Oracle America v OHMI - Aava Mobile (AAVA CORE) (Judgment) [2014] EUECJ T-618/13 (11 December 2014)

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(Community trade mark — Opposition proceedings — Application for Community word mark AAVA CORE — Earlier Community word mark JAVA and well-known mark within the meaning of Article 6a of the Paris Convention JAVA — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — No likelihood of association — Link between the signs — No similarity of the signs — Article 8(5) of Regulation No 207/2009)

Oracle America, Inc., established in Wilmington, Delaware (United States), represented by T. Heydn, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 September 2013 (Case R 1369/2012-2), relating to opposition proceedings between Oracle America, Inc. and Aava Mobile Oy,

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

having regard to the application lodged at the Registry of the General Court on 25 November 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 4 February 2011, Aava Mobile Oy filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in Classes 9, 38 and 42 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, and correspond, for each of those classes, to the following description:

– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; in particular design and development of mobile devices, computer software to be used in mobile devices and mobile device product platforms’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 46/2011, of 8 March 2011.

5 On 7 June 2011, the applicant, Oracle America, Inc., 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 41 of Regulation No 207/2009.

– first, on the Community word mark JAVA, registered on 20 May 2009, under No 6551626, covering goods and services within inter alia Classes 9, 38 and 42 of the Nice Agreement and corresponding, for each of those classes, to the following description:

– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer hardware; computer peripherals; computer software; computer operating systems; hand-held computers; mainframe-class computers; computer workstations; video displays; keyboards; monitors; servers; disc drives; computer storage devices; integrated circuits; interface boards; modems; mouse pointing devices; mouse pads; peripherals; printers and printer peripherals; printed circuit boards containing electrical components and sockets; processors and memories; blank magnetic data carriers; audio cassette recorders; audio cassette players; compact disc players; compact disc recorders; semi-conductor elements; silicon slices; electronic notice boards; blank computer recording discs; calculators; computer chips; computer disk drives; computer discs; data processors; digital cameras; digital video recorders; electronic encryption units; facsimile machines; global positioning system transmitters and receivers; internet television hardware; microprocessors; microcomputers; minicomputers; motion picture cameras; optical scanners; oscilloscopes; pedometers; photocopying machines; personal digital assistants; photographic cameras; photographic projectors; slide projectors; radio pagers; radios; scanners; smart cards; smart card readers; telephones; telephone answering machines; television sets; television set top boxes; thermostats; video cameras; video cassette recorders; video monitors; video tape recorders; voice messaging systems; voting machines; web telephones; wireless data communications hardware; computer programs for testing compatibility of computer programs; computer programs for use in computer networking; computer programs for use in computer emulation; computer programs for use in electronic mail; computer programs for creating graphical interfaces; computer programs for use in database management; computer programs for document processing; computer programs for word processing; computer programs for preparing spreadsheets; computer programs for use in computer security; computer programs for use in the development of computer programs, programming languages, tool kits and compilers; computer programs for use in developing, compiling and executing other computer programs on computers, computer networks, and global communications networks; computer programs for use in navigating, browsing, transferring information, and distributing and viewing other computer programs on computers, computer networks and global communications networks; computer programs for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging, and/or enhancing sound, video, images, graphics, and/or data; computer operating system programs; computer utility programs; computer programs for use with computer servers; computer programs for use in telephones; computer programs used in accessing databases; computer game programs; computer programs downloadable from global computer networks; and instructional manuals in electronic format sold therewith; downloadable electronic publications’;

– Class 38: ‘Leasing of access time to computer networks and computer databases’;

– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer services, namely, providing consultation services and advice in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; leasing services (long-time rental) in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, and computer- related equipment; design for others in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; installation, maintenance, and repair of computer software; data processing services; website design; website hosting; computer programming; providing online information and news in the field of computers, computer hardware, computer software, and technology; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology, wireless communication, mobile information access, and remote data management’;

– secondly, on the well-known mark, within the meaning of Article 6a of the Convention for the Protection of Industrial Property, signed at Paris on 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, Vol 828, No 11851, p. 305), JAVA, covering goods and services within Classes 9, 38 and 42 of the Nice Agreement and corresponding, for each of those classes, to the following description:

– Class 38: ‘Providing access to computer networks and databases and related services’;

7 The grounds raised in support of the opposition were those set out in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009.

