Case T-385/09

Annco, Inc.

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark ANN TAYLOR LOFT – Earlier national word mark LOFT – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary of the Judgment

1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 207/2009, Art. 8(1)(b))

2. Community trade mark – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the General Court – Amendment of a decision by the Office – Assessment in the light of the powers conferred on the Board of Appeal

(Council Regulation No 207/2009, Art. 64(1))

1. For the average French consumer there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark between the word sign ANN TAYLOR LOFT, for which registration as a Community mark is sought in respect of leather goods and clothing articles in classes 18 and 25 respectively under the Nice Agreement, and the word mark LOFT, registered earlier in France for identical products.

Notwithstanding the identical nature of the goods at issue, having regard to the existence of a weak similarity between the signs at issue, the target public, accustomed to the same clothing company using sub‑brands that derive from the principal mark, will not be able to establish a connection between the signs ANN TAYLOR LOFT and LOFT, since the earlier mark does not include the ‘ann taylor’ element, which is the most distinctive element in the mark applied for.

(see paras 22, 48)

2. Since the Board of Appeal is itself empowered, under Article 64(1) of Regulation No 207/2009 on the Community trade mark, to exercise any power within the competence of the department which was responsible for the decision contested before it, the Court may, in the context of its power to alter decisions, exercise any power within the competence of the lower departments of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), whose decisions are subject to appeal before the Board of Appeal. Accordingly, the Court may, in this context, take a decision that could have been taken by the examiner, the Opposition Division or the Cancellation Division. On the other hand, it may not take decisions that do not fall within the competence of those departments. This is why the Court cannot register a trade mark, as that registration does not come within the competence of the examiner or of the Opposition Division.

(see para. 52)

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

17 February 2011 (*)

In Case T‑385/09,

Annco, Inc., established in Wilmington, Delaware (United States), represented by G. Triet, lawyer,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Freche et fils associés, established in Paris (France),

ACTION brought against the decision of the First Board of Appeal of OHIM of 1 July 2009 (Case R 1485/2008‑1), relating to opposition proceedings between Freche et fils associés and Annco, Inc.,

THE GENERAL COURT (Eighth Chamber),

composed, at the time of the deliberation, of M.E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and A. Dittrich, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 2 October 2009,

having regard to the response lodged at the Registry of the Court on 11 January 2010,

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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 16 March 2004, Annco, Inc. 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 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 ANN TAYLOR LOFT.

3 The goods and services in respect of which registration was sought are in Classes 18, 25 and 35 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 18: ‘Leather and imitations of leather, and goods made from these materials; skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; handbags, purses, suitcases’;

– Class 25: ‘Clothing, footwear, headgear, dresses, skirts, suits, jeans, sweaters, shirts, t-shirts, tank tops, bodysuits, jumpers, vests, gloves, sleepwear, robes, swimsuits, blouses, shoes, pants, shorts, jackets, coats, socks, hosiery, hats and caps, belts, scarves and underwear’;

– Class 35: ‘Retail services; retailing of products via worldwide computer networks; retail services in the fields of clothing, footwear, handbags, small leather and imitation leather accessories, jewellery, toiletries, fragrances and cosmetics’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 51/2004 of 20 December 2004.

5 On 18 March 2005, Freche et fils associés filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for, on the ground of likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6 The opposition was based on some of the goods and services covered by the word mark LOFT, registered in France on 22 August 2003 under number 13089435, with effect from 16 March 2001, for, inter alia, goods within Classes 18 and 25 corresponding, for each of those classes, to the following description:

– Class 18: ‘Leather and imitations of leather; goods of leather or imitation leather (except cases adapted for the goods they are designed to carry, gloves and belts); purses, not of precious metals; handbags; travelling bags; cases of leather or leatherboard; travel cases; coverings of skins (fur); skins of chamois, other than for cleaning purposes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks’;

– Class 25: ‘Clothing, underclothing, sport clothes other than for diving, belts, gloves, footwear, headgear’.

7 The opposition was directed against all of the goods and services covered by the mark applied for.

8 By decision of 12 August 2008, the Opposition Division upheld the opposition in respect of the goods within Classes 18 and 25, on the ground that there was a likelihood of confusion, and rejected the opposition in respect of the services within Class 35. The Opposition Division found that the goods at issue were identical and noted that, in the context of an overall assessment, the signs LOFT and ANN TAYLOR LOFT had a medium degree of similarity due to the fact that the concept relating to a loft was present in both signs. Given the identity of the goods and the fact that the word ‘loft’ retained an independent distinctive role in the trade mark applied for, consumers would be led to believe that the goods in question come from companies connected to each other.

