JUDGMENT OF THE GENERAL COURT (Third Chamber)
27 September 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark PM PROTON MOTOR – Earlier national, Benelux and Community word and figurative marks PROTON – Relative grounds for refusal – No likelihood of confusion – Lack of similarity between the goods and services – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009))
In Case T‑581/08,
Perusahaan Otomobil Nasional Sdn Bhd, established in Shah Alam, Selangor Darul Ehsan (Malaysia), represented by J. Blind, C. Kleiner and S. Ziegler, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Proton Motor Fuel Cell GmbH, established in Puchheim (Germany), represented by C. Sedlmeir, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 9 October 2008 (Case R 1675/2007-1) concerning opposition proceedings between Perusahaan Otomobil Nasional Sdn Bhd and Proton Motor Fuel Cell GmbH,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court (then the Court of First Instance) on 29 December 2008,
having regard to the response of OHIM lodged at the Court Registry on 19 May 2009,
having regard to the response of the intervener lodged at the Court Registry on 8 May 2009,
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 Court’s Rules of Procedure,
gives the following
Judgment
Background to the dispute
1        On 10 July 2001, the intervener, Proton Motor Fuel Cell GmbH, filed an application for registration of a Community trade mark at 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        The mark in respect of which registration was sought is the following figurative sign:
3        The goods and services in respect of which registration was sought are, following the restriction made during the proceedings before OHIM, in Classes 7, 9 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description:
–        Class 7: ‘Electric drives with proton exchange membrane fuel cells’;
–        Class 9: ‘Proton exchange membrane fuel cells’;
–        Class 42: ‘Development of systems for the conversion of energy using proton exchange membrane fuel cells’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 3/2002 of 7 January 2002.
5        On 8 April 2002, the applicant, Perusahaan Otomobil Nasional Sdn Bhd, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3.
6        The opposition was based on a number of earlier national, Benelux and Community marks, in particular the following earlier marks:
–        The Community word mark PROTON No 198564 covering, inter alia, goods and services in Classes 12 and 37 corresponding, for each of those classes, to the following description: ‘Motor land vehicles and parts, fittings and accessories therefor’ (in Class 12) and ‘Repair and maintenance of motor land vehicles; modification of motor land vehicles’ (in Class 37);
–        The Community figurative mark PROTON No 1593201 covering, inter alia, goods and services in Classes 12 and 37 corresponding, for each of those classes, to the following description: ‘Motor land vehicles and parts, fittings and accessories therefor’ (in Class 12) and ‘Repair, maintenance and modifications of motor land vehicles’ (in Class 37), represented below:
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and those referred to in Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).
8        On 31 August 2007, the Opposition Division upheld the opposition in its entirety and rejected the Community trade mark application in respect of all the goods and services concerned on the ground that there was, in the United Kingdom, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
9        On 25 October 2007, the intervener filed a notice of appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
10      By decision of 9 October 2008 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal, annulled the Opposition Division’s decision and allowed the mark applied for to proceed to registration. It took the view, in essence, that it was unlikely that there would be a likelihood of confusion between the mark applied for and any of the earlier marks on the part of the public, if the mark applied for was used in respect of the goods and services referred to in the application. More specifically, it found that the respective publics and the goods covered by the marks in question were completely different. Likewise, the visual impression produced by the marks was also different. However, there were phonetic similarities between the signs at issue. Lastly, concerning the conceptual comparison, the Board of Appeal expressed the view that, due to the differences existing between the goods and services covered by the marks at issue and the respective publics targeted by them, the conceptual content of the word ‘proton’ would be perceived very differently in the context of each of those marks. The Board of Appeal also found that the conditions for the application of Article 8(5) of Regulation No 40/94 had not been met.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision, uphold the opposition in its entirety and reject the Community trade mark application;
–        order OHIM and the intervener to pay the costs, including those incurred in the proceedings before OHIM.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        confirm the contested decision;
–        dismiss the action;
–        order the applicant to pay the costs relating to the proceedings and the intervention.
