Hrbek v OHIM - Blacks Outdoor Retail Ltd [2012] EUECJ C-42/12 (29 November 2012)

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(Appeals – Community trade mark – Regulation (EC) No 207/2009 – Article 8(1)(b) – Relative ground for refusal – Likelihood of confusion – Figurative mark – Opposition by the proprietor of an earlier trade mark – Appeal clearly inadmissible and clearly unfounded)

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 25 January 2012,

Václav Hrbek, residing in Augustinova (Czech Republic), represented by M. Sabatier, avocat,

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

Blacks Outdoor Retail Ltd, formerly The Outdoor Group Ltd, established in Pilsworth, Bury (United Kingdom), represented by M.S. Malynicz, barrister,

composed of U. Lõhmus, acting as President of the Sixth chamber, A. Ó Caoimh (Rapporteur) and C.G. Fernlund, Judges,

1 By his appeal, Mr Hrbek seeks to have set aside the judgment of 15 November 2011 in Case T‑434/10 Hrbek v OHIM – Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT) (‘the judgment under appeal’), by which the General Court of the European Union dismissed his action seeking the annulment of the decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 July 2010 (Case R 1441/20092) refusing registration of the figurative mark ‘ALPINE PRO SPORTSWEAR & EQUIPMENT’ as a Community trade mark (‘the contested decision’).

2 Article 8 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), entitled ‘Relative grounds for refusal’, provides in paragraph 1:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

b) 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.’

‘1. Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

4 On 12 March 2007, the appellant, Mr Václav Hrbek, filed an application for registration of a Community trade mark at OHIM under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), now replaced by Regulation No 207/2009.

5 The trade mark in respect of which registration was sought is the following figurative sign:

6 The goods in respect of which registration was applied for are in Classes 18, 24, 25 and 28 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

– Class 18: ‘Briefcases, rucksacks, bags, umbrellas, handbags, trunks, shopping bags, purses, not of precious metal, umbrella covers, backpacks, parasols, school satchels’;

7 The application for a Community trade mark was published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.

8 On 23 January 2008, The Outdoor Group Ltd, intervener at first instance, 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 mark applied for in respect of the goods referred to in paragraph 6 of the present order. The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was based on the following earlier Community figurative mark:

9 The earlier mark, filed on 5 April 2001 and registered on 17 August 2004 under number 2165017, covers goods in Classes 18 and 25 of the Nice Agreement and corresponding, for each of those classes, to the following description:

– Class 18: ‘Articles made of leather or imitation leather; bags, backpacks, haversacks, rucksacks, knapsacks, trunks, luggage, suitcases, holdalls, belts, wallets; none of the aforesaid goods having any connection with articles for motorcyclists or motorists’, and

– Class 25: ‘Ski footwear and headgear; skiwear; but not including neck ties, bow-ties, scarves, cummerbunds and neckerchiefs’.

10 On 29 September 2009, the Opposition Division of OHIM upheld the opposition in part. It took the view, first, that, apart from toys and games, included in Class 28 of the Nice Agreement, the remaining goods in respect of which the registration of the mark at issue was applied for were identical or had varying degrees of similarity to those covered by the earlier mark and, secondly, that the signs at issue were similar overall, in so far as the most distinctive and dominant component of the marks overlaps, that is to say, the word element ‘alpine’. Therefore, a significant part of the relevant public would be likely to attribute the same origin to the goods at issue, or believe that they came from economically‑linked undertakings.

11 On 26 November 2009, the appellant lodged an appeal with OHIM against the Opposition Division’s decision.

12 By the contested decision, the Second Board of Appeal of OHIM dismissed the appeal on the ground that there was a likelihood of confusion between the two signs at issue.

13 By application lodged at the Registry of the General Court on 17 September 2010, the appellant brought an action seeking annulment of the contested decision.

14 The appellant raised two pleas in law in support of his action, of which only one – the plea in law alleging breach of Article 8(1)(b) of Regulation No 207/2009 – is the subject of the present appeal. By that plea, the appellant challenged the contested decision as regards the level of attention of the relevant public, the similarity of the goods in question, the similarity of the signs at issue, and the likelihood of confusion.

15 As regards, in the first place, the level of attention of the relevant public, the General Court held, in paragraph 31 of the judgment under appeal, that, contrary to the conclusion of the Second Board of Appeal of OHIM, the level of attention of the relevant public in respect of skiwear, ski footwear and headgear, as well as rucksacks is – for a section of that public – higher, since the relevant public includes consumers who regularly ski or hike and therefore know those goods well.

