Advance Magazine Publishers, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-509/12)

Contents

Judgment of the General Court (Eighth Chamber)27 February 2014^note(Community trade mark — Opposition proceedings — Application for Community word mark TEEN VOGUE — Earlier national word mark VOGUE — Admissibility — Formulation of the form of order sought — Relative ground for refusal — Likelihood of confusion — Identity or similarity of the goods — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 — Partial refusal to register)In Case T‑509/12,Advance Magazine Publishers, Inc., established in New York, New York (United States of America), represented by C. Aikens, Barrister,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,Nanso Group Oy, established in Nokia (Finland), represented by M. Tuominen, lawyer,THE GENERAL COURT (Eighth Chamber),composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,Registrar: E. Coulon,having regard to the application lodged at the Court Registry on 16 November 2012,having regard to the response of OHIM lodged at the Court Registry on 28 February 2013,having regard to the response of the intervener lodged at the Court Registry on 15 February 2013,having regard to the reply lodged at the Court Registry on 14 May 2013,having regard to the change in the composition of the Chambers of the General Court,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 31 October 2003, the applicant, Advance Magazine Publishers, Inc., 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)).

2The mark for which registration was sought is the word sign TEEN VOGUE.

3The goods in respect of which registration was sought are in Class 25 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Clothing; footwear; headgear; parts and fittings for all the aforesaid goods.’

4The Community trade mark application was published in Community Trade Marks Bulletin No 52/2006 of 25 December 2006.

5On 23 March 2007, the intervener, Nanso Group Oy, 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 trade mark applied for in respect of the goods referred to in paragraph 3 above.

6The opposition was based on the following earlier marks:— Swedish word mark VOGUE, registered on 24 January 1969 under No 126124, designating goods in Class 25 and corresponding to the following description: ‘Clothing, including boots, shoes and slippers’;— Swedish figurative mark registered on 27 August 1934 under No 43934 for goods in Class 25, reproduced below:— application for Finnish word mark VOGUE, filed on 5 October 1998 under reference No T 199803628, designating goods in Class 25;— registered auxiliary trade name VO Gue.

7The 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).

8On 7 April 2008, the applicant submitted, during the opposition proceedings, a request that the intervener furnish proof of genuine use of the earlier marks relied on in support of the opposition, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), following which the Opposition Division invited it to produce that proof.

9On 9 October 2008, the intervener provided various documents in order to show that the earlier marks had been put to genuine use.

10On 16 November 2010, the Opposition Division upheld the opposition, refusing registration of the mark applied for in relation to all the goods concerned.

11On 14 January 2011, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12By decision of 17 September 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay the intervener the sum of EUR 1 200 for costs incurred in the opposition and appeal proceedings. It found that the Opposition Division had correctly upheld the opposition since a likelihood of confusion could not be excluded due to the identity or similarity of the goods covered by the mark applied for, namely, clothing, footwear and headgear, and of those protected by the earlier Swedish word mark VOGUE - the use of which it considered had been sufficiently proved but only for hosiery - and the average similarity of the signs at issue.

Forms of order sought

13The applicant claims that the Court should:— reject the opposition in so far as it concerns headgear and shoes, boots, sandals, shirts, blouses, dresses, skirts, jackets, jumpers, suits, waistcoats, trousers, shorts, swimwear, coats, ties, shawls, scarves, braces and belts;— order the intervener to pay the costs.

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

Law

Admissibility of the action

15It must be stated that the aim of the applicant’s action, seeking rejection of the opposition for some specified goods, is, in reality, for the Court to adopt the decision that it claims the Board of Appeal should have taken when hearing the appeal. According to the second sentence of Article 64(1) of Regulation No 207/2009 the Board of Appeal may, after annulling the decision under appeal, exercise any power within the competence of the OHIM body which took that decision, in this case rule on the opposition and reject it. Consequently, that measure falls within the measures which may be taken by the Court in the exercise of its power to alter decisions, laid down by Article 65(3) of Regulation No 207/2009 (see, to that effect, Case T-334/01 MFE Marienfelde v OHIM - Vétoquinol (HIPOVITON) [2004] ECR II-2787, paragraph 19; Case T-363/04 Koipe v OHIM - Aceites del Sur (La Española) [2007] ECR II-3355, paragraphs 29 and 30; and judgment of 6 September 2013 in Case T‑599/10 Eurocool Logistik v OHIM — Lenger (EUROCOOL), not published in the ECR, paragraph 25 and the case-law cited).

