Nike International v OHMI- Deichmann (VICTORY RED) (Intellectual property) [2011] EUECJ T-356/10 (28 September 2011)

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(Community trade mark – Opposition proceedings – Application for registration of the Community word mark VICTORY RED – Earlier international and national word marks Victory – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

Nike International Ltd, established in Beaverton, Oregon (United States), represented by M. de Justo Bailey, lawyer,

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

1 On 10 September 2007 the applicant, Nike International Ltd, filed an application for registration of a Community trade mark with 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)).

3 The goods in respect of which registration was sought belong, after the limitation which occurred in the course of the proceedings before OHIM, to Class 28 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 to the following description: ‘Golf clubs, golf club heads, golf club shafts, golf balls, golf gloves, golf club grips, golf bags, golf tees, head covers for golf clubs, golf ball markers, golf towels; sports balls, bags specially adapted for carrying sports equipment and sports balls, divot repair tool for golfers’.

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 4/2008 of 28 January 2008.

5 On 10 May 2008 Deichmann SE filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 On 31 August 2009 the Opposition Division upheld the opposition for all of the goods covered by the Community trade mark application.

9 On 30 October 2009 the applicant filed an appeal with OHIM against the decision of the Opposition Division pursuant to Articles 58 to 64 of Regulation No 207/2009.

10 By decision of 18 May 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.

11 In particular, with regard to the relevant public, the Board of Appeal held that the goods at issue were directed at the average consumer in the territories of the Member States mentioned in paragraph 6 above. In relation to the comparison of the marks at issue, it held, essentially, that the signs covered goods that are either identical or highly similar. Further, it found that, due to the presence of the term ‘victory’ within each of the marks in dispute, a term which constituted the only part of the earlier marks and the dominant part of the mark applied for, there were similarities between the signs at issue which could lead consumers to think that the mark applied for was merely a sub-category of the earlier marks.

12 Deichmann did not exercise its right to intervene under Article 134(1) of the Court’s Rules of Procedure.

15 In support of its action, the applicant puts forward a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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.

17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-�linked undertakings constitutes a likelihood of confusion. According to that 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 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).

18 In the present case, the parties do not dispute that the Board of Appeal was justified in holding, first, that the goods covered by the marks at issue were identical or similar and, second, that the relevant public was composed of average consumers in the territory of the Member States in which the earlier marks were protected. In so far as those findings are, moreover, in accordance with Regulation No 207/2009, as interpreted by case-law, regard must be had to them in the examination of the merits of this action.

19 Furthermore, in support of its single plea, the applicant puts forward two arguments alleging errors of assessment by the Board of Appeal concerning, first, the degree of attention of the relevant public and, second, the similarity of the signs at issue. Those two arguments must be examined in turn.

20 The applicant submits that the relevant public must, in relation to the goods covered by the mark applied for, be considered as paying an increased level of attention due to the technically specific nature of the goods at issue and their high price.

21 In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case T-�256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-�449, paragraph 42 and the case-law cited).

22 In the present case, it is apparent from paragraph 20 of the contested decision that the public referred to by the Board of Appeal is made up of average consumers in the territory of the Member States in which the earlier marks are protected and that, consequently, that public is reasonably well informed and reasonably observant and circumspect.

23 In that regard, it should be noted that the goods at issue are sporting articles and accessories which vary widely in nature and price, and which may be placed on the market for a large public of both professionals and non-professionals. Consequently, while it is possible that a consumer may pay more attention to the choice of mark when he purchases a specific golf club at a significant price, such an approach on the part of the consumer cannot be presumed in relation to all of the goods in the sector at issue, with the result that it falls to the applicant to substantiate this claim with facts or evidence (see, to that effect, judgment in Joined Cases T-�117/03 to T-�119/03 and T-�171/03 New Look v OHIM – Naulover (NLSPORT, NLJEAN, NLACTIVE and NLCollection) [2004] ECR II-�3471, paragraph 43).

24 It should be noted, however, that the applicant merely asserts, without substantiating its claim, that the goods at issue are technically specific in nature and are sold at a high price. Moreover, and in any event, it must be noted that, as was submitted by OHIM, the mark applied for also covers inexpensive goods, such as golf balls and towels, and goods which are not technically specialised, such as sports balls and bags in which to carry sports equipment.

25 It follows that the Board of Appeal was justified in holding that the relevant public was composed of average consumers who are reasonably well informed and reasonably observant and circumspect. The applicant’s first argument must therefore be rejected as unfounded.