16 As regards, in the second place, the comparison of the goods, the General Court found, in paragraphs 32 to 47 of the judgment under appeal, that the Second Board of Appeal of OHIM acted correctly in finding that the ‘umbrellas, umbrella covers and parasols’ in Class 18 of the Nice Agreement, the ‘sleeping bags and sleeping sacks’ in Class 24 of the Nice Agreement, the ‘clothing, footwear, headgear’ in Class 25 of the Nice Agreement, and the ‘sporting articles’ in Class 28 of the Nice Agreement had varying degrees of similarity with the goods covered by the earlier trade mark.

17 Regarding, first, the similarity between the ‘umbrellas, umbrella covers and parasols’, covered by the mark applied for, and the ‘bags and luggage’ covered by the earlier mark, the General Court found, in paragraph 35 of the judgment under appeal that, contrary to what was claimed by the appellant, the Second Board of Appeal, in the contested decision, did not base its finding of the low degree of similarity between those goods solely on the fact that they are sold in the same outlets, but on the finding that all of those articles belonged to the ‘travel accessories’ category and that, despite being different in nature and purpose, were likely to be sold in the same outlets or in the same sections of department stores and under the same mark. Observing that the appellant did not put forward any specific argument capable of challenging the inclusion of umbrellas, umbrella covers and parasols as travel accessories and their distribution under the same marks as bags and luggage, the General Court concluded, in paragraph 36 of the judgment, that the Second Board of Appeal of OHIM was correct to find that those goods have a low degree of similarity.

18 Regarding, secondly, the similarity between ‘sleeping bags and sleeping sacs’, covered by the mark applied for, and the ‘backpacks, haversacks, rucksacks, knapsacks’ covered by the earlier mark, the General Court found, in paragraph 38 of the judgment under appeal, that the latter were sought not only by skiers but also by a quite wide range of consumers, including those who engage in certain sports or who take part in adventure holidays, who may also be looking for sleeping bags and sleeping sacks in the pursuit of those sports or holidays. The General Court therefore pointed out, in that paragraph, that the Second Board of Appeal of OHIM had found, without the appellant putting forward any argument that could cast doubt on that finding, that the goods at issue target the same consumers and may be sold under the same mark.

19 Regarding, thirdly, the similarity between the ‘clothing, footwear, headgear’, covered by the mark applied for, and the ‘skiwear, ski footwear and headgear’ covered by the earlier mark, the General Court dismissed the appellant’s argument that the Second Board of Appeal of OHIM should not have rejected the application for registration for all the goods in Class 25 of the Nice Agreement, but only for those giving rise to a likelihood of confusion with the goods covered by the earlier mark. In that respect, the General Court found, in paragraph 42 of the judgment under appeal, that the category of goods ‘clothing, footwear, headgear’ covered by the mark applied for may, inter alia, include ‘skiwear, ski footwear and headgear’ covered by the earlier mark, since, in the absence of a restriction of any kind in respect of the description of the goods of the mark applied for, it cannot be ruled out that the appellant may try to market skiwear under that mark as clothing. Consequently, the General Court held that there is an overlap between the categories of goods referred to above and, contrary to the appellant’s claim, that the goods in question are therefore identical.

20 As regards, fourthly, the similarity between the ‘sporting articles’, covered by the mark applied for, and the skiwear covered by the earlier mark, the General Court found, in paragraph 46 of the judgment under appeal, that they are complementary and therefore similar since, on the one hand, the first category covers all sports, including skiing, in so far as the application for a Community trade mark contains no restriction in that regard, and, on the other, skiwear includes articles necessary for practising winter sports, so they may be sold under the same mark or in the same outlets and consumers may think that the same undertaking is responsible for manufacturing those goods.

21 As regards, in the third place, the comparison of the signs, after recalling, in paragraph 48 of the judgment under appeal, the case-law according to which the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited), the General Court examined, in paragraph 53 of the judgment under appeal, the different elements of the signs at issue and concluded, in paragraph 55, that, in the circumstances, the term ‘alpine’ dominates the overall impression created by the signs at issue, with the result that consumers retain it in their memory, whereas the other figurative and word elements are negligible for the relevant public. The General Court pointed out, in paragraph 54 of the judgment under appeal, that the consumer generally pays greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign.

22 The General Court then examined, in paragraphs 56 to 65 of the judgment under appeal, the visual, phonetic, and conceptual similarity of the signs at issue.

