Judgment — ECLI:EU:T:2016:544
Date: 2016-09-27
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

JUDGMENT OF THE GENERAL COURT (Second Chamber) 27 September 2016 (*) (EU trade mark — Opposition proceedings — Application for the EU word mark luvo — Earlier EU work mark luvo — Relative ground for refusal — Likelihood of confusion — Similarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T‑449/15, Satkirit Holdings Ltd, established in Douglas (Isle of Man), represented by M. Vanhegan, Barrister, applicant, v European Union Intellectual Property Office (EUIPO), represented by E. Sliwinska and J. Crespo Carrillo, acting as Agents, defendant, the other party to the proceedings before the Board of Appeal of EUIPO being Advanced Mailing Solutions Ltd, established in East Kilbride (United Kingdom), ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 May 2015 (Case R 877/2014-2), relating to opposition proceedings between Advanced Mailing Solutions and Satkirit Holdings, THE GENERAL COURT (Second Chamber), composed, at the time of the deliberation, of S. Gervasoni (Rapporteur), acting as President, L. Madise and Z. Csehi, Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 30 July 2015, having regard to the response lodged at the Court Registry on 8 December 2015, having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court, gives the following Judgment Background to the dispute 1 On 5 October 2012, the applicant, Satkirit Holdings Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). 2 Registration as a mark was sought for the word sign luvo. 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, and correspond to the following description: ‘Mobile phones; tablets; computers; portable communication devices’. 4 The EU trade mark application was published in Community Trade Marks Bulletin No 215/2012 of 12 November 2012. 5 On 12 February 2013, Advanced Mailing Solutions Ltd filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. 6 The opposition was based on, inter alia, the earlier application for the EU word mark luvo, which was registered on 3 October 2013 under the number 10587624 for services in Classes 35 and 42 corresponding, for each of those classes, to the following description: – Class 35: ‘Advertising; business management; business administration; office functions; auctioneering; data processing’; – Class 42: ‘Scientific and technological services and research and design relating thereto; design and development of computer hardware and software’. 7 The ground relied on in support of the opposition based on the earlier EU trade mark application was that set out in Article 8(1)(b) of Regulation No 207/2009. 8 On 28 January 2014, the Opposition Division upheld the opposition and rejected the trade mark application in respect of all the goods referred to in paragraph 3 above. 9 On 28 March 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division, solely in so far as the Opposition Division had upheld the opposition in respect of the following goods in Class 9: ‘mobile phones; tablets; portable communication devices’. It did not dispute that decision as regards ‘computers’. 10 By decision of 21 May 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. For the sake of procedural economy, it examined the opposition solely in so far as it was based on the earlier EU word mark luvo as regards the services ‘design and development of computer hardware and software’ in Class 42. In particular, it found, as regards the goods covered by the mark applied for and the services ‘design and development of computer software’ covered by the earlier mark, that the relevant public consisted of the general public and of professionals and, as regards the services ‘design and development of computer hardware’ covered by the earlier mark, that the relevant public was the professional public (paragraphs 39 and 40 of the contested decision). As regards the level of attention of the relevant public, the Board of Appeal took the view that it was necessary, given that that public consisted of consumers who were professionals and of the general public, to take into account the group with the lowest level of attention, namely a level of attention fluctuating somewhere between a normal level of attention and a higher than normal level of attention (paragraphs 42 and 44 of the contested decision) and, as regards the services mainly aimed at professionals, it found that those professionals had a high level of attention (paragraph 43 of the contested decision). 11 The Board of Appeal then found that the two signs at issue were identical (paragraph 45 of the contested decision). Next, it took the view that, although the goods covered by the mark applied for and the services covered by the earlier mark are not in the same class, they were similar, since there was functional complementarity between them and they had the same relevant public and distribution channels (paragraph 58 of the contested decision). The Board of Appeal also found that the earlier mark had a normal distinctive character for the services at issue (paragraph 59 of the contested decision). In the light of the identity of the signs at issue and the fact that it regarded the goods and services at issue as similar, the Board of Appeal concluded that a significant part of the relevant public, with a high level of attention, might be led into thinking that those goods and services come from the same undertaking or from economically-linked undertakings and it found that there was therefore a likelihood of confusion (paragraphs 61 and 62 of the contested decision). Forms of order sought 12 The applicant claims that the Court should: – annul the contested decision and dismiss the opposition; – order EUIPO to pay the costs incurred in the present proceedings and the proceedings before the Board of Appeal of EUIPO. 