JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark BAM – Earlier national figurative mark BAM – Relative ground for refusal – Likelihood of confusion – No similarity of the goods – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑426/09,
Bayerische Asphaltmischwerke GmbH & Co. KG für Straßenbaustoffe, established in Hofolding (Germany), represented by G. Würtenberger and R. Kunze, lawyers,
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, intervener before the General Court, being
Koninklijke BAM Groep NV, established in Bunnik (Netherlands), represented initially by J. van Manen, subsequently by J. van Manen and M. van de Braak, and lastly by J. van Manen and R. Sjoerdsma, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 August 2009 (Case R 1005/2008-2), relating to opposition proceedings between Bayerische Asphaltmischwerke GmbH & Co. KG für Straßenbaustoffe and Koninklijke BAM Groep NV,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood (Rapporteur), President, J. Schwarcz and A. Popescu, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 21 October 2009,
having regard to the response of the intervener lodged at the Court Registry on 5 February 2010,
having regard to the order staying the proceedings of 15 March 2010,
having regard to the resumption of the proceedings,
having regard to the response of OHIM lodged at the Court Registry on 26 July 2010,
having regard to the change in the composition of the Chambers,
having regard to the decision of 19 October 2010 refusing to permit the lodging of a reply,
further to the hearing on 5 July 2011,
gives the following
Judgment
Background to the dispute
1        On 10 December 2003, the intervener, Koninklijke BAM Groep NV, 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 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 trade mark was sought for the figurative sign BAM.
3        The goods and services for which registration was sought are in Classes 6, 19, 37 and 42 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 6: ‘Common metal and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non‑electric balls and wires of common metal; Ironmongery, small items of metal hardware; metallic tubes; Safes (strong boxes); goods of metal not included in other classes; ores’;
–        Class 19: ‘Building materials, not of metal; non-metallic rigid piping for building; asphalt, pitch and bitumen; non-metallic transportable structures; monuments, not of metal’;
–        Class 37: ‘Building construction; repairs; repair and maintenance’;
–        Class 42: ‘Planning and consultancy for building and construction; design of buildings and structures; technical consultancy’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 47/2004 of 22 November 2004.
5        On 22 February 2005, the applicant, Bayerische Asphaltmischwerke GmbH & Co. KG für Straßenbaustoffe, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for.
6        The opposition was based on the earlier German figurative mark BAM, registered on 23 September 1988 under number 1128023, for the following goods:
–        Class 7: ‘Construction machines, in particular for road construction’;
–        Class 19: ‘Building materials (non-metallic), in particular, road building materials, indirect material (non-metallic) for road construction, in particular, bitumen, chippings, gravel, sand, granulates out of recovered asphalt, reclaimed rubber, clinkers, aggregates’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        In the course of the opposition proceedings, the Opposition Division determined that proof of genuine use of the earlier trade mark had been furnished for the goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’.
9        By decision of 7 May 2008, the Opposition Division partially upheld the opposition, but rejected it in respect of the goods ‘non-metallic transportable structures; monuments, not of metal’ in Class 19 and the services in Class 37 covered by the trade mark application, on the ground that those goods and services were not similar to the applicant’s goods at issue, as described in paragraph 8 above.
10      On 7 July 2008, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
11      The applicant did not dispute the finding of the Opposition Division relating to proof of genuine use of the goods referred to in paragraph 8 above, within the context of that appeal.
12      By decision of 11 August 2009 (‘the contested decision’), the Second Board of Appeal of OHIM in essence dismissed the appeal, but annulled the decision of the Opposition Division in so far as it had allowed the opposition in respect of ‘non-metallic rigid piping for building’ in Class 19. It gave, in essence, the following reasons for its decision:
–        the goods covered by the trade mark application are rather specialised and are intended for a public composed of professional or do-it-yourself consumers whose level of attention will be relatively high (paragraph 17);
–        the Opposition Division wrongly broadened the scope of protection of the earlier trade mark by not limiting it to ‘building materials … for road construction … and machines … for road construction’; as a result, the genuine use of the earlier trade mark was proved only for ‘asphalt and building materials consisting of asphalt and for the production of asphalt, all of the aforesaid goods for road construction’ (paragraph 18);
–        ‘non-metallic rigid piping for building’ is not similar to ‘asphalt and building materials consisting of asphalt and for the production of asphalt’, as their intended purpose and distribution channels are different and the goods at issue are neither in competition with each other nor complementary (paragraphs 23 and 24);
–        ‘non-metallic transportable structures’ and ‘monuments, not of metal’ are not similar to asphalt and like materials, as the distribution channels are different, asphalt constitutes the raw material unlike the transportable structures and monuments which constitute the final product, and the goods at issue are neither complementary nor in competition with each other (paragraphs 25 and 26);
–        lastly, the services of ‘building construction; repairs; repair and maintenance’ covered by the trade mark application are not similar to asphalt and building materials derived from asphalt, because of their different nature, distribution channels and target public, and also the average consumer is aware that asphalt, as a very specific product, is not produced by the undertakings which offer the services at issue (paragraphs 27 and 28).
