IP case law Court of Justice

Order of 15 Jan 2010, C-579/08 (Messer - Ferromix, Inomix and Alumix)



ORDER OF THE COURT (Seventh Chamber)

15 January 2010 (*)

(Appeal – Article 119 of the Rules of Procedure – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Word marks Ferromix, Inomix and Alumix – Earlier word marks FERROMAXX, INOMAXX and ALUMAXX – Opposition by the proprietor of the trade mark – Relevant public – Degree of similarity – Limited distinctive character of the earlier mark – Likelihood of confusion )

In Case C-579/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 23 December 2008,

Messer Group GmbH, established in Sulzbach (Germany), represented by W. Graf v. Schwerin and J. Schmidt, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

Air Products and Chemicals, Inc., established in Allentown (United States), represented by S. Heurung, Rechtsanwältin,

applicant at first instance,

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

defendant at first instance,

THE COURT (Seventh Chamber),

composed of R. Silva de Lapuerta, President of the Chamber, T. von Danwitz (Rapporteur) and D. Šváby, Judges,

Advocate General: Y. Bot,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1        By its appeal, Messer Group GmbH (‘Messer’) asks the Court to set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 15 October 2008 in Joined Cases T-305/06 to T-307/06 Air Products and Chemicals v OHIM – Messer Group (Ferromix, Inomix, Alumix) (‘the judgment under appeal’), by which that Court upheld the action brought by Air Products and Chemicals, Inc. (‘Air Products’) against three decisions of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 September 2006 (Joined Cases R 1270/2005-2 and R 1408/2005-2; R 1226/2005-2 and R 1398/2005-2; R 1225/2005-2 and R 1397/2005-2) (‘the contested decisions’). In those decisions, the Second Board of Appeal of OHIM had rejected the three oppositions filed by Air Products against the applications for registration as Community trade marks, filed by Messer, of the word marks Ferromix, Inomix and Alumix.

 Legal context

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

‘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.’

 Facts

3        On 20 May 2003 Messer Griesheim GmbH, now Messer Group GmbH, the intervener at first instance, filed three Community trade mark applications for the word marks Ferromix, Inomix and Alumix.

4        The goods in respect of which registration was sought fall within Classes 1 and 4 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, for each of those classes, to the following description:

–        Class 1: ‘Gases and gas mixtures, including in liquid or soluble form, for the thermal treatment of materials; welding and cutting gases; protective gases’;

–        Class 4: ‘Liquid and gaseous fuels’.

5        On 21 April 2004, Air Products filed three oppositions to the registration of those trade marks in respect of all the goods covered by them, alleging that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 with the Community word marks FERROMAXX, INOMAXX and ALUMAXX, registered in the year 2000 and designating, in particular, goods falling within Class 1 of the Nice Agreement, namely, ‘Gases and gas mixtures for the welding, cutting and thermal spraying’ of three materials: ‘carbon and ferritic alloy steels’, ‘stainless steel’ and ‘aluminium and aluminium alloys’ respectively.

6        By decisions of 6 October 2005 (INOMAXX/Inomix and ALUMAXX/Alumix) and 13 October 2005 (FERROMAXX/Ferromix), the Opposition Division of OHIM upheld the oppositions in respect of the goods in Class 1 of the Nice Agreement covered by the three applications for Community trade marks, and rejected them in respect of the goods in Class 4 of that Agreement covered by those applications. It held, in essence, that the marks for which registration was sought were visually and phonetically similar to the earlier marks and that the goods at issue in Class 1 of the Agreement were identical or highly similar and, therefore, that a likelihood of confusion was not ruled out.

7        Both Air Products and Messer filed appeals before OHIM against those three decisions of the Opposition Division of OHIM.

8        In the contested decisions, the Second Board of Appeal of OHIM annulled the decisions of the Opposition Division of OHIM and rejected, in their entirety, the oppositions filed by Air Products, thereby upholding Messer’s appeals and dismissing Air Products’ appeals.

