JUDGMENT OF THE GENERAL COURT (Second Chamber)
12 July 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark DOLPHIN – Earlier Community word mark DOLPHIN – Opposition refused in part – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑361/11,
Hand Held Products, Inc., established in Wilmington, Delaware (United States), represented by J. Güell Serra and M. Curell Aguilà, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by P. Bullock and R. Pethke, and subsequently by P. Bullock and G. Schneider, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Orange Brand Services Ltd, established in Bristol (United Kingdom),
ACTION brought against the decision of the First Board of Appeal of OHIM of 6 April 2011 (Case R 1443/2010-1), concerning opposition proceedings between Hand Held Products, Inc. and Orange Brand Services Ltd,
THE GENERAL COURT (Second Chamber),
composed of N. J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 6 July 2011,
having regard to the response lodged at the Court Registry on 25 October 2011,
having regard to the decision of 16 December 2011 refusing leave to lodge a reply,
further to the hearing on 23 March 2012,
gives the following
Judgment
Background to the dispute
1        On 10 April 2006, Orange Brand Services Ltd filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark for which registration was sought was the word sign DOLPHIN.
3        In so far as they concern the present case, the goods for which registration was sought are in Class 9 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: ‘telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 42/2006 of 16 October 2006.
5        On 16 January 2007, the applicant, Hand Held Products, Inc., brought opposition proceedings against registration of the mark applied for on the basis of Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) for the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier Community word mark DOLPHIN for goods in Class 9 corresponding to the following description: ‘barcode and image scanners and related software for use therewith’.
7        The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        On 28 May 2010, the Opposition Division rejected the opposition, in particular with regard to the goods referred to in paragraph 3 above.
9        On 28 July 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By decision of 6 April 2011 (‘the contested decision’), the First Board of Appeal of OHIM rejected the opposition.
11      As regards the comparison of the goods referred to in paragraph 3 above with those covered by the earlier mark, the Board of Appeal defined a barcode scanner as an optical scanning device designed to read information printed in the form of bars and to transmit that information to a computer or network, which is often used in warehousing and inventory tracking.
12      Firstly, an interactive terminal for displaying and ordering goods and services, which is in fact a keyboard and screen enabling a user to access a product and service database and possibly to conclude a purchase, is, on the one hand, used for purposes different from those of barcode scanners, since the latter are not used for displaying and ordering products and services, and, on the other, does not have the same actual or potential customers as barcode scanners.
13      Secondly, a telecommunications system was described by the Board of Appeal as a system in which electric or electromagnetic signals are used to transmit information by means of radio, light, waves, wire, cable, etc. However, a barcode scanner which uses a telecommunications system to transmit the information to a computer is different in nature and purpose from a telecommunications system and is only vaguely complementary to it.
14      Thirdly, although accessories are defined as something added to a machine, which has a useful or decorative purpose, barcode scanners are stand-alone apparatus. They are therefore different in nature and purpose.
15      Fourthly and finally, the Board of Appeal considered that, in the absence of evidence to that effect, image scanners cannot be regarded as ultra-lightweight computers for real-time information processing, but rather as optical devices which read printed pages and convert them into digital data. Thus, they are also different in nature and purpose from telecommunications systems and from interactive terminals for displaying and ordering goods and services. They are moreover neither in competition nor complementary.
16      Accordingly, the Board of Appeal found that the goods in question are not similar and the opposition, so far as they are concerned, was rejected.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision inasmuch as it rejects the opposition in respect of the following goods: ‘telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories’;
–        order OHIM to pay the costs.
18      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
19      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
Admissibility of the evidence produced for the first time before the Court
20      OHIM submits that the evidence produced by the applicant for the first time before the Court, including a product information sheet for its ‘DOLPHIN 6000 scanphone’ (Annex A.6), details of barcode scanners sold through the Apple Store (Annex 7), details of other barcode scanners sold on the internet (Annex A.8), details of the ‘Scanlife mobile application’ (Annex A.9) and details of the product ‘Linea-pro 4’ (Annex A.10), is inadmissible.
21      It should be stated at the outset that it is not disputed that those documents were submitted for the first time before the Court.
22      In that regard, according to settled case law, it follows from Article 65(2) of Regulation No 207/2009 that facts not submitted by the parties before the adjudicating bodies of OHIM cannot, as a rule, be submitted at the stage of the appeal brought before the General Court, which is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of European Union law made by that board, particularly in the light of the facts which were submitted to the latter. The Court cannot, however, carry out such a review by taking into account matters of fact newly produced before it (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 54, and the judgment of 10 December 2008 in Case T-228/06 Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), not published in the ECR, paragraph 26). Indeed, to admit such evidence is contrary to Article 135(4) of the Rules of Procedure of the Court, since the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see, to that effect, the judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 45 and the case-law cited).