23 Regarding visual similarity, the General Court found, in paragraphs 56 to 59 of the judgment under appeal, that the signs at issue have in common the dominant element ‘alpine’ and are therefore similar from that point of view, without the presence of relatively simple figurative elements in the two signs being capable of casting doubt on that conclusion. The General Court rejected, in that respect, the appellant’s arguments alleging that the mark applied for is a composite mark, and relating to the fact that the mark applied for is represented in lower-case letters, whereas the earlier mark is represented in capital letters.

24 Regarding phonetic similarity, the General Court found, in paragraphs 60 and 61 of the judgment under appeal, that, in view of the term ‘alpine’ present in both of the marks at issue, the marks are also similar from that perspective. In that regard, the General Court held that the difference linked to the addition of the expressions ‘pro’ and ‘sportswear & equipment’ to the term ‘alpine’ did not call into question the existence of a phonetic similarity, in so far as the two marks have a dominant element in common, and since the expressions in question occupy a secondary position in the mark applied for, so that they are not likely to be pronounced by the relevant public.

25 Regarding the conceptual similarity, the General Court – after indicating, in paragraph 62 of the judgment under appeal, that the existence of a conceptual similarity between the signs is independent of the issue of whether or not the signs at issue are highly distinctive – found, in paragraph 63 of that judgment, that the term ‘alpine’ has a clear meaning for the English and French public, that is to say, ‘the Alps’ or ‘relating to the Alps’ and that the term has quite close equivalents in other languages of the European Union, such as Spanish, German, and Italian, so that, for those members of the public who understand the meaning of that term, the signs at issue are conceptually similar, in so far as they have the dominant element ‘alpine’ in common.

26 Moreover, the General Court found, in paragraph 64 of the judgment under appeal, that since the expressions ‘pro’ and ‘sportswear & equipment’ present in the mark applied for have a widespread use in the trade context in question and have a secondary nature, they are therefore not likely to play a decisive role in differentiating between the signs at issue, as the dominant element of both is ‘alpine’.

27 As regards, in the fourth place, the likelihood of confusion, the General Court rejected the appellant’s argument that, since the word element is descriptive and therefore lacking distinctive character, it must be available for use by other traders.

28 In that respect, the General Court indicated, first of all, in paragraph 69 of the judgment under appeal, that, on the assumption that this argument could be understood as meaning that the mark applied for was contrary to the absolute grounds for refusal and may not be registered, that does not fall within the jurisdiction of the General Court in opposition proceedings.

29 Then, in paragraph 70 of the judgment under appeal, the General Court pointed out that – should the appellant be seeking to highlight the weak distinctive character of the earlier mark – in accordance with the case‑law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion with the mark applied for, since the distinctive character of the earlier mark is only one factor among others which must be taken into account when assessing the likelihood of confusion. Accordingly, in paragraph 71 of that judgment, the General Court found that, in the circumstances, the alleged weak distinctive character, or descriptive character, of the element ‘alpine’ cannot preclude a likelihood of confusion as, on the one hand, the goods covered by the two signs at issue are identical or have varying degrees of similarity and, on the other, the signs at issue are visually, phonetically and conceptually similar.

30 Finally, the General Court found, in paragraph 73 of the judgment under appeal, that the fact that part of the relevant public’s level of attention is quite high in respect of skiwear, ski footwear, headgear, as well as rucksacks, is irrelevant in the present case in the light of the similarity of the signs at issue.

31 The General Court therefore concluded that the Second Board of Appeal of OHIM did not err in finding that there was a likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, consequently, it dismissed the action in its entirety.

– give final judgment in the matter by annulling the contested decision or, in the alternative, refer the case back to the General Court, and

– order OHIM to pay the costs incurred both in the appeal proceedings and in the proceedings before the General Court.

33 OHIM and Blacks Outdoor Retail Ltd (‘Blacks Outdoor Retail’), formerly The Outdoor Group Ltd, claim that the Court should dismiss the appeal and order the appellant to pay the costs.

34 Under Article 181 of the Rules of Procedure of the Court of Justice, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part without opening the oral procedure.

35 In support of his appeal, the appellant relies on a single ground of appeal alleging errors in the interpretation and application of Article 8(1)(b) of Regulation No 207/2009. That ground of appeal is divided in four parts. The first part alleges that the General Court failed to examine the marks at issue on the basis of the ‘global examination’ and the ‘overall impression’ criteria. The second part alleges that the General Court failed to take into consideration and apply some relevant and important criteria, in particular the lack of distinctiveness and the descriptive character of the word element ‘alpine’. The third part alleges that the General Court failed to draw the legal conclusions from its own findings concerning the degree of attention of the relevant public. The fourth part alleges that the judgment under appeal is vitiated by a distortion of the facts, and by a violation of the duty to provide reasons, concerning the comparison of the goods.

