JUDGMENT OF THE GENERAL COURT (Third Chamber)
17 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark AMBERTEC – Earlier EU word mark AMPERTEC – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Right to be heard – Article 94(1) of Regulation 2017/1001)
In Case T‑76/23,
DDP Specialty Electronic Materials US 8 LLC, established in Collegeville, Pennsylvania (United States), represented by G. Gibbons, lawyer, R. Minch and A. Bateman, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Taniobis GmbH, established in Goslar (Germany),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová‑Pelzl (Rapporteur) and D. Kukovec, Judges,
Registrar: A. Juhász‑Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 29 November 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, DDP Specialty Electronic Materials US 8 LLC, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 November 2022 (Case R 1988/2021‑4) (‘the contested decision’).
Background to the dispute
2        On 7 August 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign AMBERTEC, claiming a priority date of 6 August 2019 in connection with an application filed with the United States Patent and Trademark Office (USPTO).
3        The mark applied for designated goods in Class 1 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 corresponding to the following description: ‘Ion exchange resin; ion exchange resins for use in water treatment’.
4        On 2 December 2019, Taniobis GmbH, which was then known as H.C. Starck Tantalum and Niobium GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the earlier EU word mark AMPERTEC, filed on 15 January 2007 and registered on 4 February 2008 under the number 5613302 in respect of goods falling within Classes 1 and 6.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7        By letter dated 23 April 2020, the opponent submitted arguments in support of the opposition. Without providing any supporting evidence, it argued in particular that there was a ‘high similarity’ between ‘ion exchange resins for use in water treatment’, falling within Class 1, covered by the mark applied for and ‘chemicals for the manufacture of components of chemical installations’ and the ‘chlorides’, falling within that same class, covered by the earlier mark in so far as they ‘refer[red] to the manufacture of water purification systems’. In that regard, the opponent stated that ‘the chlorides are used in the production of anodes for water purification and electrolysis systems. They are used to provide the mandatory corrosion resistance to perform the purification in highly ion impurity containing water’.
8        By a letter dated 27 April 2020, EUIPO invited the applicant to comment on the arguments put forward by the opponent in support of the opposition.
9        By a letter dated 9 July 2020, following a request made by the applicant, EUIPO invited the opponent to provide evidence of genuine use of the earlier mark during the period from 6 August 2014 to 5 August 2019 inclusive.
10      By letter dated 21 August 2020, the opponent complied with that request, within the prescribed period. In its view, the evidence it submitted demonstrated genuine use of the earlier mark, during the relevant period, for the ‘chlorides’ and the ‘chemicals for the manufacture of microprocessors, displays, LEDs, corrosion-resistant layers and components of chemical installations’. Among the various pieces of evidence was, in Exhibit No 1, a declaration by the Head of Corporate Business Development and Communications and the Senior Patent Administrator at Taniobis, claiming that Taniobis is ‘one of the leading providers of innovative Tantalum and Niobium powders and chlorides in Germany and Europe, especially for miniaturisation, additive manufacturing technologies as, inter alia, microprocessors, memory chips, electrolysis and ocean water desalination facilities’ and that ‘some of [Taniobis’] top selling products [we]re AMPERTEC Chlorides and AMPERTEC Powders’. Moreover, Exhibit No 3 contained a screenshot of the website of customers of Taniobis with information on AMPERTEC products, in particular Ti-42Nb powders, indicating inter alia that tantalum pentachloride was used in ocean-water desalination facilities.
11      By a letter dated 11 September 2020, EUIPO invited the applicant to comment on the evidence of genuine use of the earlier mark produced by the opponent.
12      By letter of 16 March 2021, the applicant submitted its observations both on the evidence of genuine use of the earlier mark produced by the opponent and on the arguments put forward by the opponent in support of the opposition. First, the applicant argued that the evidence produced did not demonstrate genuine use of the earlier mark for any of the goods covered by that mark. Secondly, the applicant observed that the ‘ion exchange resin’ and the ‘ion exchange resins for use in water treatment’ covered by the mark applied for and the ‘tantalum pentachloride’ covered by the earlier mark (‘the goods at issue’) were neither identical nor similar. In that regard, it argued that none of its goods were ‘for use in water treatment’ and that ‘there [we]re no grounds whatsoever for them to be considered similar to the goods covered by the [earlier] mark to any degree as they [did] not coincide in nature, method of use or end user, and they [were] neither complementary nor in competition, meaning that none of the criteria outlined in [the judgment of 29 September 1998,] Canon [(C‑39/97, EU:C:1998:442), was] satisfied’.
