ORDER OF THE GENERAL COURT (Seventh Chamber)
23 February 2015(*)
(Community trade mark — Opposition proceedings — Application for Community word mark SEVEN FOR ALL MANKIND — Earlier Community and international figurative marks Seven — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Action manifestly lacking any foundation in law)
In Case T‑505/14,
Seven For All Mankind LLC, established in Vernon, California (United States), represented by A. Gautier-Sauvagnac, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Seven SpA, established in Leinì (Italy), represented by L. Trevisan, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 9 April 2014 (Case R 1277/2013-1), relating to opposition proceedings between Seven SpA and Seven For All Mankind LLC,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 1 July 2014,
having regard to the response of OHIM lodged at the Court Registry on 8 October 2014,
having regard to the response of the intervener lodged at the Court Registry on 24 October 2014,
having regard to the decision of 8 December 2014 refusing leave to lodge a reply,
having regard to the application, lodged by the applicant at the Court Registry on 9 January 2015, requesting that a hearing be fixed,
having regard to the decision of 14 January 2015 refusing the request made by the applicant for a stay of the proceedings,
makes the following
Order
Background to the dispute
1        On 18 May 2005, the applicant, Seven For All Mankind LLC, 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 mark in respect of which registration was sought is the word sign SEVEN FOR ALL MANKIND.
3        The goods in respect of which registration was sought are in Classes 14 and 18 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, for each of those classes, to the following description:
–        Class 14: ‘Jewellery, namely, jewellery made of precious metals and stones, bracelets, earrings, rings, necklaces, cufflinks, tie tacks, tie fasteners, pins, watches, watchbands, belt buckles of precious metals’;
–        Class 18: ‘Bags, hand bags, travel bags, travelling sets (leather goods), suitcases, rucksacks, valises, beach bags, trunks, document cases, pouches, wallets, card cases, portfolios, purses not of precious metal, cases for keys (leather goods), vanity cases, umbrella covers’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 1/2006 of 2 January 2006.
5        On 31 March 2006, the intervener, Seven SpA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the following earlier marks:
–        the Community figurative mark registered on 2 May 2001 under No 591206 for, inter alia, ‘Knapsacks and rucksacks, small knapsacks and rucksacks; school satchels; bags; multipurpose big bags; sling bags for carrying infants; pouches; camping sacks, beach bags; travelling bags; bags for climbers; school bags; leather and imitation of leather, wallets, purses, briefcases, cheque-book covers, keycases of leather or imitation of leather, paper-cases; hides; trunks and suitcases; umbrellas and walking sticks; whips, harness and saddlery’, in Class 18, reproduced below:
–        the figurative mark which was the subject of international registration No 731954, of 7 January 2000, having effect within Germany, for, inter alia, ‘Watches, small clocks, wall clocks and their cases, chronometric instruments, imitation jewellery, fancy key rings’, in Class 14, reproduced below:
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
8        By decision of 19 September 2008, the Opposition Division upheld the opposition in part. It upheld the opposition, based on Article 8(1)(b) of Regulation No 207/2009, in respect of ‘rucksacks’ in Class 18.
9        On 20 October 2008, the intervener filed a notice of appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.
10      By decision of 28 January 2010, the Second Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the signs at issue could not be considered to be similar, thus excluding the application of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, ‘even if the goods were found to be identical or similar’.
11      The intervener appealed against that decision.
12      By judgment of 6 October 2011, Seven v OHIM — Seven For All Mankind (SEVEN FOR ALL MANKIND) (T‑176/10, the ‘Seven judgment’, EU:T:2011:577), the General Court annulled the decision of the Second Board of Appeal. The General Court held that the fact that the word ‘seven’ was present in the marks at issue was an important point of similarity, given the not insignificant part played by that element in the perception of each of the marks at issue (Seven judgment, cited above, EU:T:2011:577, paragraph 33). The General Court considered that, since the word ‘seven’ did not have any particular link with the goods at issue and was not commonly used in the sector concerned, it had to be regarded as possessing an average degree of inherent distinctiveness as regards the goods at issue (Seven judgment, cited above, EU:T:2011:577, paragraph 37). The General Court added that, in any event, the fact that the word ‘seven’ might have only a very weak distinctive character did not affect the finding that that word was not insignificant in the overall impression produced by the earlier trade marks, since it was clear that that word was likely to attract consumers’ attention and be remembered by them (Seven judgment, cited above, EU:T:2011:577, paragraph 38).
13      With regard to the comparison of the signs at issue, the General Court took the view that, because of their common element ‘seven’, they had a certain degree of visual, phonetic and conceptual similarity. The General Court concluded that there was a certain overall similarity, in view of the presence, in the mark applied for, of the word element ‘seven’, which was not insignificant in the overall impression produced by the earlier trade marks (Seven judgment, paragraph 12 above, EU:T:2011:577, paragraph 51). It therefore held that the Board of Appeal had erred in not recognising that there was a certain degree of similarity between the signs at issue and upheld the first and second pleas alleging breach of Article 8(1)(b) and of Article 8(5) of Regulation No 207/2009, respectively.
