JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
28 October 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark MIRUS — Earlier national word mark MIRUS — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(a) and (b) of Regulation (EC) No 207/2009)
In Case T‑576/13,
Verus Eood, established in Sofia (Bulgaria), represented by C. Röhl, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Joie International Co., Ltd, established in Hong Kong (China), represented by M. Garayalde Niño and B. Blanco La Roche, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 23 August 2013 (Case R 715/2012-5), concerning opposition proceedings between Verus Eood and Joie International Co., Ltd,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 October 2013,
having regard to the response of OHIM lodged at the Registry on 11 March 2014,
having regard to the response of the intervener lodged at the Registry on 11 April 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month of notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 15 December 2010 the intervener, Joie International Co., 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) under 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 word sign MIRUS.
3        The goods for which Community registration was sought are, following the restriction made during the proceedings before OHIM, in Class 12 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘strollers’.
4        The Community trade mark application was published in the Community Trade Marks Bulletin No 4/2011 of 7 January 2011.
5        On 6 April 2011 Capella Eood, the predecessor in law to the applicant, Verus Eood, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier German word mark MIRUS, filed on 27 September 2007 and registered on 12 February 2008 under number 30763422 inter alia for goods in Class 12 corresponding to the following description: ‘vehicles as well as their parts and accessories, as far as in Class 12 included; wheels for vehicles’.
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.
8        By letter of 14 October 2011, the authorised representative of Capella Eood informed OHIM that it had transferred to the applicant the earlier mark on which the opposition was based.
9        By decision of 6 February 2012, the Cancellation Division upheld the opposition in respect of the application for registration of the Community trade mark for the goods referred to in paragraph 3 above. It considered, in that regard, that the signs at issue were identical and that the goods covered by them were identical, so that there was a likelihood of confusion between the marks.
10      On 9 April 2012 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11      On 29 August 2012 Copernicus-Trademarks Ltd was entered in the register of Community trade marks as the new proprietor of that mark.
12      By decision of 23 August 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM upheld the appeal against the decision of the Opposition Division.
13      In particular, the Board of Appeal took the view, first, that the signs at issue were identical. Second, it considered that the goods at issue were different, having regard in particular to the difference in nature, purpose, manufacturers, users and sales channels of the goods at issue, and rejected any link of complementarity between the goods in question. The Board of Appeal also considered that the earlier mark had a normal distinctive character and was not descriptive. In the light of all those elements, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Procedure and forms of order sought by the parties
14      By application lodged at the Registry of the General Court on 30 October 2013, Verus Eood, which, on 14 October 2011, was entered in the register of Community trade marks as the new proprietor of the mark of the opposition filed by Capella Eood, brought the present action.
15      In its response, OHIM drew the Court’s attention to the fact that the mark on which the opposition was based had been transferred by the applicant to Copernicus-Trademarks.
16      By letter of 10 April 2015, the Court requested the applicant to answer a question by way of a measure of organisation of procedure, pursuant to Article 64 of its Rules of Procedure. The applicant complied with that request within the period prescribed.
17      The applicant claims that the Court should:
–        alter the contested decision in such a way that the opposition is upheld in its entirety and registration is refused;
–        order OHIM to pay the costs.
18      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
19      As a preliminary point, the view must be taken that, although the form of order sought by the applicant formally relates to the alteration of the contested decision and the refusal of the Community trade mark application for the goods at issue, it is clear from the content of the application that by the present action the applicant seeks, essentially, annulment of the contested decision on the ground that the Board of Appeal wrongly held that there was no likelihood of confusion (see, to that effect, judgment of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 15).
Admissibility of the action
20      Without formally raising a plea of inadmissibility, OHIM argues that the applicant did not have standing to bring an action before the General Court since it was no longer the proprietor of the earlier mark.
21      In that regard, OHIM notes that it was not informed that the earlier mark had been transferred by the applicant on 29 August 2012 to a new proprietor, Copernicus-Trademarks. OHIM is of the view that, because of that transfer, the applicant lost its right to bring an action as proprietor, since it failed to substantiate its legal interest in bringing the present proceedings, and, therefore, that the application before the Court must be dismissed as inadmissible.
