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JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
25 June 2008 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark ZIPCAR –
Earlier national word mark CICAR – Relative ground for refusal – Likelihood of confusion – Article 8(1)
(b) of Regulation (EC) No 40/94)
In Case T-36/07,
Zipcar, Inc., established in Cambridge, Massachusetts (United States), represented by M. Elmslie,
Solicitor, and N. Saunders, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by D. Botis, acting as Agent,
defendant,
the other party to proceedings before the Board of Appeal of OHIM having been
Canary Islands Car, SL, established in San Bartolome (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 November 2006
(case R 122/2006-2) relating to opposition proceedings between Canary Islands Car, SL and Zipcar,
Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas and N. Wahl (Rapporteur), Judges,
Registrar: B. Pastor, Deputy Registrar,
having regard to the application lodged at the Registry of the Court of First Instance on 12 February
2007,
having regard to the response lodged at the Court Registry on 6 June 2007,
further to the hearing on 11 January 2008,
gives the following
Judgment
Background to the dispute
1
On 17 April 2003 the applicant, Zipcar, Inc., filed an application for a Community trade mark at the
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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.
2
3
4
The mark for which registration was sought is the word sign ZIPCAR.
Registration of the mark was sought in respect of goods and services in, inter alia, Class 39 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, corresponding to the following
description: ‘Arrangement of travel and transportation; transportation reservation services; motor
vehicle sharing services; vehicle rental; arrangement of rental of vehicles; vehicle rental reservation
services; scheduling, planning, organising, managing and providing the temporary use of motor
vehicles; information, advisory and consultancy services relating to the foregoing’.
The application was published in Community Trade MarksBulletin No 9/2004 of 1 March 2004.
5
On 6 April 2004 Canary Islands Car, SL gave notice of opposition, under Article 42 of Regulation
No 40/94, to registration of the mark applied for in respect of the services referred to above.
6
The opposition was based on the existence of the earlier word mark CICAR, registered in Spain on 21
December 1998 under number 2 130 871 in respect of services in Class 39 and corresponding to the
following description: ‘vehicle rental reservation services’.
7
The ground relied on in support of the opposition was the likelihood of confusion, referred to in Article
8(1)(b) of Regulation No 40/94.
8
By decision of 18 November 2005, the Opposition Division of OHIM allowed the opposition essentially
on the grounds that the marks were similar and the services at issue were identical.
9
10
On 18 January 2006 the applicant brought an appeal against the decision of the Opposition Division.
By decision of 30 November 2006 (‘the contested decision’), the Second Board of Appeal of OHIM
dismissed the appeal. In essence, the Board considered that the relevant public is the average Spanish
consumer. The Board then stated that the services covered by the mark applied for and those covered
by the earlier mark are, as regards some of those services, identical, or at least very similar, and, as
regards others, not materially different. The Board observed lastly that, while the marks are not visually
similar and have no conceptual content, they are very similar phonetically and that, since the majority
of car rental contracts are entered into over the telephone, it is the phonetic aspect which is critical in
the present case.
Forms of order sought
11
12
The applicant claims that the Court should:
–
annul the contested decision and remit the trade mark application to OHIM to allow it to proceed;
–
order OHIM to pay the costs.
OHIM contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
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Admissibility
Arguments of the parties
13
At the hearing the applicant claimed that some of the arguments put forward by OHIM in its response
were new as compared with those put forward in the course of the administrative procedure and,
consequently, inadmissible.
14
OHIM contended at the hearing that the arguments set out in its response were admissible, since they
related to generally known facts.
Findings of the Court
15
First, it must be stated that the purpose of an action brought before the Court of First Instance
pursuant to Article 63(2) of Regulation No 40/94 is to obtain a review of the legality of decisions of the
Boards of Appeal. In the context of that regulation, that review must be carried out in the light of the
factual and legal context of the dispute as it was brought before the Board of Appeal (see Case T-57/03
SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 17, and the case-law
cited).
16
Secondly, it is clear from Article 135(4) of the Court’s Rules of Procedure that the parties’ pleadings
may not change the subject-matter of the proceedings before the Board of Appeal.
17
In the present case, the arguments set out in OHIM’s response are restricted to giving examples of
points contained in the contested decision or to commenting on matters of common knowledge.
Consequently, they cannot be regarded as new. The applicant’s objection must therefore be dismissed.
