008 the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

12By decision of 19 February 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In that decision, it concluded in essence that there was no likelihood of confusion between the signs in question on the part of the average European consumer, who constitutes the relevant public, since, although the services concerned were identical, the fact remained that the signs assessed as a whole were not similar.

Forms of order sought

13The applicant claims that the Court should:— annul the contested decision;— order OHIM to pay the costs.

14OHIM contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

15The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. It claims in essence that there exists a likelihood of confusion between the signs at issue on the part of the relevant public, namely the average Spanish consumer.

16Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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.

17According to established 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 Case T-162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

The relevant public

18With regard, first, to determining the territory in which the perception of the relevant public must be taken into consideration, the applicant challenges the Board of Appeal’s finding, made in paragraph 14 of the contested decision, that ‘the relevant perception in this case is that of the public of the European Community’. In the applicant’s submission, the Board of Appeal should have taken into consideration in this case only the perception of the Spanish consumer. It asserts that, according to case-law, a likelihood of confusion need exist only in Spanish territory for registration of the mark applied for to be refused.

19In that regard, although the existence of a likelihood of confusion need be established only on the part of the consumer in one single Member State for a Community trade mark application to be refused, it should be noted that that consideration has no bearing on the issue of determining the relevant public. According to Article 8(1)(b) of Regulation No 40/94, it is in the light of the public in the territory in which the earlier mark is protected that the likelihood of confusion must be assessed. Since the earlier marks are Community trade marks, the Board of Appeal rightly held that it was appropriate to assess the existence of a likelihood of confusion in the light of the perception of consumers throughout the European Union and not just in Spanish territory.

20With regard, second, to the level of attention of the relevant public, it should be noted that, according to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 OHIM — Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

21In the present case, although the applicant agrees with the Board of Appeal’s finding, in paragraphs 13 and 14 of the contested decision, that the relevant public is made up of average consumers who are reasonably well informed and reasonably observant and circumspect, OHIM, by contrast, disagrees with that finding, contending that the attention level of the relevant public is high or at least higher than average.

22In that regard, it must be noted, as the applicant rightly observes, that certain services covered by the marks at issue, such as transport in Class 39, are directed at the general public in the case of airline tickets purchased on the internet, that they may cost only a few euros for some destinations, and that, in that situation, cost and the dates and schedules of flights take precedence, when a decision is made to buy, over the choice of airline. Therefore, OHIM’s argument that the relevant public demonstrates a higher level of attention than that of the average consumer when buying those services must be rejected as unfounded.

23It must therefore be found, as the Board of Appeal did in the contested decision, that the relevant public is the average European consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect.

Comparison of the services

24Since the services in Class 39 covered by the earlier marks include the services covered by the mark applied for, the Board of Appeal was correct in finding, in paragraphs 15 and 32 of the contested decision, that the services designated by the marks at issue were identical, which the parties do not dispute.

Comparison of the signs

25According to case-law, 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 the signs, bearing in mind, inter alia, 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 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).

26Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks at issue as a whole, but that 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 25 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 25 above, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).

27Furthermore, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T-359/02 Chum v OHIM — Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and the case-law cited).

28In this case, it is common ground that, whilst the earlier word mark comprises only the element ‘lan’ and the earlier figurative mark is made up of the word element ‘lan’ written in capital letters, followed by a stylised star, the mark applied for is made up of the word elements ‘lineas aereas del mediterraneo’ and ‘lam’.

29In the first place, as regards the existence of a possible dominant or negligible element in the mark applied for, the applicant claims that the Board of Appeal failed to note that the element ‘lam’ was dominant in the overall impression produced by the mark applied for, since the element ‘lineas aereas del mediterraneo’, the meaning of which will be understood by the Spanish consumer, is descriptive of the services in question. The applicant thus considers that the Board of Appeal should have taken into consideration only the dominant element ‘lam’ of the mark applied for when comparing the signs in question.

30In that regard, it should be noted that, although as a general rule the public will not consider a descriptive element forming part of a mark as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the sign are taken into account, that that element is negligible in the overall impression produced by that mark.

31In this case, it is common ground, as the Board of Appeal observed in essence in paragraphs 22 and 27 of the contested decision, that the element ‘lineas aereas del mediterraneo’, which the Spanish-speaking section of the relevant public will understand as referring to air transport services in the Mediterranean, is a description of some of the transport services covered by the mark applied for, which indicates the geographical location where those services are provided. However, contrary to what the applicant maintains, that finding alone does not lead to the conclusion that that element is negligible in the overall impression produced by the mark applied for and, hence, that the word element ‘lam’ is the dominant element in it.

32First, it should be noted, as the Board of Appeal held in essence in paragraph 23 of the contested decision, that the element ‘lineas aereas del mediterraneo’ is likely to hold the attention of all the relevant consumers, whether or not they are Spanish speakers, due to the fact that, first, within the mark applied for that element is significantly larger than the element ‘lam’ and, second, that element is immediately perceptible because of its position at the beginning of that sign. In that regard, although the applicant maintains that it is apparent from case-law that there are exceptions to the principle that the attention of the average consumer is drawn to the beginning of a mark, this argument must be rejected, since the applicant does not put forward any specific evidence to support the view that the Board of Appeal’s assessment is erroneous in this case.

