MIP Metro v OHMI- CBT Comunicacion Multimedia (Metromeet) (Intellectual property) [2010] EUECJ T-407/08 (25 June 2010)

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(Community trade mark – Opposition proceedings – Application for the Community figurative mark ‘Metromeet’ – Earlier national word mark ‘meeting metro’ – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, lawyers,

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

1 On 30 March 2004, CBT Comunicación Multimedia, SL, filed a Community trade mark application with 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 trade mark in respect of which registration was sought is the figurative sign reproduced below:

3 The goods and services in respect of which registration is sought, after the limitation which occurred in the course of the proceedings before OHIM, are in Classes 9, 16, 35 and 41 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

4 The Community trade mark application was published in Community Trade Marks Bulletin No 3/2005 of 17 January 2005.

5 On 15 April 2005, the applicant, MIP Metro Group Intellectual Property GmbH & Co. KG, lodged a notice of opposition against the mark applied for, claiming that there was a likelihood of confusion within the terms of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6 The opposition was based on a portion of the goods and services covered by German registration No 30348717 relating to the following figurative trade mark, with the colours blue and yellow:

7 The earlier national figurative trade mark METRO was filed on 22 September 2003 and registered on 27 April 2004, for, in particular, the following goods and services:

8 The opposition was also based on German registration No 30235327 of the word mark ‘meeting metro’, filed on 22 July 2002 and registered on 18 February 2003 for, in particular, the following goods and services:

9 The opposition was directed against all of the goods and services covered by the mark applied for.

10 By decision of 23 January 2007, the Opposition Division, on the basis of the word mark ‘meeting metro’, upheld the opposition in its entirety, on the ground that there was a likelihood of confusion in respect of all of the goods and services at issue. The Opposition Division found that the goods and services concerned were identical or similar and held that the signs ‘meeting metro’ and ‘Metromeet’ were similar as they both included the terms ‘metro’ and ‘meet’ and that the element ‘meeting’ was merely the gerund of the verb ‘meet’. The reversed order of the terms ‘metro’, on the one hand, and ‘meet’ or ‘meeting’, on the other hand, did not offset the visual and aural similarities which existed between the signs. Conceptually, the signs in issue transmitted the same message.

11 On 14 March 2007, CBT Comunicación Multimedia brought an appeal before 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.

12 By decision of 12 June 2008 (‘the contested decision’), the First Board of Appeal allowed the appeal and thus annulled the decision of the Opposition Division. In particular, it found, first, that the goods and services covered by the mark applied for and those covered by the earlier marks were identical or similar and, second, that the conflicting signs were slightly similar. The Board of Appeal ruled, however, that there was no likelihood of confusion on the ground that the common element ‘metro’ would immediately be understood by the relevant public as being an allusion to metrology or ‘Metrologie’ in German. That relevant public, consisting of specialists, was particularly attentive when purchasing the goods or services concerned and would therefore identify the link with metrology. Moreover, the visual differences between the marks in question were, it found, of high importance.

15 The applicant intends to rely on the enquiry, carried out in autumn 2007 by a market research company, which indicates that 70% of the persons questioned in Germany were found to associate the word ‘metro’ with the applicant and 10% with an underground transport system outside Germany.

16 In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009). It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. To admit such evidence is contrary to Article 135(4) of the Court’s Rules of Procedure, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (Case T-128/01 DaimlerChrysler v OHIM (Calandre) [2003] ECR II'701, paragraph 18, and judgment of 19 November 2008 in Case T-269/06 Rautaruukki v OHIM (RAUTARUUKKI), not published in the ECR, paragraph 20).

17 In those circumstances, the annex to the application constituted by the enquiry on which the applicant seeks to rely in the present action must be declared inadmissible as it was not submitted to the Board of Appeal for examination.

18 It should be stated at the outset that, in its application, as is apparent from paragraph 13 above, the applicant sought the annulment of the contested decision and the rejection of Application No 3740529 for the registration of Metromeet as a Community trade mark. In its response to the question put by the Court, the applicant indicated that the form of order which it is seeking should be construed as requesting the Court to reject the application for registration and, in the alternative, to annul the contested decision and remit the matter to OHIM for further consideration.

19 In accordance with Article 44(1) of the Rules of Procedure, an application must state, inter alia, the form of order sought by the applicant. In the present case, the indication that the request for annulment was an alternative to the claim that the application for registration should be rejected was formulated, not in the application, but in the applicant’s response to a measure of organisation of procedure. It follows that that amendment of a head of claim, made in the context of a measure of organisation of procedure, must be rejected as inadmissible (see, to that effect, order in Case T-406/03 Ravailhe v Committee of the Regions [2005] I'A'19 and II'79, paragraph 53).

The first part of the first head of claim, seeking annulment of the contested decision

20 The applicant relies on a single plea in law alleging breach of Article 8(1)(b) of Regulation No 40/94. The applicant takes the view, in essence, that there is, as the Opposition Division found, a visual, aural and conceptual similarity between the signs ‘Metromeet’ and ‘meeting metro’, as they both include the terms ‘metro’ and ‘meet’, the suffix ‘ing’ which appears in the element ‘meeting’ of the earlier word mark merely constituting the gerund of ‘meet’, which is not such as to give rise to any visual, aural or conceptual difference between those signs. The only difference between them, it submits, lies in the inversion of the two component parts of the signs, which, ultimately, does not prevent them from being similar.

