JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
19 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark SWATCHBALL — Community word and figurative marks and international word and figurative marks SWATCH and swatch — Relative ground for refusal — Damage to reputation — Article 8(5) of Regulation (EC) No 207/2009)
In Case T‑71/14,
Swatch AG, established in Biel (Switzerland), represented by P. González-Bueno Catalán de Ocón, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Panavision Europe Ltd,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 November 2013 (Case R 470/2012-2), relating to opposition proceedings between Swatch AG and Panavision Europe Ltd,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 30 January 2014,
having regard to the response lodged at the Court Registry on 7 May 2014,
further to the hearing on 10 February 2015,
gives the following
Judgment
Background to the dispute
1 On 24 December 2007, Panavision Europe Ltd filed an application for registration of a Community trade mark at 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 mark in respect of which registration was sought is the word mark SWATCHBALL.
3 The goods and services in respect of which registration was sought are in Classes 9, 35, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Electronic publications and computer software relating to the creation and selection of lighting, optical and other visual effects in the cinematographic, television, video, and other visual and performing arts; electronic publications and computer software for selection of, or otherwise relating to optical, lighting and photographic equipment, filters, filter holders, lens hoods, bellows, diffusers, shades, gobos, reflectors and other light or image-modifying equipment, and parts and fittings for such equipment; not including computer game software or computer game programs or interactive multimedia computer game programs; none of the aforesaid goods relating to timekeeping’;
– Class 35: ‘Retail services in connection with goods for use in the production of films, television programmes, videos, and in other visual and performing arts; retail services in connection with goods for the creation and selection of lighting, optical or other visual effects in the cinematographic, television, video, and other visual and performing arts; retail services in connection with optical, lighting and photographic equipment, filters, filter holders, lens hoods, bellows, diffusers, shades, gobos, reflectors and other light or image-modifying equipment, and parts and fittings for such equipment; presentation of any of the aforesaid goods or services in communications media for retail purposes; none of the aforesaid services relating to timekeeping, computer game software, computer game programs or interactive multimedia computer game programs’;
– Class 41: ‘Electronic on-line publications relating to the creation and selection of lighting, optical and other visual effects in the cinematographic, television, video, and other visual and performing arts; electronic on-line publications for selection of, or otherwise relating to optical, lighting and photographic equipment, filters, filter holders, lens hoods, bellows, diffusers, shades, gobos, reflectors and other light or image-modifying equipment, and parts and fittings for such equipment; none of the aforesaid services relating to timekeeping, computer game software, computer game programs or interactive multimedia computer game programs’;
– Class 42: ‘Consultancy services relating to computer software relating to the creation and selection of lighting, optical or other visual effects in the cinematographic, television, video and other visual and performing arts; consultancy services relating to the creation and selection of lighting, optical or other visual effects in the cinematographic, television, video, and other visual and performing arts; consultancy services relating to optical, lighting and photographic equipment, filters, filter holders, lens hoods, bellows, diffusers, shades, gobos, reflectors and other light or image-modifying equipment, and parts and fittings for such equipment; none of the aforesaid services relating to timekeeping, computer game software, computer game programs or interactive multimedia computer game programs’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2008 of 16 June 2008.
5 On 15 September 2008, the applicant, Swatch AG, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– the international word mark SWATCH, registered on 25 June 1982 under No 469 696, covering, inter alia, goods in Class 14 corresponding to the following description: ‘movements for clocks and watches and parts thereof’;
– the international figurative mark, reproduced below, registered on 31 January 1994 under No 614 932, covering, inter alia, goods and services in Classes 1 to 42, with the opposition being limited to goods in Class 14:
– the international figurative mark, reproduced below, registered on 9 September 1986 under No 506 123, covering, inter alia, goods in Class 14 corresponding to the following description: ‘precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery); jewellery, precious stones; clocks and watches and other chronometric instruments’:
– the Community figurative mark, reproduced below, registered on 12 November 1998 under No 226 316, covering, inter alia, goods in Class 14 corresponding to the following description: ‘precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments’:
– the Community word mark SWATCH, registered on 2 October 1998 under No 226 019, covering, inter alia, goods in Class 14 and corresponding to the following description: ‘precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