13 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law 14 The applicant puts forward a number of complaints which may be analysed as supporting a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In the first place, it complains that the Board of Appeal defined the relevant public incorrectly. In the second place, it complains that the Board of Appeal erred in law as regards the burden of proving the similarity of the goods and services at issue. In the third place, it alleges that the Board of Appeal made a mistake about the scope of the appeal brought against the Opposition Division’s decision, by comparing the services covered by the earlier mark with computers. In the fourth place, the applicant submits that the Board of Appeal erred in law by not taking the relevant factors into account in assessing whether the goods and services at issue were similar. In the fifth place, it maintains that the Board of Appeal made an error of assessment and provided an insufficient statement of reasons for the contested decision as far as the complementary nature of the goods and services at issue was concerned. Lastly and in the sixth place, the applicant submits that the Board of Appeal made an error of assessment and provided an insufficient statement of reasons for the contested decision as far the analysis of the distribution channels was concerned. 15 EUIPO disputes the applicant’s arguments. 16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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. 17 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). 18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). 19 It is in the light of those considerations that it must be assessed whether the Board of Appeal was right in finding that there was, in the present case, a likelihood of confusion between the signs at issue. The relevant public 20 It is apparent from settled case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). 21 In the present case, the Board of Appeal was right to find, in paragraph 28 of the contested decision, a finding which is not, moreover, disputed by the applicant, that, as the opposition was based on an earlier EU trade mark, the relevant territory for the purpose of assessing the likelihood of confusion was that of the whole of the European Union. 22 The Board of Appeal also found, as regards the services ‘design and development of computer hardware’ covered by the earlier mark, that the relevant public was the professional public (paragraph 39 of the contested decision), a finding which the applicant does not dispute, at least with regard to part of the relevant public. 23 As regards the goods in Class 9 covered by the mark applied for (mobile phones; tablets; portable communication devices), the Board of Appeal found, contrary to what the applicant maintains, that they were aimed at both the general public and professionals (paragraph 40 of the contested decision), a finding which must also be endorsed. 24 The applicant submits that the services ‘design and development of computer software’ covered by the earlier mark are aimed only at professionals and that the Board of Appeal erred in finding that the relevant public consisted of the general public and of professionals. It must be pointed out, in that regard, as the Board of Appeal correctly stated in paragraph 39 of the contested decision, that, although the services of design and development of computer software require some technical expertise in the IT field, they are services which are, as a group, so broad that they may be aimed both at the specialist or professional public and also at the general public (see, to that effect, judgment of 27 March 2014, Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, not published, EU:T:2014:158, paragraphs 25 and 27). 25 Lastly, it must be held that the Board of Appeal was right to find, as regards the goods and services aimed at consumers who are professionals and at the general public, that it was necessary to take into consideration a level of attention fluctuating somewhere between a normal level of attention and a higher than normal level of attention (paragraphs 42 and 44 of the contested decision) and, as regards the services mainly aimed at professionals, that it was necessary to take into consideration a high level of attention (paragraph 43 of the contested decision). The comparison of the goods and services 26 In paragraphs 46 to 58 of the contested decision, the Board of Appeal found that, although the goods covered by the mark applied for and the services covered by the earlier mark are not in the same class, they were similar, since there was functional complementarity between them and they had the same relevant public and distribution channels. 27 The applicant disputes those findings of the Board of Appeal in the contested decision, relating to the comparison between, on the one hand, the goods in Class 9 covered by the mark applied for, namely ‘mobile phones; tablets; portable communication devices’, and, on the other hand, the services in Class 42 covered by the earlier mark, namely the services ‘design and development of computer hardware and software’. 28 As a preliminary point, it is appropriate to examine the applicant’s complaint alleging that the Board of Appeal erred regarding the scope of the appeal brought against the Opposition Division’s decision. It must be pointed out that, in paragraph 35 of the contested decision, the Board of Appeal referred to computers as being among the goods in Class 9 covered by the mark applied for, although the applicant had disputed the Opposition Division’s decision only in so far as it concerned ‘mobile phones; tablets; portable communication devices’. 