JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
16 December 2009 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark GIORDANO – Earlier national word mark GIORDANO – Relative grounds for refusal – Likelihood of confusion – Partial refusal of registration – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑483/08,
Giordano Enterprises Ltd, established in F.T. Labuan (Malaysia), represented by M. Nentwig, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
José Dias Magalhães & Filhos lda., represented by S.M. João, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 July 2008 (Case R 1864/2007-2) relating to opposition proceedings between José Dias Magalhães & Filhos lda. and Giordano Enterprises Ltd.,
THE GENERAL COURT (Seventh Chamber),
composed of N.J. Forwood (Rapporteur), President, E. Moavero Milanesi and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 11 November 2008,
having regard to the response lodged at the Registry on 27 February 2009,
having regard to the fact that no application for a hearing to be arranged was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the case
1        On 14 September 2000, the applicant, Giordano Enterprises Ltd, filed a Community trade mark application 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 (now 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 in respect of which registration was sought is the word mark GIORDANO. The goods in respect of which registration of the trade mark was applied for are in Classes 18 and 25 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:
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials (as far as included in Class 18) particularly cases, bags, beach bags, handbags, holdalls, waist bags, pouches; suitcases, travelling bags and cases, suit carriers; valises, briefcases, portfolios, attaché cases, wallets, key cases and holders, passport holders, cheque book holders, luggage, purses, billfolds, money belts, key fobs, document holders, credit card cases and holders; folder, back packs, rucksacks, knapsacks, school bags, satchels, tote bags, shoulder bags, sport bags, athletics bags, book bags, carry-on bags, bags for money, duffle bags, shoulder bags; shoulder belts; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks, including canes, whips, harness and saddlery’;
–        Class 25: ‘Clothing, footwear, headgear’.
3        The application was published in Community Trade Marks Bulletin No 109/01 of 24 December 2001.
4        On 21 March 2002, Jose Dias Magalhaes & Filhos lda. (‘the other party’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against the registration of the published trade mark. In support of its opposition, the other party alleged a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was based on an earlier Portuguese trade mark No 322534, registered on 30 June 1997 for the word mark GIORDANO in respect of ‘footwear’ in Class 25.
5        The other party based its opposition on all the goods that are covered by its Portuguese registration and directed its opposition against all the goods covered by the applicant’s trade mark application.
6        By decision of 25 September 2007, the Opposition Division upheld the opposition in part and concluded that there was a likelihood of confusion in Portugal within the meaning of Article 8(1)(b) of Regulation No 40/94 insofar as the mark applied for covers the following goods: ‘goods made of leather and imitations of leather (as far as included in Class 18) particularly bags, beach bags, handbags, holdalls, waist bags, pouches; suit carriers, briefcases, portfolios, wallets, key cases and holders, passport holders, cheque book holders, purses, billfolds, money belts, key fobs, document holders, credit card cases and holders; folder, back packs, rucksacks, knapsacks, school bags, satchels, tote bags, shoulder bags, sport bags, athletics bags, book bags, carry-on bags, bags for money, duffle bags, shoulder bags; shoulder belts’ in Class 18 and ‘clothing, footwear, headgear’ in Class 25.
7        However, the Opposition Division dismissed the opposition insofar as the trade mark application covers goods that were found to be dissimilar to ‘footwear’, namely ‘leather, and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks, including canes, whips, harness and saddlery, suitcases, travelling bags, cases, attaché cases, valises and luggage’.
8        On 26 November 2007, the applicant filed an appeal with OHIM against the decision of the Opposition Division pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
9        By decision of 28 July 2008 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part. It annulled the decision of the Opposition Division to the extent that this decision had upheld the opposition for the goods ‘holdalls, suit carriers, briefcases, portfolios, wallets, billfolds, money belts, key cases and holders, passport holders, cheque book holders, key fobs, document holders, credit card cases and holders, folders, bags for money, duffle bags and shoulder belts’ in Class 18. The mark applied for was therefore allowed to proceed to registration in respect of those goods. However, the Board of Appeal dismissed the appeal insofar as it was directed against the Opposition Division’s decision rejecting the mark applied for in respect of the remaining goods, that is ‘goods made of leather and imitations of leather (as far as included in Class 18) particularly bags, beach bags, handbags, waist bags, pouches, purses, back packs, rucksacks, knapsacks, school bags, satchels, tote bags, shoulder bags, sport bags, athletics bags, book bags, carry-on bags, shoulder bags’ in Class 18 and ‘clothing, footwear, headgear’ in Class 25.