Law
Admissibility of the documents produced for the first time before the Court
14      The intervener submits that Annexes A.4 and A.5 to the application were never produced during the administrative procedure before OHIM and must for that reason be declared inadmissible.
15      According to settled case-law, the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal within the meaning of Article 63 of Regulation No 40/94 and, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 29, and Case T‑336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II‑4667, paragraph 16). It is thus not the Court’s function to review the facts in the light of evidence which has been adduced for the first time before it (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25). To admit such documents would be contrary to Article 135(4) of the Court’s Rules of Procedure, which states that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. It follows that, as they have been presented for the first time before the Court, Annexes A.4 and A.5 to the application must be declared inadmissible.
Substance
16      In support of the application, the applicant relies on two pleas in law alleging breach of Article 8(1)(b) of Regulation No 40/94 and breach of Article 8(5) thereof.
First plea: breach of Article 8(1)(b) of Regulation No 40/94
–       Arguments of the parties
17      The applicant claims, in essence, that there is a likelihood of confusion between the marks in question and that it is very likely that consumers in the United Kingdom may think that those marks have a common origin. More specifically, it argues, the marks at issue are visually, phonetically and conceptually similar. Likewise, there is a similarity between the goods and services in question. They are in competition, as the goods and services covered by the mark applied for are also of interest to the automotive industry. Furthermore, the applicant claims that the earlier marks enjoy an enhanced distinctiveness in the United Kingdom.
18      OHIM and the intervener dispute the applicant’s arguments.
–       Findings of the Court
19      Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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 two 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.
20      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 relevant public’s perception of the signs and goods or services in question, 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 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).
21      For the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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 Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
22      With regard to the relevant public, it must be borne in mind that this is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 30 September 2010 in Case T‑270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28 and the case-law cited).
23      In the present case, as the Board of Appeal correctly found in paragraph 19 of the contested decision, the public targeted by the goods and services covered by the earlier marks consists of average consumers, which the applicant does not dispute. Spare parts, fittings and accessories for motor land vehicles may also concern vehicle manufacturers, as the Board of Appeal held. As regards the goods and services covered by the mark applied for, these target a purely professional public, that is to say, essentially, automotive research centres, scientists, engineers and, possibly, vehicle manufacturers. The respective publics targeted by the marks in question coincide with regard to professionals, who have a particularly high level of attention. So far as concerns the territory to be taken into consideration, it is that of the European Union.
Comparison of the goods and services in question
24      According to settled case-law, in assessing the similarity of the goods or services in question, 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 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, for example, 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).
25      In the present case, for the purposes of examining the similarity between the goods and services in question, it was necessary to compare, on the one hand, the motor land vehicles, their parts, fittings and accessories, and their repair, maintenance and modification, which are covered by the earlier marks, and, on the other hand, the electric drives, the fuel cells and the development of systems for energy conversion, all those goods and services being characterised by the use of proton exchange membrane technology, which are covered by the mark applied for. The Board of Appeal, in essence, established, in paragraphs 21 and 22 of the contested decision, that, although the goods and services covered by the marks at issue are likely to have the same purpose, namely to power a motor vehicle, that fact was not sufficient to conclude that those goods and services were similar. It follows that the goods and services in question were found by the Board of Appeal to be different.
26      In that regard, it should be noted that proton exchange membrane technology, which characterises the goods and services covered by the mark applied for, is based on a process of electrochemical conversion, that is to say, the conversion of a chemical reaction into electricity, something which is not yet used by the automotive industry and is not yet accessible to the average consumer, unlike the goods and services covered by the earlier marks. Consequently, the goods and services in question are neither in competition nor complementary. Moreover, due to the different respective publics targeted by the services and goods in question, those services and goods use different distribution channels. Thus, the goods and services covered by the mark applied for are not sold in car showrooms, dealerships or automotive spare parts shops, as is the case with those covered by the earlier marks. The hypothetical possibility that the goods and services in question could have a common purpose is not sufficient in the present case to found the conclusion that the goods and services in question are similar; these must, as the Board of Appeal correctly found in the contested decision, be regarded as being different.
