JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

19 January 2012 ( *1 )

‛Community trade mark — Application for the Community figurative mark ‘justing’ — Earlier national figurative mark JUSTING — Seniority of the earlier national mark claimed — Signs not identical — Article 34 of Regulation (EC) No 207/2009’

In Case T-103/11,

Tiantian Shang, residing in Rome (Italy), represented by A. Salerni, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Mannucci, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 14 December 2010 (Case R 1388/2010-2), relating to a claim of seniority of the earlier national figurative mark JUSTING held by Mrs Tiantian Shang,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 16 February 2011,

having regard to the response lodged at the Court Registry on 7 April 2011,

having regard to the fact that no application for a hearing 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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

Background to the dispute

1 On 26 June 2009, the applicant, Mrs Tiantian Shang, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 figurative sign reproduced below:

3 The goods for which registration was sought fall within Classes 18 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: — Class 18: ‘Leather and imitations of leather, goods made of these materials and not included in other classes; animal skins and hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’; — Class 25: ‘Clothing, footwear, headgear’.

4 At the same time, the applicant lodged at OHIM, pursuant to Article 34 of Regulation No 207/2009, an application claiming the seniority of the earlier Italian figurative mark reproduced below, registered under number 1217303:

5 By decision of 1 June 2010, the examiner refused the claim of seniority of the earlier national mark.

6 On 22 July 2010 the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

7 By decision of 14 December 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, it took the view that the Community mark applied for and the earlier national mark were not identical inasmuch as their graphic representations are different, not only with regard to the different typographic characters of the word component ‘justing’, but also in respect of their figurative components and the position of the different constituent parts of the signs.

Forms of order sought

8 The applicant claims that the Court should: — annul the contested decision; — vary the contested decision and uphold her claim of seniority of the earlier national mark; — in the alternative, uphold her claim of seniority of the word component of the earlier national mark, namely the term ‘justing’; — order OHIM to pay the costs.

9 OHIM contends that the Court should: — dismiss the action; — order the applicant to pay the costs.

Decision

10 In support of her action, the applicant puts forward three pleas in law, alleging (i) breach and misinterpretation of Article 34 of Regulation No 207/2009, (ii) breach of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28), and (iii) that the earlier national mark is well known.

The first plea, alleging breach and misinterpretation of Article 34 of Regulation No 207/2009

11 The applicant criticises the Board of Appeal for having interpreted Article 34 of Regulation No 207/2009 restrictively. The Board of Appeal, she submits, interpreted that provision without taking account of its context, namely a system for the protection of marks against the likelihood of confusion with similar or identical marks. In that regard, the Board of Appeal ought to have taken account of the fact that the word component ‘justing’ of the Community mark and that of the earlier national mark are identical, and the fact that different typographic characters were used in the two marks cannot alter that conclusion. Furthermore, the goods covered by the two marks at issue are absolutely identical, a fact which the Board of Appeal did not call into question. Finally, with regard to the figurative components of the marks in question, their differences should be considered in the context of a ‘process of graphic development’ of the earlier national mark, which did not in any way detract from the ‘uniqueness of the mark’, which accordingly remained unchanged.

12 OHIM disputes the applicant’s arguments.

13 Article 34(1) of Regulation No 207/2009 provides: ‘The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.’

14 In order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community mark, three cumulative conditions must be fulfilled: the earlier national mark and the Community mark applied for must be identical; the goods or services covered by the Community mark applied for must be identical to, or contained within, those covered by the earlier national mark; and the proprietor of the marks at issue must be the same.

15 In the present case, it is not disputed that the goods covered by the Community mark applied for and those covered by the earlier national mark are identical. It is also common ground that the marks at issue are held by the same person.

16 As for the question whether the marks are identical, it should be recalled that a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer (Case C-291/00 LTJ Diffusion [2003] ECR I-2799, paragraph 54).

17 The condition that the sign and mark must be identical must be interpreted restrictively because of the consequences attaching to such identity. In the present case, under Article 34(2) of Regulation No 207/2009, the proprietor of the Community mark for which the seniority of the earlier national mark has been recognised will, if he surrenders the earlier mark or allows it to lapse, be able to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.

18 The Board of Appeal was therefore right to adopt a strict interpretation of Article 34(1) of Regulation No 207/2009.

19 In that regard, the applicant’s argument that the benefit of Article 34 of Regulation No 207/2009 should be extended to marks which are similar, just as the protection of marks against the likelihood of confusion also concerns marks which are similar, must be rejected. In contrast to the provisions of Regulation No 207/2009 designed to protect marks against the likelihood of confusion with similar or identical marks, Article 34 of Regulation No 207/2009 concerns only identical marks and contains no provision relating to similar marks. The Court cannot modify the wording of Article 34 of that regulation by substituting a condition of similarity for the condition that the marks must be identical.

20 In the present case, it is thus necessary to determine whether the Community mark applied for and the earlier national mark are identical.

21 The two figurative marks consist of a word component ‘justing’ and figurative components. It should be noted, as did the Board of Appeal in paragraph 12 of the contested decision, that the word component ‘justing’ is reproduced in different typographic characters in each mark. In the earlier national mark, the characters used are printing characters in a normal font, whereas, in the Community mark applied for, gothic characters have been used, conferring upon the term ‘justing’ a precise graphic and stylistic characteristic.

22 Furthermore, the figurative components of the two marks are different. In the earlier national mark, on either side of the verbal component, there feature the two symbols representing the two sexes, whereas, in the Community mark applied for, the figurative component, situated above the word component, is a ring surrounded by beams containing the letter ‘j’.