8 On 13 January 2012, the Opposition Division rejected the opposition in its entirety.
9 On 9 March 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 11 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. With regard to the alleged infringement of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that there is no likelihood of confusion as the goods and services at issue are dissimilar. With regard to the alleged infringement of Article 8(5) of Regulation No 207/2009, first, the Board of Appeal acknowledged that the earlier marks have a reputation in the French, German and Spanish markets with respect to goods in Class 14. Secondly, the Board of Appeal held that, in view of the fact that the goods and services at issue are so different, the mark applied for is unlikely to bring the earlier marks to the mind of the relevant public and that it is improbable that that public would think of one of those goods when confronted with the other mark. Thirdly, the Board of Appeal found that the applicant had failed to prove that use of the mark applied for in relation to the goods and services covered by it could cause a dilution of the earlier marks through the dispersion of their identity and their hold upon the public mind or take unfair advantage of the reputation or distinctive character of the earlier marks.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
14 The applicant submits that the Board of Appeal erred in its analysis based on Article 8(5) of Regulation No 207/2009 so far as concerns, first, the determination that the relevant public for the goods and services in respect of which registration of the sign has been requested is unlikely to make a link with the earlier marks and, secondly, the finding that the final condition provided for in Article 8(5) of Regulation No 207/2009 is not satisfied in the present case. In particular, the applicant points out that, despite the Board of Appeal expressly acknowledging that the earlier marks have a reputation, it failed to carry out a comparison of the signs at issue, which are clearly similar given that the mark applied for contains the earlier marks in their entirety. Furthermore, even though the public for the goods and services covered by the mark applied for is specialised, the possibility of that public being aware of the applicant’s goods cannot be ruled out. In addition, the applicant claims that that public may establish a link with the earlier marks on the basis that, first, the goods and services covered by the marks at issue are not of a very different nature considering that they may be sold within close proximity of each other in large supermarkets, and, secondly, goods used for editing films may be used by a wider public than the highly specialised public regarded as relevant by the Board of Appeal. Lastly, the applicant maintains that cinematographic editing software and image-modifying equipment always include a timekeeping mechanism and a consumer of those goods could therefore believe that the applicant has expanded its business into that niche market. Consequently, the applicant submits, the mark applied for is a parasitic mark and takes unfair advantage of the distinctive character of the earlier marks to the extent that it benefits from their attractiveness and could be detrimental to their distinctive character given that they have an exclusive character which consumers associate with a single source of origin.
15 OHIM contests the arguments put forward by the applicant.
16 First of all, it should be noted that Article 8(5) of Regulation No 207/2009 provides that ‘… upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
17 It is clear from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 25 May 2005 in Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS), T‑67/04, ECR, EU:T:2005:179, paragraph 30).
18 In addition, it should be pointed out that the risks referred to in Article 8(5) of Regulation No 207/2009, where they materialise, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see order of 30 April 2009 in Japan Tobacco v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 25 and the case-law cited).
19 With regard to the link which the public might establish between the marks at issue, it is clear from the case-law that the more similar the marks at issue are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. Nevertheless, the mere fact that the marks at issue are similar is not sufficient for it to be concluded that there is a link between those marks (judgment of 25 January 2012 in Viaguara v OHIM — Pfizer (VIAGUARA), T‑332/10, EU:T:2012:26, paragraph 44).
20 The existence of such a link must be subject to an overall assessment, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public (judgment of 12 March 2009 in Antartica v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 45, and order in Japan Tobacco v OHIM, cited in paragraph 18 above, EU:C:2009:282, paragraph 26; see also, by analogy, judgment of 27 November 2008 in Intel Corporation, C‑252/07, ECR, EU:C:2008:655, paragraph 42).
21 While, in the absence of such a link in the mind of the public, use of the later mark is unlikely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment in Antartica v OHIM, cited in paragraph 20 above, EU:C:2009:146, paragraph 44; see also, by analogy, judgment in Intel Corporation, cited in paragraph 20 above, EU:C:2008:655, paragraph 31), the existence of such a link is not sufficient, in itself, for it to be concluded that there may be one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision (order in Japan Tobacco v OHIM, cited in paragraph 18 above, EU:C:2009:282, paragraph 27).
22 It is in the light of those considerations that the lawfulness of the contested decision must be examined.
23 As a preliminary point, it should be noted that the first two conditions for the application of Article 8(5) of Regulation No 207/2009, referred to in paragraph 17 above, are satisfied in the present case.