Substance
18
In support of its action, the applicant raises a single plea in law, alleging an infringement of Article 8(1)
(b) of Regulation No 40/94.
Arguments of the parties
19
First, on the subject of the similarity between the conflicting marks, the applicant maintains that, since
car rental in Spain is normally for tourist or business purposes, the vast majority of persons who hire a
car in Spain possess at least some knowledge of English. The applicant adds that car rental is a luxury
service, so that the intended consumers in this case are relatively affluent. In addition, at the hearing,
the applicant stated that the majority of the population of the Canary Islands have knowledge of
English. Accordingly, the Board of Appeal was wrong to decide that the relevant public is not Englishspeaking.
20
Secondly, contrary to what was determined in the contested decision, the marks at issue have a
conceptual content. On the one hand, CICAR, composed of the elements ‘ci’ (abbreviation of ‘Canary
Islands’) and ‘car’ (an English word also understood by the average Spanish consumer), suggests
motorised transport services on the Canary Islands or brings to mind the word ‘cigarro’(cigar). On the
other hand, ZIPCAR, composed of the elements ‘zip’ and ‘car’ suggests rapid and/or convenient
transport services or brings to mind the words ‘zipizape’ (hubbub) or ‘ziper’ (zip). In any event, even on
the assumption that the marks have no conceptual content, that fact should have been taken into
account by the Board of Appeal in its assessment of the likelihood of confusion.
21
Thirdly, according to the applicant, the aural similarity between the marks is limited, contrary to what
is asserted in the contested decision. Unlike the word ‘cicar’ which flows easily and sounds soft, the
word ‘zipcar’ is pronounced as two separate syllables and sounds harder. Moreover, the ‘p’ is fully
pronounced, the ‘i’ is short and the ‘pc’ combination, both in English and Spanish, is unusual.
22
In any event, it is unlikely that the aural similarity in question will result in a likelihood of confusion.
Contrary to what was determined in the contested decision, car rental is a very visual market.
Consequently, the Board of Appeal did not attach sufficient importance to the visual dissimilarity of the
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marks, though it was acknowledged in paragraph 21 of the contested decision. In addition, in the contested
decision the Board wrongly failed to consider that the relevant public is particularly attentive because of
the nature of the services covered in this case.
23
At the hearing the applicant added that the operation of the market in question and the definition of
the relevant public were not matters of common knowledge. The applicant also submitted that CICAR,
meaning ‘Canary Islands Car’, was not distinctive.
24
Having regard to the strong conceptual and visual differences and the limited protection enjoyed by the
mark CICAR because of its lack of distinctiveness, a likelihood of confusion should be discounted in the
present case. The same conclusion would apply, even if it were accepted that the primary means of
marketing and choosing car rental services is oral. The opponent’s operating methods (‘traditional’ car
rental) differ from those of the applicant (self-service car rental). At the hearing the applicant submitted
that OHIM and it were in agreement that the services covered by the mark applied for were not identical
to those covered by the earlier mark.
25
OHIM disputes the applicant’s arguments.
Findings of the Court
26
Under Article 8(1)(b) of Regulation No 40/94, 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.
27
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 (judgment of 15 March 2006 in Case T-31/04 Eurodrive Services and Distribution v OHIM –
Gómez Frías (euroMASTER), not published in the ECR, paragraph 28; Case T-150/04 Mülhens v OHIM –
Minoronzoni (TOSCA BLU) [2007] ECR II-0000, paragraph 25; see also, by analogy, Case C-39/97
Canon [1998] ECR I-5507, paragraph 29).
28
The global assessment of the likelihood of confusion must, as regards the visual, phonetic or
conceptual similarities between the marks at issue, be based on the overall impression created by those
marks, bearing in mind, in particular, their distinctive and dominant components (Case C-234/06 P Il
Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 33; see also, by analogy, Case C-251/95
SABEL [1997] ECR I-6191, paragraph 23).
29
In accordance with settled case-law, in order to assess the similarity of goods or services, all the
relevant features of the possible relationship between them should be taken into account. Those factors
include, in particular, their nature, their intended purpose, their method of use and whether they are in
competition with each other or are complementary (Case C-416/04 P Sunrider v OHIM [2006] ECR
I-4237, paragraph 85, and judgment of 7 November 2007 in Case T-57/06 NV Marly v OHIM – Erdal
(Top iX) , not published in the ECR, paragraph 61).