9        It found that the goods concerned in Class 1 of the Nice Agreement were in part identical and that the goods concerned in Class 4 of the Agreement were in part highly similar. With regard to the comparison of the signs, it found that the similarities between the marks in question were essentially limited to a secondary, if not negligible, element, namely the terms ‘ferro’, ‘ino’ and ‘alu’, descriptive of certain characteristics of the goods concerned, and that the signs in dispute were significantly different in visual, phonetic and conceptual terms. The Board of Appeal of OHIM concluded that, taking into account the lack of inherent distinctiveness of the common element and the high degree of awareness and attention of the relevant public, the signs in question created general impressions which were sufficiently different from each other to rule out any likelihood of confusion or association in the mind of the relevant public, even if the signs were to be registered for identical or highly similar goods in Classes 1 and 4 of the Nice Agreement.

 The action before the General Court and the judgment under appeal

10      By three applications lodged at the Registry of the General Court on 13 November 2006, Air Products brought actions seeking the annulment of the contested decisions and refusal of the three applications for registration. To that end, it relied on a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.

11      The three cases, T-305/06, T-306/06 and T-307/06, were joined for the purposes of the oral procedure and of the judgment.

12      In the judgment under appeal, the General Court accepted the applicant’s plea and annulled the three contested decisions.

13      After recalling, in paragraphs 25 to 28 of the judgment under appeal, the case-law on the likelihood of confusion between the trade mark of which registration is being sought and an earlier Community trade mark, the General Court held, first, as follows with regard to the relevant public:

‘30      The applicant does not contest the definition of the relevant public as such, but the degree of attention which the Board of Appeal gave to it, which, according to the applicant, then influenced the assessment of the similarity of the marks in question.

31      According to the Board of Appeal, the goods in question are chemical substances, namely gases used for welding, cutting and for the thermal treatment of materials. It is common ground that such specialised goods are principally intended for professionals working in the wider metallurgical sector, and in particular the welding industry. However, the Board of Appeal found, on the basis of the evidence submitted by the applicant, that there also exist smaller gas cylinders intended for use at home by hobby welders. According to the Board of Appeal, those hobby welders represent a not insignificant part of the relevant public.

32      The Board of Appeal … considered that … the average hobby [welder’s] … level of attention, when choosing and using hazardous products such as welding gases, would be rather high.

33      The applicant claims that having a basic knowledge of welding techniques cannot be considered as being the same as displaying a relatively high degree of attention when purchasing welding gas.

34      The Court notes that it is common ground that the relevant public consists not only of professional welders but also of hobby welders. It is also common ground that the level of attention of the professionals must be considered as high. With regard to the hobby welders who use the goods concerned, their level of attention should be considered as higher than that of a consumer of goods for everyday use, given the possible hazards involved in using those products. However, the level of attention of hobby welders cannot be considered to be as high as that of professionals.’

14      Secondly, with regard to the similarity of the goods, the General Court merely held, in paragraph 36 of the judgment under appeal, that it was ‘not disputed that the goods covered by the marks in question are partially identical and partially highly similar’, with the result that it was ‘not necessary to examine further the similarity of the goods concerned’.

15      Thirdly, in paragraphs 37 to 56 of the judgment under appeal, the General Court compared the signs at issue, starting from the principle that the global assessment of the likelihood of confusion must, in so far as the visual, phonetic or conceptual similarity of the signs in question is concerned, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components.

16      First of all, in paragraph 47 of the judgment under appeal, the General Court approved the finding of the Board of Appeal of OHIM that the prefixes of the marks at issue, namely, ‘ferro’, ‘ino’ and ‘alu’, are descriptive of the goods concerned and thus possess only an inherently weak distinctive character.

17      Secondly, in paragraph 49 of the judgment under appeal, the General Court held that the two suffixes, ‘maxx’ and ‘mix’, also have a weak distinctive character. The suffix ‘maxx’ has a laudatory connotation in so far as it refers to the word ‘maximum’, therefore to a maximum level of performance and efficiency, despite the presence of the double ‘x’ at the end. The suffix ‘mix’ clearly refers to specific mixtures of chemical substances.

18      In paragraph 50 of the judgment under appeal, the General Court concluded from the foregoing that ‘it must be held that the Board of Appeal was correct to find that the relevant public would perceive the signs in question as the joining in one word of two inherently weak components, each of them descriptive, or at least evocative, of the essential characteristics of the goods concerned. Accordingly, it must be held that the word marks in dispute do not contain any dominant component and must be compared as a whole.’