13      On 28 September 2021, the Opposition Division found that evidence of genuine use of the earlier mark had been adduced, in respect of the goods falling within Class 1, only for ‘tantalum pentachloride, niobium pentachloride [and] wolfram hexachloride’ and, in respect of goods falling within Class 6, for ‘niobium, tantalum and tungsten [as well as] their alloys’. It therefore took account only of those goods in the examination of the opposition based on Article 8(1)(b) of Regulation 2017/1001, at the end of which it concluded that there was a likelihood of confusion, within the meaning of that provision, in respect of all the goods referred to in paragraph 3 above.
14      On 29 November 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
15      By the contested decision, the Board of Appeal dismissed the appeal and ordered the applicant to pay the costs.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
17      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs which it incurred during the oral part of the procedure.
Law
18      In support of its action, the applicant relies, in essence, on three pleas in law, the first alleging (i) infringement of Article 95 of Regulation 2017/1001 and (ii) infringement of the second sentence of Article 94(1) of Regulation 2017/1001, the second alleging infringement of its fundamental rights, and the third alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
19      EUIPO challenges the admissibility of the documents produced in Annex A.2 to the application, in support of the third plea, and in Annex A.3 to the application, in support of the first and second pleas. In accordance with the case-law, that evidence should be rejected as inadmissible, having been put forward for the first time before the Court, pursuant to Article 72(2) of Regulation 2017/1001 and Article 188 of the Rules of Procedure of the General Court. Moreover, EUIPO submits that the three pleas put forward by the applicant and, consequently, the action as a whole should be dismissed as unfounded.
20      In the interests of the proper administration of justice, the second complaint in the first plea, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001, and the second plea, alleging infringement of the applicant’s fundamental rights, which overlap, must be examined together.
The second complaint in the first plea, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001, and the second plea, alleging infringement of the applicant’s fundamental rights
21      By the second complaint in the first plea, the applicant argues that the Board of Appeal infringed the second sentence of Article 94(1) of Regulation 2017/1001, in so far as, in concluding, in paragraph 32 of the contested decision, that there was a low degree of similarity between the goods at issue, in the light of the commonalities between them which it had identified in paragraphs 31 and 32 of that decision, it found, in paragraph 29 of that decision and on the basis of Exhibit Nos 1 and 3 submitted by the opponent as evidence of genuine use of the earlier mark, that ‘tantalum pentachloride [was] used in water desalination facilities’. According to the applicant, the Board of Appeal was required, under that provision, to invite it clearly, in its letter of 11 September 2020, to submit its observations on the relevance, to the examination of the merits of the opposition, of the documents which the opponent had produced for the purpose of demonstrating genuine use of the earlier mark.
22      In addition, by the second plea, the applicant submits that, by not clearly inviting the applicant, in its letter of 11 September 2020, to submit observations on the relevance, to the examination of the opposition, of the documents produced by the opponent for the purpose of demonstrating genuine use of the earlier mark, the Board of Appeal also infringed the applicant’s right to be heard, the principle of equality of arms, the principle of respect for the rights of the defence and the right to a fair hearing, as enshrined in Article 6(1) of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, and in Article 47 of the Charter of Fundamental Rights of the European Union, as interpreted by the case-law.