9 On 10 October 2008, 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 1 July 2009 (‘the contested decision’), the First Board of Appeal dismissed the appeal. In particular, it considered that the goods covered by the mark applied for and those covered by the earlier mark were identical and, furthermore, that, notwithstanding the existence of a strong conceptual similarity, the signs at issue were, in the context of an overall assessment, slightly similar. The Board of Appeal considered that there was a likelihood of confusion on the ground that the common word ‘loft’ was the dominant element of the mark applied for and the only element of the earlier trade mark. The relevant public, consisting of average French buyers of leather goods and clothing, may think that the origin of the goods is identical or that ANN TAYLOR LOFT is the name of the new line of products from Freche et fils associés.

Forms of order sought

11 The applicant claims that the Court should:

– hold that the action is well founded;

– annul the contested decision;

– alter the contested decision in favour of the registration of the ANN TAYLOR LOFT mark for Classes 18 and 25, in addition to Class 35, for which registration was correctly accepted by the Opposition Division and has not been contested;

– order OHIM to pay the costs.

12 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

The claim for annulment of the contested decision

13 The applicant relies on two pleas in law, alleging infringement, firstly, of Article 75, second sentence, of Regulation No 207/2009 and, secondly, of Article 8(1)(b) of that regulation.

14 It is appropriate to consider, firstly, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15 Under Article 8(1)(b) of Regulation No 207/2009, 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, 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’.

16 Furthermore, under Article 8(2)(a)(ii) 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 According to consistent case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70 and the case-law cited; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).

18 Further, it is not disputed that the 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 (see CAPIO, paragraph 17 above, paragraph 71 and the case-law cited; see also, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 22; Canon, paragraph 17 above, paragraph 16; and Lloyd Schuhfabrik Meyer, paragraph 17 above, paragraph 18).

19 That global assessment implies some interdependence of the factors taken into account and, in particular, of the similarity of the marks and that of the goods or services covered. 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‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48; Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 25; see also, by analogy, Canon, paragraph 17 above, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see CAPIO, paragraph 17 above, paragraph 72 and the case-law cited).

20 Furthermore, the global assessment of the visual, aural 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 wording of Article 8(1)(b) of Regulation No 207/2009 – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see CAPIO, paragraph 17 above, paragraph 73 and the case-law cited; see also, by analogy, SABEL, paragraph 18 above, paragraph 23).

21 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should 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 place his trust in the imperfect picture of them that he has kept in his mind. 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 (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 17 above, paragraph 26).

22 In the present case, the earlier mark is a national mark registered in France. Therefore, as the Board of Appeal stated in paragraph 12 of the contested decision, the examination must be limited to France. It is also common ground that the relevant public is, as the Board of Appeal rightly held in paragraph 13 of the contested decision, the average consumer of leather goods and clothing articles in France, which corresponds to a very large sample of the population. Those findings, which were not challenged by the applicant, must be upheld.

23 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

The similarity of the goods

24 In this connection, it suffices to state that the position adopted by the Board of Appeal in paragraph 10 of the contested decision, according to which the goods at issue are identical, and which moreover has not been challenged by the applicant, must be upheld.

The similarity of the signs

25 As already stated in paragraph 20 above, the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, also, Case C‑254/09 P Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 45 and the case-law cited).

26 It also follows from the case-law that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (MATRATZEN, paragraph 19 above, paragraph 30, and CAPIO, paragraph 17 above, paragraph 89; see also, by analogy, SABEL, paragraph 18 above, paragraph 23).

27 In the present case, the earlier trade mark consists exclusively of the word ‘loft’, whereas the trade mark applied for is composed of the word element ‘ann taylor loft’.

28 First, the Board of Appeal found that there were visual and aural similarities between the signs at issue, but that this similarity was not strong, on the ground that the word ‘loft’ was preceded by other elements in the mark applied for. Although the applicant claims that the visual and aural impressions of the signs at issue are very different due to the presence of the dominant element ‘ann taylor’ in the mark applied for, it accepts that there is ‘a low degree of similarity between the signs’ at issue. The finding of the Board of Appeal on that point must, therefore, be upheld.

