Judgment — ECLI:EU:T:2017:787
Date: 2017-11-08
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: France

summary of the pleas in law relied on. That information must be sufficiently clear and precise to enable the defendant to prepare his defence and the Court to rule on the action, even without any other information (see judgment of 21 April 2004, Concept v OHIM (ECA), T‑127/02, EU:T:2004:110, paragraph 17 and the case-law cited). In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 8 July 2010, Strålfors v OHIM (ID SOLUTIONS), T‑211/10, not published, EU:T:2010:301, paragraph 5). Similar requirements apply where a claim or an argument is relied on in support of a plea in law (judgment of 9 July 2010, Grain Millers v OHIM — Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38). 87 However, it must be found that the applicant’s general statement that, in essence, with the exception of certain goods in Class 9, all the other goods in Classes 9, 16, 18 and 25 covered by the mark applied for are dissimilar, on the ground that they have no relevant aspects, purpose, method of use, users, distribution channels and providers in common and are neither in competition nor complementary to each other, is the result of a peremptory statement which is neither substantiated nor proven. The applicant does not develop any specific arguments in that regard, does not identify the goods to be compared, and does not state the errors of law or of fact which the Board of Appeal allegedly made during its detailed analysis of the comparison of numerous goods, carried out in paragraphs 23 to 46 of the contested decision. 88 In addition, it is not for the Court to speculate about the reasoning and precise observations, both in fact and law, that lie behind the action (judgment of 9 September 2010, Evropaïki Dynamiki v EMCDDA, T‑63/06, not published, EU:T:2010:368, paragraph 80) and, therefore, to identify, in the present case, which of the applicant’s arguments relate to which goods, nor the goods which must be compared, and which evidence could support the general statement that the criteria of similarity as apparent from the case-law in paragraph 82 above are not met in the circumstances of the case. In any event, as regards the findings that the goods are similar or identical challenged by the applicant, it suffices to note that, in the contested decision, the Board of Appeal correctly took into account the nature (paragraphs 24, 25, 32, 38, and 40 to 45), (almost) identical nature of the wording (paragraphs 32, 34, 39 and 46), purpose (paragraphs 24, 25, 38, 44 and 45), use (paragraphs 25, 40 and 45), manufacture (paragraphs 41 and 44), distribution channels (paragraphs 38, 41, 42, 44 and 45), and complementarity of the goods (paragraphs 33, 40 to 41 and 45). 89 Accordingly, the complaint alleging the lack of similarity of some of the goods concerned must be rejected. The likelihood of confusion 90 A global assessment of the likelihood of confusion 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). 91 In paragraphs 55 to 59 of the contested decision, the Board of Appeal, in essence, found that the earlier marks were inherently distinctive for the goods designated in Classes 9, 16, 18 and 25, on the ground essentially that they had no meaning in relation to those goods. It concluded, in paragraphs 72 and 73 of that decision, that, in view of the identical nature or similarity of the goods covered by the marks at issue, the visual, phonetic and conceptual similarity of the signs at issue and the normal inherent distinctiveness of the earlier marks, there was a likelihood of confusion between the marks at issue, at least from the perspective of the English-speaking consumers within the European Union. The Board of Appeal specified that that conclusion was valid for all the contested goods concerned, with the exception of those for which the Board had found no similarity, in contrast to the Opposition Division’s findings. 92 The applicant submits, in essence, that the earlier marks are weakly distinctive, because the word ‘marshall’ is a very common surname in the United Kingdom, and that the relevant consumer would be accustomed, in the sectors concerned, to a coexistence of marks containing the name Marshall. In that regard, he submits that that name is much used in numerous registered trade marks and on the market. He also refers to the judgment of 12 July 2006, Rossi v OHIM — Marcorossi (MARCOROSSI) (T‑97/05, not published, EU:T:2006:203), which he considers applicable to the present case. 93 EUIPO disputes those arguments. 94 In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49). 95 First of all, it must be noted that, in paragraphs 55 to 59 of the contested decision, the Board of Appeal’s reasoning on the distinctiveness of the earlier mark related, essentially, to the earlier marks, since it referred to the goods in Classes 9, 16, 18 and 25. 96 It is apparent from paragraphs 48 to 50 above that the applicant argues incorrectly that the allegedly common nature of the surname Marshall in the United Kingdom is likely to weaken its distinctiveness as regards the goods and services at issue. 