23      In that regard, the applicant points out that, by the letter of 11 September 2020, EUIPO gave the applicant the opportunity to take a position on the evidence of genuine use of the earlier mark produced by the opponent, without stating that that evidence could also be used for the purposes of examining the relative ground for refusal of registration set out in Article 8(1)(b) of Regulation 2017/1001. Accordingly, without actually giving the applicant the opportunity to take a position, the Board of Appeal based its finding, in the contested decision, of the existence of a low degree of similarity between the goods at issue on a factual assessment which ran counter to the position which the applicant had expressed in its observations in reply of 16 March 2021. The goods at issue have different direct uses and therefore different direct users. For safety reasons, the tantalum pentachloride covered by the earlier mark is not used directly on the water treatment market as an additive. In that regard, the applicant refers to the safety data sheet for tantalum pentachloride, created on 7 March 2012 and revised on 24 December 2021, which it attached as Annex A.3 to the application, which demonstrates the harmfulness of that product when mixed directly with water.
24      First, EUIPO submits that the second complaint in the first plea, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001, should be rejected as unfounded. In support of its opposition based on Article 8(1)(b) of Regulation 2017/1001, the opponent put forward a coherent line of argument to the effect that the goods at issue were similar to a high degree, in so far as they all related to the manufacture of water purification systems, by providing the corrosion resistance necessary to purify water containing high ion impurity levels.
25      In that regard, EUIPO observes that, when producing documents seeking to demonstrate genuine use of the earlier mark, the opponent also stated and established, in Exhibit Nos 1 and 3, that the products covered by that mark were used in ocean-water desalination facilities. The applicant was given the opportunity to respond to that line of argument by letter of 27 April 2020 and, subsequently, by letter of 11 September 2020, to take a position on the evidence of genuine use of the earlier mark produced by the opponent, which it did in its observations in reply of 16 March 2021, in which it expressly took a position on the comparison between the goods at issue. The applicant again had the opportunity to express its view on that comparison in the statement of grounds in its action before the Board of Appeal of 27 January 2022. It follows that the applicant had ample opportunity to express its views on the relevance, with respect to the comparison of the goods at issue, of the evidence of genuine use of the earlier mark produced by the opponent, so that it is not entitled to rely, in that regard, on an infringement of the right to be heard. In any event, according to the case-law, that right extends only to the matters of fact or of law which form the basis for the decision, and not to the final position which the authority intends to adopt.
26      Secondly, EUIPO submits that the second plea should be dismissed, referring to the reasons given for dismissing the second complaint in the first plea, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001.
27      In that regard, as regards the alleged infringement of the second sentence of Article 94(1) of Regulation 2017/1001, it should be recalled that, under that provision, the decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision constitutes a specific application of the general principle of respect for the rights of the defence, enshrined, moreover, in Article 41(2)(a) of the Charter of Fundamental Rights, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision (see judgment of 4 May 2022, Sturz v EUIPO – Clatronic International (STEAKER), T‑261/21, not published, EU:T:2022:269, paragraph 61 and the case-law cited), but not to the final position which the authority intends to adopt (see judgment of 7 June 2023, Medex v EUIPO – Stein (medex), T‑419/22, not published, EU:T:2023:318, paragraph 18 and the case-law cited).
28      In the present case, it is apparent from a combined reading of paragraphs 28 to 32 and 50 of the contested decision that, substituting its own assessment for that of the Opposition Division, the Board of Appeal took the view, relying on the content of the Collins online dictionary and the Wikipedia online encyclopaedia and on Exhibit Nos 1 and 3 produced by the opponent as evidence of genuine use of the earlier mark, that there were relevant points of contact between the goods at issue which ‘[were] sufficient to conclude that there [was] at least a low degree of similarity between [those goods]’. The goods at issue ‘[had] coinciding purposes and methods of use, namely in the processes of water treatment, including water purification, demineralisation and desalination processes’ and ‘[could] be used in the same water treatment plants, thus having the same end users and the same or related distribution channels’.
29      Furthermore, as is apparent from the documents before the Court and as EUIPO acknowledged at the hearing, the Board of Appeal did not formally put the parties, in particular the applicant, in a position to put forward their views on the relevance, for the purposes of the comparison between the goods at issue, in the context of the examination of the relative ground for refusal of registration set out in Article 8(1)(b) of Regulation 2017/1001, of Exhibit Nos 1 and 3 produced by the opponent as evidence of genuine use of the earlier mark, whereas, in the contested decision, it took into account that evidence of its own motion for the purpose of substantiating its assessment that there was a low degree of similarity between those goods.