36 The appellant claims that the General Court failed to assess the marks at issue on the basis of the ‘global assessment’ and the ‘overall impression’ they produce, but rather exclusively based its assessment, in paragraph 50 of the judgment under appeal, on the fact that those marks shared the common element ‘alpine’. The General Court thus did not attach sufficient importance to the presence of other word and figurative elements and did not explain why those elements, considered as a whole, are not sufficient to exclude any risk of confusion. According to the appellant, the comparison of the signs is therefore visually, phonetically, and conceptually erroneous, since the dominant element is either the capital letter ‘A’, or the word element ‘lpine’ but it cannot be the whole word element ‘alpine’.

37 Moreover, the appellant submits that the General Court, in paragraph 54 of the judgment under appeal, did not draw the legal conclusions from its own findings concerning the beginning of the mark applied for, since the first word element of the mark applied for is the capital letter ‘A’, placed at the beginning, in bigger characters than the word element ‘LPINE’ and in a different colour.

38 OHIM and Blacks Outdoor Retail contend that the first part of the single ground of appeal is unfounded as the General Court complied with the duty to carry out a global assessment of the signs at issue, bearing in mind, in particular, their distinctive and dominant elements. OHIM submits that the General Court, in paragraphs 53 to 55 of the judgment under appeal, found that the dominant element in the signs at issue is the word element ‘alpine’, since the differentiating word and figurative elements were so secondary in importance that they may go unnoticed by the relevant public. Moreover, although it could have, according to OHIM, restricted its assessment of the similarity solely on the basis of the dominant element ‘alpine’, the General Court did not limit its comparison of the signs to one of their elements, but, on the contrary, it weighed the visual, phonetic, and conceptual impact of the figurative and word elements that accompany the word element ‘alpine’ in paragraphs 57, 58, 60 and 64 of the contested judgment. In OHIM’s view, contrary to the appellant’s allegations, the General Court did not dismiss any of those differentiating elements from the comparison of the signs at issue and it did give reasons as to why such elements do not offset the presence of the element ‘alpine’ in the impression left by those signs.

39 Furthermore, OHIM submits that the appellant’s argument that the dominant element in the contested mark is either the stylised capital ‘A’ or the word element ‘LPINE’, must be dismissed. In OHIM’s view, on the one hand, that argument concerns the assessment of facts and, for that reason, it is inadmissible. On the other, it is clearly unfounded as no one would ever read the contested sign as ‘A-LPINE’.

40 It should be recalled that, according to the Court’s case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression they produce, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23; Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25; order in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657, paragraph 29; OHIM v Shaker, paragraph 35; and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 34).

41 Contrary to what is claimed by the appellant, the General Court, in the judgment under appeal, carried out such a global assessment of the likelihood of confusion.

42 After finding, following an examination of the various word and figurative elements composing the signs at issue, in paragraphs 53 to 55 of the judgment under appeal, that the term ‘alpine’ dominates the overall impression produced by those signs, the General Court verified, in paragraphs 56 to 64 of that judgment, whether the figurative and word elements that accompany the term were visually, phonetically, and conceptually capable of calling into question the similarity resulting from the presence of that dominant element in both of the signs at issue. The General Court concluded, however, on completing that assessment, that such was not the case, responding in that respect to each of the arguments put forward by the appellant, and stating reasons to the requisite legal standard justifying that conclusion. The appellant’s argument in the first part of the single ground of appeal is therefore based on an incorrect reading of the judgment under appeal.

43 For the rest, inasmuch as the appellant seeks to contest, by that part of the single ground of appeal, the findings made by the General Court in paragraphs 53 to 55 of the judgment under appeal, concerning the dominant element of the signs at issue, it is sufficient to point out that, as the appellant has not claimed any distortion by the General Court in that respect, such findings fall within the appraisal of the facts and the evidence by the General Court and that, consequently, his arguments are, in that respect, inadmissible.

44 Under the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, in particular, Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 26; order of 26 April 2012 in Case C‑307/11 P Deichmann v OHIM, paragraph 58; and Case C‑311/11 P Smart Technologies v OHIM [2012] ECR I‑0000, paragraph 52).