21 According to OHIM, there is no likelihood of confusion between the signs concerned because of the strongly allusive and weakly distinctive nature of the element ‘metro’. Where they are faced with goods and services linked to that specialist field, specialised professionals in the field of metrology will associate the element ‘metro’ with metrology.

22 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, ‘because of its identity with or similarity to the 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’.

23 Furthermore, pursuant to Article 8(2)(a)(i) and (ii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (ii) of Regulation No 207/2009), the term ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

24 According to consistent case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see judgment of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70 and the case-law cited; see also, by analogy, Case C-39/97 Canon [1998] ECR I'5507, paragraph 29; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I'3819, paragraph 17).

25 In addition, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see CAPIO, cited in paragraph 24 above, paragraph 71 and the case-law cited; see also, by analogy, Case C-251/95 SABEL [1997] ECR I'6191, paragraph 22; Canon, cited in paragraph 24 above, paragraph 16; and Lloyd Schuhfabrik Meyer, cited in paragraph 24 above, paragraph 18).

26 That global assessment entails a degree of 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 covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I'7333, paragraph 48; Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II'4335, paragraph 25; see also, by analogy, Canon, cited in paragraph 24 above, paragraph 17). The interdependence of those factors is expressly referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the mark and the sign and between the goods or services identified (see CAPIO, cited in paragraph 24 above, paragraph 72 and the case-law cited).

27 Furthermore, the global assessment of the visual, aural or conceptual similarity of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 40/94 – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see CAPIO, cited in paragraph 24 above, paragraph 73 and the case-law cited; see also, by analogy, SABEL, cited in paragraph 25 above, paragraph 23).

28 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. 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 (Case T-104/01 Oberhauser v OHIM – PetitLiberto(Fifties) [2002] ECR II-4359, paragraph 28, and Case T-186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II-1887, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, cited in paragraph 24 above, paragraph 26).

29 In the present case, the earlier marks, in the light of which the contested decision was adopted, are national trade marks registered in Germany. Consequently, as follows from paragraphs 34 and 49 of the contested decision, the examination must be limited to German territory.

30 Furthermore, as the Board of Appeal correctly pointed out in paragraph 22 of the contested decision, the relevant public consists of professionals in the metrology field and providers of services thereto, in so far as the goods and services are related solely to metrology matters. Contrary to the applicant’s assertion, it cannot validly be argued that the goods and services concerned are targeted at the general public because daily use is made of measuring instruments such as clocks, folding rules, scales, capacity measures or thermometers. None of the goods and services covered by the Community trade mark application relates to the measuring instruments referred to by the applicant.

31 It is in the light of the foregoing considerations that the Board of Appeal’s assessment as to the likelihood of confusion between the conflicting signs must be examined.

32 In this regard, the position adopted by the Board of Appeal in paragraphs 23 to 29 of the contested decision, concerning the trade mark ‘meeting metro’, and in paragraphs 41 to 45 of that decision, concerning the trade mark ‘METRO’, must be endorsed. Moreover, it should be pointed out that the applicant has not put forward any argument challenging the Board of Appeal’s findings with regard to the identity or similarity of the goods and services concerned.

33 It should be borne in mind, as already indicated in paragraph 27 above, that the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel(BASS) [2003] ECR II'4335, paragraph 47, and CAPIO, cited in paragraph 24 above, paragraph 88 and the case-law cited; see, by analogy, SABEL, cited in paragraph 25 above, paragraph 23).

34 It also follows from the 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 one or more relevant aspects (MATRATZEN, cited in paragraph 26 above, paragraph 30, and CAPIO, cited in paragraph 24 above, paragraph 89; see also, by analogy, SABEL, cited in paragraph 25 above, paragraph 23).

36 First, with regard to the visual comparison, the trade mark applied for is a figurative trade mark which includes a word element made up of nine letters in a standard font. However, two letters ‘e’ are placed lower than the other letters and one of them appears back-to-front. Moreover, above the final two letters ‘e’ there is a figurative element consisting of a tilted square with a circle inside. The element ‘metro’ of the trade mark applied for is underlined. The earlier word mark is made up of 2 words of 7 and 5 letters respectively, thus making a total of 12 letters.

37 Admittedly, the trade mark applied for is made up of two elements, namely ‘metro’ and ‘meet’, which are to be found in reverse order in the earlier word mark, the word ‘meeting’ being easily perceivable by the relevant public as the gerund of the verb ‘meet’.

38 In that regard, it should be recalled that the mere inversion of elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity (judgment of 11 June 2009 in Case T-67/08 Hedgefund Intelligence v OHIM – Hedge Invest (InvestHedge), not published in the ECR, paragraph 35).