14      By judgment of 21 February 2013, Seven For All Mankind v Seven (C‑655/11 P; the ‘Court of Justice judgment’, EU:C:2013:94), the Court of Justice dismissed the applicant’s appeal against the Seven judgment, paragraph 12 above (EU:T:2011:577). The Court of Justice rejected the arguments of the applicant, finding that the General Court had not merely made a general finding attributing a dominant character to the elements at the beginning of a word mark, but had examined the sign for which registration was sought as a whole (Court of Justice judgment, cited above, EU:C:2013:94, paragraph 77). The Court of Justice held that, in finding that there was a certain overall similarity between the marks at issue, the General Court had assessed the signs at issue as a whole, taking into account all relevant factors (Court of Justice judgment, cited above, EU:C:2013:94, paragraph 91). The Court of Justice also held that the General Court could not be criticised for having found a visual similarity between the signs at issue, while acknowledging the presence of an original and unusual element in the mark for which registration was sought, and that the General Court’s reasoning was not vitiated by any contradiction (Court of Justice judgment, cited above, EU:C:2013:94, paragraphs 109 and 110). Lastly, the Court of Justice held that the General Court’s reasoning on the phonetic and conceptual similarity between the signs had been based on an analysis of all relevant factors and that its reasoning was also not vitiated by any contradiction (Court of Justice judgment, cited above, EU:C:2013:94, paragraphs 115 and 117).
15      In accordance with its obligation, under Article 65(6) of Regulation No 207/2009, to take the necessary measures to comply with the Court of Justice judgment, paragraph 14 above (EU:C:2013:94), the Presidium of the Boards of Appeal of OHIM reallocated the case to the First Board of Appeal, in order to ensure that the appeal would lead to a new decision of a Board of Appeal.
16      By decision of 9 April 2014 (‘the contested decision’), first, the First Board of Appeal of OHIM took note of the fact that the Opposition Division’s decision had become final in so far as it had rejected the application for registration in respect of ‘rucksacks’ in Class 18. Second, it annulled the remainder of the Opposition Division’s decision and rejected the application for registration in respect of all of the other goods in Classes 14 and 18 covered by that application and referred to in paragraph 3 above.
17      The Board of Appeal noted that the relevant public consisted of the general public in the European Union, and in particular in Germany, showing a reasonable degree of attention. The Board of Appeal stated that the goods in Classes 14 and 18 covered by the mark applied for and the goods in Class 14 covered by the earlier international mark and those in Class 18 covered by the earlier Community mark, respectively, were either identical or similar. The Board of Appeal pointed out that these assessments had been approved by the General Court in the Seven judgment, paragraph 12 above (EU:T:2011:577) and had not been contested by the parties.
18      The Board of Appeal considered that, in accordance with the General Court’s findings in the Seven judgment, paragraph 12 above (EU:T:2011:577), the earlier marks had an average degree of distinctiveness and that the term ‘seven’ of the mark applied for would attract the attention of the relevant public more than the additional words ‘for’, ‘all’ and ‘mankind’, even if those words were not insignificant in the overall impression produced by that mark. The Board of Appeal stated that, according to the findings of the General Court and the Court of Justice, the marks were visually, phonetically and conceptually similar. The Board of Appeal added that the word element ‘seven’ in the earlier marks was fully reproduced in the mark applied for and that that element dominated the mark applied for, that the fact that it was placed at the beginning of the mark applied for entailed significant visual and phonetic similarities, and that it was the only word of the mark applied for that conveyed a concrete meaning to the German consumer. The Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 and that there was therefore no need to examine the appeal in so far as it was based on Article 8(5) of that regulation.
Forms of order sought
19      The applicant claims that the Court should:
–        annul the contested decision;
–        declare that the trade mark applied for is eligible for registration;
–        order OHIM to pay the costs, including those incurred in the proceedings before OHIM.
20      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
21      Under Article 111 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, by reasoned order and without taking further steps in the proceedings, give a decision on the action.
22      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings, even though one of the parties has requested that a hearing be held (see, to that effect, order of 13 September 2011 in ara v OHIM — Allrounder (A), T‑397/10, EU:T:2011:464, paragraph 18).
23      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. In addition, although it notes that neither OHIM nor the General Court has ruled on the merits of the opposition in so far as it is based on Article 8(5) of Regulation No 207/2009, the applicant develops an argument to the effect that the opposition should be rejected on the basis of that provision.
