Nike International v OHMI - Intermar Simanto Nahmias (JUMPMAN) (Community trade mark) [2012] EUECJ T-233/10 (25 May 2012)

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(Community trade mark - Opposition proceedings - Application for Community word mark JUMPMAN - Earlier national word mark JUMP - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009)

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

1 On 12 September 2007, the applicant, Nike International 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 sign JUMPMAN.

3 The goods in respect of which registration was applied for are in Class 25 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: 'Clothing, footwear, headgear; including apparel, namely, pants, shorts, shirts, t-shirts, pullovers, sweat shirts, sweat pants, underwear, sports bras, dresses, skirts, sweaters, jackets, socks, caps, hats, visors, sweatbands, gloves, belts, hosiery, arm bands, coats, vests, jerseys, wind-resistant jackets'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 8/2009 of 18 February 2008.

5 On 14 May 2008, the intervener, Intermar Simanto Nahmias, filed a notice of opposition to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).

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 30 April 2009, the Opposition Division upheld the opposition on the basis of the earlier Spanish word mark No 2657489 ('the earlier mark').

9 On 3 July 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division's decision.

10 By decision of 11 March 2010 ('the contested decision'), the First Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay the costs. The Board of Appeal based its decision, as the Opposition Division did, on the earlier mark. The relevant public is the general public in Spain (paragraph 18 of the contested decision). The goods in Class 25 covered by the signs at issue are identical, since the contested goods are included in the broad categories covered by the earlier mark (paragraph 19 of the contested decision). The earlier mark has distinctive character (paragraphs 20 to 22 of the contested decision). The signs at issue are visually and phonetically similar (paragraphs 23 to 25 of the contested decision). A conceptual comparison is not relevant in the present case since the signs at issue are composed of 'fanciful terms' and it is 'unlikely that the average Spanish consumer will understand the meaning of the [English] word "jump"' (paragraph 26 of the contested decision). However, the Board of Appeal also stated that 'if part of the public understands the meaning of the word "jump", then the marks [at issue] have a conceptual similarity to the extent that they share this term' (paragraph 27 of the contested decision). The Board of Appeal therefore found that there is a likelihood of confusion between the signs at issue on the part of the relevant public (paragraph 28 of the contested decision).

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

16 The Court points out that 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 an 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. In addition, under Article 8(2)(a) of Regulation No 207/2009, 'earlier trade marks' means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

17 It is settled case-law that 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 within the meaning of Article 8(1)(b) of Regulation No 207/2009. The likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services concerned and taking into account 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 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and case-law cited).

19 According to settled case-law, in the context of the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 (see Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

20 In the present case, the Board of Appeal held that, since the goods in Class 25 are destined for the general public and the earlier mark is a Spanish mark, the relevant public is the general public in Spain (paragraph 18 of the contested decision).

21 The applicant accepts the definition of the relevant public set out in the contested decision but asserts that that public's level of attention is higher since the garments covered by the mark applied for are 'intimate garments'.

22 In that regard, it must be noted that the goods covered by the signs at issue, that is to say clothing, footwear and headgear in Class 25, are everyday consumer goods for which the public is the average consumer. For such goods, which are not aimed at a specialist public, the consumer's level of attention is therefore average. Contrary to the applicant's assertions, since the goods covered by the mark applied for, as well as the goods covered by the earlier mark, are included in the broad categories under Class 25, and are not only intimate garments, which are merely referred to by way of example in the list which begins with 'including', the applicant's argument that the relevant public's level of attention is higher must be rejected.

23 It is settled case-law that, in order to assess the similarity between the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).

24 In the contested decision, the Board of Appeal held that the goods covered by the signs at issue are identical (paragraph 19 of the contested decision). The Board of Appeal's assessment in that respect is not contested by the applicant. The categories of goods covered by the signs at issue are identical and the Board of Appeal rightly held that the goods covered by the signs are identical. Moreover, since there is no evidence before the Court which casts doubt on that assessment, it should be upheld.

25 The global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, 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).

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). In that regard, the visual, phonetic and conceptual aspects are relevant (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25).

27 The 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, to that effect, OHIM v Shaker, cited above in paragraph 25, paragraph 41 and the case-law cited).

- The distinctive character of the word 'jump' which constitutes the earlier mark

28 In the contested decision, the Board of Appeal held that the word 'jump' has distinctive character (paragraph 20 of the contested decision).

29 The applicant contends, although without an explanation, that 'the initially average distinctiveness of [the] word ["jump"] as a trademark ... has become diluted'.