19      Finally, the General Court carried out a comparison of the marks as a whole in the following terms:

‘52      … The beginning of each mark applied for, which is perceived and heard first, is identical to the beginning of each of the respective earlier marks (“ferro”, “ino” or “alu”). In addition, the final components “maxx” and “mix” begin with the letter “m” and end with the letter “x”. The fact that the letter in between the letters “m” and “x” is not the same (“a” and “I”), plus the fact that the earlier marks contain an additional “x” at the end, are not sufficient to rule out any visual or phonetic similarity between the marks in question. In any case, the presence of the double “x” has no effect at all on the phonetic comparison.

53      Therefore, it must be concluded that the marks in question are visually and phonetically similar.

55      The Court notes that the marks in question are conceptually different in some respects. The connotations of the components “maxx” and “mix” lead to a certain differentiation. However, given that the beginnings of the marks are identical in meaning and that the mark as a whole refers either to a metal having a maximising effect (or a gas having a maximising effect, used for a specific metal), or to a mixture of metals (or a mixture of gases, used for a specific metal), the meanings are not so far apart as to render the differences sufficient to nullify the visual and phonetic similarities.

56      Accordingly, it must be held that the marks in question, assessed globally, are similar…’

20      Fourthly, in paragraphs 57 to 63 of the judgment under appeal, the General Court considered the likelihood of confusion. It pointed out in that regard that a global assessment of that likelihood ‘implies some interdependence between the relevant factors, and in particular similarity between the trade marks and similarity between the goods or services designated by them. Accordingly, a [low] degree of similarity between the goods or services may be offset by a [high] degree of similarity between the marks, and vice versa …’

21      With regard, in particular, to the weak distinctiveness of the common components and of the earlier marks as a whole, the General Court recalled, in paragraph 59 of the judgment under appeal, that ‘the finding of a weak distinctive character for the earlier trade mark does not preclude a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion …, it is only one of a number of elements entering into that assessment. 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 …’

22      According to paragraph 60 of the judgment under appeal, ‘the argument of OHIM and of the [intervener] in that regard would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question … Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 …’

23      Finally, in paragraph 63 of the judgment under appeal, the General Court concluded that it ‘follows from all the foregoing considerations that, in the circumstances of the present case, there is a likelihood of confusion between the marks in question. Given that the goods in question are identical (Class 1) or highly similar (Class 4) and given the similarity between the marks in question, the high level of attention of the public concerned is not sufficient to rule out the likelihood that that public, and in particular the hobby welders which form part of it, may believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings’.

 Forms of order sought and procedure before the Court of Justice

24      By its appeal, Messer claims that the Court should:

–        set aside the judgment under appeal, dismiss the action and order Air Products to pay the costs, including those incurred by Messer, and

–        in the alternative, set aside the judgment under appeal, refer the case back to the Court of First Instance and reserve the costs.

25      Air Products contends that the Court should dismiss the appeal and order Messer to pay the costs.

26      OHIM lodged a cross-appeal in which it claims that the Court should set aside the judgment under appeal and order Air Products to pay the costs incurred by OHIM.

 The appeal

27      Under Article 119 of the Rules of Procedure of the Court of Justice, where an 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 and without opening the oral procedure, dismiss the appeal.

28      In support of its appeal, Messer relies on two pleas. The first alleges a substantive error in the determination of the relevant public. The second plea, which is divided into two parts, alleges infringement of Article 8(1)(b) of Regulation No 40/94.

29      In its cross-appeal, OHIM relies on the same pleas as those put forward by Messer in the principal appeal. Those pleas should therefore be treated together.

 The first plea, alleging a substantive error in the determination of the relevant public

 Arguments of the parties

30      By their first pleas, Messer and OHIM claim that the General Court distorted the contested decisions by stating, in paragraph 31 of the judgment under appeal, that the Board of Appeal of OHIM had found that hobby welders, as distinct from professional welders, represented a not insignificant part of the relevant public. That was not the finding of the Board of Appeal of OHIM, which had based its contested decisions on a mere assumption to that effect, since it did not have sufficient elements at its disposal to know whether or not such hobby users represented a significant part of the relevant public. Air Products failed to prove that hobby welders represented a not insignificant part of the relevant public for the goods in question.

