JUDGMENT OF THE GENERAL COURT (Second Chamber)
22 June 2022 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark HYPERCORE – Earlier EU figurative mark HIPERCOR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑356/21,
Future Motion, Inc., established in Santa Cruz, California (United States), represented by F.‑M. Orou, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 April 2021 (Case R 1229/2020‑1), relating to opposition proceedings between El Corte Inglés and Future Motion,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Future Motion, Inc., seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 April 2021 (Case R 1229/2020‑1) (‘the contested decision’).
Background to the dispute
2        On 5 June 2017, the applicant, Future Motion, Inc., obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1360694 designating the European Union in respect of the word mark Hypercore.
3        On 17 August 2017, EUIPO received notification of the international registration designating the European Union, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
4        The goods in respect of which protection in the European Union was sought are in Class 12 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: ‘Vehicles, namely, electronically motorised skateboards; motors for electronically motorised skateboards; electric motors for land vehicles; electric motors for electric vehicles’.
5        The trade mark application was published in European Union Trade Marks Bulletin No 156/2017 of 18 August 2017.
6        On 30 November 2017, the intervener, El Corte Inglés, SA, filed a notice of opposition under Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods referred to in paragraph 4 above.
7        The opposition was based, inter alia, on EU figurative mark No 12185237, reproduced below, the application for which was filed on 1 October 2013 and which was registered on 29 January 2014:
8        The earlier trade mark mentioned in paragraph 7 above was registered in respect of services in Class 35 which correspond to the following description: ‘Advertising; business management; business administration; office functions; wholesaling, retailing and sale via global computer networks of electric, electronic, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, coin-operated apparatus, data processing equipment, computers, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, clothing, footwear, headgear, foodstuffs, meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, pastry and confectionery, ices, honey, salt, vinegar, sauces (condiments), spices, agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic beverages, fruit juices, syrups and other preparations for making beverages, alcoholic beverages’.
9        The grounds of the opposition were those laid down in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.
10      By decision of 17 April 2020, the Opposition Division rejected the opposition in its entirety on the ground that, first, the goods and services covered by the marks at issue were dissimilar, with the result that one of the necessary conditions for the application of Article 8(1)(b) of Regulation 2017/1001 was not satisfied in the present case, and, secondly, the intervener had not demonstrated that the earlier mark had a reputation within the meaning of Article 8(5) of Regulation 2017/1001.
11      On 16 June 2020, the intervener filed an appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
12      By decision of 26 April 2021 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal brought before it by the intervener, annulled the decision of the Opposition Division, refused the designation of the European Union in international registration No 1360694 in respect of all the goods referred to in paragraph 4 above and ordered the applicant to pay the costs before EUIPO.
Forms of order sought
13      The applicant claims that the General Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
On the applicable law ratione temporis
15      In accordance with Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989, the date at which an international registration designating the European Union is obtained corresponds to the date of the filing, with the office dealing with the request, of the application for registration of the mark for which protection is sought throughout the territory of the parties to the Madrid Agreement.
16      In view of the date on which the application for international registration designating the European Union was filed, namely 5 June 2017 (see paragraph 2 above), which is decisive for the purpose of identifying the applicable substantive law (see, to that effect, judgments of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 17 and the case-law cited, and of 8 September 2021, SBG v EUIPO – VF International (GEØGRAPHICAL NØRWAY), T‑458/20, not published, EU:T:2021:543, paragraphs 1 and 13 and the case-law cited), the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended.
17      Furthermore, in so far as, according to settled case-law, procedural rules are generally held 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 present dispute is governed by the procedural provisions of Regulation 2017/1001, namely Article 94(1) of that regulation.
18      Consequently, as regards the substantive rules, the references made to Article 8(1)(b) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, as amended, the wording of which is identical.
Substance
19      In support of its action, the applicant raises pleas in law alleging, in essence, infringement of Article 94(1) of Regulation 2017/1001 and Article 8(1)(b) of Regulation No 207/2009, as amended, in that, in the contested decision, the Board of Appeal infringed its obligation to state reasons and the applicant’s right to be heard and wrongly concluded, in the circumstances of the case, that there was a likelihood of confusion on the part of the relevant public. Those pleas are broken down into three parts, alleging, first, an incorrect assessment of the similarity of the goods and services covered by the marks at issue, secondly, infringement of the obligation to state reasons and of the applicant’s right to be heard and, in the alternative, an incorrect assessment of the similarity of the marks at issue and, thirdly, infringement of the obligation to state reasons and of the applicant’s right to be heard and, in the alternative, an incorrect assessment of the degree of distinctiveness of the earlier mark and of the interdependence of the factors to be taken into account for the purposes of the global assessment of the likelihood of confusion.