29 Second, in relation to conceptual similarity, the Board of Appeal, while confirming the conclusion of the Opposition Division, held, at paragraphs 18 and 20 of the contested decision, that the word sign ANN TAYLOR LOFT looked like an Anglo-Saxon person’s full name in which ‘ann’ could easily be recognised as a first name, ‘taylor’ as a middle name or part of the first name and ‘loft’ as a surname. The Board of Appeal added, at paragraph 19 of the contested decision, on the basis of Case T‑212/07 Harman International Industries v OHIM – Becker (Barbara Becker) [2008] ECR II‑3431, that ‘loft’, as a surname, is the dominant element of the mark applied for. Furthermore, the Board of Appeal held, at paragraph 23 of the contested decision, that ‘loft’ was distinctive, as it was a foreign word in France, which would not necessarily be perceived as the generic designation of a place where goods are sold. The word ‘loft’ would rather be perceived as a meaningless English noun or as a surname.

30 The applicant disputes this analysis. It maintains that the French public will not perceive the word ‘loft’ that is common to the two signs at issue as an Anglo-Saxon surname, as this word is used in French to designate a storage room converted into a living space for private or commercial purposes. Therefore, in spite of the presence in the two signs of the word ‘loft’, the ‘ann taylor’ component, given that it is the distinctive and dominant element of the ANN TAYLOR and ANN TAYLOR LOFT marks, dominates overall, to the point that all the other components are negligible. There is, therefore, no conceptual similarity between the signs at issue.

31 It is clear that the analysis of the Board of Appeal, in so far as it is based on a false premiss, cannot be upheld.

32 As the Opposition Division had already noted in its decision, far from being a foreign word, ‘loft’ is a word that describes, in the French language, a certain kind of accommodation. Although originating from the equivalent English word, ‘loft’ has entered the French language and become a French word in its own right. It follows that, as it has a specific meaning in French, the average French public, when faced with this word, will associate it with a certain kind of accommodation, in so far as it knows this meaning, and not a foreign surname which, moreover, OHIM acknowledges is not among the most common in Anglo-Saxon countries. Furthermore, it cannot be validly contended that the word ‘loft’ is rarely employed in the French language.

33 The applicant’s argument that the ‘ann taylor’ element is dominant in the overall impression, on the ground that the ANN TAYLOR and ANN TAYLOR LOFT signs enjoy a reputation with the public, cannot therefore be upheld.

34 In this regard, it suffices to state that the applicant has not put forward any evidence to show that the ANN TAYLOR LOFT or ANN TAYLOR signs enjoyed such a reputation with the target public, as the evidence relates to the United States. In this respect, the existence of an Internet site is not sufficient to demonstrate the existence of a reputation. The applicant itself states, moreover, that it has ‘taken steps to enable it to be in a position to expand to other countries, including those in the European Union’, which indicates the current absence of reputation of the mark applied for, or of the ANN TAYLOR sign, within the European Union and, in particular, in France.

35 Furthermore, even assuming that the ‘ann taylor’ element can be regarded as dominant in the ANN TAYLOR LOFT sign, the conceptual similarity cannot be examined by taking into consideration solely the dominant element since, according to the case-law, it is only if all the other components of the mark are negligible that similarity can be assessed solely on the basis of the dominant element (Case C‑498/07 P Aceites del Sur-Coosur v Koipe and OHIM [2009] ECR I‑7371, paragraph 62).

36 However, the word ‘loft’ included in the mark applied for cannot be regarded as negligible in the overall impression because it supplements the ‘ann taylor’ element, adding to it a characteristic that could relate, having regard to the goods concerned, to a line of clothing that corresponds to a certain lifestyle connected to this new style of accommodation or that adopts some of its codes.

37 Furthermore, it cannot be disputed that, in the overall impression given by the mark applied for, the ‘ann taylor’ element is clearly, with regard to the French public, much more distinctive than the word ‘loft’, due to the very fact that this latter word has a clear and specific meaning in French. The ‘ann taylor’ element makes reference to first names, or to a first name and an English surname, so they will attract more attention from the French public.

38 It follows from all of the above that, overall, having regard to the finding of visual and aural similarities that are not strong and a certain conceptual similarity between the signs at issue, it must be concluded, taking into account the fact that the ‘ann taylor’ component is the most distinctive element of the mark applied for and attracts more attention from the target public, that the overall similarity between the signs at issue is weak.

The likelihood of confusion

39 It should be borne in mind that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 19 above, paragraph 45).

40 The applicant claims, in essence, that, due to the presence of the distinctive and dominant ‘ann taylor’ element at the beginning of the ANN TAYLOR LOFT sign, there is no likelihood of confusion on the part of the target public, such that it could think that the signs at issue are two different lines of goods offered under the control of the same undertaking or economically-linked undertakings.

