Alecansan v OHMI-CompUSA (COMP USA) (Intellectual property) [2006] EUECJ T-202/03 (7 February 2006)

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(Community trade mark - Opposition proceedings - Application for the figurative Community trade mark COMP USA - Earlier national figurative mark COMP USA - Lack of similarity of the goods and services - Rejection of the opposition - Article 8(1)(b) of Regulation (EC) No 40/94)

Alecansan, SL, established in Madrid (Spain), represented by M. Baylos Morales, P. Merino Baylos, J. Arribas García, A. Velázquez Ibáñez and A. Angulo Lafora, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis and A. Folliard-Monguiral, acting as Agents,

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

CompUSA Management Co., established in Dallas (United States), represented by P. Brownlow, Solicitor,

ACTION brought against the decision of the First Board of Appeal of OHIM of 24 March 2003 (Case R 711/2002-1) relating to the opposition proceedings between Alecansan, SL, and CompUSA Management Co.,

composed of J.D. Cooke, President, R. García-Valdecasas and V. Trstenjak, Judges,

having regard to the application lodged at the Registry of the Court of First Instance on 2 June 2003,

having regard to the response lodged at the Registry of the Court of First Instance on 23 January 2004,

1 On 8 June 1998, CompUSA Management Co. (-�the intervener') applied, under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (-�OHIM') to register the figurative mark COMPUSA, reproduced below, as a Community trade mark.

2 The goods and services in respect of which registration was sought are in Classes 9, 37 and 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 for each of the Classes:

- Class 37: -�Inspection and repair of electronic circuitry and components in computer hardware';

- Class 42: -�Retail store services to individuals, corporate and governmental entities in the field of computer hardware and software'.

3 On 2 November 1998, the intervener deleted the services belonging to Class 42 from its trade mark application. On 26 April 1999, the trade mark application was published in Community Trade Marks Bulletin No 33/1999.

4 On 22 July 1999, the applicant filed a notice of opposition under Article 42 of Regulation No 40/94 against registration of the mark applied for, relying on Article 8(1)(a) and (b) of Regulation No 40/94. The opposition was based on the earlier national figurative mark No 2 133 202, reproduced below, registered in Spain for the services -�transport; packaging and storage of goods; travel arrangement' belonging to Class 39 under the Nice Agreement.

5 As far as the trade mark applied for is concerned, the opposition related to the goods and services in Classes 9 and 37.

6 By decision of 17 June 2002, the Opposition Division rejected the opposition on the basis that the services covered by the earlier national trade mark were neither identical nor similar to those covered by the trade mark applied for.

7 On 14 August 2002, the applicant filed an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 against the Opposition Division's decision.

8 By decision of 24 March 2003 (-�the contested decision'), the First Board of Appeal of OHIM (-�the Board of Appeal') dismissed the appeal, finding that there was no similarity whatsoever between the goods and services in question. Consequently, there could not be any likelihood of confusion between the trade mark applied for and the earlier national trade mark on the part of the relevant public even though the signs in question were almost identical.

9 By application drawn up in Spanish and lodged at the Registry of the Court of First Instance on 2 June 2003, the applicant brought this action. The intervener did not lodge any statement of intervention or seek any forms of order.

10 By letter of 16 July 2003, the intervener objected to the use of Spanish as the language of the case and requested that English be designated as the language of the case.

11 English was designated by the Court of First Instance as the language of the case in accordance with Article 131(2) of the Rules of Procedure, since the intervener had filed its application for the contested mark in that language, in accordance with Article 115(1) of Regulation No 40/94.

12 The main parties presented oral argument and replied to the questions put by the Court of First Instance at the hearing on 7 June 2005.

- declare that the trade mark applied for, and the earlier trade mark of which the applicant is the proprietor, are -�incompatible' by reason of Article 8(1)(b) of Regulation No 40/94;

- refuse registration of the trade mark applied for in respect of the goods and services in Classes 9 and 37;

15 At the hearing, the applicant, explaining that annulment of the contested decision would suffice, maintained the heads of claim for annulment of that decision and those relating to payment of the costs but withdrew all the other heads of claim. After hearing OHIM, the Court of First Instance took formal notice of that withdrawal.

16 In support of its action, the applicant essentially raises a single plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94. The plea is in two parts, the first of which alleges mistake as to the likelihood of confusion, and the second failure to take the Spanish case-law relating to likelihood of confusion into account.

17 The applicant submits that the Board of Appeal erred in its conception of what constitutes likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 in so far as it did not assess the risk globally, taking all the relevant factors in the case into account.

