JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
8 January 2025 (*)
( EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark RATPAC – Earlier national word mark RAT
PACK – Relative ground for refusal – No likelihood of confusion – No similarity of the services – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) )
In Case T‑163/24,
Rat Pack Filmproduktion GmbH, established in Munich (Germany), represented by S. Schmidt and P. Baronikians, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
RatPac Entertainment LLC, established in Encino, California (United States), represented by H. Gauß and N. Vachova, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, P. Zilgalvis and E. Tichy‑Fisslberger, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 17 October 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Rat Pack Filmproduktion GmbH, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 January 2024 (Case R 877/2023-5) (‘the contested decision’).
Background to the dispute
2        On 21 December 2016, the intervener, RatPac Entertainment LLC, designated the European Union in its international registration No 1 336 518 for the word mark RATPAC.
3        The services in respect of which international registration was applied for are in Class 36 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: ‘Financing services’.
4        On 28 July 2017, the applicant filed an opposition against the international registration at issue in respect of the services listed in paragraph 3 above.
5        The opposition was based on the following earlier rights:
–        the German word mark registration No 30 201 720
RAT PACK registered on 7 August 2002 for some services in Class 41 and corresponding to the following description: ‘Film production [entertainment]’;
–        the non-registered company name ‘RAT PACK’ for the territories of Austria and Germany for services corresponding to the following description: ‘Financing of films; film production’.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) and (4) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
7        On 5 April 2023, the Opposition Division rejected the opposition on the grounds that, first, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, second, that the requirements of Article 8(4) of Regulation No 207/2009 were not met.
8        On 25 April 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the basis of Article 8(1)(b) of Regulation No 207/2009 on the grounds that the services at issue were different in nature, purpose and method of use from the services covered by the earlier German mark and that they were neither complementary nor in competition.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In view of the date on which the application for registration at issue was filed, namely 21 December 2016 (see paragraph 2 above), which is decisive for the purpose of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
Furthermore, given that, according to settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
14      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, as well as by the parties, to Article 8(1)(b) and (4) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and (4) of Regulation No 207/2009, which are identical in content.
15      In support of its action, the applicant has put forward two pleas in law, alleging (i) infringement of Article 8(4) of Regulation No 207/2009 and (ii) infringement of Article 8(1)(b) of that regulation, with regard to the comparison of the services at issue.
16      However, in response to the measure of organisation of procedure of 28 June 2024, the applicant withdrew its first plea.
17      It is therefore appropriate to examine the applicant’s single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, as regards the comparison of the services at issue.
18      The applicant maintains, in essence, that the Board of Appeal infringed
Article 8(1)(b) of Regulation No 207/2009 and that it made errors of assessment in the comparison of the services concerned, by incorrectly
finding that those services were dissimilar and that there was therefore no likelihood of confusion between the marks at issue.
19      In the first place, the applicant claims that the Board of Appeal incorrectly interpreted the nature and purpose of the services concerned. First, the services in Class 36 are not limited to ‘financing services’, but also include other services, such as ‘arranging finance for films’ and ‘financial sponsorship and funding of films’. Secondly, the Board of Appeal disregarded the definition of the term ‘film production’ in the German dictionary Duden and the online encyclopaedia Wikipedia, by failing to take into account the interconnection of film financing and film production. Thirdly, the Board of Appeal erred in finding that the services concerned required different knowledge, whereas it should have considered that film production required knowledge of the film business as well as of financing. Fourthly, even assuming that financing services are intended to be offered to third parties, while film production is more likely to
cover the
self-financing of films, the Board of Appeal should not have ruled out the possibility of a likelihood of confusion between those similar services. In addition, there are examples of cross financing of films by their co-producing parties resulting in third party financing.
20      In the second place, the applicant argues that the Board of Appeal made an incorrect assessment of the relevant public by finding, in paragraph 52 of the contested decision, that only the German public was relevant when assessing the similarity of the services. Since film production is a highly international business, the public in other EU countries is therefore also relevant. In addition, the applicant showed that it had co-produced films and applied for financing not only in Germany, but also in Austria.
21      In the third place, the applicant claims that the Board of Appeal made an incorrect assessment of the complementarity of the services concerned.
The financing services included in Class 36 are essential to film production covered by Class 41. There is thus a functional dependency between those services, which are provided within the same industry and frequently offered by the same providers. Moreover, the services at issue are complementary in the eyes of the general public, which is used to seeing big screen appearances of the names of both film production companies and film financing companies directly next to each other.