31      According to OHIM, the assumption that the relevant public included amateur welders, in addition to professionals, had not harmed Air Products’ interests, having regard to the objective of the Board of Appeal of OHIM, which was to show that even in relation to amateur welders there was no likelihood of confusion between the marks at issue. However, by holding that such a likelihood of confusion existed, particularly in the case of hobby welders, the General Court should have first verified that those consumers actually formed part of the relevant public.

32      For the same reason, OHIM considers that the statement in paragraph 34 of the judgment under appeal that ‘it is common ground that the relevant public consists not only of professional welders but also of hobby welders’ is also erroneous. The General Court did not actually examine the evidence and give sufficient reasons in this respect. If the Court considered the facts at issue to be well known, it infringed Article 74(1) of Regulation No 40/94. The relevant sector in this case is a highly specialised and technical one and, according to the judgment in Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, facts relating to technological fields are not well known.

33      On the other hand, Air Products considers that the alleged distortion did not have any impact on the judgment under appeal since, in paragraph 63 of that judgment, the General Court considered that there was a likelihood of confusion for all the relevant public, including professional users. In addition, Air Products presented evidence showing that hobby welders represented more than a negligible part of the relevant public, which is indeed the conclusion the General Court arrived at after it had examined that evidence. The result of that examination is an assessment of the facts which is not subject to review in an appeal.

 Findings of the Court

34      With regard to the relevant public in the present case, although it is true that the General Court distorted the contested decisions by failing to note that the Board of Appeal of OHIM merely assumed that hobby welders represented a not insignificant part of the relevant public and by thus presenting that assumption as an established fact, such a distortion cannot, having regard to the circumstances of the case, be regarded as constituting an error in law capable of invalidating the judgment under appeal.

35      First of all, there was no need to go into further detail regarding the reasoning of the Board of Appeal of OHIM, as set out in the contested decisions. It is apparent from paragraphs 30 and 33 of the judgment under appeal that the General Court considered not the composition of the relevant public as such, but the degree of attention that the Board of Appeal of OHIM attributed to the persons making up that public. Neither Messer nor OHIM argues that limiting consideration in that way was an error, having regard to the pleas and arguments put forward at first instance.

36      Secondly, it must be pointed out that, in its definitive assessment of the facts, the General Court concluded in paragraph 63 of the judgment under appeal that there was a likelihood of confusion between the marks in question on the part of all the relevant public, given that the goods in question are identical or highly similar and given the similarity of the marks in question, notwithstanding the high level of attention of the relevant public. According to that finding, the likelihood of confusion also exists, therefore, on the part of the professionals in the sector (see, to that effect, Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 99). It follows that, even if it were accepted that the finding of the General Court in paragraphs 31 and 34 of the judgment under appeal concerning amateur welders was not sufficiently justified, that deficiency would not in any event invalidate the judgment under appeal.

37      Furthermore, with regard to the argument put forward by OHIM alleging infringement of Article 74(1) of Regulation No 40/94, it must be pointed out that it does not follow from the Court’s case-law that it is unacceptable from the outset to regard facts concerning technological fields as well known. The finding, by the General Court, as to whether the facts on which the Board of Appeal of OHIM based its decision were well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 53, and order of 3 June 2009 in Case C-394/08 P Zipcar v OHIM, paragraph 42). In paragraph 45 of the judgment in OHIM v Celltech, relied on by OHIM, the Court merely applied that principle to the finding made by the General Court on the fact that the existence and nature of cell technology is not a well-known fact.

38      The first plea must therefore be rejected as clearly unfounded.

 The second plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94

 The first part of the second plea concerning consideration of the similarity of the marks at issue

–       Arguments of the parties

39      In the first part of its second plea, Messer complains, first, that the General Court failed, in paragraph 56 of the judgment under appeal, to determine what degree of similarity existed between the marks at issue, notwithstanding the fact that the degree of similarity is a relevant factor in assessing whether there is a likelihood of confusion between those marks.