18 Likelihood of confusion must be assessed on the basis of two factors: similarity or identity of the signs, and similarity or identity of the goods or services concerned. The case-law of the Court of Justice nevertheless requires that the likelihood of confusion be assessed globally, taking into account all the relevant factors in the case (Case C-251/95 SABEL [1997] ECR 1-6191, paragraph 22; Case C-39/97 Canon [1998] ECR 1-5507, paragraph 16; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR 1-3819, paragraph 18).

19 Stressing first the identity of the names of the marks and the similarity of the signs, the applicant submits that in this case the likelihood of confusion is increased by the fact that the proprietors of the trade marks in question are both undertakings which operate in the information technology (IT) sector. In such circumstances, the consumer when faced with two identical COMPUSA trade marks could be led to believe that the goods and services of each mark come from the same undertaking, or at least that there is a legal or economic link between them.

20 The applicant argues that global assessment of the likelihood of confusion implies a certain interdependence between the two factors taken into account to determine whether there is a likelihood of confusion, that is to say similarity of the signs and of the goods or services covered. A lesser degree of similarity between the goods or services may thus be offset by a greater degree of similarity between the marks, and vice versa.

21 The principle of interdependence, whereby the two factors determining the assessment of the likelihood of confusion may be set off against each other, is particularly relevant in the present case, in which the names are wholly identical and the applicant's goods and services are similar to those of the intervener, the services of the former being linked to the products of the latter. Such similarity arising from use or purpose of the goods and services has been accepted by the Court of First Instance (Case T-224/01 Durferrit v OHIM- Kolene (NU-TRIDE) [2003] ECR II-1589, paragraph 40). According to the applicant, if the principle of interdependence generally applies where there is similarity between the names or the goods or services then it also applies where there is complete similarity between the names and a certain similarity between the goods and services as a result of their use or purpose. The similarity of the goods and services in the latter case is obvious in terms of the criteria laid down in the case-law for assessing likelihood of confusion and is reinforced in the present case by the identity of the sectors of activity concerned. The fact that the proprietors of both marks operate practically within the same sector further reinforces this similarity.

22 In order to assess the similarity of the goods or services in question, all the relevant factors pertaining to the relationship between those goods and services must therefore be taken into account, an exercise which OHIM omitted to perform in the present case.

23 At the hearing the applicant pointed out, referring to the annexes attached to the application, that in principle there is no connection between travel services listed in Class 39 of the Nice Agreement and IT goods in Class 9. However, in the present case there is a connection between its transport services of the trade mark COMPUSA and IT goods of the trade mark applied for. It is apparent from those annexes that the intervener sells its IT goods on the internet. Thus, in order for those goods to be delivered, it needs to use goods transport services. It is apparent that without such transport services the intervener could not pursue its business. The applicant's services of the earlier national trade mark and those of the intervener are thus complementary in nature, and consequently there is similarity between the goods and services at issue.

24 OHIM contends that the assessment of the likelihood of confusion is dependent on numerous elements, and in particular on the recognition of the trade mark on the market, the association which could be made with the used or registered sign, and the degree of similarity between the earlier trade mark and the sign applied for and between the goods or services covered. A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the trade marks, and vice versa (SABEL, paragraph 22).

25 It is necessary, even where a trade mark is identical to another with a highly distinctive character, to adduce evidence of similarity between the goods or services covered because likelihood of confusion presupposes that the goods or services concerned are identical or similar (Canon, paragraph 22). The similarity of the goods and services in dispute is a conditio sine qua non for the application of Article 8(1)(b) of Regulation No 40/94. However, there is no such similarity in the present case.

26 As regards the interdependence of the similarity of the signs and that of the goods and services, OHIM claims that the absence of similarity between the goods and services does not leave any room for a global assessment of the other factors or for the application of the interdependence principle. The similarity of the signs as such cannot influence the assessment of the similarity of the goods and services.

27 As regards the similarity of the goods and services, OHIM submits that it is necessary to consider whether the circumstances referred to by the applicant are relevant to the comparison of the goods and whether they influence the assessment of the likelihood of confusion before the examination of the similarity of the goods and services is carried out.

28 At the hearing, OHIM pointed out that the conditions of use of the earlier trade mark and the trade mark applied for are not relevant, since the likelihood of confusion must be assessed solely on the basis of the signs at issue and the list of goods and services covered by the marks.

29 In the present case, the services protected by the earlier mark are transport, packaging and storage of goods and travel arrangement and not transport services and distribution of IT materials as maintained by the applicant.

30 OHIM observes in that regard that the applicant admits that the distribution and sales services could not be protected in the light of the practice of the Officina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office) at the time registration of the earlier trade mark was applied for with the national authorities. Granting such protection to those services would unduly extend the applicant's monopoly, by recognising trade mark rights that have never been registered. Thus, if there was a likelihood of confusion between the two marks, as submitted by the applicant, it would be due solely to the applicant's use of its trade mark in relation to services which are not protected.