30      By failing, in the circumstances of the present case, to respect the rights of the defence granted to the applicant by the second sentence of Article 94(1) of Regulation 2017/1001, the Board of Appeal therefore vitiated the administrative proceedings before it with a procedural irregularity.
31      Indeed, it follows from the case-law that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has an effect on the ability of the undertakings involved in the dispute to defend themselves. Consequently, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the procedure could have had a different outcome if the rules had been observed (see judgments of 12 May 2009, Jurado Hermanos v OHIM (JURADO), T‑410/07, EU:T:2009:153, paragraph 32 and the case-law cited, and of 6 April 2022, Biogena v EUIPO – Alter Farmacia (NUTRIFEM AGNUBALANCE), T‑370/21, not published, EU:T:2022:215, paragraph 27 and the case-law cited).
32      In that regard, it should be noted that, in the context of the third plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the applicant submitted, as its principal argument, that the information contained in Exhibit Nos 1 and 3 was not sufficient to conclude that there was any similarity between the goods at issue. The goods at issue did not have coinciding purposes or coinciding direct methods of use in the various water treatment processes and were not in competition with each other. The ‘ion exchange resin’ and the ‘ion exchange resins for use in water treatment’ covered by the mark applied for are used directly on the water treatment market as an additive, whereas the ‘tantalum pentachloride’ covered by the earlier mark is used, on an upstream market, to manufacture tantalum-doped mixed metal oxide anodes (MMO anodes), which have corrosion-resistant conductive coatings and can be used in electrolysis on the downstream water treatment market, for example in ocean-water desalination facilities. There is no indication that the goods at issue could be or are used directly in the same water treatment plants or, more generally, in the same water treatment processes and, consequently, have the same end users and the same or related distribution channels. Professionals specialising in water treatment, in particular ocean-water desalination, are aware that ‘tantalum pentachloride’ cannot be used directly as a water treatment additive, given the harmfulness of that product when mixed with water, as demonstrated by EU legislation governing the marketing of hazardous substances. Moreover, there is nothing to indicate that tantalum-doped MMO anodes could be sold to professionals specialising in water treatment under the earlier mark. In support of the third plea, the applicant also produced, in Annex A.2 to the application, an affidavit of 15 February 2023 from one of its employees, who had been a chemical engineer specialising in ‘ion exchange resins’ for 33 years, setting out the technical reasons why, on the one hand, the goods at issue could not be regarded as having coinciding purposes and methods of use and, on the other, the anodes produced using tantalum pentachloride and, more generally, the electrodeionisation (EDI) process could not be used for ocean-water desalination.
33      In the light of the complaints thus expressed by the applicant, it cannot be ruled out that, had the applicant been able to put forward those complaints and the evidence referred to in paragraph 32 above in the opposition proceedings before the Board of Appeal, the latter would have refrained from finding the existence of a low degree of similarity between the goods at issue, in the absence of evidence to support that finding, and, consequently, denied any possibility of finding the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, so that the contested decision might have been different. Furthermore, it would have had the opportunity to produce, at the stage of the proceedings before EUIPO, an affidavit equivalent to that in Annex A.2 to the application, in an attempt to establish the absence of any similarity between the goods at issue, without subjecting itself to the ground of inadmissibility, on the basis of late production, relied on by EUIPO, before the Court, in respect of that annex (see paragraph 19 above).
34      It follows from all the foregoing that the procedural irregularity identified in paragraph 30 above may have had a decisive influence on the outcome of the opposition proceedings before the Board of Appeal, so that the second complaint in the first plea and the second plea must be upheld.
35      In the interests of the proper administration of justice, it is appropriate in the present case to proceed to consider the third plea.
The third plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
36      The applicant submits that, in concluding, in the contested decision, that there was a likelihood of confusion, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001, as interpreted in the case-law.
