JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
30 March 2017 (*)
(EU trade mark — Invalidity proceedings — Application for the EU word mark APAX PARTNERS — Earlier international word mark APAX — Relative ground for refusal — Likelihood of confusion — Similarity of the services — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)
In Case T‑209/16,
Apax Partners UK Ltd, established in London (United Kingdom), represented by D. Rose and J. Warner, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Apax Partners Midmarket, established in Paris (France), represented by C. Joly, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 February 2016 (Case R 1611/2014-2), relating to invalidity proceedings between Apax Partners Midmarket and Apax Partners UK,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 May 2016,
having regard to the response of EUIPO lodged at the Court Registry on 13 June 2016,
having regard to the response of the intervener lodged at the Court Registry on 19 July 2016,
having regard to the declaration of the applicant of 13 September 2016 lodged at the Court Registry on 15 November 2016 and the observations of EUIPO lodged at the Court Registry on 15 November 2016,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 11 August 2000, the applicant, Apax Partners UK Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), 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 European Union trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign APAX PARTNERS.
3        The services in respect of which registration was sought are in Class 36 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: ‘Insurance; financial affairs; monetary affairs; financial services; real estate affairs; corporate finance; private equity; investment services; capital, fund and trust investment services; investment management services; mutual fund, collective investment scheme and hedge fund services; unit trust services; financial and investment planning and research; advisory, consultancy and information services relating to all the aforesaid services’.
4        The trade mark application was published in Community Trade Marks Bulletin No 26/2001 of 19 March 2001 and the mark was registered on 10 December 2002.
5        On 16 December 2003, the intervener, Apax Partners Midmarket, filed an application for a declaration that the mark in question was invalid, alleging infringement of Article 52(1)(a) and Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 53(1)(a) and Article 8(1)(a) and (b) of Regulation No 207/2009).
6        The application for a declaration of invalidity was based on the existence of, inter alia, international registration No 572268 of the word mark APAX, designating, among other countries, Sweden, which was registered on 6 June 1991 and covers, inter alia, services in Class 36 corresponding to the following description: ‘Financing services, financial and loaning operations, financial transactions; investment activities of all kinds and especially as regards equity capital; financial engineering; services in connection with company ownership transfer, company merger and acquisition, in all forms; investment research, selection, studies and advice; financial, fiscal and real estate appraisals; brokerage; building and real estate appraisals, assessments and management; financial analysis; leasing of real estate; factoring, financial and monetary affairs; accumulation, investment and management of funds, management of venture enterprise investment funds, capital constitution and investment, risk capital, investment capital and development capital activities’.
7        By decision of 29 April 2014, the Cancellation Division upheld the application for a declaration of invalidity in respect of all the services covered by the contested mark on the basis of Article 53(1)(a) of Regulation No 207/2009 in conjunction with Article 8(1)(b) thereof, in so far as that application for a declaration of invalidity was based on the existence of the earlier mark. The Cancellation Division, referring to Communication No 2/12 of the Executive Director of EUIPO of 20 June 2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012), found that the applicant’s intention, when filing the application for the contested mark, was to cover all the services included in the alphabetical list of the class of the Nice Classification concerned, namely Class 36. In order to take account of the entire alphabetical list of the services in Class 36 covered by the contested mark, it compared the services covered by the earlier mark with the general indications specified in the heading of Class 36 and with all the services in the alphabetical list in question that do not fall within the natural and usual meaning of those general indications. The Cancellation Division concluded that all the services in the alphabetical list in question fell within the natural and usual meaning of the general indications in respect of Class 36 and compared the services covered by the earlier mark with the general indications in respect of Class 36. The contested mark was declared invalid in its entirety.