30
That global assessment implies some interdependence between the factors taken into account and, in
particular, between the similarity of the trade 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 T-6/01 Matratzen Concord v OHIM – Hukla
Germany (MATRATZEN) [2002] ECR II-4335, paragraph 25; see, by analogy, Canon, paragraph 17).
31
The average consumer of the category of goods or services concerned is deemed to be reasonably well
informed and reasonably observant and circumspect (see, by analogy, relating to Article 5(2) of Council
Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to
trade marks (OJ 1989 L 40, p. 1), Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819,
paragraph 26, and Top iX, paragraph 45).
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–
The relevant public
32
The Board of Appeal essentially stated, in paragraph 19 of the contested decision, that the relevant
public consisted of average consumers of everyday consumer goods, since the services in question were
not aimed at a specific public. The applicant submits, on the other hand, that the relevant public in this
case consists of persons who hire a vehicle for tourist or business purposes and who are relatively
affluent, since car rental is a ‘luxury’ service.
33
In the present case, it must be held that the definition of the relevant public set out in the contested
decision is correct. While a car may be hired for tourist or business purposes, it remains the case that
anyone may find it necessary to hire a car. Thus, there may be various reasons for hiring a vehicle,
such as for personal transport or a removal. Moreover, car rental cannot be regarded as the preserve of
affluent members of the public.
34
In addition, the Board of Appeal was correct to hold that the relevant public was not English -speaking.
That conclusion must stand even if it is accepted that in certain regions of Spain, such as the Canary
Islands, English is commonly spoken or that some Spanish consumers have knowledge of English. For
the purposes of defining the relevant public, account must be taken of the average consumer over the
whole territory of the Member State concerned, which in the present case is Spain. Accordingly, the
relevant public in this case is a Spanish-speaking public which has no particular knowledge of English.
–
The similarity of the services
35
As is clear from paragraph 20 of the contested decision, the services covered by the trade mark
application and those covered by the earlier mark are, as regards some of them, if not exactly identical,
at least very similar, and, as regards others, not materially different.
36
That finding must be upheld. First, since ‘vehicle rental reservation services’ are covered by both
marks, they are identical.
37
Secondly, a number of the services covered by the trade mark application (‘vehicle rental’,
‘arrangement of rental of vehicles’, ‘scheduling, planning, organising, managing and providing the
temporary use of motor vehicles’ and ‘information, advisory and consultancy services relating to the
foregoing’) are very similar to the services covered by the earlier mark (‘vehicle rental reservation
services’). Essentially, they relate to the rental of vehicles.
38
Thirdly, the other services covered by the mark applied for (‘arrangement of travel and transportation;
transportation reservation services; motor vehicle sharing services’) are not materially different from
those covered by the earlier mark, since they may come from the same undertakings and are
complementary to the rental of vehicles.
39
It follows that the services covered by the trade mark application and those covered by the earlier
mark are in part identical, in part very similar, and in part not materially different.
–
The similarity of the signs
40
As regards the visual aspect, it is undisputed that, as determined in paragraph 21 of the contested
decision, the marks at issue are not similar. It must however be pointed out that this lack of similarity is
diminished by the fact that the number of letters in CICAR and ZIPCAR is almost identical (five and six)
and the second letter (‘i’) and their last three letters (‘car’) are identical.
41
As regards the phonetic aspect, it must be noted that it is difficult to establish with any certainty how
the average consumer will pronounce a word of foreign origin in his native language. First, there is no
certainty that the word will be recognised as being foreign. Secondly, even if the foreign origin of the
word in question is recognised, it may not be pronounced in the same manner as in the original
language. A correct pronunciation according to the original language presupposes not only knowledge of
that pronunciation, but also the ability to pronounce the word in question with the correct accent (see,
to that effect, HOOLIGAN, paragraph 58).
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42
In the present case, the average Spanish-speaking consumer will not perceive ZIPCAR as an English
word, since the first syllable (‘zip’) is not an English word which is generally known by that consumer.
Besides, even on the assumption that the average Spanish-speaking consumer recognises the foreign
origin of the words ‘zip’ and ‘car’, there is no reason to think that he will pronounce ZIPCAR according to
the rules of English pronunciation. It is a fortiori very unlikely that the average consumer in Spain will
pronounce the term ‘cicar’ in the English way, when any perception by him of its first syllable as being
the acronym of the English name for the Islas Canarias is a matter of chance, particularly so when the
Spanish acronym of the Canary Islands is ‘IC’.