37      As its principal argument, the applicant argues that, in the light of the affidavit of one of its employees, dated 15 February 2023, which it attached in Annex A.2 to the application, and in the light of the inadequate nature of the evidence contained in Exhibit Nos 1 and 3 produced by the opponent and the case-law, the Board of Appeal should have concluded, in the contested decision, that there was no similarity between the goods at issue. Contrary to what the Board of Appeal claimed, the goods at issue did not have coinciding purposes or coinciding direct methods of use in the various water treatment processes and were not in competition with each other, for the reasons already set out in paragraph 32 above. Moreover, there is nothing to indicate that tantalum-doped MMO anodes could be sold to professionals specialising in water treatment under the earlier mark. There are no close links between the goods at issue, which enable them to be regarded as complementary within the meaning of the case-law, and therefore as similar.
38      In the alternative, the applicant submits that, even assuming that the goods at issue should be considered to be similar to a low degree, having regard to the existing case-law, the Board of Appeal erred in concluding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, having regard to the relevant factors in the present case.
39      EUIPO claims that the third plea should be dismissed.
40      As a preliminary point, EUIPO observes that, in the contested decision, the Board of Appeal did not base its finding of a low degree of similarity between the goods at issue on their complementarity, so that the applicant’s argument in that regard is ineffective.
41      Next, in the light of the documents before the Court, EUIPO argues that the Board of Appeal was justified in concluding, in paragraphs 31 and 32 of the contested decision, that there was a low degree of similarity between the goods at issue, on account of their coinciding purposes and coinciding direct methods of use, namely in water treatment processes, including water purification, demineralisation and desalination processes, and because they could be used in the same water treatment plants, with the result that they could also have the same end users and the same or related distribution channels. Moreover, in so far as it relied on EU legislation governing the marketing of hazardous substances, the applicant failed to refer to any specific provisions and, in any event, the legislation concerned is irrelevant in the present case.
42      Finally, EUIPO submits that the arguments relied on by the applicant to claim that, in the contested decision, the Board of Appeal wrongly found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, should be rejected.
43      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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. The likelihood of confusion includes the likelihood of association with the earlier mark.
44      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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks 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 marks 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).
45      For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
46      In paragraphs 17, 20 and 51 of the contested decision, the Board of Appeal found, sometimes departing from the assessments of the Opposition Division, that the relevant territory was that of the European Union and the relevant public was a specialised professional public whose degree of attention was high. In addition, in paragraphs 32 and 50 of the contested decision, it concluded that there was a low degree of similarity between the goods at issue. Furthermore, in so far as, in paragraphs 42 and 50 of the contested decision, it broadly confirmed the Opposition Division’s assessment that there was a high degree of visual and phonetic similarity between the opposing marks, it carried out an overall assessment of the likelihood of confusion in paragraphs 47 to 51 of that decision, at the end of which it concluded, in paragraph 52 of that decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
47      In this respect, it should be emphasised at the outset that the relevant public is a factor to be taken into account both at the stage of the comparison of the goods at issue and, where appropriate, of the overall assessment of the likelihood of confusion. It follows from the case-law that, in assessing the similarity of the goods or services concerned, account must be taken of all the relevant factors relating to those goods and services, such as their nature, their intended purpose, their method of use and their distribution channels (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited), but also of the existence of a relevant public in relation to those goods and services (see, to that effect, judgments of 15 July 2014, Łaszkiewicz v OHIM – Cables y Eslingas (PROTEKT), T‑18/13, not published, EU:T:2014:666, paragraph 38; of 21 November 2019, K.A. Schmersal Holding v EUIPO – Tecnium (tec.nicum), T‑527/18, not published, EU:T:2019:798, paragraph 60; and of 27 February 2020, Knaus Tabbert v EUIPO – Carado (CaraTour), T‑202/19, not published, EU:T:2020:75, paragraph 42), namely users capable of using both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38).
48      Furthermore, it should be borne in mind that, in opposition proceedings, the comparison of the goods or services concerned must relate to the wording of the goods or services covered by the marks in issue and not to the goods or services for which those marks are actually used (judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 30).
