62014TO0840
ORDER OF THE GENERAL COURT (Fourth Chamber)
11 March 2016 (
*1
)
‛Community trade mark — Opposition proceedings — Application for a Community figurative mark Sky BONUS — Earlier national word mark SKY — Relative ground for refusal — Likelihood of confusion — Restriction of the goods designated in the trade mark application — Article 8(1)(b) of Regulation (EC) No 207/2009 — Inadmissibility’
In Case T‑840/14,
International Gaming Projects Ltd, established in Valletta (Malta), represented by M. Garayalde Niño, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Walicka, acting as Agent,
defendant,
intervener before the Court, formerly British Sky Broadcasting Group plc, the other party to the proceedings before the Board of Appeal of OHIM, being
Sky plc, established in Isleworth (United Kingdom), represented by J. Barry, Solicitor,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 23 October 2014 (Case R 2040/2013-4), relating to opposition proceedings between British Sky Broadcasting Group plc and International Gaming Projects Ltd,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 December 2014,
having regard to the response of OHIM lodged at the Court Registry on 20 May 2015,
having regard to the response of the intervener lodged at the Court Registry on 1 May 2015,
having regard to the replies of 9 and 11 December 2015 submitted by the intervener and the applicant, respectively, to a written question from the Court,
makes the following
Order
Background to the dispute
1
On 16 March 2012, the applicant, International Gaming Products Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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 in respect of which registration was sought are in Classes 9 and 28 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:
—
Class 9: ‘Computer programs, electronic components’;
—
Class 28: ‘Automatic slot machines; amusement and gaming machines; amusement and gaming electric and/or electronic machines, apparatus and installations; Video-game machines and apparatus; parts and fittings for all these goods, not included in other classes’.
4
The application for a Community trade mark was published in the Community Trademarks Bulletin No 2012/086 of 8 May 2012.
5
On 8 August 2012, British Sky Broadcasting Group plc, the predecessor in title of the intervener, Sky plc, filed a notice of opposition, pursuant to Article 41(1) of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6
The opposition was based on, inter alia, the earlier United Kingdom word mark SKY, registered on 7 September 2012 under No 2500604 in respect of goods and services in Classes 3, 4, 7, 9, 11, 12, 16 to 18, 25, 28 and 35 to 45. As regards Class 9, the goods in question included ‘computer programs’, ‘electronic interactive computer games’ and ‘parts and fittings for all the aforesaid goods’. As regards Class 28, the goods in question comprised ‘Toys, games and playthings; electronic games; hand-held devices for playing electronic, computer or video games; video games apparatus; parts and fittings for all the aforesaid goods; playing cards; card games; sporting articles; games involving gambling; amusement machines; amusement apparatus and instruments; interactive educational or entertainment games’.
7
The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
8
By decision of 19 August 2013, the Opposition Division upheld the opposition in respect of all the goods and services in question, on the sole basis of Article 8(1)(b) of Regulation No 207/2009, and rejected the application for registration in its entirety.
9
On 18 October 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10
By decision of 23 October 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the Opposition Division’s decision and dismissed the appeal. To that end, it limited itself to comparing the mark applied for with the earlier mark, and to assessing the likelihood of confusion between those marks within the meaning of Article 8(1)(b) of Regulation No 207/2009. In support of that decision, it found that the goods in question were essentially identical (paragraphs 15 to 17 of the contested decision). When comparing the marks in question, the Board of Appeal first of all noted that the word ‘sky’ was the ‘most dominant and distinctive’ element of the mark applied for, whereas the word ‘bonus’ was only weakly distinctive (paragraph 20 of the contested decision). Furthermore, it found, firstly, that there was an above-average degree of visual similarity between the marks in question, secondly, that those marks were highly similar from a phonetic point of view, and, thirdly, that they were highly similar from a conceptual point of view (paragraphs 21 to 23 of the contested decision). Finally, in the context of a global assessment of the likelihood of confusion, the Board of Appeal found that there was a likelihood of confusion between the marks in question due to the identity and high similarity of the goods in question, the above-average degree of visual similarity and the high degree of phonetic and conceptual similarity between the marks in question and the normal level of inherent distinctiveness of the earlier mark (paragraph 29 of the contested decision).
Forms of order sought
11
The applicant claims that the Court should:
—
annul the contested decision in part and allow registration of the mark applied for as regards ‘computer programs; electronic components’ in Class 9 and ‘automatic slot machines; amusement and gaming machines; amusement and gaming electric and/or electronic machines, apparatus and installations; Video-game machines and apparatus; parts and fittings for all these goods, not included in other classes’ in Class 28, in so far as those goods relate exclusively to Video Bingo games for recreational machines for casinos and amusement arcades;
—
order OHIM to pay the costs.