23 It must therefore be concluded that the Board of Appeal acted correctly in law in taking the view that the marks were not identical and that the claim of seniority of the earlier mark for the Community mark applied for therefore could not be upheld.

24 In that regard, the applicant’s argument that the differences between the marks are attributable to a ‘process of graphic development’ cannot call that finding into question. The marks could have been considered identical only if, in accordance with the case-law recalled at paragraph 16 above, the differences had been so insignificant that they would have gone unnoticed by consumers; this is not the case here, as the graphic representation of the two marks is very different.

25 In view of all of the foregoing, the first plea must be rejected.

The second plea, alleging breach of Directive 98/71

26 The applicant submits that, in order to determine whether the two marks must be considered identical, reference should be made to Article 4 of Directive 98/71, under which ‘[d]esigns shall be deemed to be identical if their features differ only in immaterial details’. According to the applicant, this means that two marks are identical when their essential components, that is to say, those enabling the public to identify them, are identical.

27 According to the applicant, it should be noted that, from the point of view of a ‘possible likelihood of confusion’, if one does not apply ‘unnecessary rigour’, the two marks should be regarded as a single mark, bearing in mind the fact that the goods, the verbal component and the proprietor are identical, the ‘de facto seniority’ and the ‘clear mixture and/or development of the signs which are absolutely compatible’.

28 OHIM disputes the applicant’s arguments.

29 It must first of all be noted that the provisions of Directive 98/71 do not apply in the present case, since they concern designs.

30 In any event, it should be noted that Article 4 of Directive 98/71 and the case-law of the Court of Justice mentioned at paragraph 16 above provide a similar definition of the concept of two designs or marks being identical.

31 Furthermore, the arguments put forward by the applicant in the context of the present plea essentially reproduce those advanced in the context of the first plea. The applicant seeks to demonstrate that the marks at issue are identical in their essential components, namely the word component ‘justing’, and that the differences are merely the result of a ‘process of graphic development’ which the Court must take into account in order to find that the marks are identical.

32 It must be emphasised that the applicant’s interpretation of the concept of signs being identical is incorrect in so far as, to further the cause of her application, it reduces the scope of that concept to the essential components of the signs, omitting the fact that signs can be identical only if their differences are minimal, which they are not in the present case, even though the word components of the marks are the same. Beyond that, it is sufficient to refer back to the Court’s assessment in the context of the examination of the first plea.

33 So far as concerns the applicant’s argument alleging that all graphic development of the logo of the mark will be prohibited if the Court does not find that there has been a development of the logo, this cannot be upheld. The object of the present case is not to call into question the possibility for the proprietor of a mark to develop it graphically, but to determine whether the applicant can claim seniority for the earlier national mark. The criteria applicable for that purpose have been established clearly in Article 34 of Regulation No 207/2009 and must be interpreted strictly, as has been established at paragraph 18 above. In the present case, one of the conditions under Article 34 of Regulation No 207/2009 for claiming seniority of the earlier national mark, namely the requirement that the marks be identical, is not met. The applicant’s claim therefore cannot succeed.

34 The applicant claims that an interpretation contrary to that which she puts forward would render any form of protection nugatory, inasmuch as it would allow anyone to register an identical mark with a minimal graphic difference, arguing that the fact that the graphic components do not coincide exactly constitutes a proper ground for finding that the mark is different and original.

35 This argument cannot but fail, since the scheme of protection under Regulation No 207/2009 allows the proprietor to obtain protection against the mark of a third party which is similar to his own, and since, according to well-established case-law, a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular between the similarity of the trade marks and that of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).

36 In the light of all of the foregoing, the second plea must be rejected.

The third plea, alleging that the earlier national mark is well known

37 The applicant submits that the ‘dissemination’ of the earlier mark should allow protection to be accorded to that mark independently of its registration.

38 The applicant states that she reserves the right to take action by way of an action for annulment against the person who registered the Community word mark JUSTING, on 11 May 2009, before her application for a Community mark but after the date of filing of her earlier national mark.

39 OHIM disputes the applicant’s arguments.

40 It should be pointed out, as did the Board of Appeal at paragraph 13 of the contested decision, that the fact the applicant wishes to take action against the person who registered the Community word mark JUSTING is not a relevant criterion in the context of a claim of seniority of an earlier national mark.

41 Furthermore, Article 34 of Regulation No 207/2009 establishes no link between the claim of seniority of an earlier national mark and the notoriety which that mark enjoys.

42 The third plea must therefore be rejected as ineffective.

43 Moreover, so far as concerns the applicant’s claim seeking to have upheld in part her claim of seniority in respect of the word component ‘justing’ of the earlier national mark, it must be noted that the possibility of relying on the seniority of a part of the earlier national mark is not provided by Article 34 of Regulation No 207/2009. As has already been pointed out, Article 34 of that regulation is subject to strict interpretation and the Court cannot, therefore, uphold such a claim.

44 Since none of the applicant’s pleas put forward in support of her heads of claim seeking annulment or variation has been successful, the action must be dismissed in its entirety.

Costs

45 Under Article 87(2) of the Rules of Procedure of the General 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, she must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds, THE GENERAL COURT (Fifth Chamber) hereby:

1. Dismisses the action;

2. Orders Mrs Tiantian Shang to pay the costs.

Papasavvas Vadapalas O’Higgins Delivered in open court in Luxembourg on 19 January 2012. [Signatures]

( *1 ) Language of the case: Italian.