45 Consequently, the first part of the single ground of appeal must be rejected as being in part clearly inadmissible and in part clearly unfounded.

46 The appellant claims that the General Court, in the judgment under appeal, failed to consider certain relevant factors in determining the likelihood of confusion between the marks at issue and accorded insufficient or no importance to the lack of distinctive character of the verbal element ‘alpine’. He submits that the degree of similarity between two signs which share a common element depends to a large extent on the distinctive and non-descriptive character of the earlier mark. In the appellant’s view, the weaker the distinctive character of a sign, the lower the level of protection of that mark.

47 By his first argument, the appellant alleges that, in the judgment under appeal, the method used by the General Court to compare the signs at issue leads to a result which conflicts with settled case-law, according to which a non-distinctive element of a complex mark cannot be considered by the targeted public as being the element which dominates the overall impression created by that mark (see Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 49; Case T‑117/02 Grupo El Prado Cervera v OHIM – Héritiers Debuschewitz (CHUFAFIT) [2004] ECR II‑0000, paragraph 51; and Case T‑390/03 CM Capital Markets v OHIM – Caja de Ahorros de Murcia (CM) [2005] ECR. II‑1699, paragraph 48).

48 The appellant claims that the term ‘alpine’ is internationally understood as a clear reference to the place where the products may be used or where they emanate from and that it cannot therefore be a constituent element of a mark, in particular for skiwear, rucksacks and other similar products for ski sports. Thus, according to the appellant, in so far as that word element is descriptive and, therefore, lacks distinctive character, it must be available for use by other traders. The appellant submits that, in paragraph 63 of the judgment under appeal, the General Court did not rule on the meaning of the term ‘alpine’ in all of the languages of the European Union. Moreover, the appellant claims that the General Court, in paragraph 71 of that judgment, failing to draw the legal conclusions from its own findings, did not clearly rule on the lack of distinctiveness and the descriptive character of the word ‘alpine’.

49 According to the appellant, the General Court found that the term ‘alpine’ was the dominant element of the two signs at issue, without taking into consideration the lack, or at least, the very low level of distinctiveness of the earlier mark alpine. The appellant submits that, contrary to the principle laid down in paragraph 18 of the judgment in Case C‑39/97 Canon [1998] ECR I‑5507, the approach adopted in the judgment under appeal in assessing the similarity between the signs at issue artificially gives priority to an element of a complex mark which is of weak distinctive character. Since the common element ‘alpine’ has a weak distinctive character, the other elements which distinguish the complex mark applied for from the earlier mark should have been given more importance in the assessment of the signs at issue. In the appellant’s view, the word element ‘alpine’ has such a low level of distinctiveness that the other word and graphic elements present in the mark applied for are capable of distinguishing the marks at issue. Thus, according to the appellant, the General Court should have rejected any similarity between the two signs at issue and, as a result, any likelihood of confusion.

50 By his second argument, the appellant claims that the reasoning set out in the judgment under appeal is vitiated by a contradiction which led the General Court to find, wrongly, that the marks at issue were conceptually similar without taking into consideration the lack, or at least, the low level of distinctiveness of the earlier mark. A conceptual comparison of the word element ‘alpine’ is, according to the appellant, irrelevant, because of that word element’s lack of distinctive character.

51 OHIM contends that the first argument is inadmissible since it simply reiterates an argument raised during the administrative phase of the proceedings and before the General Court. In any event, OHIM and Blacks Outdoor Retail submit that the first argument is unfounded, as the reasoning set out in paragraphs 70 and 71 of the judgment under appeal is in line with the guidance given by the Court of Justice in the order of 27 April 2006 in Case C‑235/05 P L’Oréal v OHIM.

52 As regards the second argument, OHIM submits that the General Court rightly found, in paragraph 62 of the judgment under appeal, that the existence of a conceptual similarity between the signs is independent of the issue of whether or not the signs at issue are highly distinctive and that these two issues must be addressed separately. In OHIM’s view, since the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components, a conceptual similarity resulting from the fact that two signs coincide in a weakly distinctive or descriptive element may have a lower importance in the overall assessment. However, according to OHIM, that does not mean that the conceptual comparison should be considered irrelevant in such a case.