Forms of order sought
13      Alongside its application for a declaration that there is no need to adjudicate (see paragraph 16 et seq. below), the applicant claims that the Court should:
–        annul the contested decision in so far as it rejected the opposition to registration of the trade mark applied for in respect of the goods ‘non‑metallic rigid piping for building; transportable structures; monuments, not of metal’ and for the services ‘building construction; repairs; repair and maintenance’;
–        uphold the opposition to the same extent;
–        order OHIM to pay the costs.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.
The application for a declaration that there is no need to adjudicate
16      In its application for the proceedings to be stayed, lodged at the Registry on 29 January 2010, OHIM stated that:
–        on 28 December 2009, the agent for the intervener had sent OHIM a letter, the terms of which (‘we instruct you to withdraw this case and to close your file’) it had considered to effect a withdrawal of the application for registration of the Community trade mark at issue in the present case;
–        on 5 January 2010, the agent for the intervener had sent a further letter requesting OHIM to ignore its previous letter of 28 December 2009 as it had been sent ‘erroneously’;
–        on 27 January 2010, OHIM had informed the agent for the intervener that, according to its internal guidelines, the letter of 5 January 2010 could not be accepted but, if the intervener disagreed with that finding, it could request a formal decision within two months, in accordance with Rule 54(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p.1).
17      In its written observations on the application for the proceedings to be stayed, lodged at the Registry on 18 February 2010, the applicant asked the Court to reject the application and to declare that the action had become devoid of purpose and that there was no longer any need to adjudicate.
18      In its written observations on the application for a declaration that there was no need to adjudicate, lodged at the Registry on 9 March 2010, OHIM argued that it would be premature to declare the action devoid of purpose since the intervener, by letter of 17 February 2010, had applied for a formal decision on the procedural issue outlined in OHIM’s letter of 27 January 2010.
19      In its written observations on the application for a declaration that there was no need to adjudicate, lodged at the Registry on 15 March 2010, the intervener asked the Court to reject that application.
20      By decision of 16 July 2010, communicated to the intervener the same day, OHIM formally decided not to take into account the withdrawal of the Community trade mark application at issue, on the ground that the withdrawal had not been submitted in the language used for filing the Community trade mark application, namely Dutch, or in the second language indicated in the application, namely French, as required by Rule 95 of Regulation No 2868/95, but in English.
21      By letter lodged at the Registry on 27 July 2010, the intervener informed the Court of that decision of OHIM, and again requested that it dismiss the application for a declaration that there was no need to adjudicate.
22      In its observations on the resumption of the proceedings, lodged at the Registry on 20 September 2010, and at the hearing, in reply to a question put by the Court, the applicant reiterated its request for a declaration that there was no need to adjudicate. According to the applicant, the withdrawal of a trade mark application constitutes a binding declaration which, for reasons of legal certainty and respect for the rights of third parties, cannot be reversed, and the only option for a party who withdraws is to file a new trade mark application. The applicant relies to that effect on OHIM’s Opposition Guidelines (Part 1, point D.II.7.4), under which a party is permitted to withdraw a previously submitted withdrawal only if OHIM receives the letter withdrawing the earlier withdrawal on the same day as the first submission.
23      In that regard, it must be borne in mind that, under Rule 95(a) of Regulation No 2868/95, any application or declaration relating to a Community trade mark application may be filed in the language used for filing the application for a Community trade mark or in the second language indicated by the applicant in his application.
24      It follows from that provision that, to be capable of being taken into consideration by OHIM, the withdrawal of a Community trade mark application must be filed either in the language used for filing the application or in the second language indicated by the applicant in the application.
25      Contrary to what the applicant submits, that finding is not affected by the use in that provision of the verb ‘may’, which is justified here by the choice left to the parties concerned to file their application or declaration in one or other of the two languages permitted.