29 However, that reference to computers has no bearing on the lawfulness of the contested decision. As EUIPO correctly maintains, it is a well-known fact that ‘mobile phones, tablets and portable communication devices’ are small portable computers which, inter alia, enable their users to access the internet, store information and execute programs and applications. They therefore constitute, with computers, a group which is sufficiently homogeneous for them to be capable of being compared altogether with the services covered by the earlier mark. 30 As its principal argument, the applicant submits that the goods and services at issue are not similar. 31 In the first place, the applicant complains that the Board of Appeal erred in law as regards the burden of proving the similarity of the goods and services at issue, which, according to the applicant, lies with the opponent. 32 It is apparent from Rule 15(2)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303 p. 1), that the notice of opposition must contain, inter alia, the grounds on which the opposition is based. Rule 15(3)(b) of that regulation states that the notice of opposition may contain a reasoned statement setting out the main facts and arguments on which the opposition relies, and evidence to support the opposition. Rule 19(1) of that regulation states that EUIPO is to give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which must be at least two months starting on the date on which the opposition proceedings are to be deemed to commence in accordance with Rule 18(1). 33 It follows from the provisions referred to above that, in opposition proceedings, the opponent has the opportunity and not the obligation to adduce evidence in support of the opposition, in particular as regards the similarity of the goods and services concerned (judgment of 9 February 2011, Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraphs 16 and 17). 34 It is also appropriate to state that, contrary to what is claimed, in essence, by the applicant, the Court of Justice, in its judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442), did not make any ruling on the question of the burden of proof allegedly lying with the opponent in opposition proceedings. In paragraph 22 of that judgment, the Court merely highlighted the requirement to prove, for the purposes of applying Article 4(1)(b) of First 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), similarity between the goods and services at issue even if a mark is identical to another mark which has a particularly high degree of distinctiveness. 35 In the light of all the foregoing, there is therefore no obligation on the opponent, in opposition proceedings, to adduce evidence on the similarity of the goods and services at issue (judgment of 9 February 2011, ALPHAREN, T‑222/09, EU:T:2011:36, paragraph 22). 36 In the second place, the applicant submits that the Board of Appeal erred in law by not taking the relevant factors into account in assessing whether the goods and services at issue were similar. 37 The applicant thus takes the view that the Board of Appeal should have examined the nature of the goods and services at issue, their intended purpose and method of use and whether they are in competition with each other and identified their end users, which it did not, according to the applicant, do in the contested decision. 38 It must be borne in mind that, according to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). As EUIPO correctly states and as was also pointed out by the Board of Appeal in paragraph 49 of the contested decision, the list of those factors is not, however, exhaustive. Other factors may also be taken into account such as the distribution channels of the goods and services concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited). Furthermore, the fact that the goods or services concerned are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 50). 39 In the present case, it is apparent from paragraphs 38 to 44 and 53 to 58 of the contested decision that the Board of Appeal, after identifying the relevant public, examined the nature of the goods and services at issue, their intended purpose and method of use, their distribution channels and whether they were complementary. The complaint therefore has no factual basis. 40 In the third place, the applicant submits that the Board of Appeal made an error of assessment and provided an insufficient statement of reasons for the contested decision as far as the complementary nature of the goods and services at issue was concerned. 41 It must be borne in mind that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). 42 In the present case, it is apparent from paragraph 53 of the contested decision that the Board of Appeal found that the services ‘design and development of computer hardware and software’ covered by the earlier mark were connected with the goods covered by the mark applied for, namely ‘mobile phones; tablets; portable communication devices’, in the sense that the former services were important for the use of the latter goods and vice versa. 43 The Board of Appeal also stated, in paragraph 54 of the contested decision, that the complementary nature of the goods and services was not in itself sufficient to conclude that those goods and services were similar, on the ground that, since those goods and services related to all areas of life and business activity, numerous services were used with the goods at issue and vice versa. 