53 As regards the first argument, it must be recalled that, according to settled case-law, it follows from the second subparagraph of Article 256(1) TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice, and Article 168(1)(d) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and the legal arguments specifically advanced in support of the appeal. Accordingly, an appeal which merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the General Court, including those based on facts expressly rejected by that Court, does not satisfy the requirements to state reasons under those provisions. Such an appeal amounts in reality to no more than a request for re‑examination of the application submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (see, inter alia, Case C‑352/98 P Bergaderm and Goupil v Commission [2000] ECR I‑5291, paragraphs 34 and 35, and Case C‑240/03 P Comunità montana della Valnerina v Commission [2006] ECR I‑731, paragraphs 105 and 106 and the case-law cited, and the order of 9 March 2012 in C‑406/11 P Atlas Transport v OHIM, paragraphs 31 and 32).

54 However, provided that the appellant challenges the interpretation or application of European Union law by the General Court, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not thus base his appeal on pleas in law and arguments already relied on before the General Court, an appeal would be deprived of part of its purpose (see, inter alia, Comunità montana della Valnerina v Commission, paragraph 107 and the case-law cited; Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 48; and Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 110).

55 In the present case, although, as OHIM points out, the line of argument relied on in support of the first argument of the second part of the single ground of appeal reiterates the line of argument put forward at first instance, it is nevertheless aimed at challenging the interpretation and application by the General Court of Article 8(1)(b) of Regulation No 207/2009 as regards the relevant legal criteria for establishing the existence of a likelihood of confusion. That argument is therefore admissible in the present appeal.

56 As regards the substance of that argument, it must be noted that the Court, rejecting the same line of argument as that put forward by the appellant in the present part of the single ground of appeal, has held, in paragraph 39 of the order in L’Oréal v OHIM, that the General Court cannot be criticised for not having disregarded, in its examination of the similarity of the signs at issue, a dominant element which is common to the marks, on the ground that the earlier mark is only of weak distinctive character.

57 The distinctive character of the earlier mark cannot have the significance which the appellant argues it should be given in the comparison of the signs at issue, as it is not a factor which influences the perception which the consumer has of the similarity of the signs (order in L’Oréal v OHIM, paragraphs 41 and 42).

58 Furthermore, the existence of a 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 (order in L’Oréal v OHIM, paragraph 34 and the case‑law cited).

59 That global assessment implies some interdependence between the relevant factors, and in particular a similarity between the trade marks, and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Accordingly, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the assessment of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services covered (order in L’Oréal v OHIM, paragraph 35 and the case-law cited).

60 In that respect, since the more distinctive the earlier mark, the greater the risk of confusion, trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with less distinctive character. It follows that there may be a likelihood of confusion, notwithstanding a low degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive (order in L’Oréal v OHIM, paragraphs 36 and 37 and the case-law cited).

61 Although the distinctive character of the earlier mark must thus be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment.

62 A line of argument such as that put forward by the appellant would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question (order in L’Oréal v OHIM, paragraph 45). Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, paragraph 41).

63 Therefore, the General Court did not err in law in finding, in paragraphs 70 and 71 of the judgment under appeal, that even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered and that, consequently, in the circumstances, the alleged weak distinctive character, or descriptive character, of the element ‘alpine’ cannot preclude a likelihood of confusion since, on the one hand, the goods covered by the two signs at issue are identical or have varying degrees of similarity and, on the other hand, the signs at issue are visually, phonetically and conceptually similar.

64 Moreover, the appellant was wrong to criticise the General Court for failing to rule on the lack of distinctive character of the term ‘alpine’. The General Court was in no way required to rule on that issue since, in paragraphs 70 and 71 of the judgment under appeal, it found that there was a likelihood of confusion, even in the event that the term ‘alpine’ had a weak distinctive character.

65 For the rest, inasmuch as the appellant claims that the General Court erred in finding that the term ‘alpine’ constitutes the dominant element of the mark applied for, it suffices to point out that, by such a line of argument, the appellant merely challenges the assessment of the facts made by the General Court without alleging any distortion of the evidence in the case-file put before that Court. In accordance with the case-law referred to in paragraph 44 of the present order, that assessment does not constitute a point of law subject, as such, to review by the Court of Justice on appeal.

66 As regards the second argument, it also suffices to point out that it follows from paragraph 57 of the present order that the General Court was correct in finding, in paragraph 62 of the judgment under appeal, that the conceptual similarity between the signs at issue must be assessed independently of their degree of distinctiveness.

67 It follows that the second part of the single ground of appeal must be rejected as being in part clearly inadmissible and in part clearly unfounded.

