JUDGMENT OF THE GENERAL COURT (First Chamber)
4 February 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark DIGNITUDE – Earlier national and Community word marks Dignity – Relative ground for refusal – No likelihood of confusion – No similarity between the goods – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑504/11,
Paul Hartmann AG, established in Heidenheim (Germany), represented by N. Aicher, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Protecsom SAS, established in Valognes (France),
ACTION brought against the decision of the Fourth Chamber of Appeal of OHIM of 28 July 2011 (Case R 1197/2010-4), relating to opposition proceedings between Paul Hartmann AG and Protecsom SAS,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, S. Frimodt Nielsen and M. Kancheva (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 27 September 2011,
having regard to the response lodged at the Court Registry on 13 January 2012,
having regard to the reply lodged at the Court Registry on 21 March 2012,
having regard to the rejoinder lodged at the Court Registry on 12 June 2012,
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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 7 January 2009, Protecsom SAS filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark in respect of which registration was sought is the word mark DIGNITUDE.
3        The goods in respect of which registration was sought are in Classes 5, 24 and 25 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, for each of those classes, to the following description:
–        Class 5 – ‘Menstruation knickers; sanitary napkins; menstruation tampons; bandages for hygienic use’;
–        Class 24 – ‘Textiles and textile goods for medical or veterinary use’;
–        Class 25 – ‘Hosiery; underclothing, underpants; underwear’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 2009/16, of 4 May 2009.
5        On 3 August 2009, the applicant, Paul Hartmann AG, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.
6        The opposition was based on the following earlier rights:
–        the Community word mark Dignity, filed on 3 December 2008 and registered on 5 April 2011, under No 7 436 603, for ‘[s]anitary preparations for medical use; plasters, materials for dressings; disinfectants; napkins, napkin liners, napkin pants and absorbent pads, mainly consisting of paper, cellulose or other fibre materials being disposable articles, fix pants, woven and/or knitted of textile fibres or consisting of cellulose, for fixing absorbent pads, all the aforesaid goods for incontinence purposes’ in Class 5, and for ‘[o]rthopedic articles; suture materials; draw-sheets for sick beds and incontinence sheets’ in Class 10;
–        the German word mark Dignity, filed on 9 December 2008 and registered on 2 April 2009, under No 302008076849.5/05, for the same goods in Classes 5 and 10 as those covered by that Community mark.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 18 May 2010, the Opposition Division upheld the opposition in part, as regards the goods in Classes 5 and 24 covered by the application for registration. However, it dismissed the opposition in respect of the goods ‘hosiery; underclothing, underpants; underwear’ in Class 25, finding that those goods were not similar to the goods covered by the earlier marks.
9        On 28 June 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 28 July 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. First, it found that the goods at issue were not targeted at a specialised public but at the public at large. Then, the Board of Appeal considered that, even though the signs in the marks at issue were similar, there was no likelihood of confusion between them within the meaning of Article 8(1)(b) of Regulation No 207/2009, as the goods in Class 25 covered by the application for registration were different from those covered by the earlier marks.
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the documents produced for the first time before the Court
13      The applicant attached in Annex 6 to the application a series of documents containing the results of an internet search which, it claims, support its conclusion that the goods at issue are similar.
14      OHIM contends that those documents must be declared inadmissible as they were not submitted in the course of the procedure before it.
15      It should be noted that the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. Under Article 65(2) of Regulation No 207/2009, the General Court may annul or alter a decision of an OHIM Board of Appeal only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of Regulation [No 207/2009] or of any rule of law relating to [its] application or misuse of power’. It follows from that provision that the Court may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. By contrast, the Court may not annul or alter that decision on grounds which come into existence subsequent to its adoption (see Case C-29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 53 and the case-law cited). It also follows from that provision that facts which were not invoked by the parties before the departments of OHIM cannot be invoked at the stage of the appeal brought before the General Court. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the Board’s application of European Union law in the light, in particular, of the facts which were submitted to that board; the Court cannot, however, carry out such a review by taking into account matters of fact newly produced before it (Case C-29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54). Accordingly, the role of the Court is not to re-examine the factual circumstances in the light of evidence adduced for the first time before it (see, to that effect, judgment of 13 July 2012 in Case T-255/09 Caixa Geral de Depósitos v OHIM – Caixa d’Estalvis i Pensions de Barcelona (la Caixa), not published in the ECR, paragraph 51, and judgment of 13 November 2012 in Case T-555/11 tesa v OHIM – Superquímica (9tesa TACK), not published in the ECR, paragraph 15).