22      The applicant claims that, regard being had to the authorisation signed by Copernicus-Trademarks, it has always been entitled to bring proceedings.
23      It should be noted that the earlier mark on which the opposition was based was transferred on two occasions. First, Capella Eood transferred that mark to the applicant during the proceedings before the Opposition Division. That transfer was disclosed to OHIM by letter of 14 October 2011 and was not disputed by the parties. Second, the applicant transferred the earlier mark to Copernicus-Trademarks. This second transfer, which took place on 29 August 2012, occurred more than four months after the intervener filed the notice of appeal against the decision of the Opposition Division, but before the decision of the Fifth Board of Appeal of OHIM. Consequently, the applicant has not been the proprietor of the earlier mark since 29 August 2012.
24      It must be held that it is clear from the authorisation signed by Copernicus-Trademarks that the applicant was authorised by the latter to act before the General Court. Therefore, OHIM’s argument that the applicant no longer had standing to bring proceedings must be rejected.
25      Therefore, the action is admissible.
Substance
26      In support of its action, the applicant relies on two pleas in law, alleging infringement of Article 8(1)(a) of Regulation No 207/2009 and, in the alternative, infringement of Article 8(1)(b) of that regulation.
27      The Court considers it appropriate to examine the second plea first.
Second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
28      The applicant argues that the Board of Appeal applied that provision incorrectly, in considering the goods at issue to be different.
29      According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
30      According to established case-law, the risk that the public might believe that the goods or services 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 signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
31      As a preliminary point, because the mark on which the opposition is based is a German mark, the territory in respect of which the likelihood of confusion must be assessed is that of Germany, as the Board of Appeal pointed out without challenge by the parties.
32      With regard to the relevant public, the Board of Appeal correctly found — and without challenge by the parties — that the relevant public for ‘strollers’ was the average consumer with a very high level of attention and that the relevant public for ‘vehicles as well as their parts and accessories’ and ‘wheels for vehicles’ was the average consumer who is reasonably well informed and reasonably observant and circumspect. Last, it found that the relevant public for ‘special vehicles’ corresponded to the professional public with a higher than average level of attention.
–       Comparison of the goods
33      According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between 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. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
34      The applicant claims, essentially, that the Board of Appeal erroneously found there to be no similarity between the goods covered by the marks at issue. The applicant disputes the Board of Appeal’s assessment and claims that the goods in question are highly similar, since both ‘strollers’ and ‘vehicles’ are used to transport persons. It also claims that it is not unusual for vehicle manufacturers also to produce strollers and that strollers sometimes consist of modular parts that can also be used in vehicles. Similarly, the applicant is of the view that both kinds of goods have wheels and can be used for locomotion. Last, it considers that the goods at issue fall within the same class, namely Class 12.
35      OHIM and the intervener dispute the applicant’s arguments.
36      In the present case, in the first place, as regards the nature, intended purpose and method of use of the goods at issue, the Board of Appeal correctly considered them to be distinct.
37      The goods at issue differ in their method of use. In that respect, the goods covered by the mark applied for, ‘strollers’, or pushchairs, are closely related to cots or infant beds given their purpose, which is to transport, on wheels, small children, by non-motorised energy derived from an adult’s push. ‘Vehicles’ are means of transport, which may or may not be motorised, are operated by and for persons, and are meant to facilitate moving from one place to another. Moreover, the purpose of ‘parts and accessories of vehicles and wheels for vehicles’ is to serve as spares in the event of breakage of one of the vehicles’ original parts. They are parts meant for building vehicles and to be used as building components, whereas the goods covered by the mark applied for are finished products meant for transporting children. Consumers buy the goods at issue for different reasons and for different purposes, with the result that the goods at issue are dissimilar as regards nature and use.
