62014CO0548_EN
Parties
Grounds
Operative part
Parties
In Case C‑548/14 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 26 November 2014,
Arnoldo Mondadori Editore SpA,
established in Milan (Italy), represented by G. Dragotti, R. Valenti, S. Balice and E. Varese, avvocati,
appellant,
the other parties to the proceedings being:
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent,
defendant at first instance,
Grazia Equity GmbH,
established in Stuttgart (Germany), represented by M. Müller, Rechtsanwalt,
intervener at first instance,
THE COURT (Third Chamber),
composed of M. Ilešič (Rapporteur), President of the Chamber, A. Ó Caoimh, C. Toader, E. Jarašiūnas and C.G. Fernlund, Judges,
Advocate General: N. Jääskinen,
Registrar: A. Calot Escobar,
having regard to the written procedure,
having regard to the decision taken, after hearing the Advocate General, to give a decision by reasoned order in accordance with Article 181 of the Rules of Procedure of the Court,
makes the following
Grounds
Order
1. By its appeal, Arnoldo Mondadori Editore SpA (‘AME’) asks the Court to set aside the judgment of the General Court of the European Union in Arnoldo Mondadori Editore
v OHIM — Grazia Equity (GRAZIA), T‑490/12, EU:T:2014:840 (‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 September 2012 (Case R 1958/2010-4) (‘the contested decision’), relating to opposition proceedings between AME and Grazia Equity GmbH (‘Grazia Equity’).
Legal context
2. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the filing date of the application for registration at issue, in the present case 8 April 2008, the provisions of substantive law applicable to the present dispute remain those of Regulation No 40/94.
3. Article 8 of Regulation No 40/94, entitled ‘Relative grounds for refusal’, the wording of which was reproduced without any amendment by Regulation No 207/2009, provided, in paragraphs 1 and 5 thereof:
‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
…
(b) 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.
…
5. Furthermore, upon opposition by the proprietor of an earlier trade mark …, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’
Background to the dispute and the contested decision
4. On 8 April 2008, Grazia Equity filed an application for registration of a Community trade mark with OHIM in respect of the word sign ‘GRAZIA’.
5. The services in respect of which that registration was sought are in Classes 35 and 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:
– Class 35: ‘Business consultancy, in particular business management and organisation consultancy, efficiency experts, professional business project management and checking (supervision) services for the planning and monitoring of business developments; business consultancy and advisory services; arranging of contracts, for others, for the providing of services’ and
– Class 36: ‘Financing services; brokerage of business investments with private equity; arranging contracts for the procurement of financial capital; financing consultancy, in particular financial consultancy with regard to company take-overs; financial business valuations; mergers and acquisitions, namely financial consultancy with regard to the purchase or sale of companies and company shares; capital investments; venture capital fund administration’.
6. On 16 September 2008, AME filed a notice of opposition to registration of the mark concerned. That opposition was based on numerous earlier trade marks which have been the subject of international and Community registration and registration in Italy, in particular the Italian figurative mark No 906507, registered on 3 September 2003 for goods and services in Classes 3, 9, 16, 18, 25 and 38 of the Nice Agreement (‘the earlier figurative mark’), corresponding to the following sign:
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7. That opposition related to all the goods and services in respect of which the earlier marks were protected. The most exhaustive list of the goods and services covered by the earlier marks is that covered by the earlier figurative mark and corresponds, for each of the Classes 3, 9, 16, 18, 25 and 38 of the Nice Agreement, to the following description:
– Class 3: ‘Perfumes and cosmetics, essential oils, hair dyes and hair lotions, dentifrices, soaps, face and body creams, face powders, nail varnish, mascara, deodorants for personal uses, toiletries, cosmetic preparations for slimming purposes, detergents and preparations for cleaning and polishing’;
– Class 9: ‘Electric and electronic apparatus, scientific instruments, radio sets, photographic, optical, measuring, signalling and teaching apparatus; software preinstalled on electronic cards or computers, desktop and portable computers, printers, modems, computer accessories, apparatus for recording, transmission or reproduction of sound, images and software, software downloaded onto computers using communications services, software pre-recorded onto tape, CD-ROMs, diskettes, software for management, control, diagnostics and analysis of computers and computer networks, cassettes, tapes, audio and video CD-ROMs, electronic games apparatus whether or not pre-recorded for use with television sets, spectacles and accessories for spectacles’;