20      EUIPO and the intervener contend that the three parts of the pleas should be rejected and, accordingly, that the action should be dismissed in its entirety.
21      As a preliminary point, it should be recalled that, under Article 8(1)(b) of Regulation No 207/2009, as amended, 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.
22      According to settled case-law, the risk that the public may believe that the goods or services designated by the conflicting marks in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the trade marks and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the marks 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).
23      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, as amended, 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 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).
24      In the present case, the parties to the present dispute do not dispute the Board of Appeal’s assessments, in the contested decision, from which it is apparent, implicitly or expressly, that, first, the relevant territory is that of the European Union and, secondly, the relevant public consists of the general public, whose level of attention will be higher than average when purchasing the goods and services specifically taken into account by the Board of Appeal (see paragraph 31 below) (‘the goods and services at issue’). Since those assessments are well founded, the General Court can confirm them and take them into account for the purposes of examining the three parts of the pleas.
25      For the purposes of the examination of the first part, alleging an incorrect assessment of the similarity of the goods and services at issue, it must be borne in mind that, according to settled case-law, in assessing the similarity of the goods or services covered by the marks at issue, 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, 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 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
26      In certain circumstances, goods and services may be found to be similar (see judgment of 20 January 2021, Apologistics v EUIPO – Peikert (discount-apotheke.de), T‑844/19, not published, EU:T:2021:25, paragraph 39 and the case-law cited).
27      In particular, it has already been held that, even if the goods and services to be compared differed as regards their nature, intended purpose and method of use, they could nevertheless be considered to have a certain degree of similarity where the goods concerned were identical to those to which the services concerned related or when the goods and services concerned could be offered in the same points of sale and used the same distribution channels or where there was a complementary connection between the goods and services concerned (see, to that effect, judgment of 20 January 2021, discount-apotheke.de, T‑844/19, not published, EU:T:2021:25, paragraphs 44 to 48 and the case-law cited).
28      In that latter connection, it was stated, inter alia, that goods or services which were complementary were those where there was a close connection between them, in the sense that one was indispensable or important for the use of the other in such a way that consumers might think that the responsibility for the production of those goods or provision of those services lay with the same undertaking (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). That implied that the complementary goods or services could be used together, which presupposed that they were intended for the same public (judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 58).
29      In the present case, it is apparent from paragraph 24 of the contested decision that, first, the Board of Appeal interpreted the words ‘namely’ appearing in the list of goods covered by the application for protection, as cited in paragraph 4 above, as meaning that that list did not include all types of vehicles, but only ‘electronically motorised skateboards’, ‘motors for electronically motorised skateboards’, ‘electric motors for land vehicles’ and ‘electric motors for electric vehicles’. That interpretation, which, moreover, is not disputed by the parties to the present dispute, appears to be well founded and there is no need, in the present case, to call it into question.
30      Secondly, the Board of Appeal merely found that all the goods covered by the trade mark application were similar, to a low degree, to the services ‘retail of apparatus and instruments for accumulating electricity’ in Class 35, which were included in the list of services covered by the earlier mark (see paragraph 8 above).
31      It follows from the foregoing that the present action and, in particular, its first part, can validly relate only to the comparison, by the Board of Appeal, of ‘electronically motorised skateboards’, ‘motors for electronically motorised skateboards’, ‘electric motors for land vehicles’ and ‘electric motors for electric vehicles’, covered by the trade mark application, and the services ‘retail of apparatus and instruments for accumulating electricity’ covered by the earlier mark.
32      According to the analysis carried out by the Board of Appeal in paragraphs 15 to 24 of the contested decision, the goods and services at issue were similar to a low degree, in so far as the apparatuses and instruments for accumulating electricity, to which the retail services covered by the earlier mark related, necessarily included batteries (in particular of the rechargeable type) and accumulators. The goods at issue would normally have been equipped with rechargeable and replaceable batteries, which could be purchased and replaced by their users and were available at the same points of sale because, contrary to the view taken by the Opposition Division, they were not highly specialised goods. Consequently, they were complementary goods, which were aimed at the same public, which could have come from the same or economically linked undertakings and which used the same distribution channels. The goods and services at issue were therefore available at the same points of sale and, in essence, were aimed at the same public. In accordance with the case-law and the previous practice of the Boards of Appeal, those goods and services should therefore have been regarded as having a certain degree of similarity.