68 The appellant claims that the judgment under appeal infringes Article 36 of the Statute of the Court and Article 81 of the Rules of Procedure of the General Court in that its reasoning is vitiated by a contradiction which led the General Court wrongly to decide that the goods at issue in the present case were similar. According to the appellant, the General Court could not, without contradicting itself, maintain initially, in paragraph 30 of the judgment under appeal, that, in respect of skiwear, ski footwear, headgear, as well as backpacks and rucksacks, part of the relevant public is composed of consumers who regularly ski or hike and therefore know those goods well, that is to say well-informed and particularly attentive consumers, and then find, in paragraph 42 of the judgment under appeal, that the marks and goods are similar.

69 According to the appellant, the relevant public – well-informed and particularly attentive – would not consider that the marks at issue, and the goods in question, are similar, in particular taking into account the lack of distinctiveness and the descriptive character of the word element ‘alpine’, as well as the fact that there are so many trade marks protected in class 25 of the Nice Agreement. The appellant submits that it is reasonable to consider that the relevant consumer, being well aware of the descriptive meaning of the word ‘alpine’ in relation to skiwear, rucksacks and other similar goods, would not draw any conclusions as regards the commercial origin of those goods on the basis of that term.

70 OHIM and Blacks Outdoor Retail contend that the third part of the single ground of appeal is inadmissible to the extent that it requests the Court of Justice to review the factual appraisals carried out by the General Court.

71 In any event, OHIM and Blacks Outdoor Retail submit that the third part of the single ground of appeal is clearly unfounded. According to OHIM, the test for assessing the similarity of goods and services is objective in essence and does not depend on the degree of attentiveness of the public. In its view, the perception of the relevant public and its degree of attentiveness only play a role when assessing globally whether the degree of similarity of the goods and services and the degree of similarity of the signs can lead to a likelihood of confusion. In that respect, Blacks Outdoor Retail submits that the General Court took account of the higher level of attention of consumers of the goods in question in its assessment of the likelihood of confusion in paragraph 73 of the judgment under appeal.

72 It must be stated that, under the guise of a line of argument alleging contradictory reasoning, the appellant actually seeks to challenge the substance of the assessment of the facts carried out by the General Court in paragraph 42 of the judgment under appeal concerning the similarity between the ‘clothing, footwear, headgear’ covered by the mark applied for and the ‘skiwear, ski footwear and headgear’ covered by the earlier mark. In accordance with the case-law referred to in paragraph 44 of the present order, such a challenge is not, in the absence of a plea that the facts or evidence have been distorted, subject to review by the Court of Justice on appeal.

73 Consequently, the third part of the single ground of appeal must be rejected as clearly inadmissible.

74 The appellant claims that the General Court distorted the facts, and violated the duty to provide reasons, concerning the comparison of the goods. He submits that none of the goods covered by the trade mark applied for are identical or similar to those covered by the opposing mark. Moreover, he claims that the General Court did not establish that those goods are identical or similar, but merely proceeded by means of assertions, without giving any reason or example for those presumptions.

75 Accordingly, in the appellant’s view, in paragraphs 36 and 38 of the judgment under appeal, the General Court merely stated that the appellant had not put forward specific arguments capable of challenging the finding that the ‘umbrellas, umbrella covers and parasols’ covered by the mark applied for are similar to the ‘bags and luggage’ covered by the earlier mark, and that the ‘sleeping bags and sleeping sacks’ covered by the mark applied for are similar to the ‘backpacks, haversacks, rucksacks and knapsacks’ covered by the earlier mark.

76 Likewise, the appellant criticises the General Court’s finding, in paragraph 42 of the judgment under appeal, that the ‘clothing, footwear, headgear’, covered by the mark applied for may, inter alia, include ‘skiwear, ski footwear and headgear’ covered by the earlier mark, in the absence of a restriction of any kind in respect of the description of the goods of the mark applied for. According to the appellant, the General Court should not have rejected the application for registration for all the goods in class 25, but only for those giving rise to a likelihood of confusion with those covered by the earlier mark.

77 Finally, the appellant claims that, contrary to the General Court’s finding in paragraph 46 of the judgment under appeal, the sporting articles covered by the mark applied for are not similar to the skiwear covered by the earlier mark. The fact that those goods are sold in the same outlets is not sufficient to conclude that they should be considered to be similar.

78 OHIM and Blacks Outdoor Retail contend that the appellant merely reiterates arguments raised during the administrative phase of the proceedings and before the General Court. Moreover, they submit that the appellant’s arguments are limited to challenging the factual assessment carried out by the General Court.