– Class 16: ‘Articles of paper, cardboard, office requisites, inkstands, pens, pencils, stationery, playing cards, printed matter, newspapers, magazines, periodicals, pamphlets, books, instruction manuals, reference guides, catalogues, journals, diaries, posters, photographs, adhesive labels and printed matter, teaching material’;
– Class 18: ‘Goods made of leather, skins and imitations of leather and skins, bags, handbags, travelling bags, trunks, suitcases, coin-purses, document holders, key-cases of leather and skins, umbrellas’;
– Class 25: ‘Apparel for men, woman and child, dresses, shirts, trousers, shorts, jackets and greatcoats, shirts, T-shirts, jerseys, pullovers, sweatshirts, swimsuits, belts, hats, scarves, ties, gloves, shoes’, and
– Class 38: ‘Telecommunications services, radio and television broadcasting, in particular direct satellite radio broadcasting whose signal can be rebroadcast from television aerials via cable and tertiary radio and television transmitters or by means of online services via data transmission or computer networks, cellular telephone communication, communications by computer terminals, computer-aided transmission of messages and images, electronic mail, information about telecommunications, electronic bulletin boards, electronic transmission of data and documents by computer, distribution (transmission) of data and mail by electronic means, news and information agencies and press agencies’.
8. On 10 August 2010, the Opposition Division of OHIM rejected that opposition, concluding, in essence, first, that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 40/94 inasmuch as all the goods and services covered by the marks at issue were different. Secondly, it rejected the opposition based on Article 8(5) of Regulation No 40/94, on the ground that AME had not established that use of the mark in respect of which registration is sought would take unfair advantage of or be detrimental to the distinctive character of the earlier mark.
9. On 8 October 2010, AME filed a notice of appeal with OHIM against the Opposition Division’s decision.
10. By the contested decision, the Fourth Board of Appeal of OHIM (‘the Board of Appeal’) dismissed AME’s appeal. First, in so far as the opposition was based on Article 8(1)(b) of Regulation No 40/94, the Board of Appeal took the view that, inasmuch as the goods and services covered by the marks at issue were different, there was no likelihood of confusion, regardless of how similar the signs were or of the reputation of the earlier figurative mark. Secondly, in so far as the opposition was based on Article 8(5) of that regulation, the Board of Appeal found, in essence, that AME had not proved that the earlier figurative mark had a reputation and also took the view that there was no link between the goods and services covered by the marks at issue.
The procedure before the General Court and the judgment under appeal
11. By application lodged at the Registry of the General Court on 6 November 2012, AME brought an action seeking annulment of the contested decision inasmuch as, by that decision, the Board of Appeal had rejected its opposition.
12. In support of its action, AME put forward two pleas in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94 and of Article 8(5) of that regulation respectively.
13. As regards the first plea put forward, the General Court confirmed the decision of the Board of Appeal that there is no likelihood of confusion between the marks at issue. The General Court stated that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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. According to the General Court, in spite of the identity of those marks, the goods and services concerned are not simil ar, as they are different in terms of their nature, intended purpose and method of use.
14. As regards the second plea put forward, the General Court took the view that, for the purposes of the application of Article 8(5) of Regulation No 40/94, three conditions must be satisfied, namely, first, the marks at issue must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, thirdly, there must be a risk that the use without due cause of the trade mark in respect of which registration is sought would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. In that regard, the General Court held that, even though the signs at issue are identical and the sections of the public at which the goods and services covered by those signs are aimed overlap in part, there is no likelihood of a connection being made between them, as those goods and services are different in all respects; in particular, the images which they evoke bear no relation to each other, the earlier figurative mark does not have a particularly strong reputation, that mark has weak inherent distinctive character, and the relevant public is unlikely to confuse those signs. Consequently, the Board of Appeal was, according to the General Court, right to find that no link may be established between the marks at issue and that, therefore, the use of the mark in respect of which registration is sought is not likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark.