31 By contrast, according to OHIM, the goods and services as covered by the two marks are not similar. The applicant's contention that the intervener is a retailer of IT goods manufactured by other companies is in any case inaccurate, at least in so far as the relevant territory is concerned, since the documents annexed to the application relate to sales made in the United States of America.

32 The services of the earlier mark do not, in addition, have any connection with the goods and services of the trade mark applied for, and the fact that undertakings providing logistical services both transport and store computers does not affect the conclusion that the goods and services covered by the marks are different in nature, that they are used for different purposes and that they are not intended for the same consumers.

33 Finally, OHIM considers that admitting, in the context of the assessment of the likelihood of confusion, that the clear dissimilarity of goods and services may be offset by the mere similarity of the signs would have the result that any trade mark would enjoy blanket protection against all identical or very similar signs, in relation to any kind of product. Such a solution would be inconsistent with both the wording and the spirit of Article 8(1)(b) of Regulation (EC) No 40/94, since it negates the purpose of the condition concerning the similarity of goods and services laid down in that provision.

34 It is settled case-law that the likelihood of confusion regarding the commercial origin of the products must be assessed globally according to the perception that the relevant public has of the signs and of the products 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 (see Case T-162/01 Loboratorios RTB v OHIM- Giorgio Beverly Hills (GEORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33, and the case-law cited).

35 However, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services referred to in the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (Canon, paragraph 22, concerning the provisions of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), and Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 51, concerning Article 8(1)(b) of Regulation No 40/94). Thus, even where the sign applied for is identical to a mark which is highly distinctive, it must be established that the goods or services covered by the opposing marks are similar (judgment of 1 March 2005 in Case T-169/03 Sergio Rossi v OHIM- Sissi Rossi (SISSI ROSSI) [2005] ECR II-0000, paragraph 53; see also, by analogy, Canon, paragraph 22).

36 It is common ground in the present case that the relevant public is the average Spanish final consumer, and that the signs in dispute are identical within the meaning of Article 8(1)(b) of Regulation No 40/94 from a phonetic point of view. They are also almost identical from a visual point of view.

37 Thus, it is necessary to examine whether there is similarity between the following goods and services: on the one hand, the services covered by the earlier Spanish mark COMPUSA No 2 133 202, included in Class 39, namely -�transport; packaging and storage of goods; travel arrangement', and on the other hand the goods and services covered by the trade mark applied for COMPUSA, included in Classes 9 and 37, namely -�Computer hardware; computer software' and -�Inspection and repair of electronic circuitry and components in computer hardware'.

38 In that context, it must be pointed out, first of all, that, as stated in Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being dissimilar on the sole ground that, as in the present case, they appear in different classes under that classification (judgment of 13 December 2004 in Case T-8/03 El Corte Inglés v OHIM - Pucci (EMILIO PUCCI) [2004] ECR II-0000, paragraph 40).

39 According to settled case-law, in order to assess the similarity of the goods and services concerned, all the relevant factors which characterise the relationship between those services should be taken into account, those factors including, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case T-85/02 Díaz v OHIM- Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 32, and EMILIO PUCCI, paragraph 41; see also, by analogy, Canon, paragraph 23).

40 Thus, in the present case, the fact relied upon by the applicant to the effect that the intervener's sales services, the sale of computer hardware and various retail services of a technological and digital nature provided by internet, are connected with the applicant's transport services, is not sufficient for those services to be regarded as similar if they otherwise differ significantly in relation to all the relevant factors which characterise the ways in which they are linked.

41 The contested decision took account of the relevant factors which are, first, the consumers of the goods offered by the proprietors of the two marks and the customers engaging the services provided by them, and second, the distribution channels or retail outlets.

42 In that regard, OHIM rightly pointed out that the applicant's Spanish consumers are not the same as the intervener's and that those consumers do not buy the goods and avail of the services in dispute in the same places. Whilst the client base of the two undertakings consists of average Spanish consumers, the consumers engaging the applicant's transport services are not the same as those wishing to buy or rent computer software or computer hardware, even if they wish to make a distance purchase. Consumers engaging the applicant's travel arrangement services will not usually think of buying, at the same time, computer software or computer hardware and go to a shop selling IT equipment.

43 As regards the nature of the goods and services, the contested decision rightly considers the -�transport services' referred to by the applicant to mean a fleet of trucks or ships used to move goods from A to B. Equally, -�packaging and storage services' merely means, in reality, the service whereby a company's merchandise is put into containers for a fee. Those services are not similar to the services or the IT products offered by the intervener.