23      At the hearing, the applicant maintained, however, that the sole purpose of the documents submitted in Annexes A.6 to A.10 was to answer the arguments which the Board of Appeal had raised for the first time at points 20 to 25 of the contested decision. Consequently, they are, in the applicant’s submission, admissible, even though they were produced for the first time before the Court.
24      That argument cannot succeed. Far from developing new arguments, the Board of Appeal confined itself to responding to the applicant’s arguments and to assessing the merits of the opposition in the light of the legislation and case-law concerning similarity of goods. In particular, while the Board of Appeal was the first to provide a definition of ‘interactive terminals for displaying and ordering goods and services’, that was because the applicant had not put one forward during the administrative proceedings. In a situation such as that in the present case, in which the applicant fails to submit, during the administrative proceedings, evidence of the alleged similarity of the goods covered by the earlier trade mark with those covered by the mark applied for, it cannot be maintained that the Board of Appeal’s assessments of the similarity of the goods in question, which refute the applicant’s arguments, amount to new arguments justifying the submission of evidence for the first time before the Court.
25      The applicant also explained the fact that evidence had not been submitted during the administrative proceedings by asserting at the hearing that ‘facts are facts’.
26      When then asked by the Court whether the documents submitted in the annexes at issue were intended to demonstrate any well-known fact and, if so, which one(s), the applicant merely maintained that the ‘documents provided show that barcode and image scanners are telecommunications devices that are similar to the goods [covered] by the trade mark applied for’. However, neither the general statement that the goods in question are similar nor the claim that barcode and image scanners are telecommunications devices amounts to a well-known fact.
27      It follows that the documents in Annexes A.6 to A.10 are inadmissible.
Substance
28      The applicant disputes that the contested decision is well founded as regards, first, the assessment of the similarity of the goods at issue and, second, the lack of any overall assessment of the likelihood of confusion.
29      As provided in Article 8(1)(b) of Regulation No 207/2009, 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, because of 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.
30      It is settled case-law that the risk that the public might believe that the goods or services at issue come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, account being taken of the perception of the relevant public of the signs and of the goods or services at issue, and of all factors relevant to the circumstances of the case and, in particular, the interdependence of the similarity of the signs and the similarity of the goods or services covered (see, to that effect, Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
31      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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, by analogy, Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
32      So far as the comparison of the signs at issue is concerned, the parties concur that they are identical. That matter thus does not form part of the subject-matter of the proceedings.
Comparison of the goods at issue
33      The applicant submits, with regard to the comparison of interactive terminals for displaying and ordering goods and services with barcode scanners, that, contrary to what was decided by the Board of Appeal, barcode scanners will also display information about goods or services whose barcode is being scanned, as in the case of supermarket price-checking stations, and can also be used to order goods, as in the case of portable scanners in shops. Thus, barcode scanners can be used for displaying and ordering goods and services, like the interactive terminals covered by the mark applied for. Furthermore, smart phones and personal digital assistants often have a decoding application which enables information on goods to be displayed and also allows goods to be ordered.
34      With regard to the comparison of telecommunications systems and installations with barcode scanners, the applicant submits, in essence, that, contrary to the conclusions reached in paragraphs 21 and 22 of the contested decision, devices containing a barcode scanner contain not only telecommunications systems which connect them to a computer, but also cellular telecommunications technologies.
35      As regards the comparison between the goods covered by the earlier mark and electrical or electronic accessories, the applicant believes, also in reliance on the document submitted as Annex A.10, that paragraphs 23 and 24 of the contested decision are vitiated by an error, in view of the fact that there are in existence accessories to different electrical and electronic devices which have precisely the function of a barcode or image scanner.
36      The applicant therefore submits that the goods covered by the mark applied for are similar to those covered by the earlier mark.
37      OHIM challenges the arguments put forward by the applicant. As regards, in particular, the comparison between, on the one hand, barcode and image scanners and, on the other, electrical and electronic accessories, OHIM contends that the reasoning of the Board of Appeal was correct. The category of electronic accessories evokes the image of pieces of hardware that are used in conjunction with electrical and electronic goods, such as, on the one hand, sleeves, wires, cables or sockets and, on the other, mice, keyboards, webcams, bags, laptop stands, speakers, monitors and routers. These accessories are meant to be used in conjunction with a main product, as otherwise they would not be of any use. However, a barcode or image scanner is not an accessory, but rather a stand-alone product having its specific function and modus operandi and which does not need to be combined with, or coupled to, a main product in order to be used.