79 OHIM adds that the allegation that this assessment was based on distorted facts is clearly unfounded, as the appellant does not even specify which facts have allegedly been distorted by the General Court. Likewise, the allegation that the General Court failed to give reasons in support of its findings is, according to the appellant, also clearly unfounded in the light of paragraphs 34 to 47 of the contested judgment. In that respect, OHIM submits that the General Court in no way inferred the similarity of the goods at issue from the absence of specific arguments put forward by the appellant. It reviewed the legality of the contested decision in the light of the arguments submitted before it and it concluded that those arguments were unconvincing.

80 In any event, Blacks Outdoor Retail submits that the Second Board of Appeal of OHIM was correct to conclude that the ‘sleeping bags and sleeping sacks’ and the ‘backpacks, haversacks, rucksacks and knapsacks’, on the one hand, and the ‘sport articles’ and the ‘skiwear’, on the other, are similar.

81 It must be stated that, by the fourth part of the single ground of appeal, the appellant seeks in essence – by repeating the same arguments that it raised before the General Court – to contest the substance of the findings of that Court in paragraphs 33 to 47 of the judgment under appeal, concerning the assessment of the similarity of the goods in question, without in any way indicating how the General Court’s reasoning in that assessment is vitiated by errors of law.

82 In doing so, the appellant seeks to have reexamined the action brought at first instance and the assessment of the facts and evidence carried out by the General Court in the judgment under appeal, in order to prove that, contrary to the findings of that Court, the goods at issue are neither identical nor similar. In accordance with the case-law referred to in paragraphs 44 and 53 of the present order, such a re-examination, save where the evidence is distorted, is not subject to review by the Court of Justice on appeal.

83 Admittedly, the appellant mentions, in the title of the fourth part of the single ground of appeal, that the judgment under appeal is allegedly vitiated by a distortion of the facts. However, he in no way identifies either the facts or the evidence which were allegedly distorted by the General Court, nor, consequently, how they were distorted.

84 According to the case-law of the Court, Article 256 TFEU, the first subparagraph of Article 58 of the Statute of the Court of Justice, and Article 168(1)(d) of the Rules of Procedure require that where the appellant alleges distortion of the evidence by the General Court, he must indicate precisely the evidence alleged to have been distorted by that Court and show the errors of appraisal which, in his view, led to that distortion (Joined Cases C‑204/00 P, C‑205/00 P, C‑211/00 P, C‑213/00 P, C‑217/00 P and C‑219/00 P Aalborg Portland and Others v Commission [2004] ECR I‑123, paragraph 50; Case C‑281/10 P PepsiCo v Grupo Promer Mon Graphic [2011] ECR I‑0000, paragraph 78; and Case C‑181/11 P Cetarsa v Commission [2012] ECR I‑0000, paragraph 96).

85 Moreover, in so far as, in the fourth part of the single ground of appeal, the appellant accuses the General Court of failing to provide reasons for the judgment under appeal concerning the similarity of the goods at issue, it suffices to point out that paragraphs 35, 36, 38, 42 and 44 to 46 of the judgment set out with the all necessary clarity and detail the reasons for which the goods referred to in those paragraphs are identical or similar. In that respect, the appellant is incorrect in claiming, as regards the examination of the similarity of the ‘umbrellas, umbrella covers and parasols’ and the ‘sleeping bags and sleeping sacks’ with the goods covered by the earlier mark, that the General Court, in paragraphs 36 and 38, merely stated that the appellant had not put forward arguments proving the lack of similarity. Although the General Court made such a statement in those paragraphs, it first indicated, in paragraphs 35 and 38 of that judgment, the reasons for which it considered, like the Second Board of Appeal of OHIM, that the arguments put forward by the appellant were erroneous and, consequently, the reasons why the goods were similar.

86 Accordingly, the fourth part of the single ground of appeal must be rejected as being in part clearly inadmissible and in part clearly unfounded.

87 In the light of all the foregoing the appeal must be dismissed in its entirety.

88 The first paragraph of Article 184(2) of the Rules of Procedure of the Court of Justice states that where the appeal is unfounded the Court shall make a decision as to costs. Under Article 138(1) of those Rules, which applies to the procedure on appeal by virtue of Article 184(1) of those Rules, the unsuccessful party shall be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and Blacks Outdoor Retail have applied for costs and the appellant has been unsuccessful, he must be ordered to pay the costs of this action.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hrbek v OHIM - Blacks Outdoor Retail Ltd [2012] EUECJ C-42/12 (29 November 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/C4212.html Cite as: [2012] EUECJ C-42/12, EU:C:2012:765, ECLI:EU:C:2012:765

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