33Second, as regards in particular the Spanish-speaking consumers within the relevant public, it should be noted that, as the Board of Appeal held in essence in paragraphs 22 and 27 of the contested decision, since the Spanish consumer will perceive the term ‘lam’ as being the acronym of the element ‘lineas aereas del mediterraneo’, it is likely that he will retain that element. Contrary to what the applicant maintains, that consumer is likely to remember the element ‘lineas aereas del mediterraneo’, since that element enables him to understand that the element ‘lam’ is the acronym formed by the initial letters of the words ‘líneas’, ‘aéreas’ and ‘mediterráneo’. As OHIM observes, and contrary to what the applicant maintains, since marks covering air transport services often contain word elements that are descriptive of those services and of the territories from which or to which they mainly operate, such as the Community trade marks American Airlines, AIR FRANCE or LINEA AEREA CARGUERA DE COLOMBIA, that consumer is likely to understand that the element ‘lineas aereas del mediterraneo’ identifies the commercial origin of the transport services provided by a specific airline.

34It must therefore be found that the element ‘lineas aereas del mediterraneo’ cannot be considered to be negligible in the overall impression produced by the mark applied for in the minds of the relevant public, be they Spanish speakers or not.

35The other arguments put forward by the applicant do not invalidate that conclusion.

36First of all, the applicant’s argument that it is apparent from Case T-425/03 AMS v OHIM — American Medical Systems (AMS Advanced Medical Services) [2007] ECR II-4265, paragraph 84, that it is probable that a consumer refers only to the acronym appearing in a trade mark does not alter the finding, made in paragraph 34 above, that the element ‘lineas aereas del mediterraneo’ is not negligible in the overall impression produced by the mark applied for. In AMS Advanced Medical Services, paragraph 74, it was only after finding that the acronym AMS occupied a central position and was larger than the other elements in the figurative mark AMS Advanced Medical Services that the General Court concluded that that acronym was dominant in the overall impression produced by that mark. Since that is not so, however, in the present case, as is apparent from paragraph 32 above, the applicant’s argument in that regard must be rejected as unfounded.

37Second, although the applicant claims that the Board of Appeal failed to establish that, since the word element ‘lan’ in earlier marks and the word element ‘lam’ in the mark applied for are similar, the reputation of the earlier marks enhances the distinctive character of that element in the mark applied for, that argument must be rejected as being unfounded. The applicant has not provided the Court with any evidence on which to assess the reputation of the earlier marks. Even if it were accepted that the earlier marks enjoy a certain reputation and hence that the attention of the relevant consumer is attracted in particular by the element ‘lam’ in the mark applied for, since that element and the word element ‘lan’ in the earlier marks are very similar, the fact that the earlier marks had such a reputation would however not have the effect of rendering the element ‘lineas aereas del mediterraneo’ negligible in the overall impression produced by the mark applied for in view of the circumstances referred to in paragraphs 32 and 33 above.

38Lastly, it is necessary to reject as unfounded the applicant’s argument that the Board of Appeal was wrong to refuse to examine the decisions of the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Marks Office) which the applicant had submitted to it, in which that Office rejected applications to register trade marks including the element ‘lineas aereas de’. The legality of decisions of Boards of Appeal is to be assessed purely by reference to Regulation No 40/94 (Case T-85/02 Díaz v OHIM - Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 37). Furthermore, if registrations already made, in certain circumstances, in some Member States are only one factor which may be taken into consideration, without being given decisive weight, in the registration of a Community trade mark (see Case T-337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II-2597, paragraph 58 and the case-law cited), the same applies in respect of decisions refusing trade mark applications adopted by the national offices. Therefore, in this case, even if the decisions of the Oficina Española de Patentes y Marcas to which the applicant refers constitute factors which, although not decisive, appear to indicate that the element ‘lineas aereas del mediterraneo’ is not very distinctive, the fact remains that the Board of Appeal did not err in finding, on the grounds set out in paragraphs 32 and 33 above, that that element was none the less not negligible in the overall impression produced by the mark applied for.

39In the light of the foregoing, it must therefore be found that, contrary to what the applicant maintains, the Board of Appeal was right to state, in paragraph 33 of the contested decision, that the element ‘lam’ was not dominant in the mark applied for and hence also to take into consideration, in accordance with the case-law referred to in paragraph 26 above, the element ‘líneas aéreas del mediterráneo’ in that mark for the purposes of comparing the signs in question.

