Judgments nº T-9/05 of Court of First Instance of the European Communities, January 15, 2008

Resolution DateJanuary 15, 2008
Issuing OrganizationCourt of First Instance of the European Communities
Decision NumberT-9/05

In Case T-9/05,

Hoya Kabushiki Kaisha, established in Tokyo (Japan), represented by A.†Nordemann, C.-R.†Haarmann, F.†Schwab and M.†Nentwig, lawyers,

applicant,

v

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

defendant,

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

Indo Internacional SA, established in Hospitalet de Llobregat (Spain), represented by M.†Currel Aguil‡, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 3†November 2004 (Case R 433/2004-1), relating to opposition proceedings between Indo Internacional SA and Hoya Kabushiki Kaisha,

THE COURT OF FIRST INSTANCEOF THE EUROPEAN COMMUNITIES (Third Chamber),

composed of M. Jaeger, President, J. Azizi and E. Cremona, Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 12†January 2005,

having regard to the response of OHIM lodged at the Registry of the Court on 3†May 2005,

having regard to the response of the intervener lodged at the Registry of the Court on 12†May 2005,

further to the hearing on 15†March 2007,

gives the following

Judgment

Background to the dispute

1 ††††††††On 26†June 2000, the applicant filed an application for 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.

2 ††††††††The mark in respect of which registration was sought is the word mark AMPLITUDE.

3 ††††††††The goods in respect of which registration was sought are in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15†June 1957, as revised and amended (-the Nice Agreement-) and correspond to the following description: -Eyeglasses; lenses for eyeglasses; frames for eyeglasses; sunglasses; contact lenses.-

4 ††††††††The application for the trade mark was published in Community Trade Marks Bulletin No 12/2001 of 29†January 2001.

5 ††††††††On 25†April 2001, the intervener lodged an opposition against registration of the mark applied for, on the basis of Article†42(1) of Regulation No 40/94.

6 ††††††††The opposition was based on the registration of the following turquoise-blue-coloured figurative mark:

7 ††††††††That mark was registered in Spain under No 2 291 576 on 20†July 2000 in respect of goods in Class 9 of the Nice Agreement and corresponding to the following description: -Optical apparatus and instruments, in particular spectacles and sunglasses, sun lenses and ophthalmic lenses-.

8 ††††††††The opposition related to all the goods covered by that earlier registration and was based on Article†8(1)(b) of Regulation No 40/94.

9 ††††††††By Decision No 1135/2004 of 2†April 2004, the Opposition Division of OHIM rejected the opposition on the ground that there was no likelihood of confusion between the two conflicting marks.

10 ††††††On 28†May 2004, the intervener filed an appeal at OHIM under Articles†57 to 62 of Regulation No 40/94 against the decision of the Opposition Division.

11 ††††††By decision of 3†November 2004 in Case R 433/2004-1 (-the contested decision-), the First Board of Appeal upheld the opposition and annulled the decision of the Opposition Division on the ground that there was a likelihood of confusion between the two conflicting marks.

Forms of order sought

12 ††††††The applicant claims that the Court of First Instance should:

-††††††††annul the contested decision;

-††††††††order OHIM to pay the costs.

13 ††††††OHIM contends that the Court of First Instance should:

-††††††††dismiss the application;

-††††††††order the applicant to pay the costs.

14 ††††††The intervener claims that the Court of First Instance should:

-††††††††dismiss the action;

-††††††††confirm the contested decision and reject the application for registration of AMPLITUDE as a Community trade mark;

-††††††††order the applicant to pay the costs.

Law

15 ††††††The applicant relies on a single plea in law, alleging infringement of Article†8(1)(b) of Regulation No 40/94.

Arguments of the parties

16 ††††††The applicant claims that the Board of Appeal erred when it found that there was a likelihood of confusion within the meaning of Article†8(1)(b) of Regulation No 40/94 in this instance.

17 ††††††As regards, first, the visual comparison, the applicant states that the two marks differ in appearance. It explains that the letters of the earlier mark are written in a font different from that used for the mark applied for. The earlier mark is thus written in finer lettering. Furthermore, there is a larger space between each letter of the earlier mark than that which separates the letters constituting the mark applied for. The applicant adds that the Board of Appeal did not take sufficiently into account the fact that the earlier mark was turquoise-blue in colour.

18 ††††††The applicant also submits that the trade mark applied for is twice as long as the earlier mark. The case-law on the importance of letters at the beginning of marks is, it is claimed, mainly based on the fact that consumers do not pay attention to minor differences appearing in the endings of marks, such as single letters or suffixes which are more or less insignificant. However, the ending of the trade mark sought (-itude-) cannot be considered to be insignificant.

19 ††††††Phonetically, the applicant maintains that, even if the letter -y- in the earlier trade mark is pronounced in Spanish like the -i- in the mark applied for, it should not be forgotten that that mark is twice as long as the earlier mark, resulting in a different rhythm of pronunciation. It adds that the average consumer will not shorten the word...

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