26      Nor is that finding affected by Part 1, point D.II.6 of OHIM’s Opposition Guidelines, which states:
‘A restriction may be submitted either in the first or the second language of the [Community trade mark application (CTMA)] (Rule 95(a) [of Regulation No 2868/95]). When the restriction is submitted in the first language of the CTMA, which is not the language of proceedings, and when the restriction does not cover the whole extent of the opposition, the restriction is forwarded to the opponent requesting him to inform [OHIM] whether or not he maintains his opposition. The opponent can object to the language of the restriction and ask for a translation into the language of proceedings. [OHIM] will then provide for the translation.’
27      First, as they rank lower in the hierarchy of legal rules, OHIM’s guidelines cannot derogate from the provisions of Regulation No 2868/95.
28      Secondly, although it is true that, under the provision in Part 1, point D.II.6 of OHIM’s Opposition Guidelines, the opponent may object to the language of the restriction and ask for a translation into the language of proceedings, the fact remains that that provision merely reiterates Rule 95(a) of Regulation No 2868/95 by stating that a restriction may be submitted ‘either in the first or the second language of the [Community trade mark application]’.
29      Furthermore, respect for the requirements of legal certainty and the rights of third parties, invoked by the applicant, is fully ensured by Rule 95(a) of Regulation No 2868/95 in conjunction with Part 1, point D.II.7.4 of OHIM’s Opposition Guidelines under which a party is permitted to withdraw a previously submitted withdrawal only if OHIM receives the letter withdrawing the earlier withdrawal on the same day as the first submission.
30      In the present case, it is common ground, first, that the language used for filing the Community trade mark application is Dutch and that the second language indicated by the intervener in his application is French and, secondly, that the intervener’s agent’s letter of 28 December 2009, understood by OHIM as effecting a withdrawal of that application, was written in English.
31      In those circumstances, the withdrawal allegedly contained in that letter could not, in any event, be taken into consideration by OHIM. OHIM was therefore right to make a finding to that effect by formal decision of 16 July 2010.
32      It also follows that the present action has not become devoid of purpose and that the application for a declaration that there is no need to adjudicate must be dismissed.
Substance
33      In support of its action, the applicant relies on four pleas in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, misuse of powers, infringement of Article 75 of Regulation No 207/2009, and infringement of Article 64(1) of Regulation No 207/2009. It is appropriate to examine the second and fourth pleas together.
First plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
34      The applicant claims that there exists a likelihood of confusion between the trade marks at issue because of, firstly, the similarity between the signs, which it says is not disputed, and, secondly, the identity or similarity of the goods and services at issue, which the Board of Appeal assessed incorrectly. In that regard, it specifically contends that:
–        the Board of Appeal, in paragraph 18 of the contested decision, erroneously limited the scope of protection of the earlier trade mark as registered, restricting it solely to goods relating to ‘road construction’, whereas the registration mentions road construction only ‘in particular’ and therefore only as an example (see paragraph 6 above); during the proceedings before the Opposition Division, the applicant moreover submitted documents attesting that the use of the earlier trade mark was not limited to road construction, but extended, inter alia, to civil engineering, building construction, dumpsites, bridges, airports, civil and hydraulic engineering works and mechanical and industrial building;
–        it is therefore necessary to compare the goods and services covered by the trade mark application with its own goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’;
–        there is a high degree of similarity between asphalt, on the one hand, which is not only used for building roads but also for building bridges and airports, as well as in the fields of hydraulic engineering, construction of dumpsites, civil engineering works and industrial buildings, and ‘rigid piping’, on the other; this is often used in the field of hydraulic engineering, while bitumen, an ingredient of asphalt, is often used to prevent corrosion of ‘rigid piping’; furthermore, the two sets of goods are used in a complementary way within the building industry;
–        there is a high degree of similarity between ‘asphalt and building materials derived from asphalt and for the production of asphalt’ and ‘non-metallic transportable structures; monuments, not of metal’, as confirmed by the decisions of the First Board of Appeal (decision of 30 October 2008 in Case R-28/2008); asphalt is used in the field of structural engineering which also includes ‘transportable structures’ and ‘monuments’; in addition, those goods share the same consumer market and the same distribution channels;
–        there is a similarity between the services of ‘building construction; repairs; repair and maintenance’, and those of the applicant’s goods at issue, since they are often offered by the same suppliers, go through the same distribution channels, serve the same purpose and are directed at the same end consumers, as confirmed by the decisions of the Opposition Division (decision of 16 November 2007 on opposition B 1037151, and decision of 30 September 2009 on opposition B 1131681); in order to preserve the principle of equal treatment in the present case, it is important to maintain the uniformity of that body of decisions.