Forms of order sought by the parties to the appeal
15. AME claims that the Court should:
– set aside paragraphs 25 to 33 and 68 to 83 of the judgment under appeal;
– uphold its action against the contested decision or, in the alternative, refer the case back to the General Court, and
– order OHIM to pay the costs incurred at first instance and on appeal.
16. OHIM contends that the Court should:
– dismiss the appeal as inadmissible;
– in the alternative, dismiss the appeal as unfounded, and
– order AME to pay the costs.
17. Grazia Equity contends that the Court should dismiss the appeal in its entirety.
The appeal
18. Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court of Justice may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss that appeal in whole or in part.
19. It is appropriate to apply that provision to the present case.
20. In support of its appeal, AME relies on two grounds of appeal, the first alleging infringement of Article 8(1)(b) of Regulation No 40/94 and the second alleging infringement of Article 8(5) of that regulation.
Admissibility
21. OHIM submits, first, that, in accordance with Article 169(1) of the Rules of Procedure, the appellant’s head of claim seeking to have paragraphs 25 to 33 and 68 to 83 of the judgment under appeal set aside is inadmissible, since it does not refer to the operative part of that judgment, but to the examination of the evidence of reputation.
22. Article 169(1) of the Rules of Procedure provides that an appeal is to seek to have set aside, in whole or in part, the decision of the General Court as set out in the operative part of that decision.
23. In the present case, although it is true that the form of order sought by AME does not refer to the operative part of the judgment under appeal, it is clear from the terms in which the appeal is couched that it seeks to have that judgment partially set aside on account of infringements of Regulation No 40/94, as interpreted by the Courts of the European Union.
24. It follows that the lack of a reference, in the form of order sought, to the operative part of the judgment under appeal does not preclude the Court from deciding on the action to be taken concerning the dispute and cannot render the head of claim referred to in paragraph 21 of the present order inadmissible.
25. Secondly, OHIM submits that the appeal is inadmissible since the paragraphs of the judgment under appeal which form the subject-matter of the appeal refer to matters of fact and the appeal essentially does no more than reproduce the pleas in law and arguments previously submitted before the General Court.
26. In that regard, it must be held that the plea of inadmissibility put forward cannot be accepted.
27. That plea of inadmissibility does not relate to an aspect of the appeal which, as such, would affect the admissibility of the appeal. It is contended that the appeal is inadmissible in its entirety because of the particular way in which the grounds of appeal and arguments that it contains have been formulated, inasmuch as, by those grounds of appeal and arguments, AME is in fact contesting the factual assessments made by the General Court and not the distortions allegedly made by the General Court and is simply reproducing the pleas in law and arguments previously submitted before the General Court (see, to that effect, order in Sunrider
v OHIM, C‑142/14 P, EU:C:2015:371, paragraph 40).
28. However, OHIM’s line of argument as regards those points is formulated in a general manner and is in no way substantiated by a specific analysis of the grounds of appeal and arguments developed in the appeal that are allegedly inadmissible for the reasons given (see, to that effect, order in Sunrider
v OHIM, C‑142/14 P, EU:C:2015:371, paragraph 41).
29. Nevertheless, if, in examining the present appeal, it were to be found that certain grounds of appeal are directed, wholly or in part, against factual assessments made by the General Court or simply reproduce the pleas in law and arguments previously submitted before the General Court, those grounds of appeal would have to be rejected as inadmissible (see, to that effect, order in Sunrider
v OHIM, C‑142/14 P, EU:C:2015:371, paragraph 42).