38      OHIM therefore submits that the goods covered by the mark applied for are not similar to those covered by the earlier mark.
39      In that regard, according to settled case-law, in order to assess the similarity between goods or services, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case C-39/97 Canon [1998] ECR I‑5507, paragraph 23). Where two products or services are complementary, that presupposes there is a close connection between them, in the sense that one of those products or services is important or indispensable for the use of the other, so that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (judgment of 23 November 2011 in Case T-216/10 Monster Cable Products v OHMI – Live Nation (Music) UK (MONSTER ROCK), not published in the ECR, paragraph 25).
40      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).
41      The Board of Appeal’s assessment of whether there was similarity between the goods in question must be examined in the light of the foregoing considerations.
–       The comparison between barcode and image scanners and related software for use therewith and interactive terminals for displaying and ordering goods and services
42      It is apparent from point 25 of the application that the image scanners referred to by the applicant in its opposition are barcode scanners which use a camera to scan the barcodes rather than a laser, as is the case with conventional barcode scanners. Thus, it is not necessary to draw a separate comparison between image scanners and the goods covered by the trade mark applied for.
43      A barcode scanner may be defined, as it was by the Board of Appeal, as an optical scanning device designed to read information printed in the form of bars and to transmit that information to a computer or network. That definition is, moreover, consistent with the definition of a scanner given by the applicant during the administrative proceedings. The applicant defined a scanner more generally as a device for reading information in a computing system.
44      As regards an interactive terminal for displaying and ordering goods and services, it may be defined, as it was by the Board of Appeal, as a terminal that allows interaction between the user and the computer through typed commands, voice commands, mouse clicks or other means of interfacing, which allow the user to access a product and service database and possibly to conclude a purchase. That definition is also consistent with the more general definition of a terminal put forward by the applicant. In its view, a terminal is a piece of equipment consisting of a keyboard and a screen, which is used for communicating with the part of a computing system that deals with information.
45      In that regard, while a barcode scanner is a device intended to be used by professionals for capturing data encrypted in a particular way, with a view in particular to the processing or sale of goods, an interactive terminal for displaying and ordering goods and services is a product whose specific purpose is to enable consumers, that is to say, the general public, to obtain information about goods and services and, possibly, to choose one of them. Accordingly, the two products at issue are not used in the same way and do not have the same purpose.
46      The fact that certain interactive terminals for displaying and ordering goods and services may have an integrated barcode scanner, thereby simplifying data entry tasks, does not lead to the conclusion that the goods concerned are of the same nature and does not remove the essential differences between them in terms of their method of use and intended purpose. Various technical or electronic applications, such as barcode scanners, are used in a large number of sectors for very different purposes, but do not thereby become different or distinct products. Conversely, interactive terminals for displaying and ordering goods and services do not become something else – in terms of their nature, intended purpose or method of use – solely because they contain a scanner (see, to that effect, easyHotel, paragraph 31 above, paragraph 55). Thus, as OHIM rightly maintains, products of different origin may be assembled in a composite third product, but that is not a sufficient ground for concluding that all those components are similar and that, for the relevant public, they have the same origin.
47      Moreover, the goods and services concerned are neither substitutable nor in competition with each other, since they are intended for different publics (easyHotel, paragraph 31 above, paragraph 56).
48      Finally, nor are those goods and services complementary. It must be recalled in this respect 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 (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II 685, paragraph 60; judgment of 15 March 2006 in Case T‑31/04 Eurodrive Services and Distribution v OHIM – Gómez Frías (euroMASTER), not published in the ECR, paragraph 35; and Case T‑420/03 El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (BoomerangTV) [2008] ECR II‑837, paragraph 98). That implies that complementary goods or services can be used together, which presupposes that they are intended for the same public. It follows that there can be no complementary connection between, on the one hand, goods which are intended for storage or sales professionals and, on the other, goods intended for use by consumers. Those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself whilst those in the second are used by customers of that undertaking (see, to that effect, easyHotel, paragraph 31 above, paragraphs 57 and 58).
49      It follows that barcode and image scanners and interactive terminals for displaying and ordering goods and services are not similar.