8 On 25 May 2012, the Opposition Division rejected the opposition, finding, in essence, first, that there is no likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, secondly, that there is no link between the marks at issue, within the meaning of Article 8(5) of that regulation.

9 On 24 July 2012 the applicant filed an 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 September 2013 (‘the contested decision’), the Second Board of Appeal dismissed the appeal brought by the applicant (paragraph 36 and Article 1 of the contested decision). First, in so far as the opposition was based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal held that, in the absence of similarity between the signs at issue, there was no likelihood of confusion between the marks at issue, even if the goods and services covered by those trade marks were identical and even though the earlier trade marks enjoyed a reputation (paragraph 30 of the contested decision). Secondly, in so far as the opposition was based on Article 8(5) of that regulation, the Board of Appeal held that ‘no certain degree of similarity’ had been established between the signs at issue, such that the public concerned would establish a link between them (paragraph 34 of the contested decision).

Admissibility of the reference, made by the applicant, to the pleadings and to their annexes lodged before OHIM

13 OHIM states that the applicant, in paragraph 75 of the application, under the heading ‘inclusion of submissions by reference’, makes a general reference to the submissions and documents that it provided during the administrative proceedings before OHIM. It submits that such a reference is inadmissible.

14 It should be noted that, under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the General Court, which apply to intellectual property matters by virtue of Article 130(1) of those rules, applications must include a brief statement of the grounds relied on. According to established case-law, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (judgments of 14 September 2004 in Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION), T‑183/03, ECR, EU:T:2004:263, paragraph 11; of 19 October 2006 in Bitburger Brauerei v OHIM — Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, ECR, EU:T:2006:330, paragraph 33; and of 15 October 2008 in Air Products and Chemicals v OHIM — Messer Group (Ferromix, Inomix and Alumix), T‑305/06 to T‑307/06, EU:T:2008:444, paragraph 21).

15 It is not for the General Court to place itself in the parties’ position and seek the relevant information in the documents to which it makes reference (judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraph 19).

16 In this case, it should be noted that, in paragraph 75 of the application, the applicant requests the General Court to ‘include’ in the present proceedings before it the ‘observations’ it made ‘during the opposition and appeal proceedings before OHIM’. It must thus be noted that the applicant makes, in essence, in the application, a general reference to the arguments it had set out in its pleadings and annexes thereto lodged during the proceedings before OHIM, in order to supplement the arguments which it puts forward in the present proceedings.

17 Therefore, as OHIM correctly contends, it must be held that the general reference in the application to the pleadings and annexes that the applicant lodged before OHIM is inadmissible.

18 In support of its action, the applicant puts forward two pleas in law. The first plea alleges an infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges an infringement of Article 8(5) of that regulation.

The first plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009

19 The applicant claims in essence that the Board of Appeal was wrong to hold that there was a likelihood of confusion between the signs at issue.

21 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

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 from economically-linked undertakings, constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue 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 the judgment of 9 July 2003 in Laboratoire RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and case-law cited).

23 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see the judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and case-law cited).

24 Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products or services concerned, who is reasonably well informed and reasonably observant and circumspect (see the judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007/46, paragraph 42 and case-law cited).

25 In this case, it must be noted at the outset that, as OHIM states, first, the applicant does not dispute the Board of Appeal’s assessment, in paragraph 17 of the contested decision, relating to the relevant public. It must be noted in that regard that the Board of Appeal correctly held, in essence, that that public is made up of the general public and professionals inter alia in the scientific, information technology and telecommunications sectors and that it is necessary to assess whether there exists a likelihood of confusion by reference to consumers in the territory of the European Union. Secondly, the applicant also does not dispute the Board of Appeal’s finding, in paragraph 18 of the contested decision, that the goods and services covered by the trade marks at issue are identical, as is apparent from paragraphs 3 and 6 above. The Board of Appeal’s assessment on those two points cannot, therefore, be called into question.