35      OHIM claims, as a preliminary point, that the production as evidence, annexed to the application, of the decision of the Board of Appeal and the two decisions of the Opposition Division mentioned at paragraph 34 above is contrary to Article 135(4) of the Rules of Procedure of the Court, since they were produced for the first time before the Court. As a consequence, those annexes to the application should be declared inadmissible.
36      As regards the substance, OHIM and the intervener dispute the applicant’s arguments.
37      In that connection, OHIM concedes that the Board of Appeal should not have limited the scope of protection of ‘building materials’ only to those pertaining to ‘road construction’. OHIM takes the view, however, that this incorrect interpretation of the scope of protection of the earlier trade mark does not affect the final outcome of the decision as the goods and services under comparison are different in any event. Therefore, according to OHIM, the error in law made in that respect by the Board of Appeal cannot invalidate the contested decision.
38      In response to that same complaint on the part of the applicant, the intervener submits that, following the request to provide proof of genuine use of the earlier mark, which it made in accordance with Article 42(2) and (3) of Regulation No 207/2009, the Opposition Division found that the applicant had only proved use of ‘asphalt and building materials derived from asphalt and for the production of asphalt’. Those goods are a subcategory of the ‘indirect material (non-metallic) for road construction’ for which the earlier trade mark was registered. On the other hand, the applicant did not prove use of the earlier trade mark for ‘construction machines, in particular for road construction’ and ‘building materials (non-metallic), in particular road building materials’. In any event, according to the intervener, the substantive considerations relating to the absence of similarity between the goods and services at issue would not be affected if the Court were to consider that the proof of genuine use of the earlier trade mark is not limited to goods relating to road construction.
39      As regards, in the first place, the application to reject the annexes to the application as inadmissible, it must be pointed out that the decisions of the departments of OHIM concerned, although produced for the first time before the General Court, are not strictly evidence but relate to OHIM’s usual practice in reaching decisions, to which, even after the procedure before OHIM is complete, a party has the right to refer (Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 20, and Case T-29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II-5309, paragraph 16). Neither the parties nor the General Court itself can be precluded from drawing on the decision-making practice of the institutions of the European Union or the case-law of the judicature of the European Union for the purposes of interpreting European Union law. That possibility of referring to the decisions of the Boards of Appeal or of the Opposition Division of OHIM is not covered by the case-law according to which the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before them, since it is sought to allege that the Board of Appeal infringed a provision of Regulation No 207/2009 and the decision-making practice of the departments of OHIM is cited in support of that plea (see, to that effect, Case T‑277/04 Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) [2006] ECR II-2211, paragraphs 70 and 71, and Case T-420/03 El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (BoomerangTV) [2008] ECR II-837, paragraph 37).
40      Consequently, OHIM’s application should not be granted.
41      As regards, in the second place, the applicant’s complaint that the Board of Appeal erroneously limited the scope of protection of the earlier trade mark, it must borne in mind that paragraph 18 of the contested decision is worded as follows:
‘As a preliminary point, the Board notes that the contested decision held that the earlier registration in respect of “Building materials (non-metallic), in particular, road building materials, indirect material (non-metallic) for road construction, in particular, bitumen, chippings, gravel, sand, granulates out of recovered asphalt, reclaimed rubber, clinkers, aggregates and construction machines, in particular for road construction” in Classes 19 and 7 had been used in respect of “asphalt and building materials derived from asphalt and for the production of asphalt”. Although the parties do not call into question the conclusions in the contested decision as to the use of the earlier mark, it is nevertheless obvious that the new wording of the goods protected by the earlier mark must be defined further. The earlier registration protected only “building materials … for road construction … and machines … for road construction”. By reformulating the wording of the marked goods used, the contested decision unfortunately extended the protection of the earlier mark. In short, the Board shares the opinion of the Opposition Division relating to the use of the earlier mark in so far as the protection deriving from that use is restricted to “road construction”. It follows that the use of the earlier mark has been proved in respect of “asphalt and building materials derived from asphalt and for the production of asphalt, all of the aforesaid goods for road construction”.’