26 According to the case-law, 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 (Case T-�6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-�4335, paragraph 30, confirmed by order of the Court of Justice in Case C-�3/03 P Matratzen Concord v OHIM [2004] ECR I-�3657).

27 It is settled case-law that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. 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 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).

28 Accordingly, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which 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, cited in paragraph 27 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, cited in paragraph 27 above, paragraph 42).

29 The fact that a mark, such as that referred to in the application for registration at issue, consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see, to that effect, Case T-�22/04 Reemark v OHIM − Bluenet (Westlife) [2005] ECR II-�1559, paragraph 40).

30 In the present case, the marks considered by the Board of Appeal for the purposes of assessing whether the opposition was well founded are the mark applied for, VICTORY RED, and the earlier marks, Victory. In essence, the Board of Appeal held that, due to the dominant nature of the term ‘victory’ within the mark applied for and to the fact that the earlier marks were composed solely of that element, the signs at issue had to be regarded as being similar from a visual, phonetic and conceptual point of view. In particular, conceptually, it found that the combination of the ‘victory’ and ‘red’ elements within the mark applied for had no clear meaning in itself for consumers, whereas the term ‘victory’ was understood as referring to an idea of triumph and success.

31 The applicant disputes that assessment and submits, in essence, that the ‘victory’ element cannot dominate the mark applied for, in so far as, since it is frequently used as a mark in the marketing of goods in Class 28, it is diluted in the eyes of the average consumer. With regard to the phonetic comparison, it submits that the signs at issue coincide in the pronunciation of the term ‘victory’ but that they differ in relation to both their length and their endings. Concerning the visual comparison, the applicant submits that the similarity of the marks in dispute is limited to their weakest component, that is to say, the ‘victory’ element. Conceptually, the applicant acknowledges the suggestive, or descriptive, force, namely triumph, or success, of the term ‘victory’, in respect of the goods at issue. However, it submits that the similarities between the marks at issue are, on the one hand, limited to the non-dominant and non-distinctive element of the mark applied for, and, on the other hand, are displaced by the differences.

32 It is necessary to reject at the outset, on the ground of irrelevance, the submission that the term ‘victory’ cannot be dominant within the mark applied for because of its frequent use as a mark in the marketing of goods in Class 28.

33 It is settled case-law that, with regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components (MATRATZEN, cited in paragraph 26 above, paragraphs 33 to 35).

34 However, the fact that one of the terms making up a composite mark is frequently used, as a mark, for goods in the same class does not constitute an intrinsic quality of the component at issue and, consequently, is of no relevance for purposes of the assessment of that element’s dominant character.

35 For the sake of completeness, it must be stated that the submission thus put forward by the applicant is in any event manifestly unfounded as it would amount to taking the view that genuine use of an earlier mark by its proprietor has the consequence of altering, and more specifically, reducing, the protection conferred by the registration of that mark.

36 The marks at issue must therefore be compared, in accordance with the case-law cited at paragraphs 26 to 29 above.

37 First, in relation to the visual comparison, it must be noted that the mark applied for is made up of two elements. The first of these – the word ‘victory’ – consists of seven letters, while the second – the word ‘red’ – consists of three letters. So far as concerns the earlier marks, all of them are made up of the single word ‘victory’. The mark applied for is therefore longer than the earlier marks.

38 However, as the Board of Appeal rightly pointed out, it must be noted that the word ‘victory’ is situated at the beginning of the mark applied for. It is settled case-law that consumers in general pay more attention to the first part of a mark (see, to that effect, judgment of 27 February 2008 in Case T-�325/04 Citigroup v OHIM – Link Interchange Network (WORLDLINK), not published in the ECR, paragraph 82, and Case T-�185/07 Calvin Klein Trademark Trust v OHIM – Zafra Marroquineros (CK CREACIONES KENNYA) [2009] ECR II-�1323, paragraph 45). Furthermore, the first word of the mark applied for is visually longer than the second word, which reinforces its dominant character.

39 It follows that the word ‘victory’ dominates the overall visual impression of the mark applied for. Consequently, the Board of Appeal did not err in holding that the signs at issue were visually similar.

40 Secondly, in relation to the phonetic comparison, it must be acknowledged that, as the applicant points out, the marks at issue are of different lengths and have different endings.