16However, since the action contains, besides the request for the intervener to be ordered to pay the costs, only one head of claim, it must be held that, in that claim, the applicant necessarily seeks, not only the alteration of the contested decision, but also the annulment thereof (see, to that effect, judgment of 7 November 2013 in Case T‑666/11 Budziewska v OHIM — Puma (Bounding feline), not published in the ECR, paragraph 18 and the case-law cited), which, moreover, can be deduced from the submission of the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

17The appeal thus defined is therefore admissible.

Preliminary considerations

18It is important to note that, as is apparent from the contested decision, the Board of Appeal, like the Opposition Division, based the dismissal of the application for registration of the mark applied for in relation to clothing, footwear and headgear in Class 25 on the existence of a likelihood of confusion between the mark applied for and the earlier Swedish word mark VOGUE, the other earlier marks not having been accepted in support of that dismissal.

19It follows that it is solely in the light of the earlier Swedish word mark VOGUE that this action must be assessed.

Infringement of Article 8(1)(b) of Regulation No 207/2009

20In its single plea in law, the applicant claims that the likelihood of confusion between the mark applied for and the earlier Swedish word mark VOGUE covers only hosiery and not the other goods. It submits that the Board of Appeal erred in its comparison of the overall impression given, first, by the mark applied for and, second, by the earlier Swedish word mark VOGUE, by not giving adequate consideration to the element ‘teen’, although it is the word element placed first in the mark applied for and although the beginning of a mark is particularly significant in the overall impression given by that mark. According to the applicant, that element provides a significant visual difference as against the earlier Swedish word mark VOGUE and, phonetically, is differentiated from the latter by an additional syllable. It cannot be maintained that the element ‘vogue’ dominates, by itself, the mark applied for, especially because, neither of the marks at issue having a meaning in Swedish, they cannot be considered to be conceptually similar. Since the earlier Swedish word mark VOGUE has, as the Board of Appeal itself states, normal distinctive character, no additional likelihood of confusion results from an unusually high level of distinctive character of the element ‘vogue’. As regards the comparison of the goods at issue, the Board of Appeal did not take into account all the relevant factors that are features of the relationship between them. It claims that items of hosiery are different from items of headgear due to their distinct functions and the different textiles and materials from which they are made. The retail outlets or retail departments of large shops in which they are sold are also different. Nor are the goods complementary, since one is not important or necessary for the use of the other, or in competition, since one cannot replace the other. Concerning the comparison between items of hosiery and footwear, the applicant admits that those items are identical in part in so far as the first include socks and other undergarments worn on the feet, but it notes that that is not the case for shoes, boots or sandals. Furthermore, the materials used, namely, fabric composed of mesh in the first case and of leather or imitation leather in the second case, are different and, again, those goods are not in competition. Even when they are sold in the same shop, they are sold in different departments. Those goods are not in competition, any more than items of hosiery would be with all other types of clothing in Class 25.

21OHIM and the intervener dispute the applicant’s arguments.

22Article 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, the earlier trade mark and, because of 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.

23According 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 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 concerned and account being taken of 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 OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

24For 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 they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

25In the present case, at the outset, the Board of Appeal’s assessment, furthermore not disputed by the applicant, that the relevant public in respect of which the likelihood of confusion must be analysed is the general public in Sweden is to be upheld.

Comparison of the goods

26It must be stated that the Board of Appeal correctly found, at paragraph 27 of the contested decision, that the goods protected by the earlier Swedish word mark VOGUE, the genuine use of which had been proved for items of hosiery, consisted of clothing and were therefore identical to ‘clothing’ covered by the mark applied for.

27The Board of Appeal found, furthermore, that items of hosiery, footwear and items of headgear were similar, which the applicant disputes.

28According to settled case-law, in assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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, for example, the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).

29To support its conclusion regarding the similarity of items hosiery, on the one hand, and footwear and items of headgear, on the other, the Board of Appeal noted that those items generally share ‘their nature and the purpose of use which is to cover and protect parts of the human body.’ It also noted similarities in the distribution channels of those goods, the fact that they are influenced by fashion and that the relevant public tends to match them, which shows their complementary nature (paragraph 27 of the contested decision).

30Concerning, first, the similarity between items of hosiery and those of headgear, it is necessary to state that, although the different goods at issue are not all aimed at the same public, they none the less have the common intended purpose of clothing people fashionably. Thus, the goods at issue, from the point of view of the relevant public, come from the same family of goods, namely, fashionable items of clothing. Since a large number of fashion companies sell items of clothing of different styles under the same mark, it is conceivable that the relevant public would perceive the different goods at issue as coming from the same undertaking (see, to that effect, as regards, first, outerwear and underwear for ladies, and inter alia, second, headgear for boys and adolescents, judgment of 16 November 2011 in Case T‑323/10 Chabou v OHIM — Chalou (CHABOU), not published in the ECR, paragraph 34).