42      It is moreover common ground that the goods in respect of which proof of genuine use of the earlier mark was furnished are the goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’. The disagreement between the parties does not relate to that point, but to whether those goods, as designated by the earlier registration, are restricted to goods ‘for road construction’.
43      The reply to the present complaint thus depends above all on the category of goods in Class 19, as designated by the earlier mark, in which the goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’ must be included.
44      If those goods were to be included in the category ‘Building materials (non‑metallic), in particular, road building materials’, as the applicant submits and as OHIM seems to think, then clearly, in the light of the wording of the earlier registration and having regard more particularly to the use of the adverbial phrase ‘in particular’, the Board of Appeal in fact misread, which led to an error in law, in finding that that wording related only to ‘road building materials’, a finding which, it must be pointed out, was in no way deduced from the examination of the proof of genuine use furnished by the applicant, but solely from the wording of the earlier registration.
45      If, by contrast, those goods were to be included in the category ‘indirect material (non-metallic) for road construction, in particular, bitumen, chippings, gravel, sand, granulates out of recovered asphalt, reclaimed rubber, clinkers, aggregates’, as the intervener submits, it would be necessary to conclude that the Board of Appeal did not err, having regard to the wording of the earlier registration, in finding that all those goods are ‘for road construction’.
46      The line of argument elaborated on in that regard by the intervener is at first sight convincing: given that asphalt is, according to the information given on the internet site of the applicant itself, a ‘mixture of aggregates and bitumen, the largest use of which is for making asphalt concrete for road surfaces’, it seems logical to put it in the same category as the goods cited ‘in particular’ in the list reproduced in paragraph 45 above. The fact remains, nevertheless, that asphalt is not referred to in that list although it would also be logical for it to be found there since it is fundamental for the construction of roads.
47      However, it does not appear to be necessary to settle that controversy in the circumstances of the case, on the ground that, as will be explained in this judgment, the error which may have been made by the Board of Appeal has had no bearing on the validity of the contested decision, given that the goods and services which are the subject-matter of the comparison are, in any event, different, whether or not they are restricted to the area of road construction. In those circumstances, it is sufficient to state that the error of law possibly made by the Board of Appeal is not a necessary part of the statement of grounds for the partial rejection of the opposition and that it is not therefore such as to lead to the annulment of the contested decision (Joined Cases C-74/00 P and C-75/00 P Falck and Acciaierie di Bolzano v Commission [2002] ECR I-7869, paragraph 122; Case C-93/02 P Biret International v Council [2003] ECR I‑10497, paragraph 60; and Case C-447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraphs 50 and 51; see Case T-242/02 Sunrider v OHIM (TOP) [2005] ECR II-2793, paragraph 66 and the case-law cited).
48      As regards therefore, in the third place, the assessment of the similarity between the goods and services, it must be borne in mind first of all that, according to settled case-law, all the relevant factors relating to those goods or services themselves must be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary (see, by analogy, Case C-39/97 Canon [1998] ECR I‑5507, paragraph 23). 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).
49      As regards, first, ‘non-metallic rigid piping for building’, the Board of Appeal stated the following in paragraph 24 of the contested decision:
‘The asphalt goods in the earlier registration are intended for road construction. In a developed country, it is difficult to envisage the construction of a road without asphalt, bitumen or tarmacadam. However, even though it is not unusual, when road construction work is begun, to lay piping, the purpose of laying that piping is not the construction of the road itself but rather that of extending the public water, electricity etc networks to residents in a particular area. It has not been shown that the asphalt manufacturer is the same person as the manufacturer of “non-metallic rigid piping for building”. A road – private or public – may be constructed without laying piping. An untarred road is the exception rather than the rule in Europe. The purpose of laying one or more layers of asphalt is therefore the construction of the road itself. Furthermore, it has not been shown that the distribution network for the goods to be compared is the same or that there is any competition between the goods concerned. The fact that there is – at least theoretically – a certain overlap between the potential customers for the goods compared (municipalities, communes, public authorities etc) does not make them similar.’
50      None of the views put forward by the applicant makes it possible to call into question the validity of that assessment, which is admittedly restricted, perhaps erroneously, to road construction, but may be extended without substantial modification to all the other fields of use of the goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’ referred to by the applicant, such as civil or hydraulic engineering or industrial construction.