41 However, account being taken of its position in the mark applied for, the term ‘victory’ will be the first that the consumer will hear and, on that basis, that which he will remember (see, to that effect, judgment of 27 November 2007 in Case T-�434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), not published in the ECR, paragraph 46, and Case T-�80/08 CureVac v OHIM – Qiagen (RNAiFect) [2009] ECR II-�4025). Moreover, that is a fortiori the case in the present instance as, in the context of the phonetic comparison, that term contains a substantially greater number of syllables than the second term in the mark applied for.

42 The Board of Appeal was therefore justified in holding that the term ‘victory’ was phonetically dominant within the mark applied for, taken as a whole, and, consequently, that the signs at issue were similar in that regard.

43 Thirdly, in relation to the conceptual comparison, it is settled case-law that conceptual differences may counteract visual and phonetic similarities if at least one of the marks at issue has, for the relevant public, a clear and specific meaning, with the result that that public is capable of grasping it immediately (see Case T-�292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-�4335, paragraph 54, and Case T-�185/02 Ruiz-�Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-�1739, paragraph 56).

44 Moreover, it should be noted that, although the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, the consumer will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, RESPICUR, cited in paragraph 21 above, paragraph 57).

45 In the present case, as the applicant, moreover, submits, the ‘victory’ element, which constitutes the only element of the earlier marks and the first word element of the mark applied for, refers, in the mind of the average consumer, to the idea of triumph and success. Moreover, the word ‘victory’ is part of the basic English vocabulary that will be known to the relevant public. In relation to the second element, the adjective ‘red’, which designates the colour red, this also has a clear meaning in basic English vocabulary.

46 By contrast, contrary to the applicant’s submissions, and as the Board of Appeal correctly noted at paragraph 31 of the contested decision, it cannot be argued that the term ‘victory’ is indirectly descriptive or strongly suggestive of the goods at issue. At most, it may be held that it alludes to the efficiency of the sporting articles in question.

47 Consequently, the Board of Appeal did not err in holding that the marks at issue were conceptually similar in so far as they all, in principle, in respect of the trade mark applied for when taken as a whole, and in an exclusive manner in respect of the earlier marks, refer to the idea of triumph (see, to that effect, judgment of 12 November 2008 in Case T-�281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 35).

48 Accordingly, since, as has been found at paragraphs 39, 41 and 46 above, on the one hand, the element ‘victory’ visually and phonetically occupies a dominant place in the mark applied for and, on the other hand, it is not descriptive of the goods at issue, it must be held that, as that element is common to both the marks at issue, its clear suggestive nature in the mind of the relevant public increases the degree of similarity between those marks.

49 It follows from all of the foregoing considerations that the Board of Appeal was justified in holding that, in overall terms, the signs at issue were phonetically, visually and conceptually similar.

50 That conclusion cannot be brought into question by the case-law which the applicant cites in support of its submissions, in which the Court held that there were ‘important visual and phonetic differences’ in the way consumers perceive the marks ORO and ORO SAIWA, on the one hand, and SELEZIONE ORO Barilla, on the other hand, and that the mere presence of the word ‘oro’ was not capable of giving rise to similarity between those marks (Case T-�344/03 Saiwa v OHIM – Barilla Alimentare (SELEZIONE ORO Barilla) [2006] ECR II-�1097, paragraph 39).

51 The circumstances which justified the Court’s assessment in that case differ from the circumstances in the present case. Thus, the Court held in that judgment that, in relation to one of the earlier word marks, ORO SAIWA, the dominant element was not the element ‘oro’, which was common to the marks at issue, but rather the element ‘saiwa’, which was specific to that mark (SELEZIONE ORO Barilla, cited in paragraph 50 above, paragraph 38). Furthermore, in relation to the mark applied for, that is to say, SELEZIONE ORO Barilla, it must be noted that the element common to the marks at issue was not situated at the beginning of that mark

52 In light of all the foregoing considerations, it must be concluded that the Board of Appeal was justified in holding that there was a likelihood of confusion, for the average consumer, between the marks at issue, when considered overall, within the meaning of Article 8(1)(b) of Regulation No 207/2009.

53 The applicant’s sole plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety.

54 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 the applicant has been unsuccessful, it must be ordered to pay the costs of OHIM, in accordance with the form of order sought by the latter.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nike International v OHMI- Deichmann (VICTORY RED) (Intellectual property) [2011] EUECJ T-356/10 (28 September 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T35610.html Cite as: [2011] EUECJ T-356/10

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