44 It must be pointed out, as was stated by the Board of Appeal, that the services ‘design and development of computer hardware and software’ covered by the earlier mark are important for the use of ‘mobile phones; tablets; portable communication devices’ and vice versa (see, to that effect, judgment of 29 September 2011, Telefónica O2 Germany v OHIM — Loopia (LOOPIA), T‑150/10, not published, EU:T:2011:552, paragraphs 35 and 36). There is therefore a close connection between the goods and services at issue, which, as the Board of Appeal correctly found in paragraph 55 of the contested decision, all belong to the field of information technology, since the goods covered by the mark applied for are important for the use of the services covered by the earlier mark and vice versa, and consequently, there is a complementary connection between them, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods and for providing those services. Nevertheless, in the light of the fact that numerous services are important for the use of the goods at issue and vice versa, the Board of Appeal was right to find, in paragraph 54 of the contested decision, that the complementary nature of the goods and services was not in itself sufficient to conclude that those goods and services are similar. 45 Furthermore, as far as the statement of reasons for the contested decision in that regard is concerned, it must be pointed out that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (see judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73 and the case-law cited). 46 Contrary to what the applicant maintains, in the present case, the Board of Appeal disclosed in a clear and unequivocal manner the reasoning which led it to find, in paragraphs 53 and 54 of the contested decision, that the goods and services at issue were complementary, but that that fact was not in itself sufficient to conclude that those goods and services were similar, reasoning which enabled the applicant to ascertain the reasons for that finding and has enabled the Court to exercise its power of review. 47 Lastly and in the fourth place, the applicant maintains that the Board of Appeal made an error of assessment and provided an insufficient statement of reasons for the contested decision as far the analysis of the distribution channels was concerned. 48 The applicant thus claims that the services covered by the earlier mark and the goods covered by the mark applied for are sold through different distribution channels, as the goods in Class 9 are generally sold in shops, telephone warehouses or on websites aimed at the general public, whereas the services in Class 42 are typically offered only by specialist corporate service companies, which do not have a presence in those retail outlets. It has not, however, substantiated that claim by means of any evidence. Moreover, it is important to bear in mind that the goods covered by the mark applied for as well as some of the services covered by the earlier mark are used by both the general public and professionals (see paragraphs 22 to 25 above) and that those goods and services all belong to the field of information technology (see paragraph 44 above). Consequently, it must be held that the Board of Appeal was right in stating, in paragraph 55 of the contested decision, that the goods and services at issue could have the same distribution channels, since they are frequently sold in the same specialist retail outlets, whether those are physical places or websites on which they are sold online. 49 Furthermore, as far as the statement of reasons for the contested decision in that regard is concerned, it is important to bear in mind that, according to the case-law, it is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraph 65). 50 In the present case, although the reasoning for the contested decision as regards the distribution channels being the same is succinct, it is apparent from the other paragraphs of the contested decision, relating, in particular, to the definition of the relevant public (paragraphs 39 to 44 of the contested decision) and to the fact that the goods and services at issue belong to the field of information technology (paragraph 55 of the contested decision), that the Board of Appeal disclosed in a clear and unequivocal manner the reasoning which led it to find, in paragraph 55 of the contested decision, that the distribution channels were the same, reasoning which enabled the applicant to ascertain the reasons for that finding and has enabled the Court to exercise its power of review. 51 It follows from all of the foregoing that there is nothing that makes it possible to call into question the Board of Appeal’s assessment that the goods in Class 9 covered by the mark applied for and the services in Class 42 covered by the earlier mark are similar. The comparison of the signs 52 The Board of Appeal was right in finding, in paragraph 45 of the contested decision, a finding which is not, moreover, disputed by the applicant, that the two signs at issue are identical. The likelihood of confusion 53 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). 54 In the present case, in the light of the similarity of the goods and services in question, the identity of the signs at issue and the normal distinctive character of the earlier mark, the Board of Appeal was right in finding that there was a likelihood of confusion between the signs at issue for a significant part of the relevant public, with a high level of attention (paragraph 61 of the contested decision). 55 Having regard to all of those considerations, the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion between the signs at issue. 56 On all of those grounds, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s request, set out in its first head of claim, that the Court dismiss the opposition (see, to that effect, judgments of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 70, and of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 35 and 67). Costs 57 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Satkirit Holdings Ltd to pay the costs. Gervasoni Madise Csehi Delivered in open court in Luxembourg on 27 September 2016. [Signatures] * Language of the case: English.