51      The facts, therefore, that the goods to be compared are used in those various fields, that bitumen, an ingredient of asphalt was in the past used to prevent corrosion of ‘rigid piping’ or that rigid piping is made of building materials are not sufficient for those goods to be regarded as similar. In addition to the views expressed in that regard by the Board of Appeal, OHIM and the intervener point out, correctly, that the goods in question have a different origin and physical condition, that their natures, purposes, composition, methods of production, uses and distribution channels are different, and that the relevant public is composed of specialists whose level of attention is high and who will notice those differences. Apart from a series of otherwise unsubstantiated claims, the applicant has not provided the Court with any evidence capable of showing that those views are erroneous.
52      As regards the claim that asphalt and ‘rigid piping’ are used in a complementary way within the building industry, it must be borne in mind that 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 (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraphs 57 and 58 and the case-law cited). Evidence that such a connection exists has not been adduced in the present case.
53      As regards, secondly, ‘non-metallic transportable structures’ and ‘monuments, not of metal’, the Board of Appeal stated the following in paragraphs 25 and 26 of the contested decision:
‘25      As regards the “non-metallic transportable structures” covered by the contested application, the Board finds it difficult to understand how they may really be similar to the goods covered by the earlier registration. Having regard to the fact that the latter goods are “for road construction”, the opponent’s line of argument based on the use of asphalt in the foundations of garden sheds or other portable buildings does not seem very relevant. It is unlikely that the goods compared share the same distribution outlets or networks. There is no competitive relationship between the goods compared and they are not really complementary (other than that prefabricated sheds are sometimes used by site workers). In any event, a “transportable structure” is far from being indispensable in road construction. The goods are therefore different.
26      The same is true of the “monuments, not of metal” covered by the trade mark application. Although a construction undertaking might order a finished product like, for example, a monument in the course of constructing a commemorative site, such an order does not make that monument similar to the asphalt (or its derivatives) covered by the earlier mark. The relevant public is not accustomed to seeing them in the market of manufacturers of asphalt for road construction who also manufacture monuments. A monument may be manufactured, erected and maintained without asphalt. It goes without saying that the erection of a monument is not an essential condition for the construction of a road. The points of contact between the goods compared are minimal, if not non-existent.’
54      None of the views put forward by the applicant makes it possible to call into question the validity of that assessment, which is admittedly restricted, perhaps erroneously, to road construction, but may be extended without substantial modification to all the other fields of use of the goods ‘asphalt and building materials derived from asphalt and for the production of asphalt’ referred to by the applicant, such as construction engineering.
55      The fact, therefore, that the applicant’s goods may be used to manufacture ‘transportable structures’ and ‘monuments’ is not sufficient for those goods to be regarded as similar. In addition to the views expressed in that regard by the Board of Appeal, OHIM and the intervener set out, correctly, views analogous, mutatis mutandis, to those set out in paragraph 51 above. Apart from a series of otherwise unsubstantiated claims, the applicant has not produced before the Court any evidence capable of showing that those views are erroneous.
56      As regards the decision of the Board of Appeal of 30 October 2008 in Case R‑28/2008, relied on by the applicant, OHIM and the intervener are right to state that it is irrelevant in the present case, since the goods at issue in that case belonged to a much wider range of goods than that to which the goods at issue in the present case belong.
57      As regards, thirdly, the ‘Building construction; repairs; repair and maintenance’ services, the Board of Appeal stated the following in paragraphs 27 and 28 of the contested decision:
‘27      As regards the comparison of the “building construction”, “repairs”, and “repair and maintenance” services, on the one hand, and, on the other hand, the goods covered by the earlier mark, the Board is not persuaded that there is a real relationship of similarity. In addition to the reasons set out in the contested decision in that regard, the Board finds that an undertaking which supplies building construction, repairs or repair and maintenance services is not an undertaking which manufactures asphalt. In its natural state, asphalt is a mixture of bitumen and limestone rock which is found in mines or as an outcrop on the surface. In civil engineering the making of asphalt involves a mixture of bitumen, filler (finely crushed limestone), sand and chippings. It is manufactured in asphalt plants. The bitumen which is used in the asphalt manufacturing process is a substance consisting of a mixture of hydrocarbons, is very viscous (if not solid) at ambient temperature and is black. Although it occurs naturally, it nowadays comes almost exclusively from the distillation of crude oils.