26 In the light of the foregoing considerations, it is necessary, as the applicant claims, to assess whether the Board of Appeal was wrong to hold that there is no likelihood of confusion between the signs at issue.

27 The applicant disputes the Board of Appeal’s finding that the signs at issue are not similar. According to the applicant, the signs at issue are similar on the basis of their phonetic and visual similarity and the fact that they have no meaning on the conceptual level.

28 In the first place, concerning a possible dominant element in the signs at issue, the applicant points out that, in general, the word ‘core’ means, in English, ‘the heart, or central part, of something’ and, more specifically, in the field of digital electronics, it refers in particular to a ‘relatively large, general-purpose logic function that is used as a building block in a chip design’. That word is, therefore, in its opinion, descriptive of the goods and services covered by the trade mark applied for. On that ground, the trade mark applied for is dominated by the word element ‘aava’, so that the word element ‘core’ should have no bearing on the assessment of the overall impression produced by that mark.

29 According to the case-law, the assessment of the similarity between two marks involves 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 judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 41 and case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, EU:C:2007:539, paragraph 43).

30 In this case, first, it should be noted that, as is clear from the Board of Appeal’s findings set out in paragraphs 23 and 24 of the contested decision, neither of the two words ‘aava’ and ‘core’ is capable of dominating of itself the impression of the trade mark applied for that the relevant public will remember, or of being completely disregarded in the overall impression produced by that mark.

31 In that regard, it should be noted, first, that it is not disputed that, as the Board of Appeal held in paragraph 22 of the contested decision, the word ‘aava’ will, in any event, be perceived as a distinctive word. With regard to the part of the relevant public which speaks Finnish, that word, which refers in particular to the concept of ‘open’, bears no relation to the goods and services covered by the trade mark applied for. In contrast, that word will be perceived by the part of the relevant public which, for the most part, does not speak Finnish as having been invented, as is moreover pointed out by the applicant,.

32 Secondly, the Board of Appeal held, in paragraph 22 of the contested decision, that the word ‘core’ was distinctive. First of all, it should be pointed out in that regard that, for at least a large proportion of the public, which does not have special knowledge of English and of digital electronics, that word will not be perceived as being descriptive of some of the goods at issue, but as an invented word, and, therefore, distinctive. On that ground, the word ‘core’ cannot be disregarded. Next, even if, as the applicant claims, that word is descriptive of some goods within Class 9 and would be understood as such by the part of the relevant public which has a special knowledge of English and of digital electronics, such a finding does not, in itself allow that word to be regarded as insignificant.

33 It should be recalled in that context that, contrary to what is claimed by the applicant, according to the case-law, the fact that one of the two words making up a word mark is descriptive does not, in itself, allow the conclusion to be drawn that that word is insignificant in the overall impression produced by that mark (see the judgment of 27 March 2014 in Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, EU:T:2014:158, paragraph 34 and case-law cited).

34 However, in the trade mark applied for, the word ‘core’ has a not insignificant position since it consists, visually of the same number of letters as the word ‘aava’ and, phonetically, depending on the language of the European Union in which it is pronounced, of the same number of syllables or one syllable less than the word ‘aava’. Therefore, in the light of the visual position it has in the trade mark applied for and of the fact that it will be pronounced by the relevant consumer, the word ‘core’, even if it has a secondary position in that mark, after the word element ‘aava’, cannot, as the Board of Appeal correctly held in paragraphs 23 and 24 of the contested decision, be completely disregarded by the relevant public.

35 The conclusion set out in paragraph 34 above cannot be called into question by the case-law relied on by the applicant according to which, in essence, a descriptive element which is part of a complex trade mark cannot be considered to be the distinctive and dominant element of the overall impression produced by that trade mark. Even if it were necessary to hold that the word ‘core’ is descriptive and cannot be considered to be the dominant element in the sign, that would not however mean that it must, on that basis alone, be regarded as insignificant.

36 Therefore, contrary to the applicant’s claim, the Board of Appeal was not wrong to take into consideration the overall impression produced by the trade mark applied for and not only the word ‘aava’, in the context of the comparison of the signs at issue.