38      Furthermore, with regard to the intended purpose of the goods at issue, even if they are intended for the transportation of persons, such an abstract and generic similarity would lead to the conclusion that every means of transport is similar to another, thus rendering it irrelevant. Given the large number of products that can serve as a means of transport, that factor is not in itself sufficient for proving a degree of similarity between the goods at issue.
39      Therefore, the Board of Appeal was correct to consider the goods at issue to be of different nature, intended purpose and method of use.
40      In the second place, with regard to the complementarity of the goods, it should be noted that goods or services which are complementary are those between which there is a close connection, 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. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
41      It is clear that the purchase of one of the goods at issue is not conditional on the purchase of the other and that there is nothing to suggest that the buyer of one of those goods would have to buy the other. With regard to whether complementarity can be derived from the fact that some vehicle manufacturers also offer strollers to their customers, and from the fact that some strollers consist of modular parts that can be used, for example, as children’s car seats, the case-law states that goods or services which are complementary are those between which there is a close connection, 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 judgment in easyHotel, cited in paragraph 40 above, EU:T:2009:14, paragraph 57 and the case-law cited). It should be noted that, as the Board of Appeal found, none of the goods at issue is indispensable or important for the use of the other. Therefore, there is no link of complementarity between the goods at issue.
42      In the third place, the Board of Appeal correctly found, and without challenge by the parties, that the distribution channels for the goods at issue were different.
43      In the fourth place, with regard to the manufacturers, contrary to what the applicant claims, ‘strollers’ are not part of the range of products usually offered by car manufacturers, even if some very well-known car manufacturers offer for sale a limited number of high end strollers under their trade marks at their car dealerships. In the absence of established practice, the fact that certain vehicles and certain kinds of strollers are occasionally manufactured by the same manufacturers cannot have decisive influence. Moreover, the goods at issue have a different level of technicality. In view of that different level of technicality, the two kinds of goods will generally be manufactured in different production centres (see, by analogy, judgment of 16 May 2007 in Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, EU:T:2007:143, paragraph 62).
44      In the last place, with regard to the applicant’s argument that the goods at issue are in the same class, it should be pointed out that it is stated in Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) that the classification of goods and services is to serve exclusively administrative purposes and that, therefore, goods and services may not be regarded as being similar to each other on the ground that they appear in the same class and may not be regarded as being dissimilar from each other on the ground that they appear in different classes (judgment of 21 November 2012 in Atlas v OHIM — Couleurs de Tollens (ARTIS), T‑558/11, EU:T:2012:615, paragraph 36).
45      Accordingly, the Board of Appeal was correct in finding the goods at issue to be different.
–       Comparison of the signs
46      The signs at issue are identical, as the Board of Appeal found without challenge by the parties.
–       Likelihood of confusion
47      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 judgment in easyHotel, cited in paragraph 40 above, paragraph 42 and the case-law cited).
48      Given that the goods are different, one of the cumulative conditions is not satisfied. Accordingly, it must be concluded that the Board of Appeal did not err in finding that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
49      It follows from the foregoing that the second plea must be rejected.
First plea, alleging infringement of Article 8(1)(a) of Regulation No 207/2009
50      The applicant claims that the signs at issue and the goods covered by the mark applied for and the earlier mark are identical.
51      According to Article 8(1)(a) 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 it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.
52      In the present case, it is undisputed that the signs at issue are identical.
53      As has been shown in paragraphs 33 to 45 above, since the goods at issue are different, they cannot be regarded as being identical.
54      Therefore, it is evident from the provisions of Article 8(1)(a) of Regulation No 207/2009 that the refusal to register the mark applied for implies that two cumulative conditions are met: the identical nature of the goods at issue and the identical nature of the signs at issue. However, given that the goods are different, one of the conditions is not met.
55      It follows from the foregoing that the first plea must be rejected.
56      In view of all the foregoing considerations, the action must be dismissed in its entirety.
Costs
57      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Verus Eood to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Joie International Co., Ltd.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 28 October 2015.
[Signatures]
* Language of the case: English.