22      Furthermore, the applicant submits that the previous decisions of EUIPO, referred to in paragraph 49 of the contested decision, are not relevant to the present case, since they do not take into account the specifics of the film industry. By contrast, in paragraph 51 of the contested decision, the Board of Appeal incorrectly disregarded a decision of the Opposition Division. Furthermore, the Board of Appeal incorrectly decided not to take into account the decisions of the national courts in the Czech Republic, Denmark, the Netherlands and Austria.
23      EUIPO and the intervener dispute the applicant’s arguments.
24      Under 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 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means 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 EU trade mark.
25      The risk that the public might believe that the goods or services at issue come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue 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).
26      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two 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).
27      In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and 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 judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
28      Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
29      In the present case, the Board of Appeal considered, in paragraph 52 of the contested decision, that the relevant public was limited to the German public
since the opposition was based on a German mark.
30      The Board of Appeal considered that the services at issue, namely ‘financing services’ in Class 36, covered by the mark applied for, and ‘film production [entertainment]’ in Class 41, covered by the earlier mark, were dissimilar. Thus, in paragraph 38 of the contested decision, the Board of Appeal found that ‘financing services’ included, ‘in particular, financial transaction and payment services, financing and credit services and financial sponsorship’, while ‘film production [entertainment]’ related to ‘the entertainment, amusement or the recreation of people, in particular film production services not intended for advertising’.
31      The Board of Appeal considered, in paragraph 40 of the contested decision, that the services under comparison were different in their nature, purpose and method of use. First, it considered that film production focused on entertainment, while financing services focused on the financing of third parties or the facilitation of their financial transactions. Second, it considered that financing services referred to economic activities for third parties, while film financing in the context of film production only included the financing of one’s own projects. Third, it asserted that the fact that a service required financing could not be sufficient for an assumption of similarity, without considering that financial services were similar to all other financed services. Fourth, it found that the services also differed
to the extent that financing services, including film financing services, required different knowledge and know-how from those required by film production.
32      The Board of Appeal considered, in paragraph 48 of the contested decision, that the services at issue were neither complementary, in the sense that one was indispensable to the other, nor in competition. According to the Board of Appeal, even if there was a certain relationship between financing services and film production, there was no functional dependency nor close link between those services likely to lead the public to believe that they came from the same undertaking.
33      The Board of Appeal concluded, in paragraph 53 of the contested decision, that there was no likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the dissimilarity between the services at issue.
34      First of all, contrary to the applicant’s claims, the Board of Appeal correctly found, in paragraph 52 of the contested decision, that the relevant public in the present case was the German public. First, as regards the German word mark RAT PACK on which the applicant’s opposition is based, it is sufficient to state that the relevant public can only be that of the Member State where that mark is protected as a national mark, namely Germany (see first indent of paragraph 5 above).
35      Secondly, as regards the unregistered rights, which the applicant claimed, in particular, in Austria (see second indent of paragraph 5 above), it must be stated that the Opposition Division considered that those rights were not sufficiently substantiated and that that assessment was not the subject of an appeal before the Board of Appeal. Consequently, as is apparent from the sixth and seventh indents of paragraph 10 and paragraphs 55 to 58 of the contested decision, the Opposition Division’s decision became final vis-à-vis the applicant in respect of the unregistered rights on which its opposition was based, which, in any event, are not the subject of the present action (see paragraph 16 above).
36      It follows that the Board of Appeal did not err in considering that the public in the territory in which the earlier mark was protected, within the meaning of Article 8(1)(b) of Regulation No 207/2009, was the German public.
37      Furthermore, the applicant incorrectly alleges that the Board of Appeal limited the services in Class 36 to financing services, without including other services, in particular, those relating to film financing.
38      In that regard, the Board of Appeal considered, in paragraph 38 of the contested decision, that the financing services in Class 36 included, ‘in particular, financial transaction and payment services, financing and credit services and financial sponsorship’. That definition, which is, moreover, not exhaustive, corresponds to how that
term is ordinarily understood, taking into account the current meaning of the word ‘financing’, which designates an operation consisting, for the financier, in granting monetary resources and, for the financee, in securing
the monetary resources necessary for the completion of a project.
39      Furthermore, it must be stated that it follows, in particular, from paragraph 40 of the contested decision that the Board of Appeal took into account the fact that film production could
include film financing, but that it found that that financing activity differed from the financing services in Class 36 as regards their nature, purpose and method of use.
