ORDER OF THE COURT (Sixth Chamber)

27 October 2010 ( )

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) and (5) – Figurative mark Gallecs – Opposition by the proprietor of the national figurative marks GALLO, GALLO AZEITE NOVO, Azeite Novo and the Community figurative mark GALLO – Rejection of the opposition – Appeal in part clearly inadmissible and in part clearly unfounded)

In Case C‑342/09 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 17 August 2009,

Victor Guedes – Indústria e Comércio SA, established in Lisbon (Portugal), represented by B. Braga da Cruz, advogado,

applicant,

the other parties to the proceedings being:

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

defendant at first instance,

Consorci de l’Espai Rural de Gallecs, established in Gallecs (Spain),

party to the proceedings before the Board of Appeal,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, A. Rosas and U. Lõhmus (Rapporteur), Judges,

Advocate General: E. Sharpston,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Victor Guedes – Indústria e Comércio SA seeks to have set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 11 June 2009 in Case T‑151/08 Guedes – Indústria e Comércio v OHIM – Espai Rural de Gallecs (Gallecs) (‘the judgment under appeal’), by which that Court dismissed its action against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 16 January 2008 (Case R 986/2007-2), relating to opposition proceedings between itself and Consorci de l’Espai Rural de Gallecs (‘the contested decision’).

Legal framework

2 Under the heading ‘Relative grounds for refusal’, Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), applicable as at the date of filing of the application for registration, provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

3 Article 8(5) of Regulation No 40/94 is worded as follows:

‘Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, 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

4 On 19 March 2004, Consorci de l’Espai Rural de Gallecs filed an application to register the following figurative sign as a Community trade mark:

5 The goods and services in respect of which that registration was sought fall within Classes 29, 31 and 35 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, of which Class 29 contains, inter alia, edible oils and fats.

6 On 18 April 2005, the applicant filed a notice of opposition against the registration of the mark applied for in respect of the goods in Classes 29 and 31, based on the earlier figurative marks below:

– Community trade mark registration No 3 274 917 registered on 14 October 2004 for olive oil and edible oils and fats in Class 29 for the figurative sign reproduced below:

– Portuguese trade mark registration No 345 979 registered on 30 October 2000 for oils in Class 29 for the figurative mark reproduced below:

– Portuguese trade mark registration No 281 973 registered on 6 December 1993 for oils in Class 29 for the figurative mark reproduced below:

– Portuguese trade mark registration No 281 974 registered on 6 December 1993 for oils in Class 29 for the figurative mark reproduced below:

– Portuguese trade mark registration No 281 978 registered on 6 December 1993 for oils in Class 29 for the figurative mark reproduced below:

7 By decision of 27 April 2007, the Opposition Division of OHIM rejected the opposition before it in its entirety.

8 On 25 June 2007, the applicant filed a notice of appeal against that decision. By the contested decision, the Second Board of Appeal of OHIM dismissed that appeal.

The proceedings before the General Court and the judgment under appeal

9 By application lodged at the Registry of the General Court on 21 April 2008, the appellant brought an action against the contested decision relying on two pleas in law, alleging infringement, first, of Article 8(1)(b) of Regulation No 40/94 and, second, infringement of Article 8(5) thereof.

10 By the judgment under appeal, the General Court dismissed the action.

11 As regards the first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, the General Court held that the Board of Appeal had been correct to conclude that the comparison of the signs at issue had to relate to the mark applied for considered as a whole, contrary to the appellant’s claim that the core element of the mark applied for was its word element, namely, the word ‘gallecs’, and not its figurative element consisting of the figure of a church, both elements being inside a circle.

12 The General Court also held, at paragraphs 55 and 56 of the judgment under appeal, that there are significant differences between the signs at issue visually, phonetically and conceptually, so that they are not similar. After observing, at paragraph 57 of that judgment, that one of the conditions necessary in order to establish that there is a likelihood of confusion, namely that the marks at issue must be identical or similar, had not been fulfilled, the General Court found that there was no likelihood of confusion between those marks and that the appellant’s arguments based on the identical nature of, or similarity between, the goods and on the enhanced distinctiveness of the GALLO mark could not rebut that finding.