8        On 26 June 2014 the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By decision of 17 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First of all, after finding, in paragraph 19 of the contested decision, that account had to be taken of the point of view of relevant consumers located in Sweden, the Board of Appeal, in paragraph 23 of the contested decision, found that the services covered by the marks at issue were aimed both at the general public and at a specialist public, the level of attention of both of which was relatively high. Next, as regards the assessment of the similarity of the services at issue, the Board of Appeal upheld, in paragraphs 24 to 29 of the contested decision, all of the Cancellation Division’s findings, taking the view that most of the services in Class 36 covered by the contested mark were identical to those in the same class covered by the earlier mark, with the exception of the services of ‘insurance’ covered by the contested mark and the ‘financial services’ covered by the earlier mark, which were found to be similar. Lastly, as regards the comparison of the signs at issue, it found, in paragraphs 32 to 35 of the contested decision, that they were similar overall, since the only element in the earlier mark, ‘apax’, was identical to the element which comes in first place in the contested sign, and the second element in that sign, ‘partners’, was weakly distinctive with regard to the services concerned, it being a common term for financial or law firms. The Board of Appeal therefore concluded, in paragraph 40 of the contested decision, that, considering the principle of interdependence between the factors to be taken into consideration and in spite of the relatively high level of attention of the relevant public, there was a likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to reinstate the registration of the contested mark;
–        order EUIPO and the intervener to pay the costs, including those incurred for the purposes of the proceedings before the Board of Appeal and the Cancellation Division.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
12      The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to pay the costs, including those incurred for the purposes of the proceedings before the Board of Appeal and the Cancellation Division.
Law
13      As a preliminary point, without formally putting forward a plea of inadmissibility pursuant to Article 130 of the Rules of Procedure of the General Court, EUIPO submits that the single plea in law, alleging infringement of Article 8(1)(a) of Regulation No 207/2009, is inadmissible, on the ground, in essence, that both the Cancellation Division and the Board of Appeal based their decisions on Article 53(1)(a) of Regulation No 207/2009 in conjunction with Article 8(1)(b) thereof.
14      In that regard, it should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and to Article 76(d) of the Rules of Procedure of the General Court, an application must contain, inter alia, the subject matter of the proceedings and a summary of the pleas in law relied on. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any further information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (orders of 28 April 1993, De Hoe v Commission, T‑85/92, EU:T:1993:39, paragraph 20; of 21 May 1999, Asia Motor France and Others v Commission, T‑154/98, EU:T:1999:109, paragraph 49, and judgment of 15 June 1999, Ismeri Europa v Court of Auditors, T‑277/97, EU:T:1999:124, paragraph 29).
15      In the present case, contrary to what EUIPO claims, the applicant does not confine itself to alleging infringement of Article 8(1)(a) of Regulation No 207/2009, but formally submits that there has been infringement of that provision in conjunction with Article 53(1)(a) of that regulation. Although it does not state in what way Article 8(1)(a) of that regulation was, in its view, infringed by the Board of Appeal, its arguments are clearly based on the provisions of Article 8(1)(b) of Regulation No 207/2009. Consequently, it must be held that the application is marred by no more than a clerical error in the reference to Article 8(1)(a) of Regulation No 207/2009 and that the plea in law put forward must be interpreted as alleging infringement of Article 53(1)(a) of that regulation in conjunction with Article 8(1)(b) thereof.
16      In support of that plea, the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. In particular, the applicant takes the view that the Board of Appeal erred in finding that the services concerned were similar.
17      EUIPO and the intervener dispute the applicant’s arguments.
18      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid, 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)(iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
19      According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20      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 of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
21      Consequently, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, it is still necessary, even where the two marks are identical, to adduce evidence of similarity between the goods or services covered by them (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 43 and the case-law cited).
22      Lastly, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
23      It is in the light of those considerations that the legality of the contested decision must be examined.
The relevant public and the relevant territory
24      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
25      In the present case, it must be held that the Board of Appeal was right in finding, findings which have not been challenged by the parties, first, in paragraph 19 of the contested decision, that, since the application for a declaration of invalidity was based on international registration No 572268 designating, inter alia, Sweden, the relevant territory with regard to which the likelihood of confusion had to be assessed was that of Sweden and, secondly, in paragraph 23 of that decision, that the level of attention in respect of services in Class 36, which may usually be aimed both at the general public and at a specialist public, was relatively high.