The first ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 40/94
Arguments of the parties
30. The appellant claims that the General Court, in the context of examining whether Article 8(1)(b) of Regulation No 40/94 had been infringed, failed to have regard to the case-law of the Court relating to the complementarity of goods and services and to the ‘principle of interdependence’ and distorted the facts and evidence submitted in that regard by AME.
31. The appellant submits that it is apparent from that case-law that a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. It maintains that, in that regard, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks at issue.
32. AME takes the view that, in the present case, those marks are identical. Furthermore, it submits that, as regards the similarity between the goods and services at issue, it maintained, before the General Court, that many of the goods and services covered by its earlier mark substantially ‘interfere’ with the services covered by the mark in respect of which registration is sought. It maintains that financing and business consultancy services are usually offered with the aid of computers and software and involve the publication of news and bulletins, either in printed form or by electronic means, with the result that the former are indispensable or important for the use of the latter. AME submits that such an argument was distorted by the General Court.
33. Furthermore, it submits that, with reference to the relevant public, which, in its view, also plays a role in the overall assessment of the similarity of goods and services, the judgment under appeal is marred by a contradiction in the grounds of that judgment. It maintains that the General Court thus rejected, in paragraph 29 of the judgment under appeal, AME’s argument that the goods and services covered by the marks at issue are similar as AME and Grazia Equity have clients in common in the fashion sector, but held, in paragraph 75 of that judgment, that the sections of the public at which the goods and services covered by the marks at issue are directed overlap in part.
34. OHIM contends that the comparison of goods and/or services is a matter of factual assessment which, except in the case of a distortion of the facts, cannot be raised in an appeal.
35. It submits that, in any event, the General Court assessed all the arguments and evidence put forward by AME. First, it submits that the mere fact that computers or software covered by the earlier mark may be used in connection with the provision of the services covered by the mark in respect of which registration is sought is insufficient to establish a complementarity leading to a similarity. It maintains that the same applies to Grazia Equity’s activity of publishing information on its own services, which is not offered commercially to third parties and has nothing to do with the services covered by the earlier mark. Secondly, it submits that the argument that both of the undertakings concerned may have clients in common in the fashion sector is irrelevant for the purposes of the comparison of the goods and services, since it does not mean that the publics concerned would overlap for that reason. Thirdly, it submits that, as regards the argument that AME carries out activities identical to the contested services and Grazia Equity is active in fields covered by the earlier mark, the General Court pointed out that only the goods and/or services covered by marks at issue are relevant in opposition proceedings. Fourthly, it submits that the complaint alleging distortion of the facts or evidence is in no way substantiated.
36. Grazia Equity submits that the first ground of appeal is inadmissible. It takes the view that, in the judgment under appeal, the General Court undertook an overall assessment of the facts and arguments put forward by the parties. It maintains that, in its appeal, AME disputes the General Court’s statements and conclusions only by means of assertions which are contrary to them. It submits that, in that regard, the assessment as to whether the overlaps between the goods and services constitute complementarity and thus establish similarity constitutes an assessment of the facts, which cannot be reviewed by the Court in the context of an appeal. Grazia Equity takes the view that since AME has not alleged that there is any distortion, its first ground of appeal is inadmissible.
Findings of the Court
37. In the first place, AME submits that, in spite of some differences between the goods and services at issue, a similarity, at least in the sense of complementarity, could have been found to exist between software, computers and computer accessories, printed matter, pamphlets, and telecommunications services, on the one hand, and business consultancy and financing services on the other hand.
38. It must be borne in mind that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court therefore has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute a point of law which, as such, is open to review by the Court of Justice on appeal (see, inter alia, judgments in Calvin Klein Trademark Trust
v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 49, and Intra-Presse
v OHIM, C‑581/13 P and C‑582/13 P, EU:C:2014:2387, paragraph 38).
39. In that regard, it has already been held that the assessment of the similarities between the goods and services at issue is of a factual nature and, save where the evidence and facts are distorted, is not subject to review by the Court of Justice in the course of an appeal (see, to that effect, judgment in Waterford Wedgwood
v Assembled Investments (Proprietary) and OHIM, C‑398/07 P, EU:C:2009:288, paragraph 42).