12
OHIM and the intervener contend that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
13
In support of its action, the applicant relies essentially on three pleas in law alleging, respectively, an infringement of the provisions of Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
14
To that end, at the outset, the applicant restricts the scope of its application for a Community trade mark under Article 43(1) of Regulation No 207/2009 by ‘limiting’ the list of the goods in respect of which registration is sought to ‘computer programs; electronic components’ in Class 9 and to ‘automatic slot machines; amusement and gaming machines; amusement and gaming electric and/or electronic machines, apparatus and installations; Video-game machines and apparatus; parts and fittings for all these goods, not included in other classes’ in Class 28, in so far as those goods relate exclusively to ‘Video Bingo games for recreational machines for casinos and amusement arcades’. The applicant submits, essentially, that this restriction of the list of goods in question corresponds to the arguments that it put forward before the bodies of OHIM, to the effect that a likelihood of confusion between the marks in question was more or less excluded by the fact that its business related solely to the use of recreational or gaming machines in casinos or amusement arcades.
15
OHIM and the intervener reply that, in accordance with Article 188 of the Rules of Procedure of the General Court, the subject matter of the proceedings before the Board of Appeal must not be altered. In the present case, they submit, the applicant amended the list of goods requested by indicating their purpose and, thus, altered the subject matter of the proceedings, contrary to that provision. That alteration cannot therefore be taken into consideration by the Court since the review of the legality of the contested decision before it must be carried out on the basis solely of the factual and legal background to the dispute at the date on which the decision was adopted. Furthermore, it is submitted, the only claim, containing that alteration to the subject matter of the proceedings, is inadmissible. The applicant expressly declares that it is not seeking annulment of the contested decision in its entirety but only its annulment in part, in respect of the goods as listed subsequent to that restriction. Furthermore, the applicant, it is submitted, declares that it is no longer seeking protection of the goods initially applied for ‘in general as a broader category, given that these kind of goods are restricted to those necessary for the functioning of the Video Bingo games for recreational machines located in casinos and amusement arcades’. Therefore, it is submitted, that only claim, and, thus, the entire application, must be rejected as inadmissible.
16
In addition, OHIM and the intervener dispute the contention that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009.
17
Under Article 129 of the Rules of Procedure, on a proposal from the Judge-Rapporteur, the Court may at any time of its own motion, after hearing the main parties, decide to rule by reasoned order on whether there exists any absolute bar to proceeding with a case.
18
In the present case, in view of, inter alia, the replies submitted by the applicant and the intervener to a written question from the Court concerning the admissibility of the action, the Court considers that it has sufficient information from the documents in the file and decides to rule without taking further steps in the proceedings.
19
With regard to the objection of inadmissibility raised by OHIM, the Court points out that, under Article 65(2) of Regulation No 207/2009, it may annul or alter a decision of a Board of Appeal of OHIM only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [that] Regulation or of any rule of law relating to their application or misuse of power’. In the light of Article 76 of that regulation, that review of legality must be carried out having regard to the factual and legal context of the dispute as it was brought before the Board of Appeal. It follows that the Court may annul or alter a decision against which an action has been brought only if, at the time when the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court may not, however, annul or alter that decision on grounds that come into existence subsequent to its adoption (see, to that effect, the judgment of 20 November 2007 in Tegometall International v OHIM – Wuppermann (TEK), T‑458/05, ECR, EU:T:2007:349, paragraphs 19 and 20 and the case-law cited).
20
Furthermore, although Article 26(1)(c) of Regulation No 207/2009 requires that ‘an application for a Community trade mark shall contain … a list of the goods … in respect of which the registration is requested’, Article 43(1) of that regulation provides that ‘[t]he applicant may at any time withdraw his Community trade mark application or restrict the list of goods … contained therein’.
21
In the application lodged at the Court, and thus subsequent to the adoption of the contested decision, the applicant altered the list of goods covered by its application for a Community trade mark by specifying their characteristics and, in particular, their purpose as relating ‘exclusively to Video Bingo games for recreational machines for casinos and amusement arcades’.
22
It is true that, with regard to an application for a Community trade mark covering a number of goods, the Court has already interpreted a declaration made by a trade mark applicant to it, and thus subsequent to the decision of the Board of Appeal, to the effect that the applicant was withdrawing its application solely in respect of certain of the goods covered by the initial application, either as a declaration that the contested decision was being challenged only in so far as it referred to the remainder of the goods concerned, or, if such a declaration was made at an advanced stage of the proceedings before the Court, as a partial withdrawal of the action. If, however, by its restriction of the list of goods covered by the Community trade mark application, the trade mark applicant is not seeking to withdraw one or more goods from that list, but to alter a characteristic of those goods, such as their purpose or their description, it is possible that that alteration may affect the examination of the Community trade mark carried out by the bodies of OHIM during the administrative procedure. In those circumstances, to allow that alteration at the stage of the action before the Court would amount to changing the subject matter of the proceedings pending, which is prohibited by Article 188 of the Rules of Procedure. Such an alteration therefore cannot affect the legality of the contested decision or be taken into account by the Court when it examines the merits of the case (see, to that effect, judgments in TEK, cited in paragraph 19 above, EU:T:2007:349, paragraphs 23 to 25 and the case-law cited, and of 20 February 2013 in Caventa v OHIM — Anson’s Herrenhaus (B BERG), T‑631/11, EU:T:2013:85, paragraphs 22 to 25).