The comparison of the signs
26      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
27      In the present case, the Board of Appeal was right in finding, in paragraphs 32 to 35 of the contested decision, a finding which has not been contradicted by the parties, that the signs at issue were similar overall, in particular since the only element in the earlier mark, ‘apax’, was identical to the element which comes in first place in the sign at issue and the second element in that sign, ‘partners’, was weakly distinctive with regard to the services concerned, it being a common term for financial or law firms.
The comparison of the services
28      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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 the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
29      The Board of Appeal found, in paragraph 29 of the contested decision, that the services of ‘insurance’ covered by the contested mark and the ‘financial services’ covered by the earlier mark were similar.
30      The applicant states, inter alia, that, in a previous case, the Opposition Division found that ‘services rendered and related with insurance and, in general, with reinsurance’ and ‘financial affairs’ were not similar.
31      In so far as the applicant refers to a decision of the Opposition Division, it must be observed that the Boards of Appeal cannot, in any event, be bound by the decisions of lower-ranking adjudicating bodies of EUIPO (judgment of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48).
32      Furthermore, as the Board of Appeal stated in paragraph 28 of the contested decision, ‘most banks also offer insurance services, or they act as agents for insurance companies with which they are often economically linked’. Next, as the Board of Appeal pointed out, ‘[i]nsurance companies are subject to similar rules of licensing, supervision and solvency as banks and other institutions providing financial services’ and ‘it is not unusual to see financial institutions and insurance companies in the same economic group’. The Board of Appeal correctly found that ‘the competing services ha[d] a similar nature, [might] be provided by the same undertakings or related undertakings and share[d] the same distribution channels’.
33      Such a finding is not, moreover, called into question by the declaration of the applicant filed at EUIPO on 13 September 2016 pursuant to Article 28(8) of Regulation No 207/2009, as amended by Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016, according to which declaration the applicant stated that, at the time when it filed its trade mark application, its intention was to cover not only the services covered by the literal meaning of the class heading of Class 36, but also the services of ‘financial consultancy’ and ‘financial information’.
34      It must be held, as is apparent from paragraph 3 above, that the application for registration, by referring to ‘advisory, consultancy and information services relating to all the aforesaid services’, namely financial services, already covered the services of ‘financial consultancy’ and ‘financial information’.
35      In any event, the Cancellation Division found that the application for registration, inasmuch as it covered the class heading of Class 36, had to be regarded as covering all the services in that class, which included the services of ‘financial consultancy’ and ‘financial information’.
36      First, such an assessment was justified by the fact that the application for registration had been filed before 21 June 2012, the date of entry into force of Communication No 2/12 of the Executive Director of EUIPO, point V of which states that, ‘[a]s regards [EU] trade marks registered before the entry into force of the present Communication which use all the general indications listed in the class heading of a particular class, [EUIPO] considers that the intention of the applicant ... was to cover all the goods or services included in the alphabetical list of that class in the edition [of the Nice Classification] in force at the time when the filing was made’. Secondly, the Cancellation Division also took the view that all the services in Class 36, which thus implicitly include those of ‘financial consultancy’ and ‘financial information’, fell within the natural and usual meaning of the terms making up the class heading of that class, to which the applicant had expressly referred in the application for the contested mark.
37      The Board of Appeal, in upholding the Cancellation Division’s decision without calling into question the reasoning set out in paragraph 36 above, also compared, in examining the similarity of the services at issue, the services covered by the earlier mark, on the one hand, and, on the other hand, all the services in Class 36, including the services of ‘financial consultancy’ and ‘financial information’.