44 As to whether the goods and services are in competition, the goods and services of the trade mark applied for, namely -�Computer hardware; computer software' and -�Inspection and repair of electronic circuitry and components in computer hardware', and the services of the earlier trade mark, namely -�transport; packaging and storage of goods; travel arrangement', do not compete with one another.

45 While the goods and services covered by the trade mark applied for are used for services for the distance selling or renting of IT goods or services, the provision of transport services does not amount to a service which competes with services for the distance selling or renting of IT goods and services. Those services are neither interchangeable nor substitutable for one another.

46 As regards the complementary nature of the goods and services, it must be pointed out that, according to the definition given by OHIM in point 2.6.1 of Part 2, Chapter 2, of the Opposition Guidelines of 10 May 2004, 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 customers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (see also to that effect Case T-85/02 Díaz v OHIM [2003] ECR II-4835, paragraph 36).

47 As stated above, the trade mark applied for also covers services for the distance selling or renting of IT goods and services, and the provision of IT services. However, physically sending computer software and computers bought or rented from an undertaking offering its goods by means of the internet to both consumers and professionals is merely the execution of a distance selling contract or of a service contract which is not connected to transport services.

48 Consequently, sales by internet and goods transportation services are by no means complementary in nature.

49 It follows from the foregoing considerations that the goods and services of the trade mark applied for are not similar to the services covered by the applicant's mark.

50 It is true that, according to the case-law, a lesser degree of similarity between the goods or services concerned may be compensated by a greater degree of similarity between the marks, and vice versa (see, by analogy, Canon, paragraph 17; Lloyd Schuhfabrik Meyer, paragraph 19, and Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40).

51 However, although there is a high degree of similarity between the marks now in question, the two marks being almost identical, it is apparent from the foregoing considerations that the goods and services of the trade mark applied for and the services covered by the earlier Spanish trade mark are not similar. The applicant cannot, therefore, rely on the existence of a likelihood of confusion between the two marks because even the fact that the two marks are identical cannot compensate for the absence of similarity between the services and the goods in question.

The second part of the plea, concerning the failure to take into account Spanish national case-law on likelihood of confusion

53 The applicant submits that, since the public targeted by the two marks consists of average Spanish consumers and the relevant market is the Spanish market, the Spanish case-law concerning the likelihood of confusion between the signs should have been taken into account by the Board of Appeal. Under that case-law the identity of the names of the two marks results in their -�incompatibility', even when the goods related to the signs in dispute are different, they belong to two different classes of the Nice Classification (Classes 29 and 30), and there is no relationship between them, since the likelihood of confusion on the market is evident.

54 OHIM contends that the Spanish case-law is not applicable in the present case and is not binding on it. In any case the relevance of the national decisions is diminished by the fact that they were not made in the same factual context and are based on rules of law and interpretation different to those applied by the Community Courts.

55 In that regard, OHIM observes that the Spanish Supreme Court accepts without reserve that a likelihood of confusion exists where the names of the marks are identical even if the goods covered by them are different.

56 According to the first recital in the preamble to Regulation No 40/94, the purpose of the Community trade mark is to enable the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers (Case T-122/99 Procter & Gamble v OHIM(Soap bar shape) [2000] ECR II-265, paragraph 60, and Case T-32/00 Messe München v OHIM(electronica) [2000] ECR II-3829, paragraph 45).

57 Given the unitary nature of the Community trade mark, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and applies independently of any national system (electronica, paragraph 47). Accordingly, the validity of the Board of Appeal's decisions must be examined exclusively on the basis of the relevant Community legislation, that is to say primarily Regulation No 40/94 (Case T-219/00 Ellos v OHIM(ELLOS) [2002] ECR II-753, paragraph 53).

58 As a result, OHIM cannot be bound by a decision given in a Member State according to which where the two marks are identical in name they are -�incompatible' even if the goods and services covered by the signs in question are different. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 (see, as regards absolute grounds of refusal, Case T-106/00 Streamserve v OHIM(STREAMSERVE) [2002] ECR II-723, paragraph 47).

59 Consequently, the second part of the plea, concerning the failure to take into account Spanish national case-law on likelihood of confusion, cannot be upheld.

61 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM.

62 Under Article 87(4) of the Rules of Procedure of the Court of First Instance and in the absence of forms of order sought by the intervener on the costs, the intervener is to bear its own costs.

2. Orders the applicant to pay its own costs and those of the Office for Harmonisation in the Internal Market (Trade Marks and Designs);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Alecansan v OHMI-CompUSA (COMP USA) (Intellectual property) [2006] EUECJ T-202/03 (7 February 2006) URL: http://www.bailii.org/eu/cases/EUECJ/2006/T20203.html Cite as: [2007] ECR I-36, [2006] EUECJ T-202/03, [2006] EUECJ T-202/3

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