28      The supplier of the services covered by the disputed trade mark application does not mine asphalt, distil hydrocarbons or run an asphalt plant. The goods covered by the earlier mark and the services covered by the trade mark application are therefore different in nature. Asphalt is intended almost exclusively for construction professionals whereas the services covered by the mark applied for are also intended for the general public. Asphalt is normally distributed, via a plant, to lorries, wagons or ships appropriate for transporting that product. The supply of the services covered by the trade mark application is normally carried out by construction companies. Although the goods and services may intersect on the same site, it is necessary to bear in mind the specialised nature of the purchaser of the goods who will not easily confuse them with services. Just as a consumer does not expect a supplier of building construction services to make his own bricks, the same is true as regards the comparison of the goods and services at issue. The fact that a trade mark applicant files its trade mark with a view to obtaining protection for certain goods (among them asphalt) and for building construction, repairs, and repair and maintenance services in no way proves that those goods and services are similar. The trade mark applicant is right to state in its rejoinder that anyone is free to file a trade mark application in respect of goods and services which he is thinking of using in the short or long term.’
58      None of the views put forward by the applicant makes it possible to call into question the validity of that assessment, which is admittedly restricted, perhaps erroneously, to road construction, but may be extended without substantial modification to all the other fields of use of the goods ‘asphalt and building materials consisting of asphalt and for the production of asphalt’ referred to by the applicant, such as building construction.
59      The fact, therefore, that certain undertakings offer the services in question at the same time as the goods manufactured by the applicant, such as Friedrich Steinhagen GmbH & Co., even if established, quod non, is not sufficient for those goods to be regarded as similar. In addition to the views expressed in that regard by the Board of Appeal, OHIM and the intervener set out, correctly, views analogous, mutatis mutandis, to those set out in paragraph 51 above. Apart from a series of otherwise unsubstantiated claims, the applicant has not produced before the Court any evidence capable of showing that those views are erroneous.
60      As regards the two decisions of the Opposition Division relied on by the applicant (decision of 16 November 2007 on opposition B 1037151 and decision of 30 September 2009 on opposition B 1131681), OHIM and the intervener are right to state that they are irrelevant in the present case, since they were delivered in different factual circumstances and do not refer to the same goods and services. In that regard, the views expressed in paragraph 56 above also apply as regards those two decisions.
61      In addition, it must be borne in mind that, 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 easyHotel, cited in paragraph 52 above, paragraph 42 and the case-law cited).
62      Since it has been concluded that the goods and services at issue in the present case are not similar, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded, without it being necessary to rule on whether the marks at issue are identical or similar.
Second and fourth pleas in law, alleging respectively misuse of powers and infringement of Article 64(1) of Regulation No 207/2009
63      The applicant argues, in the second plea, that the Board of Appeal acted beyond its powers and, in doing so, misused its powers by limiting the list of goods at issue in Class 19 only to goods relating to ‘road construction’. The Board of Appeal does not have the power to limit unilaterally, by interpretation, the scope of protection of a registered national trade mark.
64      The applicant furthermore contends, in the fourth plea, that the Board of Appeal contravened Article 64(1) of Regulation No 207/2009 by limiting the scope of protection of the earlier trade mark and by not taking into account all the relevant factors.
65      In so far as the applicant alleges that the Board of Appeal misused its powers, it must be borne in mind that, according to settled case-law, a misuse of powers exists when an institution exercises its powers with the exclusive or main purpose of achieving an end other than that stated or evading a procedure specifically prescribed by the Treaty for dealing with the circumstances of the case (see Case C-407/04 P Dalmine v Commission [2007] ECR I-829, paragraph 99 and the case‑law cited).
66      Furthermore, Article 64(1) of Regulation No 207/2009 provides:
‘Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.’
67      As OHIM and the intervener correctly point out, the Board of Appeal was required, under that provision, to conduct a new full examination of the facts and circumstances of the case, in the light of the arguments of the parties, correcting, if necessary, errors made by the Opposition Division. In particular, it was for the Board of Appeal to ascertain whether the Opposition Division had correctly defined the scope of protection of the earlier mark, as delimited by its registration. That is precisely what it did in the present case by finding that it had to correct an error made, in its opinion, by the Opposition Division.
68      Even if it were established that the Board of Appeal itself possibly, on that occasion, made an error in drawing up that definition, by erroneously restricting the scope of protection of the earlier mark to the area of road construction, that would constitute infringement not of Article 64(1) but of Article 8(1)(b) of Regulation No 207/2009.