Likelihood of confusion
27      According to the settled case-law cited in paragraph 21 above, the conditions for the application of Article 8(1)(b) of Regulation No 40/94 are cumulative conditions.
28      Consequently, even when the signs at issue are identical, it is still necessary to adduce evidence of similarity between the goods or services covered (order of 9 March 2007 in Case C‑196/06 P Alecansan v OHIM, not published in the ECR, paragraph 24, and judgment in Case T‑150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 27).
29      Thus, if the goods and services in question are different in many respects, it is possible, without examining the signs at issue, to take the view that there is no likelihood of confusion (see, to that effect, Case T‑8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II‑4297, paragraphs 43, 44 and 59).
30      In the present case, as has just been found, the Board of Appeal was right to hold that the goods and services in question were different. It is, therefore, possible to conclude that it was right to find that there was no likelihood of confusion between the marks at issue, without its being necessary to examine the signs at issue or to analyse the alleged distinctiveness of the earlier marks.
31      It follows that the first plea, alleging a breach of Article 8(1)(b) of Regulation No 40/94, must be rejected.
Second plea: breach of Article 8(5) of Regulation No 40/94
–       Arguments of the parties
32      In essence, the applicant claims that, due, first, to the competition existing between the goods and services covered by the marks at issue and, second, to the fact that the targeted public includes professionals in the automotive sector, the mark applied for would take unfair advantage of the reputation which the earlier marks enjoy in the United Kingdom and Germany, these being associated with the idea of a ‘long standing business’ and a certain ‘customer satisfaction’. It claims to have provided evidence that the earlier marks have a reputation in the United Kingdom for cars and related goods. Given that the goods and services in question are in competition, the proprietor of the mark applied for could, it submits, take advantage of the earlier marks’ reputation, and in particular of the investments made by the applicant.
33      OHIM and the intervener take issue with the applicant’s arguments.
–       Findings of the Court
34      Under Article 8(5) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for may also not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, that mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
35      Therefore, in order for an earlier trade mark to be afforded the broader protection of Article 8(5) of Regulation No 40/94, a number of conditions must be met. First, the earlier mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, a failure to satisfy one of them will be sufficient to render that provision inapplicable (see judgment of 30 January 2008 in Case T‑128/06 Japan Tobacco v OHIM – Torrefacção Camelo (CAMELO), not published in the ECR, paragraph 46 and the case-law cited).
36      The Board of Appeal expressed the view, in paragraph 32 of the contested decision, that the applicant had not adduced evidence of the existence, in the present case, of one of the risks referred to by the fourth condition for the application of Article 8(5) of Regulation No 40/94, but had merely quoted that provision.
37      It must be stated that the applicant’s argument that the goods and services covered by the marks in question are in competition and that the target public includes professionals in the automotive sector, such as to establish a link between those marks, was not submitted before the departments of OHIM. In that regard, it must be borne in mind that, according to settled case-law, the purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It 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 Court. It also follows from that provision that the Court cannot re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (judgment of 9 February 2010 in Case T‑113/09 PromoCell bioscience alive v OHIM (SupplementPack), not published in the ECR, paragraphs 11 and 12). That argument must therefore be rejected as being inadmissible.
38      Consequently, it must be held – as the Board of Appeal did – that the applicant did not submit before the departments of OHIM evidence likely to be taken into consideration in the assessment of the risk associated with the damage done to the reputation of the earlier marks. Given that one of the cumulative conditions for the application of Article 8(5) of Regulation No 40/94 has not been met, it is not necessary to examine the other conditions governing the application of that article.
39      It follows that the second plea, alleging a breach of Article 8(5) of Regulation No 40/94, must be rejected and, thus, the action must be dismissed in its entirety, without its being necessary to rule on the admissibility of the form of order sought to the effect that the Court should uphold the opposition in its entirety and reject the trade mark application.
Costs
40      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Perusahaan Otomobil Nasional Sdn Bhd to pay the costs.
Czúcz
Labucka
Gratsias
Delivered in open court in Luxembourg on 27 September 2011.
[Signatures]
** Language of the case: English.