10      In substance, the Board of Appeal gave the following reasons in support of its decision:
–        In the light of the guidance set by the Court in Case T-443/05 El Corte Ingles v OHIM – Bolaños Sabri (PiraÑam diseño original Juan Bolaños) [2007] ECR II‑2579 (‘PiraÑam’), the Board of Appeal considered that the applicant’s goods in respect of which it upheld the opposition are either identical (‘footwear’) or similar to the other party’s ‘footwear’. This is because the similar goods have a common aesthetic function in that they jointly contribute to the external image (the ‘look’) of the consumer concerned. In addition, they can be purchased in the same outlets and are often marketed under the same brands as ‘footwear’.
–        By contrast, the Board of Appeal found that the remaining goods are not similar to the other party’s ‘footwear’ because they are not marketed through the same retail outlets and because there is no general trade practice which could lead consumers to find it usual for these goods to come from the same undertakings.
–        The identity of the trade marks at issue offsets the rather low degree of similarity found to exist between some of the goods in Classes 18 and 25, for which registration of the contested mark is sought, and the other party’s ‘footwear’. There is therefore a likelihood of confusion in Portugal in respect of those of the goods that have at least some degree of similarity with the other party’s ‘footwear’. On the other hand, there is no likelihood of confusion in respect of the remaining goods.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision insofar as it dismissed the applicant’s appeal;
–        order OHIM to bear the costs.
12      OHIM contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      The applicant puts forward two pleas in law in support of its action, alleging, firstly, infringement of Article 8(1)(b) of Regulation No 40/94 and, secondly, infringement of Article 42(3) of Regulation No 40/94 (now Article 41(3) of Regulation No 207/2009) in conjunction with Rule 15(2)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended.
First plea alleging infringement of Article 8(1)(b) of Regulation No 40/94
Arguments of the parties
14      According to the applicant, the Board of Appeal correctly concluded that the signs in question were identical but wrongly found that there was some degree of similarity between certain of the goods at issue. As regards those goods in Class 18 for which registration was refused by the Board of Appeal, listed in the last sentence of paragraph 9 above, the applicant contends that those goods, in essence certain leather and imitation leather bags, are not similar to ‘footwear’ in terms of their use, nor are they in competition with footwear since they cannot be used interchangeably with it. As regards the goods in Class 25, for which registration was applied for but refused by the Board of Appeal, the applicant argues that ‘clothing’ and ‘headgear’ are not similar to ‘footwear’ because they protect different parts of the human body and thus have a different use.
15      Finally, the applicant points out that although the trade marks at issue are identical, the earlier mark has only a low degree of distinctiveness because it is a word mark consisting of a common first name. The applicant claims there is consequently no likelihood of confusion in the present case.
16      OHIM argues that the Board of Appeal correctly found that certain of the goods for which the applicant applied to register its mark, both in Class 18 and in Class 25, are similar to the ‘footwear’ for which the earlier trade mark was registered. Moreover, since ‘Giordano’ is an Italian rather than a Portuguese name, the earlier trade mark possesses at least an average degree of distinctiveness, given that the relevant public is Portuguese. According to OHIM, even if the similarity between the goods is slight, it is offset by the fact that the signs at issue are identical and a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, therefore exists.
Findings of the Court
17      Under Article 8(1)(b) of Regulation No 40/94, 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 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.
18      According to settled case-law, the likelihood of confusion on the part of the public, defined as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, must be assessed globally, 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraphs 16 and 17, and Case T‑162/01 Laboratorios RTB v OHIM– Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 32).