39 However, differences may be discerned by reason of the presence of a figurative element consisting of a square, the special arrangement of the last two letters ‘e’ of the trade mark applied for and the existence of a degree of difference between the elements ‘meet’ and ‘meeting’. The Board of Appeal’s finding in paragraph 30 of the contested decision, to the effect that, all in all, the signs are only slightly similar visually, must therefore be endorsed.

40 Second, concerning the aural comparison, it must be stated that, by reason of the fact that the two elements making up the signs are inverted and that the word ‘meet’ is reproduced in a slightly different way in the earlier word mark (meeting), the two signs are pronounced differently. However, as the final element of the earlier word mark and the first element of the mark applied for are identical and the pronunciation of the elements ‘meet’ and ‘meeting’ is similar, there is a degree of phonetic similarity between the two signs taken as a whole. The fact that the syllables are pronounced in an inverted order cannot prevent the signs from being similar overall (see, to that effect, InvestHedge, cited in paragraph 38 above, paragraph 39). Consequently, the finding of the Board of Appeal, in paragraph 31 of the contested decision, that the trade marks at issue are aurally dissimilar cannot be endorsed.

41 Third, with regard to the conceptual comparison, clearly, when the signs at issue are applied to goods or services related to metrology and in light of the relevant public, which is made up of specialists in the field of metrology, it must be held that those signs are, as is clear from paragraph 32 of the contested decision, perceived by the public as alluding to metrology and, contrary to what is indicated in paragraphs 33 and 34 of the contested decision, also perceived as alluding to meetings of persons interested by that science, as the Opposition Division had found in its decision, since the word ‘meeting’ is part of current German vocabulary, with the result that the relevant public would understand the term ‘meet’. There is consequently a clear link between the signs at issue, since the concepts to which they allude are identical.

42 A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, cited in paragraph 26 above, paragraph 45).

43 In that regard, it is clear that the element ‘metro’, while not descriptive, cannot be considered to be highly distinctive with regard to goods and services concerning metrology and which target a public specialised in that field. Moreover, although the other element of the signs at issue may be perceived to be distinctive, it is clear that, albeit not identical, the words ‘meet’ and ‘meeting’ are similar, since they feature the same word in two grammatical forms which are different because of the existence of the gerund in one of the signs.

44 However, even with regard to a public comprised of specialists, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (Lloyd Schuhfabrik Meyer, cited in paragraph 24 above, paragraph 26, and Case T-7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II'3085, paragraph 30). Moreover, the fact that the goods and services in question are not purchased or provided on a daily or weekly basis increases the possibility that the targeted public might be misled by its imprecise recollection of the configuration of the marks (see, to that effect, Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II'4301, paragraph 76).

45 Moreover, the finding of a weak distinctive character for the earlier trade mark does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II'5213, paragraph 70 and the case-law cited).

46 In view of the fact, first, that the goods and services at issue are, in part, identical and, in part, at least similar, and, second, that the signs at issue are visually and aurally similar, albeit only slightly, and conceptually identical, it must be held that the difference between those signs is insufficient to exclude all likelihood of confusion between the trade marks on the part of the public.

47 Contrary to the Board of Appeal’s finding in paragraph 37 of the contested decision, there is no reason to infer that the goods in question would normally be purchased after a study of information about the goods and services concerned, in such a way that the visual differences assume a high degree of importance. The purchase of the goods or provision of the services in question could follow an oral recommendation to that effect and the consumer, confronted with the two signs, could easily, because of his imperfect recollection, confuse the product or the service covered by the recommended trade mark and those covered by the other mark at issue.

48 In those circumstances, the single plea must be upheld and, consequently, the contested decision annulled, without it being necessary to compare the trade mark applied for with the earlier trade mark METRO.

The second part of the first head of claim, seeking rejection of the application for registration of the trade mark applied for

49 As to the second part of the first head of claim, the applicant’s interests must, in the circumstances of the case in the main proceedings, be considered to be sufficiently protected by the annulment of the contested decision, without it being necessary to adjudicate on its application for rejection of the registration of the trade mark applied for. Such an application is a mere consequence of the annulment of the contested decision and therefore comes within the framework of measures to comply with the judgment of the European Union Courts pursuant to Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009) (see, to that effect, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II'723, paragraph 17, and Case T-147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II'11, paragraph 113).

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

51 Furthermore, the applicant claims that OHIM should be ordered to pay the costs incurred by the applicant for the purposes of the opposition proceedings and the appeal before the Board of Appeal. In that regard, it should be pointed out that, pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the applicant’s request that OHIM be ordered to pay the costs of the administrative proceedings before the Opposition Division must be declared inadmissible (judgment of 10 December 2008 in Case T-290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 60).

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 June 2008 (Case R 387/2007'1) concerning opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG and CBT Comunicación Multimedia, SL;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> MIP Metro v OHMI- CBT Comunicacion Multimedia (Metromeet) (Intellectual property) [2010] EUECJ T-407/08 (25 June 2010) URL: http://www.bailii.org/eu/cases/EUECJ/2010/T40708.html Cite as: [2010] EUECJ T-407/8, [2010] EUECJ T-407/08

Court of Justice of the European Communities (including Court of First Instance Decisions)