49      It is apparent from a combined reading of paragraphs 20, 30 and 31 of the contested decision that the Board of Appeal considered, in essence, that the ‘specific chemical products’ at issue, falling within Class 1, were aimed at the same relevant public, consisting of ‘a specialised professional public’ in ‘the field of water treatment’, ‘the processes of water treatment, including water purification, deminerali[s]ation and desalination processes’ or the operation of ‘water treatment facilities’.
50      In this respect, however, it is apparent from the file before EUIPO, in particular from the letter of the opponent of 23 April 2020 (paragraph 7 above) that ‘the chlorides[, including tantalum pentachloride covered by the earlier mark,] are used in the production of anodes for water purification and electrolysis systems. They are used to provide the mandatory corrosion resistance to perform the purification in highly ion impurity containing water’. In addition, it is apparent from that file that, while the earlier trade mark was registered, inter alia, for ‘chemicals used in industry, in particular [the] solid and liquid coating materials … for the manufacture … of anodes’, it was not registered for ‘anodes’ themselves. A fortiori, the latter were not among the goods for which genuine use of the earlier mark had, according to the Opposition Division, been demonstrated (see paragraph 13 above). Finally, in the present proceedings, the applicant submits, without being effectively contradicted by EUIPO, that the ‘tantalum pentachloride’ covered by the earlier trade mark is not used directly as an additive for the treatment of water, given the harmfulness of that product when mixed with water, but that it is used to manufacture tantalum-doped OMM anodes, the conductive coatings of which are resistant to corrosion and which can be used in electrolysis, for example in ocean-water desalination facilities.
51      It follows that the ‘tantalum pentachloride’, falling within Class 1, covered by the earlier mark is not sold directly to professionals specialising in the field of water treatment, but to anode manufacturers who, at the end of a transformation process, incorporate it into OMM anodes which they then sell, under their own trade marks, to those water treatment professionals for use, in particular, by the latter in electrolysis in ocean-water desalination facilities.
52      According to the case-law, the raw materials subject to a transformation process are essentially different from the finished products which incorporate, or are covered by, those raw materials, both by their nature and by their aim and intended purpose (judgment of 9 April 2014, EI du Pont de Nemours v OHIM – Zueco Ruiz (ZYTeL), T‑288/12, not published, EU:T:2014:196, paragraph 43; see also, to that effect, judgment of 3 May 2012, Conceria Kara v OHIM – Dima (KARRA), T‑270/10, EU:T:2012:212, paragraph 53).
53      Consequently, the ‘tantalum pentachloride’, falling within Class 1, covered by the earlier mark cannot be equated with the OMM anodes in which that product is incorporated, so that the fact that those anodes, together with the ‘ion exchange resin’ and ‘ion exchange resins for use in water treatment’, falling within the same class and covered by the trade mark applied for, may be used in the field of water treatment is not a relevant factor for the purposes of comparing the goods at issue.
54      By having, in essence, taken such a factor into account in order to conclude, in the contested decision, that there was a low degree of similarity between the goods at issue, making it possible, in view of the existence of the similarity otherwise found between the opposing marks and in accordance with the case-law cited in paragraph 45 above, to carry out, in the present case, an overall assessment of the likelihood of confusion, the Board of Appeal vitiated that decision by infringing Article 8(1)(b) of Regulation 2017/1001.
55      On those grounds, and without there being any need to rule on the admissibility of the documents produced in Annexes A.2 and A.3 to the application or on the merits of the first complaint, alleging infringement of Article 95(1) of Regulation 2017/1001, the contested decision should be annulled on the basis of the second complaint in the first plea, the second plea and the third plea.
Costs
56      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.
57      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. In addition, the applicant claimed that EUIPO should be ordered to pay the costs it incurred before the Board of Appeal. In that regard, it should 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. Accordingly, EUIPO should also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 November 2022 (Case R 1988/2021-4);
2.      Orders EUIPO to pay the costs, including the costs necessarily incurred by DDP Specialty Electronic Materials US 8 LLC for the purposes of the proceedings before the Board of Appeal of EUIPO.
Schalin
Škvařilová‑Pelzl
Kukovec
Delivered in open court in Luxembourg on 17 April 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.