CJEU Order C-314/05 Creative Technology

ORDER OF THE COURT (Fifth Chamber)

29 June 2006 (*)

(Appeal – Community trade mark – Article 8(1)(b) of Regulation (EC) No 40/94 – Likelihood of confusion – Application for Community word mark ‘PC WORKS’ – Opposition by the proprietor of the national figurative mark ‘W WORK PRO’ – Appeal in part clearly inadmissible and in part clearly unfounded)

In Case C-314/05 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged on 3 August 2005,

Creative Technology Ltd, established in Singapore, represented by
S. Jones and P. Rawlinson, Solicitors,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

José Vila Ortiz,

party to the proceedings before the Board of Appeal of OHIM,

THE COURT (Fifth Chamber),

composed of J. Makarczyk, President of the Chamber, P. K?ris and J. Klu?ka (Rapporteur), Judges,

Advocate General: C. Stix-Hackl,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Creative Technology Ltd (‘Creative Technology’) seeks to have set aside the decision of the Court of First Instance of the European Communities of 25 May 2005 in Case T-352/02 Creative Technology v OHIM – Vila Ortiz (PC WORKS) [2005] ECR I-0000 (‘the judgment under appeal’), in which the Court of First Instance dismissed its action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 September 2002 (‘the contested decision’) as well as the decision of the Opposition Division of 26 January 2001, confirmed by the contested decision, refusing registration of the word mark ‘PC WORKS’.

Legal context

2 Article 8 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) 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.

2. For the purposes of paragraph 1, “Earlier trade marks” means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

…

(ii) trade marks registered in a Member State …

…

…’

Background to the proceedings

3 On 4 November 1997, Creative Technology submitted an application to OHIM for registration of a Community trade mark for the word mark ‘PC WORKS’.

4 The goods in respect of which registration was sought are in Class 9 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 (‘the Nice Agreement’), and correspond to the following description: ‘apparatus for recording, transmitting and reproducing sound or images, loudspeakers, amplifiers, record players, tape players, compact disc players, tuners and parts and fittings for all the aforesaid goods’.

5 On 22 January 1999, Mr Vila Ortiz gave notice of opposition under Article 42 of Regulation No 40/94 to the application, on the ground that it would cause a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation. The opposition related to all the goods covered by the application for registration of the trade mark and was based on the national figurative mark reproduced below:

6 That trade mark had been registered in Spain on 10 October 1994 in respect of ‘electronic audio equipment; loudspeakers; sound reproducing apparatus; radio, television and video apparatus’ in Class 9 of the Nice Agreement.

7 By decision of 26 January 2001, the Opposition Division held that there was a likelihood of confusion between the opposing signs and, accordingly, rejected the application for registration by Creative Technology in respect of all the goods concerned.

8 On 19 March 2001, Creative Technology appealed against that decision. In that appeal, it amended the specification of the goods covered by its application by adding the following clarification: ‘all the aforesaid goods relating to computers and computer hardware’.

9 By the contested decision, the Fourth Board of Appeal of OHIM took the view that the application for registration of the trade mark and the earlier trade mark covered essentially the same category of goods, namely electronic apparatus the purpose of which is to reproduce sound and images, and that the trade mark applied for and the earlier mark were visually, phonetically and conceptually similar. Accordingly, it confirmed the decision of the Opposition Division of 26 January 2001 and dismissed the appeal filed on 19 March 2001.

The proceedings before the Court of First Instance and the judgment under appeal

10 By application lodged at the Registry of the Court of First Instance on 25 November 2002, Creative Technology sought the annulment of the contested decision and of the decision of the Opposition Division of OHIM of 26 January 2001.

11 In support of its application, it relied on a single plea, alleging infringement of Regulation No 40/94 on the ground that the Board of Appeal had wrongly found that there was a likelihood of confusion between the opposing signs.

12 The Court of First Instance first observed, in paragraphs 22 to 25 of the judgment under appeal, as follows:

‘22 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

23 According to that case-law, the likelihood of confusion must be assessed globally, according to the perception in the mind of the relevant public of the signs and of the goods or services in question, taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services identified (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33 and the case-law cited).