97 In addition, it may not be concluded from the documents produced by the applicant that the word ‘marshall’ is weakly distinctive or not distinctive because of its alleged widespread use and the alleged coexistence of numerous economic operators using that word in combination with other words in order to designate identical or similar services on the market. 98 As regards the documentary evidence intended to prove that the word ‘marshall’ is used in 58 EU trade-mark registrations and 500 World Intellectual Property Organisation registrations, it does not prove actual presence on the market. According to the case-law, the relevant factor for the purposes of challenging an element’s distinctiveness is its actual presence on the market, not in registers or databases (judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). That evidence must, therefore, be rejected. 99 As regards the applicant’s statements that the word ‘marshall’ appears in numerous company names or numerous company officers’ names, it must be found that the evidence submitted in support of those statements, in Annexes 4(b), 4(c) and 4(d) to the application, was not submitted during the procedure before EUIPO. 100 Documents produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). They must, therefore, be declared inadmissible. 101 In any event, it must be pointed out that the business name, shop sign or surname is irrelevant, given the substantial difference between the use of a word as a mark and its use as a business name, shop sign or surname, those latter signs not seeking to indicate the commercial origin of the goods (see, to that effect, judgment of 8 March 2013, David Mayer, T‑498/10, not published, EU:T:2013:117, paragraph 78). 102 As regards the documentary evidence included in Annex 5 to the application, intended to show a coexistence of marks using the word ‘marshall’ on the market, it must be found that some of the pages had already been submitted during the procedure before EUIPO (that is, pages 33 to 40, 43, 49, 90 to 93, 95 to 98, 129, 142 to 154 and a photograph on page 50, in the numbering of the applicant’s annexes), while others had not. 103 In the light of the case-law in paragraph 100 above, Annex 5 to the application must, therefore, be rejected as inadmissible, with the exception of pages 33 to 40, 43, 49, 90 to 93, 95 to 98, 129, 142 to 154 and a photograph on page 50, in the numbering of the applicant’s annexes, which are themselves admissible. 104 As the Board of Appeal noted in paragraphs 55 and 56 of the contested decision, the coexistence of earlier marks on the market can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 13 June 2013, Hostel drap v OHIM — Aznar textil (MY drap), T‑636/11, not published, EU:T:2013:314, paragraph 48 and the case-law cited). 105 In the present case, the Board of Appeal found that the applicant had not shown that the alleged coexistence of earlier marks on the market was based on such an absence of confusion on the part of the relevant public. 106 As regards the pages of Annex 5 to the application which are admissible in the context of the present action, it must be held that the Board of Appeal was fully entitled to find that they consisted in various screenshots of websites, the frequency of access to which by consumers in the European Union was unknown, some of those websites being clearly based in the United States. It also found that although there are clearly some trade names shown incorporating the word ‘marshall’, the material was repetitive. It must be noted, for example, that the name Official US Marshall appears several times. In addition, the Board of Appeal was fully entitled to state that the goods or services referred to were sometimes far removed from those relevant to the current matter and that some of the references are even to websites devoted to individuals such as Marshall MuLuhan and Yanis Marshall, not to trade marks. The applicant has adduced no evidence such as to cast doubt on that analysis. 107 In any event, it should be borne in mind that a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a 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 (see judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). 108 As regards the judgment of 12 July 2006, MARCOROSSI (T‑97/05, not published, EU:T:2006:203), relied on by the applicant, it must be noted that, in the case giving rise to that judgment, the signs at issue differed significantly from those concerned in the present case. The Court held that the unusual combination of the first name Marco with the surname Rossi in a single word gave rise to an indivisible whole which would be memorised as such by the consumer, unlike the mark applied for in the present case. In addition, the earlier mark was not entirely reproduced in the contested sign in that case, unlike in the present case. The applicant’s arguments in that regard cannot, therefore, succeed. 109 The second plea in law must, therefore, be rejected. 110 Accordingly, the action must be dismissed in its entirety, and there is no need to rule on the admissibility of the applicant’s second head of claim. Costs 111 Under Article 134(1) 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, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Yusuf Pempe to pay the costs. Berardis Spielmann Csehi Delivered in open court in Luxembourg on 8 November 2017. E. Coulon G. Berardis Registrar President * Language of the case: English.