ORDER OF THE COURT (Sixth Chamber)

6 September 2016 ( )

(Appeal — EU trade mark — Article 181 of the Rules of Procedure of the Court of Justice — Appeal manifestly inadmissible or manifestly unfounded)

In Case C‑237/14 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 May 2014,

Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Wolter, M. Kefferpütz and A.K. Marx, Rechtsanwälte,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant at first instance,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, J.-C. Bonichot and E. Regan (Rapporteur), Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

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

Order

1 By its appeal, Lidl Stiftung & Co. KG asks the Court to set aside the judgment of the General Court of the European Union of 27 February 2014 in Lidl Stiftung v OHIM — Lídl Music (LIDL express) (T‑225/12, not published, EU:T:2014:94) (‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 March 2012 (Case R 2379/2010-1), relating to opposition proceedings between Lídl Music spol. s r.o. and Lidl Stiftung (‘the contested decision’).

Legal context

Regulation (EC) No 207/2009

2 Article 8(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) provides:

‘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.’

3 Article 15 of that regulation, headed ‘Use of EU trade marks’, provides in paragraph 1:

‘If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

(a) use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

…’

4 Article 42(2) and (3) of that regulation provides:

‘2. If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union.’

5 Pursuant to Article 166 of Regulation No 207/2009, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed, but references to the repealed Regulation are to be construed as references to Regulation No 207/2009.

Regulation No 2868/95

6 Entitled ‘Proof of use’, Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (‘Regulation No 2868/95’), provides, in paragraphs 3 and 4 thereof:

‘(3) The indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4.

(4) The evidence shall be filed in accordance with Rules 79 and 79a and shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of the Regulation.’

Background to the dispute

7 The background to the dispute, as set out by the General Court in paragraphs 1 to 15 of the judgment under appeal, may be summarised as follows.

8 On 9 April 2008, Lidl Stiftung filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation No 40/94.

9 Registration as a mark was sought for the following figurative sign:

10 On 23 September 2008, Lídl Music filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (corresponding to Article 41 of Regulation No 207/2009) to registration of that mark.

11 The opposition brought was based on, inter alia, the following earlier Czech figurative mark (‘the earlier mark’):

12 The grounds relied on in support of that opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (corresponding to Article 8(1)(b) of Regulation No 207/2009).

13 Following Lidl Stiftung’s request, Lídl Music produced various documents to prove genuine use of the earlier mark, within the meaning of Article 42(2) and (3) of Regulation No 207/2009.

14 By decision of 12 November 2010, the Opposition Division of EUIPO upheld that opposition in respect of all of the contested goods, on the basis of the earlier mark.

15 On 30 November 2010, Lidl Stiftung filed a notice of appeal with EUIPO against that decision of the Opposition Division.

16 On 21 March 2012, the First Board of Appeal of EUIPO (‘the Board of Appeal’) adopted the contested decision, by which it dismissed that appeal.

The procedure before the General Court and the judgment under appeal

17 By application lodged at the Registry of the General Court on 29 May 2012, Lidl Stiftung brought an action seeking the annulment of the contested decision.

18 In support of its action, Lidl Stiftung relied on three pleas in law, alleging, in essence, first, infringement of the combined provisions of Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95, on the ground that the Board of Appeal had erred in finding that there was genuine use for the purposes of those provisions; secondly, infringement of Article 15(1)(a) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of that regulation, on the ground that the Board of Appeal had erred in finding that the use of the earlier mark in a form which differed from the form in which it was registered constituted genuine use for the purposes of Article 15(1) of Regulation No 207/2009; and, thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009, on the ground that the Board of Appeal had erred in finding that there was a likelihood of confusion between the marks at issue.

19 By the judgment under appeal, the General Court dismissed the action in its entirety.

The form of order sought before the Court

20 By its appeal, Lidl Stiftung claims that the Court should:

– set aside the judgment under appeal;

– in the event that the appeal is declared well founded, annul the contested decision, in accordance with Lidl Stiftung’s requested form of order before the General Court, and

– order EUIPO to pay the costs relating to the proceedings before the General Court and before the Court.

21 EUIPO contends that the Court should dismiss the appeal in its entirety and order Lidl Stiftung to pay the costs incurred by EUIPO.

The appeal

22 Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

23 It is appropriate to apply that provision to the present case.

24 In support of its appeal, Lidl Stiftung puts forward three grounds of appeal.

The first ground of appeal, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95, in conjunction with Article 15(1) of Regulation No 207/2009

25 By its first ground of appeal, the appellant submits that the General Court failed to consider that the Board of Appeal based its findings relating to the genuine use of the earlier mark solely on material which, at most, provides only indications regarding the place, time and extent of the use of that mark, but does not furnish solid and objective evidence as to the nature of that use, even if considered together with the other evidence. It maintains that the General Court erred in law in holding that the Board of Appeal was right in finding that the invoices and the three undated photographs submitted by Lídl Music, only two of which photographs show the words ‘Lidl Music’, were sufficient to prove genuine use of the earlier mark. It takes the view that, during the proceedings, Lídl Music did not demonstrate that those photographs show the earlier mark as it was used on musical instruments in the Czech Republic during the relevant period. It submits that that lack of proof cannot be remedied by submitting the photographs together with some invoices, even if those invoices refer to both the relevant period and the relevant place.