24 In this case, given the nature of the goods concerned … the targeted public, in relation to which the likelihood of confusion must be analysed, consists of average consumers. It is also clear from Article 8(1)(b) of Regulation No 40/94 that the targeted public is that which resides in the territory of the Member State in which the earlier mark is protected, namely, in this case, Spain.

25 Although it is true that the goods supplied by the applicant, consisting of items of audiovisual equipment for use inter alia in connection with a computer, are aimed at a public which has a more or less detailed knowledge of computers and is familiar with the use of electronic equipment, the fact remains that, at the present time, the supply and consumption of such goods and their distribution among a wide public, consisting mainly of young people, are such that they cannot be regarded as confined to a restricted and specialised circle of consumers, even though they cannot be defined as mass consumer goods. Similarly, although it is true that some of the goods concerned are likely, because of their degree of sophistication and their cost, to be the subject of a more careful purchasing decision, that is not the case, as was rightly pointed out by OHIM in its response, with all the goods in question. Thus, it must be held that the targeted public consists of average consumers who are reasonably well informed and reasonably observant and circumspect.’

13 In addition, the Court of First Instance indicated at paragraph 29 of that judgment that, as regards the goods concerned, ‘the applicant does not dispute the finding of the Board of Appeal that the marks in question essentially relate to the same sort of goods, namely electric apparatus the purpose of which is to reproduce sound and images’.

14 The Court of First Instance then ruled, at paragraph 51 of the judgment, that ‘on the visual, phonetic and conceptual levels, the trade mark applied for and the earlier mark are similar’.

15 In that context, first, it held at paragraph 39 of the judgment that, on the visual level, ‘there is a strong similarity … between the opposing signs by virtue of the fact that their dominant elements consist for the most part of the same graphic signs, namely the letters “w” “o” “r” and “k”, arranged in the same sequence, reproducing the word “work”, and that they differ only to the extent that the trade mark applied for adds to that sequence a further sign, namely the letter “s”’.

16 Secondly, on a phonetic comparison, the Court of First Instance ruled at paragraphs 42 to 46 of the judgment:

‘42 [I]t must be pointed out that, in the strict sense, the phonetic reproduction of a complex sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level.

43 However, in the context of the assessment of the visual, phonetic and conceptual similarities between two opposing marks, which seeks to establish or to exclude the existence of a likelihood of confusion on the part of the relevant public, the overall impression created among the targeted public by each of the two signs must be taken into account.

44 In the case of a complex word and figurative mark, the verbal elements are also figurative elements which, depending on their specific graphic features, are capable of producing a more or less marked visual impact. Thus, where such a sign consists of several verbal elements, it is quite conceivable that some of them may, because of their size, colour or position, for example, attract the consumer’s attention more, so that he or she, needing to refer orally to the sign, will be prompted to pronounce only those elements and to disregard the others. The visual impression created by the specific graphic features of the verbal elements of a complex sign is therefore liable to influence the sound representation of the sign.

45 In this case … the word “work” dominates the overall visual impression of the earlier mark and constitutes the verbal element likely to attract the attention more and to be immediately noticed and easily remembered. The other verbal elements of the sign have only a lesser impact in that regard. First, the element “pro” will be difficult to remember because of its small size and will not be immediately perceived as a word since the three letters of which it consists are spaced far apart from one another. Second, the sign “w”, consisting of an isolated letter which, moreover, is not very commonly used in the Spanish language, will be perceived more as a decorative element.

46 It follows from the foregoing that the Board of Appeal did not make an error of assessment in considering that the opponent’s mark is likely to be identified orally by the targeted Spanish consumer by pronouncing only the word “work”. Since the phonetic comparison must be between the sound forms of the signs “work” and “pc works”, it must be concluded that there is a certain similarity, given that the two signs share, in the same sequence, the majority of the letters of which they are composed.’

17 Thirdly, on a conceptual comparison, at paragraphs 48 to 50 of the judgment, the Court of First Instance held:

’48 [T]he word “pc” in the trade mark applied for has a descriptive character in relation to the goods concerned, being, both in English and in Spanish, an abbreviation for “personal computer”. From the conceptual point of view, the distinctive element of that mark therefore consists of the word “works”. In the case of the earlier mark, it must be held, for reasons analogous to those set out in paragraphs 43 to 45 above and in the absence of non-verbal figurative elements having independent evocative force, that the dominant element on a conceptual level consists of the word “work”.