40      Secondly, in paragraphs 51 to 56 of the judgment under appeal, the General Court failed to take account of the high level of attention of the average consumer of the goods in question. It follows from the very nature of those goods that their users are professionals who intend to use the goods for hazardous activities. Having regard to the high degree of attention of those users, the differences between the marks at issue will be more easily recognised by them.

41      OHIM also argues that the conclusions reached by the General Court in paragraph 55 of the judgment under appeal concerning the conceptual similarity of the marks at issue are manifestly inconsistent and in direct contradiction with its findings concerning the perception and understanding of the various components of the marks by the relevant public. The findings made by the General Court objectively distort the lexical meaning of the terms ‘mixing’ and ‘maximising’ and, thus, are totally arbitrary and groundless. In addition, the General Court did not provide any legally convincing explanation as to why the established differences between the suffixes ‘maxx’ and ‘mix’ were not capable of diminishing or counteracting the similarities between the signs at issue.

42      In addition, the conclusion, also drawn in paragraph 55 of the judgment under appeal, that the conceptual differences between the marks at issue are not sufficient to nullify the visual and phonetic similarities is contrary to the principle laid down in paragraph 20 of the judgment in Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643 that ‘where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract the visual and phonetic similarities between them’. The General Court accepted that the signs at issue have clear and specific meanings and that those meanings were understood by the relevant public.

43      Finally, OHIM considers that the General Court erred in law when it held, in paragraph 50 of the judgment under appeal, that the only consequence of the weak distinctiveness of the various elements of the marks at issue was that they had to be compared as a whole. The comparison of signs is a qualitative exercise and must take account of the impact of the distinctiveness of the various components of the marks on the perception by the relevant customer and, consequently, on the similarity of the signs. In the present case, the General Court overlooked the impact of the weak distinctive character of the common element of the marks at issue, namely, their prefixes ‘ferro’, ‘ino’ or ‘alu’, on the perception of the signs by a particularly attentive and specialised public.

44      Air Products points out that the General Court considered, in some 20 paragraphs of the judgment under appeal, the question of the similarity of the signs in question. It follows, in particular, from paragraph 52 of that judgment that the Court considered the degree of similarity of the signs to be very high. In addition, it is apparent from paragraph 63 of the judgment that the Court did indeed take account of the high level of attention of the public concerned by the goods in question. In actual fact, in the first part of the second plea, Messer is asking the Court to substitute its own assessment of the facts for that made by the General Court.

45      With regard to the arguments put forward by OHIM, Air Products considers that the General Court did not accept that the signs in question had a clear and specific meaning. In paragraph 55 of the judgment under appeal, the Court merely found that ‘the connotations of the components “maxx” and “mix” lead to a certain differentiation’. Since the assessment of the meaning of the marks at issue must be carried out on the basis of those marks as a whole, the Court was consistent and convincing when it held that the signs, which are identical in all but one letter, are similar.

46      Finally, the General Court never concluded that the weakness of the distinctive character of the various components of the marks at issue meant only that the marks had to be compared as a whole. In particular, in paragraphs 58 to 60 of the judgment under appeal, the Court took account of that aspect as one of the relevant factors in its global assessment of the likelihood of confusion.

–       Findings of the Court

47      According to settled case-law, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant elements (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23; Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25; Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35; and Case C-498/07 P Aceites del Sur-Coosur v Koipe and OHIM [2009] ECR I-0000, paragraph 60).

48      The Court has also held on a number of occasions that, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (Lloyd Schuhfabrik Meyer, paragraph 27; Ruiz-Picasso and Others v OHIM, paragraph 37; OHIM v Shaker, paragraph 36; and orders of 27 April 2006 in Case C-235/06 P L’Oréal v OHIM, paragraph 40, and of 3 June 2009 in Case C-394/08 P Zipcar v OHIM, paragraph 59).

49      However, it does not follow from that case-law that determination of the degree of similarity must be carried out on the basis of figures or specified percentages (see, to that effect, judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM and Cornu, paragraphs 47 to 49).