19      In the present case, it is common ground that the Community mark applied for and the other party’s earlier Portuguese trade mark are identical. Moreover, since the goods at issue are everyday consumer goods, it is appropriate to endorse the Board of Appeal’s analysis, which has not been disputed by the applicant, to the effect that the relevant public in respect of which the likelihood of confusion falls to be assessed is made up of average Portuguese-speaking consumers who are reasonably well informed and reasonably observant and circumspect.
–       The comparison of the goods at issue
20      As regards the goods in Class 25 for which the applicant seeks registration of its trade mark, it challenges the Board of Appeal’s finding that ‘clothing’ and ‘headgear’ are similar to ‘footwear’ for which the earlier trade mark is registered. As the Court has held in previous cases, in view of the sufficiently close links between the respective purposes of ‘clothing’ and ‘footwear’, which are identifiable in particular by the fact that they belong to the same class, and the specific possibility that they can be produced by the same operators or sold together, it may be concluded that those goods may be linked in the mind of the relevant public (Case T-115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraphs 26 and 27; see also judgment of 10 September 2008 in Case T‑96/06 Tsakiris-Malla v OHIM – Late Editions(exé), not published in the ECR, paragraphs 29 and 30, and judgment of 8 March 2005 Case T‑32/03 Leder & Schuh v OHIM – Schuhpark Fascies(Jello Schupark), not published in the ECR, paragraph 50). That reasoning may be applied by analogy to ‘headgear’ and ‘footwear’ since ‘headgear’ also has the same basic nature and purpose as ‘footwear’, albeit in respect of a different part of the human body.
21      As the Board of Appeal found at paragraphs 37 and 38 of the contested decision, the goods in Class 25 at issue in the present case must therefore be regarded as similar within the meaning of Article 8(1)(b) of Regulation No 40/94, at least to a certain degree.
22      In respect of the goods in Class 18 for which the applicant seeks registration of its trade mark, the Board of Appeal observed in substance, firstly, that the goods listed in the last sentence of paragraph 9 above, essentially bags of different sorts, made of leather or imitations of leather, are often sold with goods in Class 25 at points of sale in both major retail establishments and more specialised shops and, secondly, that such bags are complementary to footwear in that they share a common aesthetic function by jointly contributing to the image of the consumer concerned.
23      The first of those observations directly echoes the case-law of the Court, to the effect that goods in Class 18, namely leather and imitation leather goods not included in other classes such as handbags and purses, are often sold with goods in Class 25, to which ‘footwear’ belongs, at points of sale in both major retail establishments and more specialised shops (PiraÑam, paragraph 10 above, paragraph 45, and Tsakiris-Malla, paragraph 20 above, paragraph 32). Moreover the Court emphasised, in those same judgments, that this is a factor which must be taken into account in assessing the similarity of such goods.
24      Although the applicant claims that the points of sale of footwear and bags are often different, it does not contest the observation that those items are sold in the same retail outlets, both specialised and general. In those circumstances, it is appropriate to hold that both the goods in Class 18 listed in the last sentence of paragraph 9 above and ‘footwear’ are, at least sometimes, sold in the same specialised retail outlets as well as in major retail establishments. That observation is relevant to the assessment of similarity between the goods at issue.
25      As regards the observation that the goods in Class 18 listed in the last sentence of paragraph 9 above are complementary to footwear in that they share a common aesthetic function, the Court observed in Case T‑150/04 Mulhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 35, invoked by the applicant in support of its arguments, that goods whose nature, purpose and method of use are different may be aesthetically complementary in the eyes of the relevant public, particularly in business sectors such as fashion. It further observed, at paragraph 36 of the same judgment, that in order to give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 40/94, this aesthetically complementary nature must involve a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use these products together (see, to that effect, Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraphs 60 and 62, and PiraÑam, paragraph 10 above, paragraphs 48 and 49).
26      Contrary to the applicant’s argument, that case-law, in particular TOSCA BLU (paragraph 25 above), does not require that use of one product must necessarily be ‘indispensable’ for the use of the other product in order for a finding of similarity to be made on the basis that the goods at issue are aesthetically complementary. In fact, the Court indicated that it was sufficient that the use of one product be ‘important’ for the use of the other.