13 As regards the second plea in law in the application, alleging infringement of Article 8(5) of Regulation No 40/94, this was dismissed as wholly unfounded. In that connection, after recalling at paragraph 72 of the judgment under appeal that the three conditions for the application of that provision were cumulative, the General Court held that the failure to satisfy one of them was sufficient to render that provision inapplicable. The General Court therefore concluded, at paragraphs 73 and 74 of that judgment, that since the marks at issue were not similar, the first of those three conditions was not satisfied and that there was therefore no need to examine the other conditions laid down by that provision.

Forms of order sought before the Court of Justice

14 By its appeal, the appellant claims that the Court should:

– set aside the judgment under appeal;

– refuse to register the mark applied for in relation to the goods in Classes 29 and 31 of the Nice Agreement, and

– order OHIM to pay the costs.

15 OHIM contends that the Court should:

– dismiss the appeal as inadmissible or, in the alternative, as unfounded, and

– order the appellant to pay the costs.

The appeal

16 In support of its appeal, the appellant relies on two pleas in law, alleging infringement, first, of Article 8(1)(b) of Regulation No 40/94 and, second, infringement of Article 8(5) thereof.

17 In support of its first plea in law, the appellant relies again on the same arguments which it put forward before the General Court, contesting the judgment under appeal on the ground that the General Court erred in holding that there was no likelihood of confusion between the trade mark applied for and the earlier figurative marks.

18 As regards its second plea in law, the appellant submits, by referring, first, to the decisions of the Opposition Division and the Board of Appeal of OHIM in the present case and, second, to paragraphs 58 and 59 of the judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM, that only one of the three conditions laid down in that provision needs to be met in order for the provision to be applicable. In this case, the third condition, based on the likelihood 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 trade mark, is fulfilled.

19 Under Article 119 of the Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part.

The first plea in law

20 In accordance with the second subparagraph of 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 is to be limited to points of law. The General Court thus 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 does not, save where they distort the facts or evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22, and the order of 9 July 2010 in Case C-461/09 P Wellcome Foundation v OHIM, paragraph 21).

21 An appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the contested judgment, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court, amounts in reality to no more than a request for re-examination of the application submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (see, inter alia, Case C-352/98 P Bergaderm and Goupil v Commission [2000] ECR I-5291, paragraphs 34 and 35, and the order in Case C-26/10 P Hansen v Commission [2010] ECR I-0000, paragraph 8).

22 It must be stated that, in the present case, while claiming to submit pleas in law to the Court, the appellant confines itself to reproducing the same arguments submitted to the General Court, without however indicating the grounds on which the latter had erred in law. Thus, the appellant is endeavouring to have the Court of Justice re-examine the factual assessment made by the General Court.

23 Consequently, since the appellant is not claiming that the facts or the evidence submitted to the General Court were distorted, the first plea in law raised by the appellant in support of its appeal must be rejected as clearly inadmissible.

The second plea in law

24 It is apparent from the appellant’s arguments that, by its second plea in law, it complains that the General Court erred in law in holding that Article 8(5) of Regulation No 40/94 was not applicable when the three conditions laid down therein, which are cumulative, are not fulfilled and that, consequently, the failure to satisfy one of them was sufficient to reject the plea in law alleging infringement of that provision. However, the appellant submits that that provision applies if only one of the three conditions laid down therein is fulfilled.

25 In that connection, it should be noted that, in order for Article 8(5) of Regulation No 40/94 to be applicable, the marks at issue must be identical or similar. Consequently, that provision is manifestly inapplicable where, as in the present case, the General Court rules out any similarity between the marks at issue (see, to that effect, Case C‑254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 68).

26 In addition, paragraphs 58 and 59 of the judgment in Ferrero Deutschland v OHIM, which are relied on by the appellant in support of its second plea in law, do not in any way support the appellant’s argument, since they relate to Article 8(1)(b) of Regulation No 40/94 and not to Article 8(5) thereof.

27 It follows that the second plea in law relied on by the appellant in support of its appeal must be rejected as clearly unfounded.

28 It follows from all of the foregoing that the appeal must be dismissed in its entirety as in part clearly inadmissible and in part clearly unfounded.

Costs

29 Under Article 69(2) of the Rules of Procedure, which applies to the procedure on appeal by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs and the appellant has been unsuccessful, the appellant must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1. The appeal is dismissed.

2. Victor Guedes – Indústria e Comércio SA shall pay the costs.

[Signatures]