40In the second place, as regards possible similarities or differences between the signs in question, it should be observed first of all that, with regard to the visual and phonetic aspects, the applicant agrees with the finding made by the Board of Appeal in paragraph 26 of the contested decision that the term ‘lam’, which is placed at the end of the mark applied for, and the term ‘lan’ in the earlier marks are similar. However, as the Board of Appeal also rightly stated in paragraph 26 of the contested decision and, contrary to the applicant’s contention that only the element ‘lam’ in the mark applied for must be taken into consideration for the purposes of comparing the marks at issue, the similarities between the word element ‘lam’ in the mark applied for and the word element ‘lan’ in the earlier marks are offset by the fact that those marks, assessed overall, differ both visually and phonetically. Indeed, whilst the earlier marks are made up of a single word element comprising three letters, namely ‘lan’, and the earlier figurative mark also includes a stylised star, the mark applied for is made up of the word elements ‘lineas aereas del mediterraneo’ and ‘lam’, comprising a total of 30 letters, with the result that, as the Board of Appeal rightly noted in paragraph 25 of the contested decision, the marks at issue, assessed overall, differ not only ‘in the number of words they comprise, in their structure and in their length’ but also in their sound. Hence, it is necessary to reject the applicant’s argument that the signs in question are visually and phonetically similar.

41From the conceptual point of view, the applicant maintains in essence that since, on the one hand, the dominant element in the mark applied for, namely the word element ‘lam’, and, on the other hand, the only word element in the earlier marks, namely the element ‘lan’, have no meaning, the marks at issue do not present any conceptual differences.

42In that regard, it must be found, as did the Board of Appeal in paragraph 28 of the contested decision, that the Spanish-speaking consumer who is a member of the relevant public will understand the element ‘lineas aereas del mediterraneo’ appearing in the mark applied for as referring to air transport services in the Mediterranean and he will establish a connection between that element and the word element ‘lam’ which is its acronym.

43Therefore, contrary to what the applicant maintains, it must be found, as the Board of Appeal stated in paragraph 30 of the contested decision, that whilst, for that section of the relevant public which does not have even a minimal knowledge of Spanish, there is no conceptual difference or similarity between the marks at issue, that section of the relevant public which has even a minimal knowledge of Spanish will perceive a difference between, on the one hand, the mark applied for, which that public will understand as referring to air transport services in the Mediterranean, and, on the other hand, the earlier marks, which the documents before the Court do not demonstrate will be considered by the relevant public to have a meaning which is specific or, in any event, having similarities with the meaning of the mark applied for.

44In the light of all the foregoing findings it must therefore be found, as the Board of Appeal held in essence in paragraphs 30 and 31 of the contested decision, that the signs at issue, assessed overall, are different, in view, first, of their visual and phonetic differences and, second, either of their conceptual difference for that section of the relevant public which is Spanish-speaking, or of their lack of meaning for that section of the relevant public which is not Spanish-speaking.

The likelihood of confusion

45The Board of Appeal held in essence in paragraph 32 of the contested decision that, even if the services covered by the marks at issue were identical, the lack of similarity between those marks precluded the existence of a likelihood of confusion.

46The applicant maintains, however, that there is a likelihood of confusion between the mark applied for and the earlier marks since, first, they are visually and phonetically similar and have no meaning and, second, the services covered by those marks are identical.

47In that regard, it must be noted that, bearing in mind the lack of similarity of the signs at issue (see paragraph 44 above), the Board of Appeal was right to find in essence, in paragraph 32 of the contested decision, that in spite of the identical nature of the services covered there was no likelihood of confusion on the part of the relevant public between the mark applied for and the earlier marks. The lack of similarity between the signs at issue cannot be offset, in the global assessment of the likelihood of confusion, by the fact that the designated services are identical (see, to that effect, judgment of 12 February 2009 in Case T-265/06 Lee/DE v OHIM-Cooperativa italiana di ristorazione (PIAZZA del SOLE), not published in the ECR, paragraph 56).

48That conclusion is not affected by the applicant’s argument that the Board of Appeal failed to examine the reputation of the earlier marks. According to case-law, the reputation of a mark is a factor which must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion (Case T-110/01 Vedial v OHIM - France Distribution (HUBERT) [2002] ECR II-5275, paragraph 65; see judgment of 15 September 2009 in Case T-308/08 Parfums Christian Dior v OHIM – Consolidated Artists (MANGO adorably), not published in the ECR, paragraph 53 and the case-law cited). Therefore, the reputation of an earlier mark must be taken into account in the assessment of the likelihood of confusion, once the similarity between the marks has been established, and not in order to establish such similarity (see, to that effect, MANGO adorably, paragraph 54). In the present case, since it has been concluded, in paragraph 44 above, that there is no similarity between the signs at issue, the Board of Appeal did not err in failing to examine the possible reputation of the earlier marks. The argument which the applicant raises in that regard must therefore be rejected as unfounded.

49In the light of all the foregoing, it must therefore be concluded, as did the Board of Appeal, that there is no likelihood of confusion between the signs at issue.

50Hence, the single plea raised by the applicant must be rejected as unfounded and the application dismissed.

Costs

51Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must 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 form of order sought by OHIM.

Operative part

On those grounds,THE GENERAL COURT (Fourth Chamber)hereby:

1.Dismisses the action;

2.Orders Lan Airlines, SA to pay the costs.

Delivered in open court in Luxembourg on 8 February 2011.