31In the light of the foregoing, the similar intended purpose of the goods at issue and the fact that they belong to the same family of goods strengthens the likelihood that they will be distributed through the same channels and sold in the same shops. Whilst it is true, as the applicant states, that those goods are not necessarily sold in the same shops or in identical departments in large shops, the fact remains that they are distributed by wholesalers in the textile sector and sold in clothes shops and also in large shops which sell items of fashionable clothing. Without prejudice to the analysis of the likelihood of confusion at paragraphs 48 and 49 below, it is to be noted that those circumstances are also capable of strengthening the relevant public’s feeling that the goods at issue come from the same undertaking or from economically-linked undertakings (Chabou, paragraph 37).

32Concerning, next, the similarity between items of hosiery and footwear, it is necessary, at the outset, to note that there is a clear complementarity between items of hosiery designed to cover the legs and feet, in particular stockings, socks and tights, and footwear, since average consumers of those hosiery products frequently connect the choice of those items with that of the footwear which they are likely to wear with the clothing at issue. Therefore, the Board of Appeal was correct to note, at paragraph 27 of the contested decision, the relevant public’s wish for the goods to match. It is also apparent from the case-law concerning the similarity between clothing, in general, and footwear, that, in view of the sufficiently close links between the respective purposes of those goods, discernible in particular in the fact that they belong to the same class, and the specific possibility that they can be produced by the same operators or sold together, it may be concluded that those goods may be linked in the mind of the relevant public (Case T-115/02 AVEX v OHIM - Ahlers (a) [2004] ECR II-2907, paragraph 26). For the reasons outlined at the beginning of this paragraph, that consideration applies even more so as regards hosiery.

33Lastly, concerning more broadly the similarity of items of hosiery, on the one hand, and items of headgear and footwear as a whole, on the other, it should be noted that, according to settled case-law, the clothing, footwear and headgear in Class 25 have a common purpose because they are manufactured to cover, conceal, protect and adorn the human body (see, to that effect, judgment of 10 September 2008 in Case T‑96/06 Tsakiris-Mallas v OHIM — Late Editions (exé), not published in the ECR, paragraph 30, and judgment of 24 March 2010 in Case T‑364/08 2nine v OHIM — Pacific Sunwear of California (nollie), not published in the ECR, paragraph 33).

34Therefore, notwithstanding the fact that those goods are comprised of different textiles and materials and that they are sometimes sold in different retail outlets, the Board of Appeal was correct to find that they are similar within the meaning of Article 8(1)(b) of Regulation No 207/2009.

35Therefore, the goods at issue are in part identical and in part similar.

Comparison of the signs

36The signs at issue are word marks, the earlier Swedish word mark consisting of the word ‘vogue’, while the mark applied for consists of the words ‘teen’ and ‘vogue’.

37It should be recalled that 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 made by the signs, their distinctive and dominant components, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services at issue 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 (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

38In the present case, the Board of Appeal found that the signs at issue have an average degree of visual and phonetic similarity, while excluding conceptual similarity, on the ground that none of the words at issue has any meaning in Swedish.

–Visual comparison

39First, it is necessary to state, as the Board of Appeal did at paragraph 29 of the contested decision, that, although it is true that the mark applied for consists of two words compared to the earlier Swedish word mark which consists of only one, the fact remains that the earlier Swedish word mark is entirely included in the mark applied for. The word ‘vogue’, present in the signs at issue, is, in the case of the earlier Swedish word mark, the only word the public can read and, in the case of the mark applied for, the last word it will read. In addition, while the word ‘teen’ has four letters, five letters make up the word ‘vogue’. It follows from the foregoing that, in respect of the mark applied for, as regards the visual comparison, the element ‘teen’ is not more important than the element ‘vogue’.

40Second, concerning the applicant’s reliance on the case-law according to which the beginning of a sign is significant in the overall impression given by that sign (Case T-112/03 L’Oréal v OHIM - Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65, and judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM — Editorial Planeta (FOCUS Radio), not published in the ECR, paragraph 36), it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (see judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM - Audi (ALLTREK), not published in the ECR, paragraph 70 and the case-law cited). Thus, despite the presence of a first element differentiating the mark applied for from the earlier mark, those marks may show a certain visual similarity due to the presence of a common element (Case T-286/02 Oriental Kitchen v OHIM - Mou Dybfrost (KIAP MOU) [2003] ECR II-4953, paragraphs 39 to 44; judgment of 8 March 2005 in Case T-32/03 Leder & Schuh v OHIM - Schuhpark Fascies (JELLO Schuhpark), not published in the ECR, paragraphs 38 to 47; and Case T-466/08 Lancôme v OHIM - Focus Magazin Verlag (ACNO FOCUS) [2011] ECR II-1831, paragraphs 56 to 63).