40. In the present case, it must be stated that the General Court, in paragraphs 27 to 30 of the judgment under appeal, duly assessed the similarities between the goods and services at issue. Accordingly, by the argument mentioned in paragraph 37 of the present order, AME is, in essence, seeking to have the factual assessment which the General Court carried out as regards the similarities between those goods and services re-examined by the Court.
41. As regards the distortion invoked by AME, the Court has already held that, given the exceptional nature of a complaint of distortion, Article 256 TFEU, Article 58, first paragraph, of the Statute of the Court of Justice and Article 168(1)(d) of the Rules of Procedure provide, in particular, that an appellant must indicate precisely the evidence alleged to have been distorted by the General Court and show the errors of appraisal which, in its view, led to that distortion. Such distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and evidence (see order in Adler Modemärkte
v OHIM, C‑343/14 P, EU:C:2015:310, paragraph 43 and the case-law cited).
42. The fact, however, remains that the alleged distortion of the facts and evidence invoked by AME is in no way substantiated.
43. It follows that AME’s argument alleging that the goods and services at issue are complementary must be rejected as in part manifestly inadmissible and in part manifestly unfounded.
44. In the second place, as regards the alleged failure to have regard to the case-law of the Court relating to the complementarity of goods and services and to the ‘principle of interdependence’, it must be borne in mind that Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, a trade mark must 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. Such a likelihood of confusion includes the likelihood of association with the earlier trade mark.
45. The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That assessment 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 (judgments in Canon, C‑39/97, EU:C:1998:442, paragraph 17; and Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19; and order in Alecansan
v OHIM, C‑196/06 P, EU:C:2007:159, paragraph 22).
46. However, as the General Court correctly stated in paragraph 31 of the judgment under appeal, for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, it is still necessary, even where the trade mark applied for is identical to another mark, to prove that the goods or services in question are similar. That provision provides that a likelihood of confusion presupposes that the goods or services covered are identical or similar (see, to that effect, order in Alecansan v OHIM, C‑196/06 P, EU:C:2007:159, paragraph 24 and the case-law cited, and judgment in Waterford Wedgwood
v Assembled Investments (Proprietary) and OHIM, C‑398/07 P, EU:C:2009:288, paragraph 34). It is apparent from paragraphs 26 to 30 of the judgment under appeal that there is no such similarity.
47. Accordingly, AME’s argument that the General Court erred in law by failing to have regard to the case-law relating to the ‘principle of interdependence’ is manifestly unfounded. As the General Court correctly stated in paragraph 31 of the judgment under appeal, the simple fact that the goods and services covered by the marks at issue are not similar makes it possible to rule out any likelihood of confusion.
48. In the third place, as regards the alleged contradiction in the grounds by which the judgment under appeal is marred, with reference to the relevant public, it must be stated that it is based on a misreading of that judgment. It is true that, in paragraph 75 of that judgment, the General Court, in the context of its assessment of the likelihood of unfair advantage being taken of, or detriment caused to, the distinctive character or the repute of the earlier figurative mark, found that the sections of the public at which the goods and services covered by the marks at issue are aimed overlap in part, since, on the one hand, the fashion magazines covered by the earlier figurative mark are aimed at the general public and, on the other hand, the possibility could not be ruled out that other services covered by the mark in respect of which registration is sought, such as ‘financing services’, are also aimed at the general public. However, the General Court held, in paragraph 29 of the judgment under appea l, in the context of its assessment of the similarity of the goods and services in question, that the fact, which was not established, that some undertakings at which the services covered by the mark in respect of which registration is sought are aimed operate, like AME, in sectors connected with the fashion industry was not significant for the purpose of assessing the similarity of those goods and services. There cannot therefore be held to be any contradiction in the grounds of that judgment.
49. It follows from all of the foregoing considerations that the first ground of appeal must be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.