37 Secondly, it must be pointed out that, in the overall impression produced by the trade mark applied for, the relevant public will pay more attention to the word ‘aava’ than to the word ‘core’.

38 The relevant public will pay more attention to the word ‘aava’, whether or not the relevant public perceives the word ‘core’ as being descriptive of certain goods covered by the trade mark applied for (see paragraph 32 above). As the Board of Appeal correctly held, the word ‘aava’, which, it is common ground, will be perceived as a distinctive word by the relevant public, is at the beginning of the sign. In that regard, it should be noted that it follows from the case-law that, in principle, consumers usually pay more attention to the beginning of a sign than to its end (judgments of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65).

39 In the light of the considerations set out in paragraphs 28 to 38 above, it must be held that, contrary to what is claimed by the applicant, the trade mark applied for must be assessed in its entirety, while paying more attention to the word ‘aava’ than to the word ‘core’, which cannot be disregarded.

40 In the second place, with regard to the visual comparison of the signs at issue, the applicant disputes the Board of Appeal’s assessment, set out in paragraph 23 of the contested decision, according to which those signs differ more than they are similar. According to the applicant, there is a visual similarity between those signs since the word element ‘core’ should be disregarded.

41 It should be noted in that regard that only the letter ‘j’ appearing in the earlier trade marks JAVA distinguishes that mark from the first word element of the trade mark applied for, AAVA, which contains an additional letter ‘a’. The group of letters ‘ava’ is shared by the signs at issue.

42 However, it should be pointed out that the similarities resulting from the presence of the shared group of letters ‘ava’ are completely neutralised by the significant differences between those signs.

43 First, as the Board of Appeal correctly stated in paragraph 23 of the contested decision, the relevant public will notice the difference existing in the first letter making up those signs, namely the letter ‘a’ in the trade mark applied for and the letter ‘j’ in the earlier trade marks. That difference is increased, as OHIM correctly notes, by the unusual repetition of the letter ‘a’ at the beginning of the word ‘aava’. In that regard, it should be noted that the applicant did not dispute the Board of Appeal’s assessment, set out in that paragraph, according to which the relevant consumer will pay more attention to the beginning of the mark.

44 Next, it is apparent from the case-law that even insignificant differences between signs are capable of creating a different overall impression where those signs are made up of short words (the judgment in AAVA MOBILE, EU:T:2014:158, paragraph 47), as is the case in this instance for the short words ‘java’ and ‘aava’. In that regard, it should be recalled that the difference in the overall impression created by those two words is all the more significant given that, first, the first word ‘aava’ is a four-letter word including three ‘a’s, whereas the word ‘java’ only includes two ‘a’s. Secondly, the presence of three letter ‘a’s in a word containing in total four letters is very noticeable, visually, in all the languages of the European Union.

45 Finally, as the Board of Appeal held, also in paragraph 23 of the contested decision, the word ‘core’ helps to distinguish the signs at issue. As was stated in paragraph 39 above and contrary to what is claimed by the applicant, that word cannot be disregarded in the context of the comparison of the signs at issue.

46 In the light of the considerations set out in paragraphs 40 to 45 above, it must be stated, as the Board of Appeal pointed out and contrary to what is claimed by the applicant, that the signs at issue, when assessed in their entirety, are not visually similar.

47 In the third place, as regards the phonetic comparison of the signs at issue, the applicant disputes the Board of Appeal’s assessment, set out in paragraph 24 of the contested decision, according to which they are different. According to the applicant, there is a strong phonetic similarity between them.

48 In that regard, it should be stated that, as the Board of Appeal correctly held in paragraph 24 of the contested decision, the earlier trade marks and the first word element included in the trade mark applied for are made up, first, of two syllables, namely ‘ja’ and ‘va’ in the case of the earlier trade marks and, secondly, of two syllables, namely ‘aa’ and ‘va’ in the case of the first word element included in the trade mark applied for, which is not disputed by the applicant. It is necessary also to point out that the second syllable making up those two word elements, namely ‘va’, is shared by the signs at issue.