40      In addition, it should be noted that the Board of Appeal correctly found, in paragraph 40 of the contested decision, that the services concerned, namely, financing services, on the one hand, and, film production services, on the other, required different knowledge and know-how. The applicant’s argument, which is moreover unsupported, that a production service, which includes film financing, requires knowledge in both of those areas is not capable of calling into question the plain fact that the knowledge at issue is not the same.
41      Furthermore, it must be stated that the applicant’s argument does not call into question the Board of Appeal’s assessment, in paragraph 40 of the contested decision, that financing services refer to economic activities for third parties, while
film financing, included in the activity of film production, refers to the financing of one’s own projects. Contrary to what the applicant claims, its example of the cross financing of films by their co-producing parties is not illustrative of a financing activity for third parties, but rather of self-financing. Film financing carried out in the context of film production and aimed at financing one or more own films cannot be likened to financing services aimed at the financing of third-party projects or the facilitation of their financial transactions.
42      Moreover, the applicant’s argument that the Board of Appeal disregarded the definition of the term ‘film production’ in the German dictionary Duden and the online encyclopaedia Wikipedia must be rejected in so far as those definitions included film financing as being part of film production. First, the definition of that dictionary was analysed by the Board of Appeal in paragraph 41 of the contested decision. Secondly, the fact that film financing may be a step in the production of that film does not alter the fact that the nature, purpose and method of use of the services at issue are different, for the reasons put forward, in essence, by the Board of Appeal (see paragraph 31 above).
43      As the Board of Appeal rightly points out, the mere fact that a service requires financing cannot be sufficient to establish a similarity of services, without equating financing services to all financed services.
44      Therefore, the Board of Appeal correctly found that the services at issue were dissimilar.
45      Lastly, the applicant is wrong to claim that the Board of Appeal made an incorrect assessment of the complementarity of the services at issue.
46      As referred in
paragraphs 45 and 46 of the contested decision, the financing services are aimed at the general public as well as at professional customers, while the public for film production
services
for entertainment purposes is mainly made up of professionals. Since those services are intended for different publics, they cannot, by definition, be complementary in nature, in accordance with the case-law referred to in paragraph 28 above.
47      Moreover, as stated in paragraph 47 of the contested decision, the services at issue are provided by different undertakings, in
so
far as the financing services are provided by financial institutions and investors, while film production services are offered by film production companies and are distributed through different distribution channels in the sector concerned.
48      Thus, even if a certain relationship might exist between financing services and film production services, it is not a close connection within the meaning of the case-law referred to in paragraph 28 above, in so far as the former would be indispensable or important for the use of
the latter, with the result that consumers might think that the responsibility for the supply of those services lies with the same undertaking.
49      It follows that the Board of Appeal correctly found that financing services, on the one hand, and film production services for entertainment purposes, on the other, were not complementary services within the meaning of the case-law referred to in paragraph 28 above.
50      In the light of all the foregoing, it must be concluded that the Board of Appeal correctly found that there was no likelihood of confusion on the part of the German public within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the lack of similarity between the services at issue.
51      Furthermore, as regards the applicant’s arguments based on previous decisions of EUIPO, it is sufficient to recall that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards
(see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65). In the present case, to the extent that it was considered in paragraph 50 above that the Board of Appeal correctly found, in view of the lack of similarity between the services at issue, that there was no likelihood of confusion on the part of the German public within the meaning of Article 8(1)(b) of Regulation No 207/2009, the applicant cannot usefully rely, in order to invalidate that finding, on previous decisions of EUIPO.
52      Furthermore, as regards the applicant’s arguments based on the decisions of national courts, it is sufficient to recall that the EU trade mark regime is autonomous and that the legality of the decisions of the Boards of Appeal is assessed solely on the basis, in the present case, of Regulation No 207/2009, with the result that EUIPO or, on appeal, the General Court is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see, to that effect, judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
53      In the light of all of the foregoing considerations, the single plea in law relied on by the applicant in support of its claims must be rejected, and the action must be dismissed.
Costs
54      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.
55      In the present case, since the applicant has been unsuccessful and EUIPO and the intervener have applied for the applicant to be ordered to pay the costs in the present proceedings, the applicant must be ordered to pay, in addition to bearing its own costs, all the costs incurred by EUIPO and the intervener in respect of the present proceedings.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rat Pack Filmproduktion GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and RatPac Entertainment LLC in the proceedings before the General Court.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 8 January 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.