Provisional text
ORDER OF THE COURT (Ninth Chamber)
12 January 2017 (*)
(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Opposition proceedings — Likelihood of confusion — Application for registration of the figurative mark PARK REGIS — Rejection of the application for registration)
In Case C‑440/16 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 4 August 2016,
Staywell Hospitality Group Pty Ltd, established in Sydney (Australia), represented by D. Farnsworth, Solicitor,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Sheraton International IP LLC, established in Stamford (United States),
intervener at first instance,
THE COURT (Ninth Chamber),
composed of E. Juhász, President of the Chamber, C. Vajda, (Rapporteur) and K. Jürimäe, Judges,
Advocate General : M. Szpunar,
Registrar: A. Calot Escobar,
having regard to the decision taken, after hearing the Advocate General, to give a decision by reasoned order in accordance with Article 181 of the Rules of Procedure of the Court
makes the following
Order
1        By its appeal, Staywell Hospitality Group Pty Ltd, claims that the Court should set aside the judgment of the General Court of the European Union of 2 June 2016, Staywell Hospitality Group v EUIPO — Sheraton International IP (PARK REGIS) and Sheraton International IP v EUIPO — Staywell Hospitality Group (PARK REGIS) (T‑510/14 and T‑536/14, not published, EU:T:2016:333) (‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 April 2014 (Joined Cases R 240/2013-5 and R 303/2013-5), relating to opposition proceedings between Sheraton International IP and Staywell Hospitality Group.
2        In support of its appeal, the appellant puts forward two grounds of appeal, alleging breaches of Article 8(1)(b) and Article 75 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), respectively.
The appeal
3        Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.
4        It is appropriate to apply that provision to the present case.
5        On 21 November 2016, the Advocate General took the following position:
‘I am of the view that the appeal in the case in question should be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded and that the appellant should be ordered to pay the costs in accordance with Article 181 of the Rules of Procedure of the Court, for the following reasons.
The first ground of appeal, alleging a breach of Article 8(1)(b) of Regulation No 207/2009
1      There are four branches to the first ground of appeal.
2      By the first branch of this ground, the appellant submits that the General Court failed to take account of the overall impression given by the earlier figurative mark St REGIS, inasmuch as it wrongly held that the expression ‘St Regis’ does not convey a different message from that of the elements ‘St’ and ‘Regis’ taken separately (paragraph 79 of the judgment under appeal).
3      I note, first, that that argument rests on a selective and manifestly incorrect reading of the judgment under appeal. It is clear from a reading of paragraphs 77 to 85 of the judgment under appeal that the General Court’s analysis is based, correctly, on the overall impression given by the marks at issue. Second, that argument is manifestly inadmissible in so far as the appellant seeks, in reality, to obtain from the Court a fresh assessment of the perception of the expression ‘St Regis’ by the relevant public, which is excluded at the appeal stage.
4      By the second branch of this ground, the appellant submits that the General Court ought not to have taken into account the fact that the average consumer only rarely has the chance to make a direct comparison between the different signs, but must place his trust in the imperfect picture of them that he has kept in his mind (paragraph 91 of the judgment under appeal). According to the appellant, that consideration does not apply to the facts of the present case, the confusion between the signs at issue being indirect.
5      That argument is manifestly unfounded. It is clear from well-established case-law that, when the global assessment of the likelihood of confusion is made, account should be taken of the average consumer’s imperfect recollection of the marks in question (see the judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
6      By the third branch of the first ground, the appellant submits that the General Court wrongly restricted itself to making the finding that a likelihood of confusion could not be ‘ruled out’ (paragraph 95 of the judgment under appeal) but did not establish that there was such a likelihood.
7      That argument is also manifestly unfounded having regard to settled case-law, recalled by the General Court in paragraphs 36 and 95 of the judgment under appeal. The General Court’s use, in the context of the analysis of the likelihood of confusion, of the expression ‘cannot be ruled out’ is not erroneous in itself, to the extent that it is clear from all the reasons given in the judgment that that court carried out a global assessment of whether there was a likelihood of confusion and found that such a likelihood existed (see, to that effect, the judgment of 9 July 2015, Pêra-Grave v EUIPO, C‑249/14 P, not published, EU:C:2015:459, paragraphs 27 to 29).
8      By the fourth branch of this ground, the appellant submits that the General Court upheld a new argument, which was neither raised nor debated by the parties, to the effect that the element ‘park’ in the sign applied for would be perceived as being evocative or even descriptive of the services at issue, for it is used extensively in names of hotels or real property in general (paragraph 76 of the judgment under appeal).
9      That criticism, which is in fact an allegation of a breach of the right to be heard, is manifestly unfounded. It is clear from the paragraph under challenge that the General Court simply upheld the finding of fact made in the contested decision (paragraph 76 of the judgment under appeal referring to paragraph 37 of the contested decision).
10      It follows that the first ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.
The second ground, alleging a breach of Article 75 of Regulation No 207/2009
11      By the second ground of appeal, alleging a breach of Article 75, second sentence, of Regulation No 207/2009, the appellant submits that the General Court upheld a new argument, raised by EUIPO for the first time in its response in Case T‑510/14. The argument in question was that it was not unusual in the hotel and property markets for a principal mark to appear in various forms in sub-brands, depending on the type of service offered (paragraph 93 of the judgment under appeal).
12      I note that this ground is ineffective, because it is directed against a ground included in the judgment under appeal purely for the sake of completeness. It is clear from paragraph 95 of the judgment under appeal that the global analysis of the likelihood of confusion, summarised in paragraphs 90 and 91 of that judgment, leads in itself to the finding that such a likelihood existed, irrespective of the considerations relating to the use of sub-brands, set out in paragraphs 92 to 95 of the judgment.
13      In any event, the second ground of appeal, which in reality alleges a breach of the right to be heard, is manifestly unfounded. It is clear from the judgment under appeal that, by the ground of that judgment now under challenge, the General Court upheld the argument made by EUIPO in its response, to which the appellant was therefore able properly to reply at the hearing (paragraph 93 of the judgment under appeal).
14      Having regard to the foregoing, I am of the view that the appeal in the case in question should be dismissed, in accordance with Article 181 of the Rules of Procedure of the Court, as being, in part, manifestly inadmissible and, in part, manifestly unfounded, and that Staywell Hospitality Group should be ordered to bear its own costs.’
6        On the same grounds as those set out by the Advocate General, the appeal must be dismissed.
Costs
7        Under Article 137 of the Rules of Procedure of the Court of Justice, which is applicable to the procedure on appeal pursuant to Article 184(1) thereof, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since this order has been adopted before service of the appeal on the respondent and the intervener and, therefore, before the latter could have incurred costs, Staywell Hospitality Group must be ordered to bear its own costs.
On those grounds, the Court (Ninth Chamber) hereby orders:
1.      The appeal is dismissed.
2.      Staywell Hospitality Group Pty Ltd shall bear its own costs.
Luxembourg, 12 January 2017.
A. Calot Escobar
E. Juhász
Registrar
President of the Ninth Chamber
* Language of the case: English.