49 [I]t must be regarded as plausible … that the targeted public, being made up of consumers familiar with the use of computers, has sufficient knowledge of English to understand the meaning of the word “work” and to recognise its plural form in the word “works”.

50 In those circumstances, the Board of Appeal did not make an error of assessment in considering that the two opposing marks are also similar on a conceptual level.’

18 Finally, at paragraph 53 of the judgment, the Court of First Instance held that ‘in view of the similarities between the opposing signs and of the fact that they refer to goods of the same kind, it must be concluded that the Board of Appeal did not make an error of assessment in considering that there is, in this case, a real risk that the relevant public may form a mistaken impression as to the commercial origin of those goods’.

Forms of order sought

19 By its appeal, the appellant claims that the Court of Justice should:

– set aside the judgment under appeal;

– annul the contested decision;

– annul the decision of the Opposition Division of 26 January 2001;

– allow registration of the trade mark applied for;

– order Mr Vila Ortiz to pay the costs incurred by the appellant in the present appeal, in the action before the Court of First Instance and the appeal to the Fourth Board of Appeal of OHIM, as well as in the opposition proceedings before the Opposition Division of OHIM.

20 In its response, OHIM contends that the Court of Justice should:

– dismiss the appeal;

– order Creative Technology to pay the costs.

The appeal

Arguments of the parties

21 Creative Technology relies on three pleas, alleging:

– infringement of Article 8(1)(b) of Regulation No 40/94, on the ground that the Court of First Instance wrongly found that there is a likelihood of confusion between the trade mark applied for and the earlier trade mark,

– infringement of the principles established in the judgment in Case C-251/95 Sabel [1997] ECR I-6191, on the ground that the Court of First Instance did not make a global assessment of the trade marks in question and attached no or little importance to the fact that the disputed products do not constitute occasional purchases, and

– infringement of the principles established in the judgment in Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, on the ground that the Court declared that the ‘work’ element of the trade marks in question is predominant in the impression given by the earlier trade mark as a whole.

22 As regards the first plea, Creative Technology argues that the Court of First Instance erred in law by concluding that the trade mark applied for and the earlier trade mark are visually, phonetically and conceptually similar within the meaning of Article 8(1)(b) of Regulation No 40/94.

23 On a visual comparison, it argues that the marks in question are different, one being figurative and the other verbal. The graphic component of the earlier mark should be taken into account. In particular, the graphic element ‘w’ is the dominant element of the earlier mark, whereas the trade mark applied for has no prominent feature.

24 On a phonetic comparison, it is unlikely that consumers would shorten the earlier mark to ‘work’ and, supposing that that trade mark was shortened, it would very probably become ‘w work’ or ‘work pro’, whereas the mark applied for would be ‘pc works’. There is a clear difference in the pronunciation of the two marks.

25 On a conceptual comparison, the appellant argues that if the Spanish consumer had a sufficient knowledge of the English language for the terms ‘work’ and ‘works’ to mean something to him the differences in meaning between the two words would be clear. Otherwise, that consumer would also consider those terms as being different, because no way of associating them would occur if he did not understand them.

26 As regards the second plea, the appellant argues that the likelihood of confusion must be assessed on the basis of a global assessment of the visual, aural or conceptual similarity of the marks in question. The Court of First Instance attached too much importance to the existence of the common element ‘work’ in those marks and did not attach any importance or insufficient importance to the presence of other elements, in particular to the fact that the earlier trade mark is a graphic mark and the goods concerned do not constitute occasional purchases.