The second ground of appeal, alleging infringement of Article 8(5) of Regulation No 40/94
The first part of the second ground of appeal, alleging that the assessment in respect of the strength of the earlier mark’s reputation is incorrect
– Arguments of the parties
50. AME criticises the General Court for holding, in paragraph 68 of the judgment under appeal, that, although the earlier figurative mark enjoys a reputation in the relevant territory, that reputation cannot be regarded as strong. It submits that the General Court therefore erred in law in assessing a specific degree of reputation, which is not required for the purpose of the application of Article 8(5) of Regulation No 40/94.
51. It is true that AME acknowledges that the strength of the reputation may be relevant in the assessment of the condition that the later trade mark may take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark, since the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it. However, it submits that, in the course of that assessment, the General Court erred in not considering, for the purposes of assessing the reputation of the earlier mark, all the relevant factors of the case and all the evidence that it had provided.
52. OHIM maintains that, as the assessment of the evidence intended to show the alleged reputation of the earlier mark is a matter of fact, the argument alleging that that assessment is erroneous is inadmissible at the stage of the appeal. Furthermore, OHIM submits that the General Court applied the criteria established by the case-law in its assessment of the evidence and stated reasons for its conclusions. It takes the view that, given that AME has neither provided further explanations nor claimed that there was any distortion of the facts, the first part of the second ground of appeal is, in any event, unfounded.
53. Grazia Equity maintains that AME is attempting to have the Court substitute its own assessment of the facts for that of the General Court. It takes the view that, since AME has not alleged any distortion of the facts or evidence submitted to the General Court, the first part of the second ground of appeal is inadmissible.
– Findings of the Court
54. As the General Court correctly stated in paragraph 37 of the judgment under appeal, it is apparent from the wording of Article 8(5) of Regulation No 40/94 that the application of that provision is subject to the cumulative conditions that, first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
55. As regards the examination of the second condition referred to in the preceding paragraph, the General Court did not, in paragraph 68 of the judgment under appeal, contrary to what AME suggests, in any way require a specific degree of reputation for the purposes of the application of Article 8(5) of Regulation No 40/94. In paragraph 68 of that judgment, the General Court confined itself to pointing out that the reputation of the earlier figurative mark was not strong and then, in paragraph 69 of the judgment under appeal, it upheld AME’s complaint that the Board of Appeal had erred in concluding that no proof that that mark has a reputation in the relevant territory had been furnished and held that that second condition was satisfied.
56. AME’s argument, which is due to a misreading of the judgment under appeal, must therefore be rejected as manifestly unfounded.
57. Moreover, as regards AME’s argument relating to the incorrect nature of the assessment of the strength of the earlier mark’s reputation, it must be borne in mind that the assessment of the reputation of an earlier mark constitutes, as OHIM submits, a matter of fact (order in You-Q
v OHIM, C‑294/12 P, EU:C:2013:300, paragraph 61), with the result that that argument is inadmissible at the stage of the appeal. As for AME’s calling into question of the General Court’s assessment of certain items of evidence relating to the reputation of the earlier mark and the strength of that reputation, it has been pointed out in paragraph 38 of the present order that the assessment of evidence does not, save where the evidence is distorted, constitute a point of law which, as such, is open to review by the Court of Justice on appeal. As it has not been claimed that there has been any distortion of the evidence, AME’s argument must be rejected as manifestly inadmissible.
58. The first part of the second ground of appeal must therefore be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.
The second part of the second ground of appeal, alleging an incorrect assessment of the inexistence of a link between the marks at issue
– Arguments of the parties
59. AME submits that the General Court, by concluding, in paragraph 78 of the judgment under appeal, that there was no likelihood of a connection being made between the marks at issue, erred in assessing some of the relevant factors, departing from the provisions of Regulation No 40/94 and the relevant case-law. First, it maintains that the marks at issue are identical. Secondly, it submits that, as regards the nature of the goods and services concerned by those marks, some services overlap since they are complementary. Thirdly, it takes the view that the relevant sections of the public overlap. Fourthly, it submits that the strength of the earlier mark’s reputation should be categorised as medium to high. Fifthly, it maintains that the degree of the earlier mark’s distinctive character should also be categorised as medium to high. Sixthly, it submits that the application of Article 8(5) of Regulation No 40/94 does not require the existence of a likelihood of confusion on the part of the public. It takes the view that, in the light of those factors, the General Court should have concluded that a link between the marks at issue exists.