24      By its single plea, the applicant challenges the finding of the Board of Appeal that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
25      The applicant submits that the word ‘seven’ possesses a low degree of distinctiveness and that the marks at issue are not visually, phonetically and conceptually similar. It argues that the General Court’s reasoning in the Seven judgment, paragraph 12 above (EU:T:2011:577), concerning the similarity of the signs at issue contains contradictions.
26      It should be recalled that, in the Seven judgment, paragraph 12 above (EU:T:2011:577), the General Court held, first, that the word ‘seven’ possessed an average degree of inherent distinctive character as regards the goods at issue (Seven judgment, paragraph 12 above, EU:T:2011:577, paragraph 37) and that there was a certain overall similarity between the marks at issue (Seven judgment, paragraph 12 above, EU:T:2011:577, paragraph 51).
27      It must therefore be held that, as the Seven judgment, paragraph 12 above (EU:T:2011:577), is now res judicata, the arguments raised by the applicant with a view to challenging the normal distinctive character the word ‘seven’ and the similarity between the marks at issue, and thus contesting the General Court’s findings, must be rejected as being manifestly unfounded.
28      The same holds true of the applicant’s argument that the Board of Appeal erred in finding that the element ‘seven’ was the dominant element of the mark applied for and that it was appropriate to take into account the overall impression conveyed by that mark in the comparison of the signs at issue. Suffice it to note that, by those arguments, the applicant seeks to challenge the General Court’s assessment in the Seven judgment, paragraph 12 above (EU:T:2011:577) concerning the similarity of the marks at issue. Furthermore, it should be borne in mind that the Court of Justice found that the General Court had not merely made a general finding attributing a dominant character to the elements at the beginning of a word mark but had examined the sign for which registration is sought as a whole (Court of Justice judgment, paragraph 14 above, EU:C:2013:94, paragraph 77).
29      As regards the applicant’s argument, put forward in the alternative, that the Board of Appeal, in paragraph 58 of the contested decision, went further than the General Court in the Seven judgment, paragraph 12 above (EU:T:2011:577) by observing that the earlier Community trade mark had ‘at least a normal ability to distinguish the goods it covers from those of other companies’, suffice it to hold that that argument is based on a partial and erroneous reading of the contested decision. In the same paragraph of the contested decision, the Board of Appeal concluded, with regard to that earlier mark, that it had a normal degree of distinctiveness. Moreover, the applicant does not explain how that finding might be contrary to the General Court’s findings in the Seven judgment, paragraph 12 above (EU:T:2011:577).
30      As regards the applicant’s argument, also put forward in the alternative, that the Board of Appeal was wrong to conclude that there was an important visual, phonetic and conceptual similarity between the marks at issue, whereas the General Court, in the Seven judgment, paragraph 12 above (EU:T:2011:577), had concluded only that there was some similarity, suffice it to point out that that argument is ineffective. The applicant does not explain how that argument, even if it were well founded, could be capable of bringing into question the finding of the Board of Appeal relating to the existence of a likelihood of confusion.
31      With regard to the likelihood of confusion, the applicant states that, in its view, the marks at issue are not similar overall and there is therefore no likelihood of confusion. It adds that the presence of the word ‘seven’ in the marks at issue is not sufficient to establish a similarity between those marks and that their differences should be taken into account, these being sufficient to rule out any likelihood of confusion.
32      Suffice it to hold that, by those arguments, the applicant is in fact contesting the finding relating to the existence of an overall similarity between the marks at issue. However, it has already been noted that this similarity had been established by the General Court in the Seven judgment, paragraph 12 above (EU:T:2011:577), which is now res judicata and no longer amenable to challenge.
33      Finally, with regard to the applicant’s argument seeking to challenge the Board of Appeal’s finding, made ‘for the sake of completeness’, that the likelihood of confusion is supported by the fact that the earlier Community trade mark had acquired an enhanced distinctiveness attained through use in Italy for certain goods, that argument must be rejected as ineffective inasmuch as it relates to a finding made by the Board of Appeal for the purpose of completeness, that is to say, one which was not necessary to enable the Board of Appeal to reach the conclusion relating to the existence of a likelihood of confusion.
34      It follows from all of the foregoing that the single plea in law must be rejected as being manifestly unfounded.
35      Finally, the applicant’s argument purporting to demonstrate that the conditions for the application of Article 8(5) of Regulation No 207/2009 have not been met and that the opposition should also be dismissed on that basis must be held to be irrelevant. In the contested decision, the Board of Appeal, having upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, did not examine the opposition in so far as it was based on Article 8(5) of Regulation No 207/2009.
36      Accordingly, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
37      Under Article 87(2) of the Rules of Procedure, 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 forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Seven For All Mankind LLC to pay the costs.
Luxembourg, 23 February 2015.
E. Coulon
M. van der Woude
Registrar
President
* Language of the case: English.