–       The comparison between barcode and image scanners and related software for use therewith and telecommunications systems and installations
50      The applicant maintains that the Board of Appeal ignored the fact that some barcode scanners, including those belonging to the category of ‘portable data terminals’ use an inbuilt telecommunications system. Those devices are thus also telecommunications systems or installations.
51      In that regard, a telecommunications system or installation may be defined – as the Board of Appeal did in fact define it without being contradicted by the applicant – as a system in which electric or electromagnetic signals are used to transmit information by means of radio, light, waves, wire or cable. It includes data transmission between a computing system and remotely located devices.
52      Clearly, telecommunications systems or installations and barcode scanners are used in different ways. While a scanner is designed to capture information printed in the form of bars and to transmit that information to a computer or a network, a telecommunications system or installation serves to transmit not only data captured in that way but also other types of digitised information. The latter goods thus have a considerably broader use than barcode scanners.
53      While, because of their use, barcode scanners are intended for storage and sales professionals, telecommunications systems and installations are targeted at the general public. Their intended purpose is thus different.
54      The fact that barcode scanners require a telecommunications system or installation in order to transfer or receive data and are to some degree complementary to those systems or installations does not mean that the nature of the goods at issue is the same and such as to remove the fundamental differences in terms of their method of use and intended purpose. The fact that telecommunications systems and installations are found in an ever-increasing number of electronic devices does not suffice to change the essential characteristics of those devices.
55      Moreover, the two products at issue are neither substitutable nor in competition with each other, since they are intended for different publics (easyHotel, paragraph 31 above, paragraph 56).
56      Accordingly, barcode and image scanners and telecommunications systems and installations are not similar.
–       The comparison between barcode and image scanners and related software for use therewith and electrical and electronic accessories
57      Since the applicant has not provided a definition of electrical and electronic accessories, the latter may be defined, as they were by the Board of Appeal, as ‘something added to a machine [or to clothing], which has a useful or decorative purpose’.
58      Contrary to what is maintained by the Board of Appeal and OHIM, barcode scanners are not stand-alone devices but rather accessories to main devices, in the absence of which the latter would serve no purpose. It is sufficient to recall in that regard the well-known fact that barcode readers are found in shops or libraries as accessories peripheral to the main equipment, namely tills or computers. In point 19 of the defence, OHIM itself indicates that barcode scanners are hand-held or stationary input devices, used to capture and read information contained in a barcode.
59      Consequently, since the definition of barcode scanners is wholly consistent with the definition of electrical and electronic accessories, those two products must be regarded as similar.
The overall likelihood of confusion
60      The applicant argues, in essence, that the Board of Appeal ought to have concluded that the low degree of similarity between the goods was offset by the fact that the trade marks at issue are identical.
61      OHIM contends that there could be no such offset in the present case since there is no similarity between the goods in question.
62      In that regard, the existence of a likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case (Canon, paragraph 39 above, paragraph 17; order in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraph 28; and Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 25 and 26). That global assessment implies some interdependence of the factors taken into account and, in particular, of the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 39 above, paragraph 17, and judgment of 11 May 2011 in Case T‑74/10 Flaco-Geräte v OHIM – Delgado Sánchez (FLACO), not published in the ECR, paragraph 54).
63      In the present case, taking account of the fact that interactive terminals for displaying and ordering goods and services and telecommunications systems and installations are not similar to the goods covered by the earlier trade mark, the Board of Appeal was fully entitled to conclude that there was no likelihood of confusion in respect of those goods.
64      By contrast, inasmuch as electrical and electronic accessories are similar to the goods covered by the earlier trade mark, the Board of Appeal made an error in concluding that there was no likelihood of confusion so far as such accessories are concerned. There is in fact a real risk that the public might believe that the goods at issue come from the same undertaking or from economically linked undertakings.
65      Accordingly, the single plea in law must be upheld with regard to electrical and electronic accessories and rejected as to the remainder.
Costs
66      Under Article 87(3) of the Rules of Procedure of the Court, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared or that each party bear its own costs. In this case, the applicant and OHIM have been unsuccessful on some heads. Consequently, each party must be ordered to bear the costs it has incurred in the proceedings before the Court.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 April 2011 (Case R 1443/2010-1) in so far as it rejected the opposition in respect of electrical and electronic accessories;
2.      Dismisses the action as to the remainder;
3.      Orders Hand Held Products, Inc. and OHIM each to bear their own costs.
Forwood
Dehousse
Schwarcz
Delivered in open court in Luxembourg on 12 July 2012.
[Signatures]
* Language of the case: English.