60. OHIM contends that the General Court applied the relevant case-law and that AME does not explain or provide reasons for its statement that the General Court, in its assessment of the factors which characterise a link between the marks at issue, failed to comply with the case-law or erred in law. It submits that the factual assessment of the factors taken into account and the conclusion which was drawn are matters of fact which may not be raised in an appeal. It takes the view that, in any event, AME’s complaint is also unfounded because the circumstances in the present case do not allow the conclusion that a link between those marks can be established.
61. Grazia Equity maintains that AME is, in essence, asking the Court to substitute its own assessment of the facts for that of the General Court, with the result that the second part of the second ground of appeal is inadmissible. It submits that, in any event, contrary to what AME submits, the General Court did not regard the criterion of a likelihood of confusion as relevant in the context of the examination of the existence of a link between the marks at issue, with the result that the second part of the second ground of appeal is unfounded.
– Findings of the Court
62. It must be pointed out that, as the General Court stated in paragraph 70 of the judgment under appeal, the infringements referred to in Article 8(5) of Regulation No 40/94, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, as a result of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see order in Japan Tobacco
v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 25 and the case-law cited).
63. The existence of such a link must be the subject of an overall assessment, taking into account all the factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue; the nature of the goods or services concerned by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and whether there is a likelihood of confusion on the part of the public (see order in Japan Tobacco
v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 26 and the case-law cited).
64. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark, within the meaning of Article 8(5) of Regulation No 40/94 (see, to that effect, order in Japan Tobacco
v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 27 and the case-law cited).
65. In the present case, it is apparent from paragraphs 73 to 78 of the judgment under appeal that the General Court took into account, for the purposes of assessing whether such a link existed, all the relevant factors referred to in paragraph 63 of the present order. Accordingly, in paragraph 73 of the judgment under appeal, the General Court found that the signs at issue are identical. In paragraph 74 of that judgment, it pointed out that the goods and services covered by the marks at issue are different in every respect. In paragraph 75 of that judgment, it found that the sections of the public at which the goods and services covered by the marks at issue are aimed overlap in part. In paragraph 76 of the same judgment, the General Court found, with regard to the strength of the earlier figurative mark’s reputation and distinctive character, that it was not possible, on the basis of the evidence adduced by AME, to regard that mark as having a strong reputation or to call into question the Board of Appeal’s finding that the earlier figurative mark has weak distinctive character. Lastly, in paragraph 77 of the judgment under appeal, the General Court referred to its finding that any likelihood of confusion had to be rejected. The General Court concluded that, even though the signs at issue are identical and the sections of the public at which the goods and services covered by those signs are aimed overlap in part, there is no likelihood of a connection being made between them.
66. AME’s argument that the General Court, in paragraph 77 of the judgment under appeal, failed to comply with the case-law according to which implementation of the protection conferred by Article 8(5) of Regulation No 40/94 does not require the existence of a likelihood of confusion, is the result of a misreading of that judgment since the General Court in no way imposed such a requirement, but simply pointed out, by reference to paragraph 32 of that judgment, that there was no such likelihood of confusion in the context of its overall assessment, in accordance with the case-law referred to in paragraph 63 of the present order, of whether there was a link between the marks at issue.
67. As regards AME’s calling into question of the General Court’s assessment of each of the cumulative conditions referred to in paragraph 54 of the present order, it must be pointed out that, in so doing, the appellant calls into question the General Court’s factual assessments relating to the nature of the goods and services concerned by the marks at issue, the relevant sections of the public at which those goods and services are aimed, the strength of the earlier mark’s reputation and the distinctive character of that mark, but does not, however, put forward any error of law which would mar the judgment under appeal.