27      In the present case, it is appropriate to observe that some consumers may perceive a close connection between ‘footwear’ in Class 25 and the goods in Class 18 listed in the last sentence of paragraph 12 above, on the basis that they are aesthetically complementary, since both categories of goods may be regarded as accessories and may contribute jointly to the external image of the consumer concerned. That observation provides an indication that the goods at issue may be considered to be similar, in the sense that one is important for the use of the other and customers may therefore think that the responsibility for the production of those goods lies with the same undertaking (see, to that effect, PiraÑam, paragraph 10 above, paragraphs 48 to 51).
28      However, the Court also held in TOSCA BLU (paragraph 25 above, paragraph 37) that the fact that the goods at issue have an aesthetically complementary nature, such as that referred to in the previous paragraphs, is not enough to establish similarity between those goods on its own.
29      In the present case, the Board of Appeal relied not only on the fact that the goods at issue were aesthetically complementary but also on the consideration, which the Court has also found to be valid in the present judgment, that both the goods in Class 18 listed in the last sentence of paragraph 9 above and ‘footwear’ are, at least sometimes, sold in the same specialised retail outlets as well as in major retail establishments. It is thus appropriate to hold, on the basis of those two mutually reinforcing considerations, that the Board of Appeal did not err in holding that those two categories of goods are similar within the meaning of Article 8(1)(b) of Regulation No 40/94, at least to a certain degree.
–       The likelihood of confusion
30      It is appropriate to examine first the applicant’s argument that the earlier mark has only a low degree of distinctiveness because it is a word mark consisting of a common first name.
31      It is certainly true that in sectors such as clothing and fashion, in which it is common to use marks consisting of patronymics, it may be assumed, as a general rule, that a very common name will appear more frequently than a rare name. Thus, consumers will not believe that there is necessarily an economic link between all the proprietors of marks containing the same name or surname (see, to that effect, SISSI ROSSI, paragraph 25 above, paragraph 83).
32      In the present case, however, the two word marks at issue are absolutely identical, which increases the likelihood that consumers might perceive the goods marketed under those marks as coming from the same source. Moreover, as OHIM points out, the applicant has not shown that the Italian first name ‘Giordano’ which makes up both trade marks is common in Portugal. That being so and since, as noted at paragraph 19 above, the relevant public is made up of average Portuguese-speaking consumers, it must be held that the earlier trade mark has at least an average degree of distinctive character per se.
33      In making an overall assessment of the likelihood of confusion in the present case, the Court considers that, although the goods covered by the two trade marks are similar only to a certain degree, that relatively limited level of similarity is offset by the fact that the two signs at issue are themselves identical. Thus, the Board of Appeal was right to decide that a likelihood of confusion exists between the earlier Portuguese mark, registered for ‘footwear’ in Class 25, and the Community trade mark which the applicant seeks to register both in respect of ‘clothing’ and ‘headgear’ in Class 25 and also in respect of the goods in Class 18 listed in the last sentence of paragraph 9 above.
34      It follows that the first plea must be rejected.
Second plea alleging infringement of Article 42(3) of Regulation No 40/94 in conjunction with Rule 15(2)(c) of Regulation No 2868/95
Arguments of the parties
35      The applicant observes that, pursuant to Article 42(3) of Regulation No 40/94 and Rule 15(2)(c) of Regulation No 2868/95, the notice of opposition must specify the grounds on which it is made with reference to the requirements of Article 8(1), (3), (4) and (5) of Regulation No 40/94.
36      The applicant further notes that as far as its request for registration of the trade mark GIORDANO for ‘footwear’ is concerned, the other party based its opposition and the Board of Appeal based its ruling on Article 8(1)(b) of Regulation No 40/94. According to the applicant, this was a clear case for Article 8(1)(a) of that regulation to apply, as both the goods and the signs in question are identical.
37      The applicant considers that since Article 8(1)(a) and Article 8(1)(b) of Regulation No 40/94 name two different grounds for opposition, it must be concluded that they are mutually exclusive. In refusing the registration of the trade mark applied for in circumstances where both the trade marks and some of the goods at issue were identical, the Board of Appeal took a decision that was outside the scope of the opposition and thus infringed Article 42(3) of Regulation No 40/94, in conjunction with Rule 15(2)(c) of Regulation No 2868/95.