23
In the present case, it is clear both from the sole head of claim for annulment and from the arguments set out in support of it in the application that the applicant is not withdrawing any of the goods forming the subject matter of its application for a Community trade mark, but is merely specifying their purpose as relating ‘exclusively to Video Bingo games for recreational machines for casinos and amusement arcades’. As OHIM correctly contends, the applicant itself confirms, at paragraph 16 of the application, that it is no longer trying to protect the goods contained ‘in general as a broader category’ but only in so far as they serve that particular purpose. Furthermore, the applicant expressly requests the Court to take account of that specific statement, formulated during the proceedings, and relating to the purpose of the goods in question for the purposes of their comparison pursuant to Article 8(1)(b) of Regulation No 207/2009, in order to conclude that they are not similar.
24
It must, however, first be noted that, in the light of the case-law cited in paragraph 22 above, such a specific statement, formulated during the present proceedings and relating to the characteristics and, in particular, the purpose of the goods in question constitutes an alteration of the factual background of the dispute as it was brought before the Board of Appeal and formed the subject matter of the contested decision, in that it implies that all other purposes of those goods which might have come into consideration in the context of the comparison of the goods must be disregarded. As the applicant itself submits, inter alia in paragraphs 50 to 60 of the application, it follows that that alteration is such as to affect the assessment that could have been undertaken by the Board of Appeal on, inter alia, the similarity of the goods in question and, thus, it necessarily altered the subject matter of the proceedings as brought before the Court. Second, in so far as the head of claim seeking partial annulment and the arguments raised in support of it are limited to challenging the legality of the contested decision under the sole condition that the Court take account of this alteration of the subject matter of the proceedings, prohibited under Article 188 of the Rules of Procedure, that head of claim cannot succeed.
25
By its application, the applicant cannot obtain a partial annulment of the contested decision on the ground that it is based on an assessment — not made by the Board of Appeal — of a likelihood of confusion between the marks in question by including in that assessment goods with a specific purpose on which the Board of Appeal had not been asked to rule. On the contrary, as OHIM rightly contends, in the context of the comparison of the goods in question, the Board of Appeal was deemed to check whether all the potential purposes of those goods gave reason for concluding that they were similar or even identical. In that regard, the Court notes that, in the assessment of the similarity of goods, all the relevant factors of the relationship existing between those goods must be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see, to that effect and by analogy, judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 23). Furthermore, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both an identity or similarity of the marks in question and an identity or similarity of the goods or services that they designate, those conditions being cumulative (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42). In the present case, it is precisely the comparison of the goods with their generic and varied characteristics as applied for initially — and not those specified a posteriori — which led the Board of Appeal to find that there was a likelihood of confusion between the marks in question. Consequently, in contrast to a situation in which an applicant withdraws from its application for a Community trade mark certain of the goods for which it had initially requested registration, in the present case the applicant’s application concerns a comprehensive and inseparable assessment by the Board of Appeal in the contested decision, which is not capable of being annulled in part. In this regard, the mere fact that the applicant submitted before the bodies of OHIM, as it stated in its reply to the Court’s written question, that its business concerned solely the use of recreational or gaming machines in casinos and amusement arcades cannot invalidate that assessment, since the goods which were the subject matter of its initial application for a Community trade mark were covered by that application on the basis of their broad meanings and intended purposes.
26
Finally, it must be noted that the applicant does not apply, even in the alternative, for the contested decision to be annulled in its entirety in that it finds that there is a likelihood of confusion between the marks in question with regard to the goods mentioned in paragraph 3 above. On the contrary, in view of the restriction of the purpose of those goods carried out in the application in the present case, the applicant expressly seeks partial annulment of the contested decision in so far as registration of the mark applied for has been refused in relation to the same goods inasmuch as they ‘relate exclusively to Video Bingo games for recreational machines for casinos and amusement arcades’. In those circumstances, contrary to the situation in the case giving rise to the judgment in TEK, cited in paragraph 19 above (EU:T:2007:349, paragraphs 27 and 28), regard being had to the unambiguous scope of the head of claim seeking annulment, as reiterated in the applicant’s reply to the Court’s written question, and to the clear and precise nature of the arguments advanced in its support in the application and in that reply, it is, in the present case, not possible for the Court to take account of the list of goods covered by the applicant’s initial application for a Community trade mark in order to hear and determine the present action.
27
It follows from the foregoing that the sole head of claim seeking annulment and, consequently, the application for alteration seeking to secure registration of the mark applied for in respect of the goods in question, as altered, must be declared inadmissible.
28
Consequently, the action must be dismissed as being inadmissible in its entirety.
Costs
29
Under Article 134(1) of the Rules of Procedure, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
30
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 (Fourth Chamber)
hereby orders:
1.
The action is dismissed as being inadmissible.
2.
International Gaming Projects Ltd shall pay the costs.
Luxembourg, 11 March 2016
E. Coulon
Registrar
M. Prek
President
(
*1
)	Language of the case: English.