49 However, it must also be noted that the similarities, which are set out in paragraph 48 above, are completely neutralised by the significant differences between those signs.

50 First, the letters ‘j’ and ‘a’, which are included at the beginning of the first syllable of the word elements making up the marks at issue, are pronounced differently, whatever the language of the European Union being used. First, the applicant’s argument, in essence, that the letter ‘j’ in the word ‘java’ is pronounced in several languages as an unvoiced and guttural sound like the letter ‘y’ in the English word ‘yes’, cannot serve to refute that finding. Even if, as the applicant claims, the letter ‘j’ is pronounced in some languages like the sound ‘y’ in the English word ‘yes’, that sound, in any event, differs clearly from that produced in those languages by the letter ‘a’ included at the beginning of the trade mark applied for. Secondly, as regards the applicant’s argument that the first letter of a word is generally missed by the person hearing it, it should be pointed out that, on the contrary, according to the case-law cited in paragraph 38 above, the relevant consumer generally retains the beginning of the sign more than its end.

51 Secondly, it should be recalled that, in the light of the word element ‘core’, which cannot be disregarded, as was stated in paragraph 39 above, the trade mark applied for includes one or two syllables more, depending on the language in which it is pronounced, than the earlier trade marks. Thus, a single syllable, namely ‘va’, out of the total number of three or four syllables which make up the trade mark applied for, is shared by both signs at issue, depending on the language of the European Union being used. In those circumstances, the presence of the only shared syllable ‘va’ in the signs at issue, in the light of the total number of syllables of the trade mark applied for, does not suffice for it to be held that there exists a phonetic similarity between those signs.

52 In the light of the findings set out in paragraphs 47 to 51 above, it must be concluded that, phonetically, the signs at issue, assessed in their entirety, are not, as the applicant claims, strongly similar, but dissimilar.

53 In the fourth place, concerning the conceptual comparison of the signs at issue, the applicant disputes the Board of Appeal’s assessment, set out in paragraph 25 of the contested decision, that they are different.

54 With respect to the trade mark applied for, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that, as was stated in paragraph 31 above, first, the first word element making up that trade mark, namely ‘aava’, has no particular meaning for the majority of the relevant public, with the exception of the Finnish-speaking public, for whom that word means ‘open’. Secondly, even if, as the applicant claims, the word ‘core’ will be understood by at least a part of the relevant public which has a special knowledge of English and of digital electronics as referring to some of the goods covered by the trade mark applied for, it must be pointed out that, first, for the vast majority of the relevant public which does not understand Finnish and does not have a special knowledge of English and of digital electronics, the trade mark applied for, taken as a whole, will have no meaning. Next, for the part of the relevant public which has special knowledge of English and of digital electronics, the second element of the trade mark applied for is liable to refer to certain goods covered by that mark. Moreover, if that part of the relevant public understands Finnish, the trade mark applied for as a whole will then have no particular meaning, since the concept of ‘open’ is not connected with the meaning of the word ‘core’.

55 With respect to the earlier trade marks, the applicant claims that the Board of Appeal incorrectly held, in paragraph 25 of the contested decision, that the relevant public would associate the earlier trade marks with the Indonesian island of Java as a result, in particular, of the reputation of its coffee. In that regard, it considers that it is unlikely that the relevant public knows that island, in contrast to Bali which is a very popular tourist destination, or that it will associate the island of Java with goods and services in the information technology and telecommunications sectors, in the light of the reputation of the earlier trade marks.

56 The applicant’s arguments in that regard are, however, unconvincing. First, the fact that the island of Bali is better known by the relevant public than the island of Java has, in any event, no impact on the Board of Appeal’s finding that the relevant public will associate the word ‘java’ with the Indonesian island which it will know either as a result, in particular, of its coffee production or as the main Indonesian island.

57 Secondly, it should be noted that the reputation of a trade mark has no impact on the perception of its conceptual contents. In this case, the fact that the relevant consumer recognises the trade mark JAVA does not mean that he will not associate it with the island of Java, considering that that trade mark refers, conceptually, to that island.

