JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
13 November 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark natur — Earlier application for the figurative mark natura — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑549/10,
Natura Selection, SL, established in Barcelona (Spain), represented by E. Sugrañes Coca, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Afoi Anezoulaki AE, established in Kilikis (Greece),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 6 September 2010 (Case R 217/2010-2), relating to opposition proceedings between Natura Selection, SL and Afoi Anezoulaki AE,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 November 2010,
having regard to the response lodged at the Court Registry on 26 April 2011,
having regard to the order of 5 July 2011 staying the proceedings,
having regard to the written questions put to the parties by the Court and their replies to those questions lodged at the Court Registry on 4 and 24 April 2013,
having regard to the written questions put to the parties by the Court and their replies lodged at the Court Registry on 8 and 9 July 2013,
having regard to the change in the composition of the Chambers of the Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 12 May 2008, Afoi Anezoulaki AE, trading under the name of Fieratex SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign natur.
3        The goods in respect of which registration was sought are in Class 24 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: ‘Textiles and textile goods, not included in other classes; bed and table covers’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 037/2008 of 15 September 2008.
5        On 15 December 2008, the applicant, Natura Selection SL, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based inter alia on the following earlier rights:
–        the Community figurative mark, filed on 22 December 2000 and registered on 13 May 2002 under the number 2016384, reproduced below:
–        the Community figurative mark, filed on 2 March 2004 and registered on 5 July 2005 under the number 3694627, reproduced below:
–        the application for the Community figurative mark, filed on 27 October 2005 under the number 4713368 (‘the earlier application for the mark natura’), reproduced below:
7        The opposition was based on all the goods and services covered by the earlier rights, including, inter alia, in respect of the earlier application for the mark natura, goods in Class 20 and the following services in Class 35: ‘Commercial retailing and via worldwide telematic networks; import and export services; advertising services; all the above relating to precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics; textiles and textile goods, not included in other classes; bed and table covers; clothing, footwear, headgear’.
8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9        By decision of 4 December 2009, the Opposition Division upheld the opposition in respect of some of the disputed goods in Class 24, namely ‘textiles and textile goods, not included in other classes; bed covers’, and rejected the opposition in respect of ‘table covers’, also in Class 24. The Opposition Division assessed the likelihood of confusion by taking into account, for reasons of procedural economy, on the one hand, the mark applied for and, on the other hand, the earlier application for the mark natura. As regards the earlier marks, the Opposition Division found that there was, a fortiori, no likelihood of confusion as they contained additional word and figurative elements and covered goods and services which were clearly different from those covered by the mark applied for.
10      The applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as it had rejected the opposition in respect of ‘table covers’.
11      By decision of 6 September 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, the Board of Appeal found that, since the goods ‘table covers’ covered by the mark applied for and the goods in Class 20 and services in Class 35 covered by the earlier application for the mark natura were dissimilar, there was no likelihood of confusion, no matter how similar the signs might be.
Procedure and forms of order sought
12      The applicant claims that the Court should:
–        uphold the action;
–        annul the Opposition Division’s decision of 4 December 2009 and the contested decision;
–        dismiss in its entirety the application for the Community trade mark, which was granted by OHIM in respect of the disputed goods;
–        order OHIM to pay the costs.
13      In its response, OHIM contends that the Court should:
–        stay the proceedings pursuant to Article 77 of the Rules of Procedure of the General Court until the delivery of the Court’s decision in the proceedings concerning the opposition against the earlier application for the mark natura;
–        dismiss the action;
–        order the applicant to pay the costs.
14      In its reply of 4 April 2013 to the questions of the Court, OHIM amended the form of order which it seeks and requests the Court to declare that the action has become devoid of purpose and that there is no need to adjudicate.
Law
OHIM’s application for a declaration that there is no need to adjudicate
15      In the interests of the proper administration of justice, the President of the Sixth Chamber of the General Court, by order of 5 July 2011, stayed the proceedings in the present case on the basis of Article 77(d) of the Rules of Procedure until the decision in Case T‑461/11 had been delivered. That case concerned an action for annulment brought against a decision of the Second Board of Appeal relating to an opposition based on the earlier mark NATURA which is registered for goods in Class 20 against the earlier application for the mark natura inasmuch as it covered, inter alia, goods in Class 20. The Board of Appeal had found that a likelihood of confusion existed.
16      By judgment of 13 December 2012 in Case T‑461/11 Natura Selection v OHIM — Ménard (natura) [2012] ECR II‑0000, the Court dismissed that action.
17      In its reply of 4 April 2013 to the Court’s questions requesting that the parties submit their observations on the conclusions to be drawn from that judgment, in respect of the continuation of the present proceedings, OHIM states that as the earlier application for the mark natura, the sole basis of the present dispute, has ceased to exist, the present action has become devoid of purpose and there is therefore no need to adjudicate.