33      The applicant takes issue with the Board of Appeal for not finding, in the contested decision, that the goods and services at issue were distinct.
34      First, according to the applicant, the Board of Appeal should have taken into account that, according to the case-law (judgment of 24 September 2008, Oakley v OHIM – Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 55), in order for goods and services to be regarded as similar, the goods must be similar to the goods to which the services relate. The apparatuses and instruments for accumulating electricity, in particular rechargeable batteries, covered by the services at issue, even if they constitute replacement parts for the goods at issue, are not similar to the latter.
35      Secondly, the applicant submits that the Board of Appeal erred in finding that the goods and services at issue were complementary. In accordance with the case-law (judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraphs 52 to 54), the Board of Appeal should have established that the relationship between the services and the goods concerned was one of close connection, in the sense that those goods were indispensable or, at the very least, important for the provision of those services, which were specifically provided when those goods were sold.
36      EUIPO and the intervener dispute the applicant’s arguments and contend that the first part of the plea should be rejected, on the ground that the Board of Appeal did not make any error of assessment, in the contested decision, concerning the comparison of the goods and services at issue.
37      First, contrary to what the applicant claims, there may be similarity between a finished product and its spare or replacement parts. The case-law cited by the applicant does not exclude the possibility of finding such similarity. That is possible, inter alia, where all the goods in question share factors relevant to their comparison, in particular where their producers, sellers and purchasers may be the same. In addition, those goods are complementary to one another where the component concerned is necessary for the proper use of the final product or where that component cannot fulfil its function without being integrated into the final product. Similarly, according to the case-law, retail services for spare parts or replacement parts could be considered similar to finished goods including those parts (judgment of 26 March 2020, Alcar Aktiebolag v EUIPO – Alcar Holding (alcar.se), T‑77/19, not published, EU:T:2020:126, paragraph 41).
38      Secondly, those parties contend that there is indeed, in the present case, a relationship of complementarity between the services of retail of apparatuses and instruments for accumulating electricity, covered by the earlier mark, and the electronically motorised skateboards and their engines, covered by the mark applied for, which are equipped with rechargeable batteries. There is a close connection between the services and the goods at issue, since the goods to which the services at issue relate are of the same nature as the rechargeable batteries that constitute an essential component of the goods at issue. The former are therefore complementary to the latter within the meaning of the case-law (judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraph 52). In addition, all those goods could be purchased at the same points of sale, as finished products and spare or replacement parts, are aimed at the same public, come from the same manufacturers or associated manufacturers and share the same distribution channels. In those circumstances, the Board of Appeal was entitled to find, in the contested decision, that there was a low degree of similarity between the goods covered by the mark applied for and the services of retail of apparatuses and instruments for accumulating electricity covered by the earlier mark.
39      In that regard, it must be observed that, in paragraph 24 of the contested decision, the Board of Appeal did not claim that the goods to which the services at issue related, namely apparatuses and instruments for accumulating electricity, in particular rechargeable batteries, were identical to the goods at issue, namely ‘electronically motorised skateboards’, ‘motors for electronically motorised skateboards’, ‘electric motors for land vehicles’ and ‘electric motors’ for electric vehicles’. Furthermore, although it stated that the goods to which the services at issue related were complementary to the goods at issue, it did not expressly state that that was also the case in respect of the goods and services at issue. In practice, the Board of Appeal merely found that the goods and services at issue were offered in the same points of sale and, in essence, were aimed at the same public, after observing that the goods to which the services at issue related were complementary to the goods at issue, were aimed at the same public, could originate from the same undertakings or linked undertakings and shared the same distribution channels.
40      In the context of the examination of the first part, it is therefore necessary to ascertain whether or not those latter findings of the Board of Appeal were warranted.