58 It follows therefore from the considerations set out in paragraphs 53 to 57 above, that, for the relevant public, first, the trade mark applied for either has no meaning, or refers to the concept of ‘open’, or to certain digital electronics materials. Secondly, the earlier trade marks refer, in all the languages of the European Union, to the island of Java.

59 In those circumstances, it must be concluded that the signs at issue each have a different meaning. In that regard, it must be pointed out that, even if the relevant consumer would not associate the earlier trade marks with the island of Java, the fact remains, in any event, that the signs at issue are not conceptually similar.

60 In the fifth place, concerning the overall assessment of the signs at issue, the applicant disputes the Board of Appeal’s conclusions, in paragraph 28 of the contested decision, that those signs are globally not similar.

61 It follows from the findings made in paragraphs 46, 52 and 59 above, that the signs at issue are not visually, phonetically or conceptually similar, that those signs, as a whole, are not similar, as the Board of Appeal correctly stated, in essence, in paragraph 28 of the contested decision. On that ground, the applicant’s argument that it follows from the case-law that the trade marks at issue are similar where there exists a partial visual, phonetic or conceptual similarity between them, must be rejected as ineffective in this case. The trade marks at issue are not similar from any of the three points of view.

62 In the light of all the considerations set out in paragraphs 27 to 61 above, the applicant’s argument that the Board of Appeal was wrong to hold that there is no similarity between the trade marks at issue must be rejected.

63 The applicant claims that, owing to the strong reputation and distinctive character of the earlier trade marks, to the fact that the goods and services covered by the signs at issue are identical, and to the signs’ similarity, the likelihood of confusion between those signs cannot be denied.

64 It should be noted that, according to the case-law set out in paragraph 18 above, a likelihood of confusion is based on the premise that the conditions for a finding that the trade marks at issue are identical or similar or that the goods or services that they designate are identical or similar are cumulative.

65 In this case, as has already been stated in paragraph 61 above, the Board of Appeal did not commit an error by holding that the signs at issue were not similar. Therefore, as the Board of Appeal correctly held, in paragraph 29 of the contested decision, and as OHIM contends, the fact, first, that the earlier trade marks enjoy a very great reputation and, secondly, that the goods and services covered by the signs at issue are identical, does not, in any event, allow a finding that there is a likelihood of confusion between them in the light of the lack of similarity between the signs.

66 In the light of all of the foregoing, it must, first, be held, as the Board of Appeal pointed out, that there is no likelihood of confusion between the signs at issue and, secondly, the applicant’s argument in that regard must be rejected.

The second plea in law, alleging an infringement of Article 8(5) of Regulation No 207/2009

68 The applicant claims that, in light of the fact that the signs at issue are similar, of the reputation of the earlier trade marks, and of the fact that the goods and services covered by those signs are identical, the Board of Appeal should have held that the conditions laid down in Article 8(5) of Regulation No 207/2009 for refusal of the registration of the trade mark applied for were satisfied.

70 In accordance with settled case-law, for the broader protection to be granted to earlier trade marks under Article 8(5) of Regulation No 207/2009 a number of conditions must be satisfied including in particular the identical or similar character of the marks at issue and the reputation of the earlier trade mark (the judgments of 22 March 2007 in Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, ECR, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, ECR, EU:T:2007:214, paragraphs 54 and 55).

71 In this case, it must be noted that, even if it is common ground that the goods and services covered by the signs at issue are identical and even though it must be held that the reputation of the earlier trade marks is established, it is nevertheless apparent from the comparison between the signs at issue, set out in paragraphs 27 to 61 above, that those signs are not similar. In those circumstances, the condition relating to the identical or similar character of the marks at issue is not satisfied in this case, as the Board of Appeal correctly pointed out in paragraph 34 of the contested decision.

72 It follows from the conclusion set out in paragraph 71 above that the second plea in law must be rejected as unfounded.

74 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Oracle America v OHMI - Aava Mobile (AAVA CORE) (Judgment) [2014] EUECJ T-618/13 (11 December 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T61813.html Cite as: [2014] EUECJ T-618/13, ECLI:EU:T:2014:1053, EU:T:2014:1053

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