68. As has been pointed out in paragraph 38 of the present order, the appraisal of the facts and the assessment of the evidence do not, save where the facts or evidence are distorted, which is in no way alleged in the present case, constitute a point of law which, as such, is open to review by the Court of Justice on appeal.
69. The second part of the second ground of appeal must therefore be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.
The third part of the second ground of appeal, alleging that there was no assessment of unfair advantage or detriment
– Arguments of the parties
70. AME submits that it is true that, according to the case-law, the existence of a link between the goods and services and between the marks at issue may establish that there is ‘interference’ for the purposes of Article 8(5) of Regulation No 40/94. However, the conditions for the application of that provision do not include the existence of such a link. AME maintains that the General Court should therefore have based its assessment, in the first place and mainly, on the unfair advantage taken of the earlier mark or the detriment caused to that mark. In that regard, it submits that the risk of Grazia Equity taking unfair advantage of the distinctive character or the repute of the GRAZIA trade mark of which AME is the proprietor is very high, in particular with regard to financial services.
71. AME submits that, in the judgment under appeal, the General Court therefore erred in failing to consider all the arguments relating to the likelihood that the later mark may take unfair advantage of or be detrimental to the earlier mark, on the sole ground that there is no link between the marks at issue.
72. OHIM maintains that, in that judgment, the General Court pointed out, in accordance with the case-law, that, in the absence of any link between the marks, the later mark was unlikely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark. It maintains that the other arguments submitted by AME have also been dealt with by the General Court and that that company has not identified any error of law or distortion of the facts in that judgment.
73. Grazia Equity submits that the question of whether there is an infringement of Article 8(5) of Regulation No 40/94 cannot be limited to the question of there being unfair advantage or detriment but requires the existence of a link in the mind of the public, with the result that the third part of the second ground of appeal is unfounded.
– Findings of the Court
74. As has been stated in paragraph 62 of the present order, the infringements referred to in Article 8(5) of Regulation No 40/94, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, as a result of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them.
75. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, judgments in Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 31, and Antartica
v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 44).
76. In the present case, the General Court stated, in paragraph 78 of the judgment under appeal, that, in the light of all the considerations set out in paragraphs 73 to 77 of that judgment, it found that there is no likelihood of a connection being made between the signs at issue, as the goods and services covered by those signs are different in all respects; in particular, the images which they evoke bear no relation to each other, the earlier figurative mark does not have a particularly strong reputation, that mark has weak inherent distinctive character, and the relevant public is unlikely to confuse the signs with each other.
77. In accordance with the case-law referred to in paragraph 75 of the present order, the General Court concluded, in paragraph 79 of the judgment under appeal, that, in those circumstances, it had to be held that, in the absence of any link that may be established between the marks at issue, the use of the mark in respect of which registration is sought is not likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier figurative mark.
78. It follows that the General Court did not err in law in holding, in paragraph 80 of the judgment under appeal, that it was not necessary, before considering whether such a link existed, to undertake an analysis as to whether use of the mark in respect of which registration is sought might confer an advantage or give rise to detriment or whether such an advantage or detriment existed.
79. It follows that the third part of the second ground of appeal must be rejected as manifestly unfounded.
80. In the light of all of the foregoing considerations, the appeal must be dismissed in its entirety.
Costs
81. Under Article 137 of the Rules of Procedure, which is applicable to the procedure on appeal pursuant to Article 184(1) thereof, a decision as to costs is to be given in the judgment or order which closes the proceedings. Under Article 138(1) of those rules of procedure, which is also applicable to the procedure on appeal by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82. Since only OHIM ha s applied for costs to be awarded against AME and AME has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by OHIM. Consequently, Grazia Equity must be ordered to bear its own costs.
Operative part
On those grounds, the Court (Third Chamber) hereby orders:
1. The appeal is dismissed.
2. Arnoldo Mondadori Editore SpA shall bear its own costs and pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
3. Grazia Equity GmbH shall bear its own costs.