43
Having regard to those considerations, the Board of Appeal correctly stated, in the contested decision,
that the conflicting marks were phonetically very similar. As was determined in the contested decision
and contrary to the applicant’s argument in paragraph 21 above, according to the rules of pronunciation
of ordinary Spanish, the first letter of each of the two conflicting marks (‘c’ and ‘z’) is pronounced in the
same way, and in ZIPCAR the first consonant of the combination ‘pc’ is practically inaudible.
Consequently, the two marks are pronounced in a manner which is very similar, if not almost identical.
44
That conclusion remains valid even on the assumption that the average Spanish consumer recognises
the English word ‘car’ in the conflicting marks. Whether he pronounces that word according to the rules
of Spanish or English pronunciation, it will, in respect of the two conflicting signs, be pronounced in the
same way.
45
As regards the conceptual aspect, as correctly stated by the Board of Appeal in paragraph 23 of the
contested decision, since the conflicting marks were composed of terms which did not exist in Spanish
and which therefore had no conceptual content for the relevant public in this case, no conceptual
comparison of the marks could be made. Moreover, the average Spanish-speaking consumer’s
knowledge of English cannot be regarded as sufficiently extensive and sophisticated to enable him to
recognise the evocative meaning relied on by the applicant (‘Canary Islands car’ for CICAR and ‘rapid
and/or convenient transport services’ for ZIPCAR). In addition, the link which, according to the
applicant, exists between the earlier mark and the Spanish word ‘cigarro’ is too weak both phonetically
and conceptually to produce a conceptual content or an evocative meaning. The same applies to the
Spanish words ‘zipizape’ and ‘ziper’, which, according to the applicant, are evoked by the mark applied
for.
46
In addition, even on the assumption that an average Spanish consumer is able to recognise, in the
conflicting marks, the English word ‘car’, the effect of that common element would undoubtedly be that
the marks become conceptually closer, notwithstanding the limited distinctiveness of that element in
relation to the services in question.
–
The likelihood of confusion
47
It is true that the level of attention of the average consumer is likely to vary according to the category
of goods or services in question (see Top iX, paragraph 45 and the case-law referred to). However, in
the present case, there is no basis for the inference that the degree of attention of the relevant public is
particularly high when a car rental supplier is being chosen. There are no factors present which
encourage a high degree of attention, such as a high price or the technological nature of the service.
Consequently, the applicant’s argument that the relevant public is particularly attentive because of the
nature of the services covered in the present case must be rejected.
48
In addition, the applicant claimed that the earlier mark was not distinctive, by arguing that it was the
abbreviation of ‘Canary Islands car’. However, as was stated in paragraph 45 above, the earlier mark
will not be perceived by the relevant public as being the abbreviation of ‘Canary Islands car’.
Accordingly, it cannot be maintained that the earlier mark has limited protection.
49
The Board of Appeal states in the contested decision that the majority of motor vehicle rental contracts
are entered into by telephone. While there is no doubt that the services in question may be chosen by
sight, it is equally undeniable that a not insignificant proportion of car rental contracts are negotiated
orally. Moreover, on any view of the matter, it must be pointed out that car rental suppliers are
recommended and chosen orally in a significant number of cases. Consequently, while it is true that the
potential customer of the services in question may encounter the visual representation of the mark first,
the phonetic element may play a decisive role in his choosing the services in question, in particular as
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regards services, amongst those covered by the mark applied for, which are not limited to car rental in the
strict sense.
50
In the light of all those considerations, the Board of Appeal was fully entitled to conclude in the
contested decision that there was a likelihood of confusion within the meaning of Article 8(1)(b) of
Regulation No 40/94.
51
It follows that the single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 40/94,
is unfounded and that, consequently, the action must be dismissed.
Costs
52
Under Article 87(2) of the Rules of Procedure, 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, as applied for by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby
1.
Dismisses the action;
2.
Orders Zipcar, Inc. to pay the costs.
Martins Ribeiro
Papasavvas
Delivered in open court in Luxembourg on 25 June 2008.
E. Coulon
Registrar
Wahl
M.E. Martins Ribeiro
President
* Language of the case: English.
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