41 The Board of Appeal held, by contrast, at paragraph 19 of the contested decision, that ‘loft’ was the dominant element of the mark applied for, so that there was a likelihood of confusion, since the goods were identical.

42 This latter analysis cannot be upheld.

43 In this regard, it must be stated that, having regard to the findings made in the context of the analysis of the conceptual similarity of the signs at issue, the word ‘loft’ is not the dominant element in the mark applied for. Furthermore, it is also apparent from those same findings that it is the ‘ann taylor’ element, because it lacks meaning for the target public, that must be considered more distinctive than the word ‘loft’ in the mark applied for, as this latter word has a specific meaning for that public.

44 Moreover, there are weak visual and aural similarities between the signs at issue and a certain conceptual similarity.

45 In this regard, it should be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is indeed 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 (see 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 and case-law cited).

46 Having regard, first, to the nature of the goods and the way in which they are marketed, then to practices in relation to the branding of clothing products and, finally, to the expectations and the habits of the target public, it should be considered that that public, when faced with the two signs at issue, will not make a connection between them; the most distinctive element of the mark applied for is not the same as the sole element of the earlier mark and it is normal for a ‘house brand’ to vary its own mark by adding to it an element that characterises a secondary line.

47 Indeed, the target public is, as the applicant has correctly stated, used to the same manufacturer marketing different lines of goods that bear the name of the designer and/or the fashion house concerned, followed by the name of the line, according to its characteristics (sport, formal, casual, and so on).

48 In the present case, in the light of the global impression created by the signs at issue, their similarity was considered to be weak. Notwithstanding the identity of the goods at issue, the Court finds that, having regard to the existence of a weak similarity between the signs at issue, the target public, accustomed to the same clothing company using sub‑brands that derive from the principal mark, will not be able to establish a connection between the signs ANN TAYLOR LOFT and LOFT, since the earlier mark does not include the ‘ann taylor’ element, which is, as noted in paragraph 37 above (see also paragraph 43 above), the most distinctive element in the mark applied for.

49 Moreover, even if it were accepted that the ‘loft’ element retained an independent, distinctive role in the mark applied for, the existence of a likelihood of confusion between the signs at issue could not for that reason be automatically deduced from that independent, distinctive role in that mark.

50 Indeed, the likelihood of confusion cannot be determined in the abstract, but must be assessed in the context of an overall analysis that takes into consideration, in particular, all of the relevant factors of the particular case (SABEL, paragraph 18 above, paragraph 22; see, also, Case C‑120/04 Medion [2005] ECR I‑8551, paragraph 37), such as the nature of the goods and services at issue, marketing methods, whether the public’s level of attention is higher or lower and the habits of that public in the sector concerned. The examination of the factors relevant to this case, set out in paragraphs 45 to 48 above, do not reveal, prima facie, the existence of a likelihood of confusion between the signs at issue.

51 It follows from all of the foregoing that the first plea in law should be upheld and, without there being any need to examine the second plea alleging breach of the right to be heard, the contested decision should be annulled.

The claim for alteration of the contested decision

52 In relation to the third head of claim, by which the applicant asks the Court, in essence, to alter the contested decision so that the mark applied for is registered, it should be recalled that, since the Board of Appeal is itself empowered, under Article 64(1) of Regulation No 207/2009, to exercise any power within the competence of the department which was responsible for the decision contested before it, the Court may, in the context of its power to alter decisions, exercise any power within the competence of the lower departments of OHIM, whose decisions are subject to appeal before the Board of Appeal. Accordingly, the Court may, in this context, take a decision that could have been taken by the examiner, the Opposition Division or the Cancellation Division. On the other hand, it may not take decisions that do not fall within the competence of those departments. This is why the Court cannot register a trade mark, as that registration does not come within the competence of the examiner or of the Opposition Division (see, to that effect, order in Case T‑285/08 Securvita v OHIM (Natur-Aktien-Index) [2009] ECR II‑2171, paragraphs 16 to 23).

53 The third head of claim must therefore be rejected as inadmissible.

Costs

54 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 OHIM has been unsuccessful, it must be ordered to pay the costs of the applicant, in accordance with the form of order sought by the latter.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 July 2009 (Case R 1485/2008‑1);

2. Declares that the remainder of the action is inadmissible;

3. Orders OHIM to pay the costs.

Martins Ribeiro

Papasavvas

Dittrich

Delivered in open court in Luxembourg on 17 February 2011.

[Signatures]

* Language of the case: English.