50      In the present case, the General Court, in paragraphs 53, 55 and 56 of the judgment under appeal, compared the signs at issue in order to determine whether they are similar from the visual, phonetic and conceptual point of view and, also, globally. Therefore, in the factual assessment consisting in determining whether the marks at issue are similar (see, to that effect, orders of 1 June 2006 in Case C-324/05 P Plus Warenhandelsgesellschaft v OHIM, paragraphs 26 and 27; of 27 March 2007 in Case C-312/05 P TeleTech Holdings v OHIM, paragraph 66; and of 11 June 2009 in Case C-300/08 P Leche Celta v OHIM, paragraphs 33 and 34), it fulfilled the legal requirements flowing from the case-law in regard to that assessment.

51      It should be noted that, according to the case-law of the Court, the level of attention of the average consumer of the goods in question must be taken into account for the purpose of a global assessment of the likelihood of confusion (see Lloyd Schuhfabrik Meyer, paragraphs 25 and 26; Ruiz-Picasso and Others v OHIM, paragraphs 36, 38 to 40 and 48; and Aceites del Sur-Coosur v Koipe, paragraph 74). It is apparent from paragraph 63 of the judgment under appeal that the General Court proceeded in that manner in the present case.

52      Consequently, the two complaints raised by Messer regarding consideration of the similarity of the marks at issue by the General Court in the judgment under appeal are clearly unfounded.

53      With regard to OHIM’s complaint concerning the conclusions reached by the General Court in paragraph 55 of the judgment under appeal, the Court finds that the arguments put forward in that regard in fact seek to challenge the assessment of the facts made by the General Court.

54      However, pursuant to Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on points of law only. The General Court 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 they distort the facts or evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal. If the appeal does not raise a point of law, it must be dismissed as clearly inadmissible (see, in particular, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 26, and order of 10 July 2009 in Case C-416/08 P Apple Computer v OHIM, paragraph 22).

55      Since OHIM has not pleaded any distortion of the facts or evidence on the part of the General Court, OHIM’s first complaint must be rejected as clearly inadmissible.

56      The second complaint raised by OHIM, which is based on the Court’s statement in paragraph 20 of Ruiz-Picasso and Others v OHIM, relies on an interpretation of the judgment under appeal which is manifestly erroneous.

57      It is true that, in paragraph 20 of Ruiz-Picasso and Others v OHIM, the Court held that the conceptual differences between two signs may counteract the visual and phonetic similarities between them, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public (see also Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 35). Consideration of that counteracting effect constitutes a factual assessment which, in principle, it is not for the Court to review in an appeal (Ruiz-Picasso and Others v OHIM, paragraph 23, and Mülhens v OHIM, paragraph 41).

58      However, as is apparent from paragraph 55 of the judgment under appeal, contrary to OHIM’s argument, the General Court did not accept that one of the marks at issue has a clear and specific meaning.

59      Consequently, this complaint is clearly unfounded.

60      Finally, the third complaint raised by OHIM, alleging that the General Court erred in law when it considered, in paragraph 50 of the judgment under appeal, that the only consequence of the weak distinctive character of the constituent elements of the signs at issue was that the marks in question had to be compared as a whole, is also based on a misreading of the judgment under appeal and, consequently, must also be rejected as clearly unfounded.

61      In paragraph 50, the General Court merely found that, after examining the prefixes and suffixes separately and finding that those two elements were ‘inherently weak components’, it was necessary to compare the marks at issue as a whole in order to determine their similarity. In paragraphs 59 to 63 of the judgment under appeal, the Court took account of the weak distinctive character of the common elements and of the earlier marks as a whole as one of the factors which was relevant to its global assessment of the likelihood of confusion.

62      It follows from the foregoing that the first part of the second plea must be rejected as clearly inadmissible in part and clearly unfounded in part.

 The second part of the second plea concerning the global assessment of the likelihood of confusion

–       Arguments of the parties

63      In the second part of the second plea, Messer complains that the General Court infringed Article 8(1)(b) of Regulation No 40/94 by failing to take account of the weak distinctive character of the earlier marks – a joining in one word of two inherently weak components, each of them descriptive, or at least evocative – when assessing the likelihood of confusion. According to the Court’s case-law, the distinctiveness of the earlier mark plays a decisive role in the global assessment of the likelihood of confusion.