69      It has already been stated in paragraph 47 above that that possible error, even if it were established, is not such as to lead to the annulment of the contested decision.
70      The same is true of the allegation that the Board of Appeal misused its powers, and the applicant has not moreover adduced any evidence capable of substantiating the allegation that the Board of Appeal exercised its powers for a purpose other that that, set out in Article 64 of Regulation No 207/2009, of examining the allowability of the appeal against the Opposition Division’s decision and exercising, if necessary, any power within the competence of that department.
71      The second and fourth pleas must therefore be rejected as unfounded.
Third plea in law, alleging infringement of Article 75 of Regulation No 207/2009
72      The applicant argues that the Board of Appeal contravened the obligation to state reasons and infringed its rights of defence. More particularly, the Board of Appeal did not examine the applicant’s detailed arguments in relation to the high degree of similarity between the goods and services at issue. This failure equates to the denial of the right to be heard.
73      The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM are to state the reasons on which they are based. According to the case‑law, that duty has the same scope as that enshrined in Article 253 EC and Article 296 TFEU and its purpose is to allow interested parties to know the reasons for the measure so as to enable them to protect their rights and to enable the European Union judicature to exercise its power to review the lawfulness of the decision (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73 and the case-law cited).
74      It follows from the same case-law that the question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE and METABALANCE 44, cited in paragraph 73 above, paragraph 73 and the case-law cited).
75      However, the Boards of Appeal cannot be required to provide an account which follows exhaustively and one by one all the reasoning articulated by the parties before them. The reasoning may therefore be implicit on condition that it enables the persons concerned to know why the decision of the Board of Appeal was taken and provides the competent court with sufficient material for it to exercise its review jurisdiction (see, by analogy, Joined Cases C‑204/00 P, C‑205/00 P, C‑211/00 P, C‑213/00 P, C‑217/00 P and C‑219/00 P Aalborg Portland and Others v Commission [2004] ECR I-123, paragraph 372, and Case C‑3/06 P Groupe Danone v Commission [2007] ECR I-1331, paragraph 46).
76      In the present case, first, it should be pointed out that, as is apparent from paragraphs 11 and 12 of the contested decision relating to the account of the pleas and arguments of the parties and from paragraphs 20 to 28 of the contested decision relating to the comparison of the goods and services at issue, the Board of Appeal undertook an examination of the arguments and evidence submitted by the parties in the course of the administrative procedure.
77      Secondly, the applicant has not specified which of its ‘detailed arguments’ were allegedly overlooked by the Board of Appeal in the course of that examination.
78      It follows that, according to the case-law cited in paragraph 75 above, the Board of Appeal did not act in breach of its obligation to state reasons.
79      Under the second sentence of Article 75 of Regulation No 207/2009, OHIM’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of Community trade marks by that provision (Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 21). According to that general principle of European Union law, a person whose interests are appreciably affected by a decision taken by a public authority must be given an opportunity to make his point of view known (Case 17/74 Transocean Marine Paint v Commission [1974] ECR 1063, paragraph 15; Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 21; and LIVE RICHLY, paragraph 22).
80      The right to be heard covers all the factual and legal evidence which forms the basis for the decision-making act but not the final position which the administration intends to adopt (Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167, paragraph 75, and Case T‑402/07 Kaul v OHIM – Bayer (ARCOL) [2009] ECR II-737, paragraph 55).
81      In the present case, the contested decision is based on matters of law and of fact on which the observations of the parties to the appeal proceedings were sufficiently gathered, either in the course of those proceedings or in the course of the administrative procedure which preceded the adoption of the Opposition Division’s decision.
82      It follows that the Board of Appeal did not contravene the applicant’s rights of defence.
83      The third plea must therefore be rejected as unfounded and the action in its entirety must be dismissed.
Costs
84      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.
85      Pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are regarded as recoverable costs.
86      As the applicant has been unsuccessful, it must be ordered to pay, in addition to its own costs, the costs incurred by OHIM and the intervener, including, as regards the latter, the costs necessarily incurred for the purposes of the proceedings before the Board of Appeal, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Bayerische Asphaltmischwerke GmbH & Co. KG für Straßenbaustoffe to pay, in addition to its own costs, the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Koninklijke BAM Groep NV, including, as regards the latter, the costs necessarily incurred for the purposes of the proceedings before the Board of Appeal.
Forwood
Schwarcz
Popescu
Delivered in open court in Luxembourg on 26 October 2011.
[Signatures]
* Language of the case: English.