18      However, in its reply of 8 July 2013 to the questions of the Court, OHIM seems to have abandoned such a claim.
19      In any event, it must be stated that that judgment concerns only the goods in Class 20 and not the services in Class 35 covered by the earlier application for the mark natura. That judgment does not therefore affect the earlier application for registration of the mark natura in respect of the services in Class 35. OHIM therefore errs in claiming that the earlier application for the mark natura has ceased to exist.
20      Consequently, even if OHIM requests the Court to declare that the action has become devoid of purpose, its application for a declaration that there is no need to adjudicate must be dismissed.
The admissibility of the claim for directions to be issued
21      By its third head of claim, the applicant requests, in essence, that the Court should order OHIM to refuse registration of the mark applied for.
22      It is apparent from settled case-law that, in actions before the Courts of the European Union against the decision of a Board of Appeal, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of those Courts. Accordingly, it is not for the General Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 20 and the case-law cited).
23      Consequently, the applicant’s third head of claim is inadmissible.
Substance
24      The applicant relies on a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
25      In that regard, the applicant submits, first, that the Board of Appeal erred in finding that the goods and services covered by the earlier rights are different from the goods covered by the mark applied for and, secondly, that there is a likelihood of confusion in respect of the goods and services at issue.
26      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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ include trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
27      According to settled case-law, the risk that the public might 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 perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
28      Furthermore, 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 Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
29      In assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see PiraÑAM diseño original Juan Bolaños, paragraph 37 and the case-law cited).
30      In the present case, it is common ground that the relevant public consists of average, reasonably well informed and reasonably observant and circumspect consumers from all the Member States of the European Union. It is also common ground that there are visual and phonetic similarities between the signs at issue, as well as a high degree of conceptual similarity.
31      As regards the similarity between the goods and services, the applicant disputes inter alia the Board of Appeal’s assessment as regards the goods in Class 24, namely the ‘table covers’ covered by the mark applied for, and the services of ‘commercial retailing and via worldwide telematic networks … relating to … table covers’ in Class 35 covered by the earlier application for the mark natura.
32      In that regard, the Board of Appeal stated, in paragraph 37 of the contested decision, that, although those goods and services have, as the Opposition Division had found, some connection to the extent that some manufacturers might also, either directly or by means of the intervention of another company, provide the retail services with respect to their own goods, such a low degree of similarity between the services in Class 35 covered by the earlier application for the mark natura and the goods covered by the mark applied for, together with the dissimilarities which exist between the signs, would not lead, from a global perspective, to a likelihood of confusion in the sense that the relevant public might believe that the goods to which the mark applied for is affixed and the services covered by the earlier application for the mark natura have a common origin, namely, that they are provided by the same undertaking or by economically-linked undertakings.
33      However, it must be borne in mind that, according to settled case-law, there is a similarity between goods and retail services which relate to those goods (Case T‑116/06 Oakley v OHMI - Venticinque (O STORE) [2008] ECR II‑2455, paragraphs 42 to 58; judgment of 5 July 2012 in Case T‑466/09 Comercial Losan v OHIM — McDonald’s International Property (Mc. Baby), not published in the ECR, paragraph 24; and judgment of 16 October 2013 in Case T‑282/12 El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), not published in the ECR, paragraph 37).
34      In the present case, it must be stated that the services in Class 35 covered by the earlier application for the mark natura relate to the goods in Class 24 covered by the mark applied for. Consequently, there is a similarity between the commercial retailing and via worldwide telematic networks of table covers covered by the earlier application for the mark natura and the table covers covered by the mark applied for.
35      What is more, it must be stated that, in the present case, the services covered by the earlier application for the mark natura constitute one of the possible distribution channels for the goods covered by the mark applied for. That fact thus accentuates their similarity (see, to that effect, FREE YOUR STYLE, paragraph 38).
36      The Board of Appeal therefore erred in finding, in paragraph 37 of the contested decision, that there was a low degree of similarity between the services in Class 35 covered by the earlier application for the mark natura and the goods in Class 24 covered by the mark applied for.
37      Consequently, the Board of Appeal erred in concluding that there was no likelihood of confusion as a result of the low degree of similarity between the table covers in Class 24 covered by the mark applied for and the Class 35 retail services relating to table covers covered by the earlier application for the mark natura.
38      It follows from the foregoing that the single plea must be upheld and the contested decision annulled. It is for OHIM, pursuant to Article 65(6) of Regulation No 207/2009 to take the necessary measures to comply with the present judgment. There is therefore no need to adjudicate on the applicant’s application for annulment of the Opposition Division’s decision of 4 December 2009.
Costs
39      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
40      Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 September 2010 (Case R 217/2010-2);
2.      Orders OHIM to pay the costs.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 13 November 2014.
[Signatures]
* Language of the case: English.