30 That argument is not convincing. On the contrary, it must be held, as the Board of Appeal did, that the word 'jump', which is not part of the basic vocabulary of the general public in Spain and which will not be understood as being the English word meaning 'jump' or 'to jump', will be perceived as a fanciful term. It follows, therefore, that the earlier mark for goods in Class 25 has average distinctive character.

31 In that regard, it must be pointed out that a sign may, as in the present case and contrary to the applicant's claims, have inherent distinctive character, irrespective of distinctiveness acquired through use, or even a reputation or renown.

32 Visually, the Board of Appeal observed that, although the mark applied for is longer, with seven letters, than the earlier mark, which has four letters, those four common letters, which form the word 'jump', are identical (paragraph 24 of the contested decision). Given that the beginning of a word sign is more important, that identity at the beginning of the mark applied for renders the signs at issue similar (paragraphs 23 and 24 of the contested decision).

33 The applicant, whilst recognising the identity of the word 'jump' in the signs at issue, which it claims is 'weak', denies that there is any visual similarity between those signs due to the fact that the mark applied for also contains the word 'man'. The ending 'man' of the mark applied for and the different number of letters of the signs at issue leads to the conclusion that they give a different visual overall impression (paragraph 37 of the contested decision). In that respect, the applicant refers to paragraphs 39 and 40 of the judgment in Case T-344/03 Saiwa v OHIM - Barilla Alimentare (SELEZIONE ORO Barilla) [2006] ECR II-1097.

34 In that regard, it must be observed that the signs at issue share the word 'jump', which constitutes the earlier mark and which is at the beginning of the mark applied for which also contains the word 'man'. The signs at issue are therefore identical in part, which the applicant accepts. As is apparent from the case-law, consumers in general pay more attention to the first part of a mark, taking account of the fact that they read from left to right and that the beginning of a word sign is on the left (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). Despite the difference in length, the signs at issue are, therefore, similar overall as a result of the common word 'jump' which constitutes the earlier mark and which is the first component of the mark applied for.

35 SELEZIONE ORO Barilla, cited above in paragraph 33, does not call into question the visual comparison of the signs at issue, since the case that gave rise to that judgment is quite different to this case and, therefore, such reasoning is irrelevant in the present case. First of all, it did not concern only word signs as the case in point does. The mark applied for in SELEZIONE ORO Barilla was a composite mark, composed of word and figurative elements, in particular the words 'selezione oro' and 'barilla', as well as a graphic representation of those word elements, including the addition of other graphic elements. On the other hand, the earlier marks relied on were the word marks ORO and ORO SAIWA. Also, the common word 'oro' was considered to have a descriptive function. Consequently, even though the Court held that the dominant element of the earlier mark ORO SAIWA was the word 'saiwa', from which it could, indeed, be inferred that the word 'oro', which makes up the beginning of that mark, was not considered to be the dominant element of the mark ORO SAIWA, the applicant's arguments cannot, on account of the numerous differences which have been noted and which preclude application of the Court's reasoning in that case to the case in point, be accepted.

36 Consequently, the Board of Appeal correctly held the signs at issue to be visually similar.

37 In the contested decision, the Board of Appeal held that the signs at issue are similar, as a result of the common element 'jump' which constitutes the earlier mark and, and is also at the beginning of the mark applied for.

38 The applicant accepts the phonetic identity of the signs at issue in respect of the word 'jump', but nevertheless contests the phonetic similarity of those signs when considered as a whole.

39 In that regard, it must be held that the signs at issue, which have the word 'jump' in common, with only the addition of the syllable 'man' at the end of the mark applied for, are, taken as a whole, phonetically similar and that is especially so as far as concerns the Spanish pronunciation thereof, which must be presumed in respect of the average Spanish consumer, rather than an English pronunciation, even if a section of the relevant public know some English. The Board of Appeal thus correctly found the signs at issue to be phonetically similar.

40 According to the Board of Appeal, the signs at issue will be perceived as fanciful terms since the average Spanish consumer does not understand the meaning of the English word 'jump' (paragraph 26 of the contested decision). A conceptual comparison is not therefore possible, on account of there being no meaning or concept conveyed by the signs at issue. The Board of Appeal added that, if a section of the relevant public understood the meaning of the word 'jump', then the signs at issue would be conceptually similar, to the extent that they both contain that word (paragraph 27 of the contested decision).

41 The applicant contests the Board of Appeal's assessment concerning the conceptual comparison of the signs at issue. On the one hand, the applicant concedes that it is 'likely that the relevant public does not attach a direct and unequivocal meaning to the term 'jump' and therefore a conceptual comparison may not be established'. On the other, the applicant claims that the connotation that the word 'jump' has for the average Spanish consumer - 'above all in connection with "footwear" - is that associated mentally with the idea of a sudden vertical movement, a propelling from the ground, etc.'.