64      In addition, Messer claims that there is a risk in giving broader protection to a mark consisting of two descriptive components than to a mark including at least one distinctive component. In that regard, it cites the SABEL judgment (paragraph 23) and deduces from it that marks consisting of two descriptive components, thus two inherently weak components, must be compared as a whole, whereas with respect to marks with one descriptive and one distinctive component, there is no likelihood of confusion if the distinctive component of the mark applied for differs to some extent from that of the earlier mark.

65      Finally, where the earlier marks are based on descriptive components which need to be freely available, a finding that there was a likelihood of confusion would be tantamount to the protection of the descriptive element itself as a mark.

66      According to Air Products it follows, in particular, from paragraphs 59 and 60 of the judgment under appeal, that the General Court did not fail to take account of the weak distinctive character of the earlier marks when it made a global assessment of the likelihood of confusion. That aspect is only one of several factors to be considered. Moreover, all marks consisting of two or more elements, be they descriptive or distinctive, must be compared as a whole. Finally, in the present case, the General Court did not base the likelihood of confusion on the fact that the prefixes are identical but on the fact that the marks are also identical in two of the three letters which follow those prefixes.

–       Findings of the Court

67      First of all, it should be pointed out that, contrary to Messer’s argument, the General Court, in paragraphs 59 to 63 of the judgment under appeal, took account of the weak distinctive character of the common elements ‘ferro’, ‘ino’ and ‘alu’ and of the earlier trade marks as a whole, as one of the relevant factors in its global assessment of the likelihood of confusion.

68      In addition, it cannot be deduced from the Court’s case-law that the weak distinctive character of the earlier mark precludes, in principle, all likelihood of confusion, even if the marks at issue, assessed as a whole, are similar and the goods concerned are identical.

69      Whether there is a 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 (SABEL, paragraph 22; Lloyd Schuhfabrik Meyer, paragraph 18; and judgment of 7 May 2009 in Case C-398/07 P Waterford Wedgwood v Assembled Investments (Proprietary)andOHIM, paragraph 30).

70      It is true that, according to settled case-law, the more distinctive the earlier mark, the greater will be the likelihood of confusion (see Lloyd Schuhfabrik Meyer, paragraph 20, and Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM, paragraph 32). The Court has thus concluded that there may be a likelihood of confusion, notwithstanding a low degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive (see Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM, paragraph 33 and case-law cited). However, that possibility cannot preclude a likelihood of confusion where the distinctive character of the earlier mark is weak.

71      Finally, Messer’s argument does not take account of the principle, recalled in paragraph 47 of the present order, that the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them. In particular, the Court has held that assessment of the similarity between two marks cannot mean merely taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks in question as a whole (see Case C-120/04 Medion [2005] ECR I-8551, paragraph 29; OHIM v Shaker, paragraph 41; and Aceites del Sur-Coosur v Koipe and OHIM, paragraph 61).

72      Admittedly, the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components, so that if all the other components of the mark are negligible, the assessment of the similarity can be carried out solely on the basis of the dominant element (see OHIM v Shaker, paragraphs 41 and 42; judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, paragraphs 42 and 43; and Aceites del Sur-Coosur v Koipe and OHIM, paragraph 62). However, it cannot be deduced from that case-law concerning exceptional situations that only the distinctive element of a mark composed of a descriptive element and a distinctive element is decisive when assessing the likelihood of confusion.

73      Given the need, recalled above, to carry out a global assessment of marks composed of two or more elements, the finding that there is a likelihood of confusion leads solely to the protection of a certain combination of descriptive elements assessed in the specific case, without a descriptive element as such being protected.

74      Consequently, the second part of the second plea must be rejected as clearly unfounded.

75      It follows from all the foregoing considerations that the principal appeal and the cross-appeal must be dismissed in their entirety pursuant to Article 119 of the Rules of Procedure.

 Costs

76      Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since Air Products sought costs only against Messer and the latter has been unsuccessful, Messer must be ordered to bear its own costs and to pay the costs incurred by Air Products.

77      Since OHIM has also been unsuccessful, it must be ordered to bear its own costs.

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

1.      The principal appeal and the cross-appeal are dismissed.

2.      Messer Group GmbH shall bear its own costs and pay the costs incurred by Air Products and Chemicals, Inc.

3.      The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) shall bear its own costs.

[Signatures]

* Language of the case: English.



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