16      In the present case, in so far as the documents referred to in paragraph 13 above were submitted for the first time before the General Court, they may not be taken into consideration for the purpose of determining the legality of the contested decision and must, therefore, be rejected.
Substance
17      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
18      The applicant disputes the Board of Appeal’s assessment relating to the similarity of the goods at issue and claims that the requirements for concluding that there is likelihood of confusion are met in the present case.
19      OHIM disputes the applicant’s arguments.
20      In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.
21      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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 designated (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).
22      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
The relevant public
23      According to the case-law, 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).
24      In the present case, the marks upon which the opposition is based are a German trade mark and a Community trade mark. Therefore, the territory in respect of which the likelihood of confusion must be assessed is the territory of Germany and that of the whole European Union, as the Board of Appeal pointed out, in substance, without challenge by the applicant.
25      In addition, the Board of Appeal took the view that, in the light of the nature of the goods in issue, the relevant public, for the purpose of assessing the likelihood of confusion, is the public at large (paragraph 18 of the contested decision).
26      The applicant disputes this finding, claiming that the relevant public must be confined to consumers with incontinence problems. Only those persons would be required to purchase both the goods covered by the earlier trade marks, namely napkin pants and absorbent pads intended to minimise the consequences of incontinence, and the goods covered by the application for registration, namely regular underwear.
27      Primarily, OHIM considers that that argument is inadmissible in so far as the applicant made no submissions in respect of the relevant public before either the Opposition Division or the Board of Appeal. In the alternative, OHIM maintains that incontinence is not confined to a particular sector of the public, but may affect people of all backgrounds. Therefore, according to OHIM, the Board of Appeal’s finding is correct.
28      First, as regards the admissibility of the applicant’s argument, the General Court points out that, according to the case-law, where it is called upon to assess the legality of a decision of the Board of Appeal of OHIM, the Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings the legality of which is being challenged before the Court (Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 48).
29      In the present case, the assessment as regards the relevant public underlies the Board of Appeal’s finding that the goods covered by the marks at issue are different and, therefore, there is no likelihood of confusion between them. In so far as the General Court is called on to rule in the present case on the legality of that conclusion, the applicant’s arguments calling into question the Board of Appeal’s assessment regarding the relevant public are admissible.
30      Next, according to settled case-law, with a view to defining the relevant public, account must be taken of consumers liable to use both the goods or services covered by the earlier mark and those covered by the mark at issue (see, to that effect, judgment of 1 July 2008 in Case T‑328/05 Apple Computer v OHIM – TKS-Teknosoft (QUARTZ), not published in the ECR, paragraph 23, and judgment of 30 September 2010 in Case T‑270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28). In the present case, as regards, firstly, the napkin pants and absorbent pads intended to minimise the consequences of the incontinence covered by the earlier trade marks and, secondly, the hosiery, underclothing, underpants and underwear covered by the mark applied for, it is consumers suffering from incontinence or those taking care of third parties who suffer from incontinence who are relevant for the definition of the target public. Indeed, only those consumers are liable to purchase these two types of goods and, therefore, to confuse the marks at issue.
31      However, it should be made clear that the relevant public, as defined in the previous paragraph, demonstrates a particularly high level of attention at the time of purchase. The nature of the goods covered by the earlier trade marks requires a precise and informed choice. In that regard, it must be noted that, according to settled case-law, the fact that a type of product is not purchased regularly by the average consumer suggests that that consumer’s level of attention will be fairly high (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 63, and judgment of 13 October 2009 in Case T‑146/08 Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), not published in the ECR, paragraph 45).
32      Therefore, it must be held that the relevant public consists mostly of consumers suffering from incontinence, whose level of attentiveness is particularly high when selecting the goods at issue.
Comparison of the goods
33      According to settled case-law, in order to assess the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their intended purpose, their nature, 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 Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case‑law cited).
34      In the present case, the Board of Appeal took the view that, despite being worn on the same part of the body and the possibility of having the same appearance, the goods at issue were not similar on the grounds of their differing purposes and natures, their differing manufacturers and distribution points as well as the absence of a competitive or complementary relationship between the two (paragraphs 19 to 23 of the contested decision).
35      The applicant considers that the Board of Appeal wrongly concluded that the goods covered by the application for registration and the goods covered by the earlier trade marks were not similar within the meaning of Article 8(1)(b) of Regulation No 207/2009. In essence, the applicant considers the goods to be similar, because they have the same purpose, the same nature and the same distribution channels. Furthermore, according to the applicant, the goods covered by the application for registration and those covered by earlier trade marks have a competitive relationship or, at least, a relationship of complementarity.