26 It must be stated that, by the first ground of appeal, under the pretext of infringement of certain provisions of Regulation No 207/2009 and Regulation No 2868/95, the appellant seeks, in actual fact, as EUIPO correctly points out, to call into question the assessment of the evidence which the General Court carried out during its examination of the nature of use of the earlier mark, without alleging that there was any distortion of that evidence.

27 It must be borne in mind that it is apparent from Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union that an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (judgment of 17 March 2016 in Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 59 and the case-law cited).

28 Consequently, the first ground of appeal must be rejected as manifestly inadmissible.

The second ground of appeal, alleging infringement of Article 15(1)(a) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of that regulation

29 By its second ground of appeal, the appellant submits that the General Court erred in law in holding, in paragraph 53 of the judgment under appeal, that the Board of Appeal was right in finding that the use of the mark as shown in the photographs was not likely to alter the distinctive character of the earlier mark as registered and therefore met the requirements of genuine use of Article 15(1)(a) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) thereof.

30 The appellant maintains that, by proceeding in that manner, the General Court failed to consider that Article 15(1)(a) of Regulation No 207/2009 is an exception, which must, according to the appellant, be interpreted strictly. It submits that, in principle, Article 42(2) and (3) of that regulation in conjunction with Article 15(1) thereof require the mark cited in opposition to have been used in the form in which it was registered. It takes the view that it is only as an exception that Article 15(1)(a) of Regulation No 207/2009 provides that ‘use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ is, subject to certain conditions, regarded as use within the meaning of Article 15(1) of that regulation.

31 The appellant submits that, consequently, Article 15(1)(a) of Regulation No 207/2009 requires an assessment of each element of the earlier mark in the form in which it was registered, with regard to its impact on the distinctive character of that mark.

32 The appellant maintains that the General Court disregarded that requirement when it based its findings, in paragraph 52 of the judgment under appeal, on the incorrect assumption that ‘the figurative elements of the earlier mark, as registered, are limited to the stylistic presentation of the two word elements’, given that that mark contains a circle with a stylised ‘L’, which is additional to and separate from the word elements. It submits that by not assessing the impact of that element on the distinctive character of the earlier mark as registered, the General Court did not take all the elements of that mark into account. It takes the view that that element is not negligible or secondary in relation to the word elements, but has a relevant influence on the distinctive character of the earlier mark as registered, as a whole.

33 Furthermore, the appellant submits that the letter ‘M’, the representation of which is larger and has dots on its peaks, also has an impact on the distinctive character of the earlier mark as registered.

34 The appellant maintains that it is not disputed that the mark as shown on the photographs submitted does not contain any of those figurative elements of the earlier mark as registered.

35 Lastly, the appellant submits that, as regards composite trademarks, which are made up of word and figurative elements, the absence, in the used form of a mark, of a figurative element that influences the distinctiveness of the mark as registered must lead to an alteration in the overall distinctive character of that mark, even if the word elements appear in the mark as used. Otherwise, the distinctive character of a composite mark as registered would be assessed differently under Article 15(1)(a) of Regulation No 207/2009 and under Article 8(1)(b) of that regulation, whereas that regulation requires a consistent assessment of the distinctive character of the earlier mark.

36 EUIPO submits that the second ground of appeal is inadmissible since the appellant seeks to have the Court reassess the facts and evidence. It adds that that ground of appeal is, in any event, manifestly unfounded.

37 In the first place, in so far as the appellant alleges that the General Court failed to consider that Article 15(1)(a) of Regulation No 207/2009 is an exception, it must be held that that argument must be rejected as manifestly unfounded.

38 First of all, contrary to what the appellant suggests, it is apparent from paragraphs 42, 46 and 50 to 53 of the judgment under appeal that the General Court assessed the argument put forward by Lidl Stiftung at first instance — namely, that the figurative elements of the earlier mark in the form in which it was registered could not be classified as negligible, but had the effect of altering the distinctive character of the earlier mark — specifically for the purpose of establishing whether the conditions for the application of Article 15(1) of Regulation No 207/2009 were satisfied or not.

39 Secondly, in paragraph 52 of the judgment under appeal, the General Court held, in the context of its definitive assessment of the facts, that the figurative elements of the earlier mark, as registered, were limited to the stylistic presentation of the two word elements. According to that Court, those decorative elements did not play any significant role in the overall impression of the sign and had no inherent semantic content of their own which would lend the mark distinctive character or designate the goods concerned.