38      Consequently, the applicant’s declaration of 13 September 2016 seeking to extend the protection of the contested mark to the services of ‘financial consultancy’ and ‘financial information’ does not affect the outcome of the present case, as EUIPO correctly stated in its letter to the Court of 15 November 2016, since those two categories of services had already been taken into account by the Board of Appeal. Moreover, it must be stated that the applicant, which was requested by the Court to express a view on the effect of its declaration of 13 September 2016 and on EUIPO’s letter of 15 November 2016, for the purposes of the present proceedings, did not submit any observations.
39      In view of those considerations, the Board of Appeal was right in finding that the services of ‘insurance’ covered by the contested mark and the ‘financial services’ covered by the earlier mark were similar. Furthermore, as regards the other services in Class 36 covered by the contested mark, the Board of Appeal was also right in finding, a finding which has not been contradicted by any specific argument on the part of the applicant, that those services were identical to the services in that class covered by the earlier mark.
The likelihood of confusion
40      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
41      In the present case, the Board of Appeal upheld, in paragraphs 32 to 35 of the contested decision, the Cancellation Division’s assessment that the signs at issue were similar overall, an assessment which has not been disputed. Furthermore, it stated that the services covered by the contested mark and the services covered by the earlier mark had correctly been found to be identical or similar. The Board of Appeal therefore found, in paragraphs 39 and 40 of the contested decision that, having regard to the interdependence between the factors taken into account and, inter alia, to the similarity of the signs, a likelihood of confusion between the signs on the part of the relevant public could not, in spite of the high level of attention of that public, be safely excluded.
42      The applicant contests that finding, but confines itself to stating that, ‘[h]aving incorrectly assessed the similarity between the Services and the services covered by the Earlier Rights, the Board’s global assessment of the likelihood of confusion must necessarily be incorrect because it has erred in its approach’.
43      However, as has been held in paragraph 27 above, the signs at issue are similar overall. Next, as is apparent from paragraph 39 above, some of the services covered by the earlier mark and those covered by the contested mark are identical and others are similar. That similarity must, moreover, be held to be normal in degree, as EUIPO correctly submits. Consequently, the Board of Appeal was entitled to find that a likelihood of confusion between the marks at issue could not be safely excluded.
44      That assessment is justified in spite of the relatively high level of attention of the relevant public. According to settled case-law, the fact that the level of attention of the relevant public is above average, since that public consists of professionals and end consumers of the goods or services at issue, is not sufficient to exclude the possibility that that public might believe that the goods or services at issue come from the same undertaking or, as the case may be, from economically-linked undertakings (see, to that effect, judgment of 16 December 2010, Longevity Health Products v OHIM — Gruppo Lepetit (RESVEROL), T‑363/09, not published, EU:T:2010:538, paragraph 33 and the case-law cited).
45      In those circumstances, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion between the marks at issue.
46      Since the applicant’s single plea in law alleging infringement of Article 53(1)(a) of Regulation No 207/2009, in conjunction with Article 8(1)(b) thereof, is unfounded, the action must be dismissed in its entirety, without there being any need to examine the admissibility of the applicant’s second head of claim, seeking to have the registration of the contested mark reinstated (see, by analogy and to that effect, judgment of 27 February 2015, LS Fashion v OHIM — Gestión de Activos Isorana (L’Wren Scott), T‑41/12, not published, EU:T:2015:125, paragraph 83 and the case-law cited).
Costs
47      Under Article 134(1) 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.
48      In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, the forms of order sought by EUIPO and the intervener must be granted and the applicant must be ordered to pay the costs incurred by EUIPO and the intervener in the proceedings before the Court.
49      The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, by analogy and to that effect, judgment of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 98 and the case-law cited).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders APAX Partners UK Ltd to pay the costs, including those necessarily incurred by APAX Partners Midmarket for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
GervasoniMadiseda Silva Passos
Delivered in open court in Luxembourg on 30 March 2017.
E. Coulon A. M. Collins
Registrar President
* Language of the case: English