36      OHIM disputes the applicant’s arguments.
37      First, as regards the applicant’s argument that the purpose of the goods concerned is identical, it is important to note, as did the Board of Appeal, that the goods covered by the mark applied for are articles of clothing the purpose of which is, in particular, to cover the lower part of the human body in order to protect it from friction and changes in temperature. By contrast, the goods concerned by the earlier trade marks fulfil an impermeable function to deal with urinary or faecal leakage and, to that effect, aim to minimise the consequences of incontinence for persons suffering therefrom. In those circumstances, the goods at issue will be perceived by the final consumer as serving a different purpose.
38      Secondly, concerning the applicant’s argument as regards the similar nature of the goods at issue, the difference between those goods is also apparent in the light of their composition, their characteristics and their durability. It must be observed that, as the Board of Appeal correctly pointed out, the hosiery, underclothing, underpants and underwear covered by the mark applied for are articles of clothing and fashion manufactured with materials which are resistant to repeated and continuous use over time. In addition, they are not meant to be absorbent. The napkin pants and absorbent pads covered by the earlier trade marks are medical articles which are generally composed of an absorbent part and an impermeable part made of plastic material. Those goods, unlike ordinary underwear, are generally disposable following a limited number of uses.
39      Furthermore, the applicant claims that there is no difference between the woven or knitted napkin pants covered by the earlier marks and the underpants and ordinary underwear covered by the mark applied for. However, it is important to note that the former, unlike the latter, include, by definition, absorbent elements or, at least, adaptations in their design intended to facilitate the use of supplementary absorbent napkins thus enabling the consequences of incontinence to be minimised.
40      Thirdly, as regards the applicant’s argument that the distribution channels of the goods concerned are frequently the same, it must be observed that, as the Board of Appeal correctly noted, goods such as the napkin pants covered by the earlier trade marks are usually distributed by pharmacies or by medical supply shops, whereas the underwear and goods covered by the mark applied for are available to consumers in clothes shops and in the clothing sections of department stores.
41      In addition, while the applicant claims that medical supply shops, and, in particular, the Sanitäthäuser in Germany, can sell, in certain circumstances, both ordinary underwear and napkin pants for persons suffering from incontinence, it is important nevertheless to note that the applicant only adduced evidence in support of this argument for the first time before the General Court. However, as is apparent from paragraph 16 of the present judgment, the latter documents have been rejected as inadmissible.
42      Fourthly, as regards the applicant’s argument that the goods at issue are in competition with each other, it must be noted that, in order for the goods to be regarded as in competition, there must be an element of interchangeablity between them (see, to that effect, Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 35, and Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 57).
43      However, in the present case, the goods covered by the mark applied for and those covered by the earlier marks are not interchangeable in so far as, as was pointed out in paragraph 37 of the present judgment, the goods at issue serve different purposes and cannot therefore be interchanged. In those circumstances, it should be noted, as OHIM observed, that the consumer’s deliberated choice between the goods at issue, far from being based on a preference of one product over another, will be made on the basis of considerations relating to their medical condition.
44      Fifthly, as regards the applicant’s argument that the ordinary underwear covered by the mark applied for and the absorbent napkins covered by earlier marks are complementary, since the former can be completed by the latter, it must be remembered that two goods are complementary where they are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same company is responsible for manufacturing those goods (see judgment of 21 November 2012 in Case T‑558/11 Atlas v OHIM – Couleurs de Tollens (ARTIS), not published in the ECR, paragraph 25 and the case-law cited).
45      However, a relationship of complementarity as described by the applicant cannot be established in the present case. Even if certain models of underwear covered by the mark applied for could possibly be shaped or adapted so as to enable their use with absorbent napkins, these models were not designed, in principle, for that purpose. Therefore, they cannot be considered to be indispensable or important for the use of absorbent napkins so that consumers may think that the same company is responsible for the production of those two types of goods. Consumers do not perceive that the manufacturers of underwear, even of underwear enabling the adhesion of absorbent napkins, also produce napkins for consumers suffering from incontinence.
46      In the light of the foregoing, it must be concluded that the Board of Appeal did not err in finding that the goods covered by the marks at issue were not similar.
47      Furthermore, in so far as, according to the case-law cited at paragraph 22 of the present judgment, the 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, it must be held that the Board of Appeal was correct in finding that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
48      It follows from the foregoing that the single plea put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
49      Under Article 87(2) 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.
50      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with forms of order sought by OHIM.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Paul Hartmann AG to pay the costs.
Azizi
Frimodt Nielsen
Kancheva
Delivered in open court in Luxembourg on 4 February 2013.
[Signatures]
* Language of the case: English.