41Therefore, the Board of Appeal was correct to conclude that the signs are visually similar to an average degree, due to the presence of the element ‘vogue’, common to those signs.

–Phonetic comparison

42The Board of Appeal also concluded that the signs at issue are phonetically similar to an average degree, since their common element ‘vogue’ is pronounced the same in both cases.

43It is necessary, first, to state that the presence of the element ‘teen’ in the mark applied for undoubtedly contributes to differentiating the two marks at issue phonetically, as the applicant claims. Nevertheless, it cannot be accepted that the element ‘teen’, in view of its shortness, outweighs, in that respect, the element ‘vogue’, common to both signs. Therefore, a certain phonetic similarity can be found to exist between the two signs taken as a whole (see, to that effect, judgment of 11 December 2008 in Case T‑90/06 Tomorrow Focus v OHIM — Information Builders (Tomorrow Focus), not published in the ECR, paragraph 34, and ACNO FOCUS, paragraph 64). Consequently, the applicant is wrong to claim that the Board of Appeal made an error of assessment in finding that, phonetically, the signs at issue are similar to an average degree.

–Conceptual comparison

44The Board of Appeal noted, at paragraph 31 of the contested decision, that neither of the two elements at issue (‘teen’ and ‘vogue’) has a meaning in Swedish, which is not disputed. None the less, it was for the Board of Appeal to ascertain whether the general public in Sweden, many of whom speak English, was able to discern the meaning of those two elements, which it did not do. OHIM’s arguments dealing with that issue in its response cannot compensate for the Board of Appeal’s lack of analysis concerning the Swedish general public’s knowledge of the English language. It is therefore necessary to verify whether that incomplete examination by the Board of Appeal, which does not amount to a failure to provide reasons because it clearly stated the grounds on which it found that it was not possible to compare the signs conceptually, but to a partially erroneous assessment of the relevant public’s abilities, affects the legality of the contested decision.

45In the present case, for the part of that general public which has a command of the English language, the word ‘vogue’ would be understood as a word relating to fashion, the word ‘teen’ clearly indicating adolescents. Furthermore, the word ‘teenager’ translated into Swedish is a word constructed in a similar manner, namely, ‘tonåring’. It must be inferred from this that the expression ‘teen vogue’ would be perceived as a mere variation of ‘vogue’, since the concept of ‘what is fashionable for adolescents’ naturally comes from ‘what is fashionable’. That clear conceptual similarity could therefore only bear out the Board of Appeal’s conclusion in relation to, first, the similarity of the signs at issue and, next, the likelihood of confusion. As a result, that error regarding the knowledge of the relevant public does not affect the legality of the contested decision, it being borne in mind that, for the relevant non-English-speaking public, the Board of Appeal’s conclusion regarding the lack of influence of the conceptual comparison on the assessment of the similarity of the signs remains true (see judgment of 16 September 2013 in Case T‑569/11 Gitana v OHIM — Teddy (GITANA), not published in the ECR, paragraph 67 and the case-law cited).

–Conclusion on the comparison of the signs

46Therefore, the Board of Appeal was fully entitled to hold that, from the point of view of the relevant public, there was a visual and phonetic similarity between the signs at issue. On the other hand, the claim that no conceptual difference between the earlier Swedish word mark and the mark applied for can be found, given the lack of meaning in Swedish of the elements comprising those marks, is true only as regards the relevant non-English-speaking public. However, consideration of the relevant English-speaking public could lead only to a finding that the signs at issue are conceptually similar.

47Consequently, the applicant is not justified in arguing that the signs at issue were incorrectly regarded as being similar. It is settled case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards the visual, phonetic and conceptual aspects (see, to that effect, Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30 and the case-law cited).

Likelihood of confusion

48The global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II-5409, paragraph 74).

49In the light of the visual and phonetic similarities of the signs at issue and having regard to the fact that the goods designated by the earlier Swedish word mark VOGUE, on the one hand, and the mark applied for, on the other, are in part identical and in part similar, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion between those marks and, thus, it did not err in confirming the Opposition Division’s decision refusing registration of the mark applied for as regards ‘clothing; footwear; headgear; parts and fittings for all the aforesaid goods’ in Class 25.

50Since the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, put forward in support of its claims for both annulment and alteration, is unfounded, the action must be dismissed in its entirety.

Costs

51Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

52Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

Operative part

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

1.Dismisses the action;

2.Orders Advance Magazine Publishers, Inc., to pay the costs.

Delivered in open court in Luxembourg on 27 February 2014.