27 As regards the third plea, Creative Technology argues that the Court of First Instance erred in its application of the approach adopted in its judgment MATRATZEN, a judgment which relates to an earlier trade mark made up of the single term ‘matratzen’ and a trade mark applied for which is made up of three terms, ‘matratzen’, ‘markt’ and ‘concord’. In the present case, the Court of First Instance wrongly ruled that the word ‘work’ is the dominant visual element of the earlier mark and that ‘works’ is the dominant element of the trade mark applied for. The letter ‘w’ is just as dominant, although only the term ‘works’ is more dominant, given that it is written in large white letters surrounded by a black disc which gives it a striking appearance. Moreover, the Court of First Instance made an error by breaking down the trade mark applied for to come to the conclusion that the elements to be compared amount to ‘work’ and ‘works’. In addition, the judgment under appeal leads to the effective monopolisation of the word ‘work’ as a trade mark in Spain, as the use of that word is standard in the English language. The monopolisation of such a word in Europe should be opposed.

28 OHIM considers that the three pleas relied on by Creative Technology are in reality only one plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94, in particular as regards the concept of global assessment of the likelihood of confusion and, in that context, the determination of the distinctive and dominant elements.

29 OHIM argues that the claim for registration of the trade mark in question to be allowed is inadmissible, as are the arguments of the appellant which are more concerned with the assessment by the Court of First Instance of the facts than with a real error of law, and that there was no such error as regards the application of Article 8(1)(b) of Regulation No 40/94.

Findings of the Court

30 According to Article 119 of the Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part.

31 It must be borne in mind that, in accordance with Article 8(1)(b) of Regulation No 40/94, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered when, 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.

32 The likelihood of confusion on the part of the public must be assessed globally, taking into account all the relevant factors of the case in hand. In addition, as regards the visual, aural or conceptual similarity of the trade marks in question, the global assessment of the likelihood of confusion must be based on the overall impression given by those trade marks, taking into account, in particular, their distinctive and dominant elements (orders in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraph 29, and Case C-324/05 P Plus Warenhandelsgesellschaft v OHIM [2006] ECR I-0000, paragraph 25).

33 Firstly, by ruling at paragraph 51 of the judgment under appeal that the trade mark applied for and the earlier mark are visually, phonetically and conceptually similar, the Court of First Instance undertook an assessment of a factual nature (see, to that effect, the orders in Matratzen Concord v OHIM, paragraph 34, and Plus Warenhandelsgesellschaft v OHIM, paragraph 26).

34 Therefore, the arguments of Creative Technology, under the three pleas on which it relies and which are set out in paragraphs 22 to 27 of the present order, seek to challenge the assessment of the facts by the Court of First Instance, in so far as they relate to the visual, aural and conceptual differences between the marks in question and to the assessment made by the Court of First Instance in that respect.

35 In accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22, and Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-0000, paragraph 35).

36 Since distortion of the facts and evidence submitted to the Court of First Instance is not alleged in the present case, the first, second and third pleas must be dismissed as clearly inadmissible on the grounds that they concern the assessment of the facts by the Court of First Instance.

37 Next, it must be held that, in considering at paragraph 52 of the judgment under appeal that the assessment of the likelihood of confusion, which must be carried out taking into account all the relevant factors, must, as regards the visual, aural or conceptual similarity of the trade marks in question, be based on the overall impression made by those trade marks, the Court of First Instance did not err in law as regards the application of Article 8(1)(b) of Regulation No 40/94.

38 In addition, in so far as the Court of First Instance made an overall assessment of the likelihood of confusion, the arguments of Creative Technology in that respect under the second and third pleas are clearly unfounded.

39 The second and third pleas alleging infringement of Article 8(1)(b) of Regulation No 40/94 must accordingly be rejected.

40 Finally, it is apparent from Article 63(3) and (6) of Regulation No 40/94 that, on the one hand, the Court of Justice has jurisdiction both to annul and to alter the contested decision and, on the other hand, OHIM must take the measures necessary to comply with the judgment of the Court of Justice.

41 Pursuant to those provisions, the Court of Justice has no jurisdiction to rule on a claim such as that seeking to have the registration of a Community trade mark authorised.

42 That claim must therefore be rejected as clearly inadmissible.

43 The appeal must therefore be dismissed in its entirety.

Costs

44 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 118 of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has applied for costs and the appellant has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby orders:

1. The appeal is dismissed.

2. Creative Technology is ordered to pay the costs.

[Signatures]

*Language of the case: English.

Order of 29 Jun 2006, C-314/05 (Creative Technology - PC WORKS), ECLI:EU:C:2006:441.