42 As pointed out in paragraph 30 with regard to the distinctive character of the word 'jump', it must be held that that word is not understood by the general public in Spain and that it therefore has no meaning for them. Therefore, the earlier mark, consisting entirely of that word, does not convey any concept to the relevant public. The mark applied for is principally made up of the same word 'jump' - which has no meaning for the relevant public - but includes the addition of the word 'man' - which does not give it any meaning either. Given that the signs at issue have no conceptual content, a conceptual comparison is not possible. The Board of Appeal was therefore correct to conclude to that effect.

43 For the sake of completeness, it is necessary to confirm the Board of Appeal's finding, in the contested decision, that, if one section of the public understands the word 'jump', the signs at issue would be conceptually similar, in so far as they both contain that word (paragraph 27 of the contested decision).

44 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).

45 It must be borne in mind that, according to the case-law, the more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 20 and the case-law cited). Conversely, it follows that, where a mark has a low degree of distinctive character, the likelihood of confusion is less and the earlier mark will enjoy a more restricted protection.

46 In the global assessment of the likelihood of confusion, it must be borne in mind that the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should, however, be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on an imperfect recollection of them. Account should also be taken of the fact that the average consumer's level of attention is likely to vary according to the category of goods or services in question (Lloyd Schuhfabrik Meyer, cited above in paragraph 45, paragraph 26).

47 Next, it must be borne in mind that, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market (see, to that effect, Case T-129/01 Alejandro v OHIM - Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 57). The extent of the similarity or difference between the signs at issue may therefore depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services are marketed (judgment of 13 December 2007 in Case T-242/06 Cabrera Sanchez v OHIM - Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 79).

48 In the contested decision, the Board of Appeal held that, given the identity of the goods covered by the signs at issue as well as their visual and phonetic similarity, there is a likelihood of confusion (paragraph 28 of the contested decision).

49 The applicant claims that, despite some similarities which do not however outweigh the dissimilarities, there is no likelihood of confusion between the signs at issue given the weak distinctive character of the word common to both signs and the high level of attention of the relevant public in respect of 'intimate garments'.

50 It must be held that the Board of Appeal correctly found that there is a likelihood of confusion, on account of the distinctive character of the word 'jump', the identity of the goods concerned and the visual and phonetic similarities between the signs at issue.

51 As held in paragraph 30 above, the English word 'jump' has average distinctive character for goods in Class 25 for the relevant public, that is to say the general public in Spain who have an average level of attention for those goods.

52 In the present case, it must be noted that the word which constitutes the mark applied for is made up of an identical element to that in the earlier mark, 'jump', to which the element 'man' is added.

53 However, the most distinctive element of the mark applied for is the word 'jump', which constitutes a distinctive term for the goods in Class 25 for the general public in Spain. The word 'man' is part of basic English vocabulary, possibly understood as such even by the average Spanish consumer and referring, for goods such as clothing, footwear and headgear, to goods for men and to be used by men. The addition of the word 'man' could therefore, possibly, be understood as an indication of a specific line of goods for men. Indeed, the European Union judicature has, on several occasions, confirmed that, in the clothing and footwear sector, it is not uncommon for the same mark to be configured in various ways according to the products it designates. In that sector, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another, in particular female and male clothing (Case T-104/01 Oberhauser v OHIM - Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 49, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM - Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 51).

54 Furthermore, it must be borne in mind that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T-133/05 Meric v OHIM - Arbora & Ausonia (PAM-PIM'S BABY-PROP) [2006] ECR II-2737, paragraph 51). As noted in paragraphs 32 to 37 above, the element 'jump', which overlaps with the earlier mark, is at the beginning of the mark applied for.

55 It follows from all of the foregoing that the differences between the signs at issue as a result of the addition of the word 'man' in the mark applied for are not such as to outweigh the significant similarities between the signs at issue resulting from the presence of the earlier mark at the beginning of the mark applied for and from the independent distinctive character displayed there. Furthermore, since the goods covered by the signs at issue are identical, it must be held that there is a risk that the relevant public might believe that the goods come from the same undertaking or, at least, from economically-linked undertakings.

56 Therefore, the Board of Appeal was correct to hold that there was a likelihood of confusion between the signs at issue. Since the single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009 is unfounded, the present action for the annulment of the contested decision must be dismissed.

57 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 form of order sought by OHIM and the intervener.

- The distinctive character of the word 'jump' which constitutes the earlier mark

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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 - Intermar Simanto Nahmias (JUMPMAN) (Community trade mark) [2012] EUECJ T-233/10 (25 May 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T23310.html Cite as: [2012] EUECJ T-233/10

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