24 First, the similarity between the marks at issue derives from the fact that the mark applied for includes the entire verbal element of the earlier marks and from the fact that the marks at issue begin with the same six letters, although the mark applied for contains four letters more than the verbal element of the earlier marks as a result of the addition of the word element ‘ball’ at the end of the mark applied for. The signs at issue may therefore be considered visually similar to an average degree and phonetically similar to a low or average degree since the last syllable alone is different. Conceptually, the signs at issue may be considered similar since they both contain the word ‘swatch’, which may be understood to have the same meaning in each of those signs, at least by the English-speaking public. Overall, it may be concluded that the signs at issue are similar to an average degree.
25 Secondly, it must be noted that the earlier marks have a particularly strong reputation, a fact which is not disputed by the parties (paragraph 32 of the contested decision).
26 The assessment must therefore focus on the third condition laid down by Article 8(5) of Regulation No 207/2009. That condition requires that there should be a risk that the earlier mark with a reputation will be adversely affected by the risk of one of the types of injury referred to in that provision as a result of the relevant public establishing a link between the marks at issue.
27 Consequently, it is necessary, first of all, to examine whether there is a possibility that the relevant public will establish such a link and subsequently, only if such a link is found to exist, to ascertain whether the applicant has demonstrated that one of the risks referred to in Article 8(5) of Regulation No 207/2009 is present in this case.
28 It must be emphasised, in accordance with the case-law cited in paragraphs 19 to 21 above, that, in the present case, the fact that the similarity between the signs at issue is indisputable (as follows from paragraph 24 above) is not sufficient to establish that there is a link between those marks. The assessment as to whether such a link exists must take into account all factors relevant to the circumstances of the case, including those set out in paragraph 20 above.
29 In that regard, it should be noted that, in the present case, the factors which weigh in favour of a finding that a link exists between the marks at issue are: (i) the similarity of the marks at issue, and (ii) the strength of the reputation of the earlier marks, which may be regarded as high.
30 By contrast, as the Board of Appeal correctly points out, the following factors weigh against a finding that such a link exists: (i) the differing nature of the goods and services covered by the marks at issue, given that they have different distribution channels, that they are neither interchangeable nor in competition with each other, that they serve very different purposes and that they do not belong to adjacent market segments, all of which results in a very limited degree of closeness between those goods and between those services; and (ii) the existence of two separate relevant publics.
31 With regard to the latter, it must be held, as was found by the Board of Appeal, that, far from being addressed to the average consumer, the goods and services marketed by Panavision Europe target a specialist public, whereas the goods covered by the earlier marks target the general public.
32 Overall, while it is indeed possible that the specialist public for the goods and services covered by the mark applied for may also be aware of the earlier marks, it can nevertheless be concluded that the Board of Appeal did not err in its assessment in finding that the relevant public will not establish a link between the marks at issue, since it is highly unlikely that that public will encounter the goods covered by those marks in the same shops or think of the goods covered by one mark when presented with the goods covered by the other mark.
33 In circumstances such as those in the present case, the view may be taken that, notwithstanding the undeniable reputation of the earlier marks and the fact that there is some similarity between the marks at issue, the absence of similarity between the goods and services in question and the differences between their relevant publics (with the mark applied for having a specialised public that pays a higher degree of attention and focuses on the characteristics of the goods and services at issue, which have nothing in common with the goods covered by the earlier marks) are such that they are liable to exclude the existence of any link between the marks at issue.
34 That conclusion cannot be called into question by the applicant’s argument that the relevant public is liable to establish a link between the marks at issue because software and other equipment used for film editing may include a timekeeping mechanism. That argument is inoperative inasmuch as the application for registration at issue explicitly excluded goods and services relating to timekeeping.
35 As it is clear from the case-law cited at paragraph 21 above that the existence of such a link is a necessary, but not sufficient, requirement for the purpose of satisfying the third condition laid down by Article 8(5) of Regulation No 207/2009, there is, in the absence of such a link, no need to examine whether one of the three types of risk referred to in Article 8(5) of Regulation No 207/2009 is present.
36 It follows from the foregoing that the Board of Appeal acted correctly in law in finding that the third condition laid down by Article 8(5) of Regulation No 207/2009 was not satisfied in the present case since there is no link between the marks at issue.
37 Accordingly, the applicant’s sole plea in law alleging infringement of Article 8(5) of Regulation No 207/2009 must be rejected and, as a consequence, the action must be dismissed in its entirety.
Costs
38 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Swatch AG to pay the costs.
Delivered in open court in Luxembourg on 19 May 2015.
[Signatures]