38      OHIM argues that Article 8(1)(a) and Article 8(1)(b) of Regulation No 40/94 are not mutually exclusive and that the Board of Appeal adopted the contested decision solely on the basis of Article 8(1)(b) of that regulation. Thus, the Board of Appeal based its ruling only on the grounds raised by the other party in its opposition and did not infringe either Article 42(3) of Regulation No 40/94 or Rule 15(2)(c) of Regulation No 2868/95.
Findings of the Court
39      It is common ground between the parties that as regards the ‘footwear’ covered by the Community trade mark application, both the trade marks and the goods at issue are identical, with the result that the relative ground for refusal of the trade mark applied for, provided for by Article 8(1)(a) of Regulation No 40/94, was fulfilled in respect of those goods.
40      It is also common ground between the parties that the other party’s notice of opposition relied solely on Article 8(1)(b) of Regulation No 40/94. Moreover, the Board of Appeal based the contested decision on Article 8(1)(b) of Regulation No 40/94 alone and made no mention of Article 8(1)(a) of that regulation. In those circumstances, the applicant’s second plea must be interpreted as alleging that, since Article 8(1)(a) of Regulation No 40/94 is the only provision that could be applied in respect of identical trade marks and goods, the Board of Appeal implicitly, but necessarily, adopted the contested decision on the basis of that provision.
41      In that regard, the applicant’s contention, that since Article 8(1)(a) and Article 8(1)(b) of Regulation No 40/94 provide for two different grounds for opposition it must be concluded that they are mutually exclusive, should be rejected. As the Court has consistently held in the analogous context of absolute grounds for refusal under Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009), it does not follow from the existence of two distinct provisions setting out separate grounds for refusing a trade mark that there can be no overlap between those grounds (see, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 54 together with the case-law cited, and Case T-302/03 PTV v OHIM (map&guide) [2006] ECR II‑4039, paragraph 34).
42      Moreover, it is apparent from the very wording of Article 8(1)(b) of Regulation No 40/94 that this provision is capable of covering the situation where the trade mark applied for is identical with the earlier trade mark and the goods or services in respect of which registration is applied for are identical with the goods or services for which the earlier trade mark is protected, as well as the situation in which there is only similarity between the relevant trade marks and/or between the goods and services in question.
43      The fact that the situation where both the marks and the goods at issue are identical may fall within Article 8(1)(b) of Regulation No 40/94 as well as Article 8(1)(a) of that regulation does not render the latter provision ineffective. Article 8(1)(a) may usefully be applied in certain cases, particularly those where both the trade marks and all the goods at issue are identical, to simplify the assessment of an opposition, by dispensing with any need to make reference to a likelihood of confusion. Conversely, in cases where there is a dispute as to whether the trade marks and/or all the goods or services at issue are identical or merely similar, OHIM and its Boards of Appeal may validly decide to use Article 8(1)(b) of Regulation No 40/94 as the sole legal basis for their decisions. In any event, none of those considerations can affect the conclusion as to the scope of Article 8(1)(b), set out in the preceding paragraph, based on the clear and unambiguous wording of that provision.
44      It follows from the above, firstly, that the Board of Appeal, as it was entitled to, relied expressly and exclusively on Article 8(1)(b) of Regulation No 40/94 in the contested decision and, secondly, that the Board of Appeal did not rule on a matter outside the scope of the other party’s opposition and did not therefore infringe either Article 42(3) of Regulation No 40/94 or Rule 15(2)(c) of Regulation No 2868/95. That being so, the applicant’s second plea must be rejected.
45      Since both of the applicant’s pleas in law have been rejected, the present application must be dismissed in its entirety.
Costs
46      Under Article 87(2) of the Rules of Procedure of the 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.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Giordano Enterprises Ltd. to bear its own costs and to pay the costs incurred by the Office for Harmonisation of the Internal Market (Trade Marks and Designs).
Forwood
Moavero Milanesi
Schwarcz
Delivered in open court in Luxembourg on 16 December 2009.
[Signatures]
* Language of the case: English.