41      In that context, it must be observed that, as the Board of Appeal correctly pointed out, ‘electronically motorised skateboards’ and, more generally, all electric land vehicles are equipped with an electric motor, the function of which is to convert electrical energy into mechanical energy, in order to propel the vehicle, and a device or instrument for the accumulation of electricity of the ‘battery’ type, which supplies that motor with electrical energy. As a rule, the motor and electric battery are also associated with electronic components, which regulate the electricity supply to the motor and the use and recharging of the battery. In addition, the Board of Appeal was correct to observe that, first, the batteries with which ‘electronically motorised skateboards’ and, more generally, all electric land vehicles were equipped were, as a rule, rechargeable and replaceable and that, secondly, those batteries and the motors that they supplied with electricity were not highly specialised in nature, so that they could be purchased and replaced directly by the users of the electric vehicles equipped with them and that they were available, as spare, replacement or emergency parts, in the same points of sale as those vehicles.
42      However, it must be pointed out that the rechargeable batteries produced as spare, replacement or emergency parts for specific electronically motorised skateboards are ancillary goods, the sole use of which is to ensure the functioning of the electric land vehicle in the composition or structure of which they are used and to which they are strictly complementary. Those batteries are generally produced either directly by the producer of the electronically motorised skateboards of which they form an integral part, or by an undertaking closely linked to it. They are aimed at a specific public, made up of the producers and purchasers of the electronically motorised skateboards in which it is intended those batteries will be incorporated. Services for the retail of that type of battery are closely linked to sales and advice services or after-sales services relating to specific electronically motorised skateboards.
43      Consequently, rechargeable batteries intended, as spare, replacement or emergency parts, to be incorporated in specific electronically motorised skateboards and the services relating to those batteries can be distinguished from apparatuses and instruments for accumulating electricity, to which the services covered by the earlier mark relate. The latter are, rather, goods in their own right, which are intended to operate, indiscriminately, any type of electrical apparatus and may thus serve for multiple uses.
44      Unlike rechargeable batteries designed as spare, replacement or emergency parts, those standard products are available in all types of stores and are aimed at a wide and indeterminate group of professional consumers or consumers from the general public. The services for retail of apparatuses and instruments for accumulating electricity, covered by the earlier mark, cannot therefore be regarded as relating to goods identical to those covered by the mark applied for, as being offered in the same points of sale or as using the same distribution channels, within the meaning of the case-law cited in paragraph 25 above. Similarly, those services, since they are not closely linked to the operation of a particular electrical device, have too weak a link with electrical apparatuses in general and, a fortiori, the specific electrical apparatuses covered by the mark applied for in order for it to be possible to find that there to be a relationship of complementarity, within the meaning of the case-law referred to in paragraph 28 above, in the present case.
45      Accordingly, the Board of Appeal erred in finding, in the contested decision, that the services at issue, namely the services ‘retail of apparatus and instruments for accumulating electricity’, were offered in the same points of sale and, in essence, were aimed at the same public as the goods at issue, namely ‘electronically motorised skateboards’, ‘motors for electronically motorised skateboards’, ‘electric motors for land vehicles’ and ‘electric motors for electric vehicles’.
46      The Board of Appeal was therefore also incorrect, in the light of the case-law cited in paragraphs 27 and 28 above, to find that those goods and services had a certain, albeit low, degree of similarity, when the services at issue related to a category of goods that were distinct from the goods at issue and which did not have a close complementary connection with those goods, with the result that the relevant public would not have been encouraged to think that the goods and services at issue could have a common commercial origin.
47      It follows that the Board of Appeal’s assessment, in paragraph 24 of the contested decision, that the goods and services at issue were similar to a low degree is vitiated by an error which invalidates that decision in its entirety, in so far as, in the absence of that error, the Board of Appeal should have found that the goods and services at issue were distinct, with the result that one of the conditions necessary for a finding of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, as amended, was lacking.
48      Thus, the first part of the pleas must be upheld and, without it being necessary to examine the second and third parts, the action must be upheld by annulling the contested decision.
Costs
49      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.
50      Since EUIPO has been unsuccessful, it must be ordered, in addition to bearing its own costs, to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
51      Under Article 138(3) of the Rules of Procedure, the intervener is to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 April 2021 (Case R 1229/2020‑1);
2.      Orders EUIPO, in addition to bearing its own costs, to pay those incurred by Future Motion, Inc.;
3.      Orders El Corte Inglés, SA, to bear its own costs.
Tomljenović
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 22 June 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.