40 Lastly, the General Court concluded, in paragraph 53 of the judgment under appeal that those figurative elements were negligible and were not therefore capable of altering the distinctive character of the earlier mark.

41 Although it is true that, in paragraph 52 of the judgment under appeal, the General Court did not specifically list each of the figurative elements referred to in that paragraph, it is nevertheless apparent from an overall reading of paragraphs 42 to 53 of that judgment and, in particular, from paragraphs 42 and 46 thereof, in which the General Court referred to the arguments of Lidl Stiftung in that connection, that it regarded, implicitly, but necessarily, the circle containing the stylised letter ‘l’ as part of that stylistic presentation of the two word elements in the earlier mark.

42 The fact that the General Court’s assessment, in particular, the conclusion that it reached in paragraph 53 of the judgment under appeal, relates to all of the figurative elements of the earlier mark is also apparent from paragraph 76 of that judgment, in which the General Court held, inter alia, that the letter ‘l’, surrounded by a circle, constitutes one of the figurative elements of the earlier mark.

43 Moreover, the fact that the General Court arrived at a different conclusion from Lidl Stiftung as regards the conditions for the application of Article 15(1)(a) of Regulation No 207/2009 does not, in itself, show that that Court erred in law.

44 In the second place, inasmuch as Lidl Stiftung seeks to show that the figurative elements of the earlier mark have a decisive influence on the distinctive character of that mark as registered, it is sufficient to state that, by that line of argument, the appellant is seeking, in actual fact, to request that the Court reassess the facts and evidence without, however, showing, or even claiming, that there has been any distortion of those facts and that evidence. That line of argument must therefore be rejected as manifestly inadmissible.

45 It follows that the arguments set out in paragraph 35 of the present order must be rejected on the same grounds since they are based on the unproven premiss that those figurative elements of the earlier mark influence the distinctive character of that mark.

46 Consequently, the second ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

The third ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

47 By its third ground of appeal, the appellant submits that the General Court misinterpreted Article 8(1)(b) of Regulation No 207/2009 by holding, in paragraph 84 of the judgment under appeal, that the Board of Appeal was entitled to conclude that there was a likelihood of confusion, within the meaning of that provision, between the marks at issue. It maintains that, although the General Court correctly referred, in paragraphs 67, 70 and 71 of the judgment under appeal, to the relevant case-law in that regard, it did not take that case-law into account in its assessment of whether there is a likelihood of confusion in the present case.

48 The appellant takes the view that the General Court erred in law by holding, in paragraph 81 of the judgment under appeal, that the Board of Appeal’s finding that there was a similarity between the marks at issue because the dominant element in both of them was the word ‘lidl’ had to be confirmed, because that finding did not adequately take into account the other elements of the earlier mark.

49 The appellant maintains that, in assessing the similarity of the signs at issue, the General Court disregarded, inter alia, the fact that the assessment of that similarity cannot be carried out solely on the basis of the dominant word element, if the figurative element cannot be regarded as totally negligible. The appellant submits that, in that regard, the General Court did not, in addition, take into account that, as is apparent from paragraphs 42 to 44 of the judgment of 20 September 2007 in Nestlé v OHIM (C‑193/06 P, not published, EU:C:2007:539), the fact that an element is not negligible does not mean that it is dominant and, by the same token, the fact that an element is not dominant in no way means that it is negligible.

50 The appellant takes the view that the General Court therefore erred in holding, first, in paragraph 75 of the judgment under appeal, that the figurative elements of the mark in respect of which registration is sought will be perceived as a decorative frame in which the word ‘lidl’ is placed, on the ground that, during that Court’s examination of the visual appearance of that mark, it did not take into account the fact that that mark contains additional elements, namely the word ‘express’, which includes a red ‘x’, is placed in a yellow rectangle and has lines in front of it, and a red emphasised ‘i’ in the word ‘LiDL’. The appellant submits that, given that, according to settled case-law, the consumer normally perceives the mark as a whole and does not proceed to analyse its various details, the assessment of that mark must be based on the overall impression given by it.

51 The appellant maintains that, secondly, the General Court erred in holding, in paragraph 75 of the judgment under appeal, that consumers will be more affected by the word ‘lidl’ and will have to rely on that rather than the word ‘music’ or the abovementioned decorative framework in order to identify the commercial or industrial origin of the goods in question. It takes the view that the word ‘music’ is part of the earlier mark but not of the mark in respect of which registration is sought.

52 Thirdly, the appellant criticises the General Court for having held, in paragraph 76 of the judgment under appeal, that the figurative elements of the earlier mark do not influence the truly distinctive elements of the mark, since it is, according to the appellant, obvious that those elements, particularly the circle containing the stylised letter ‘L’, have such an influence. It maintains that the figurative elements in colour in the mark in respect of which registration is sought are also suitable for indicating the commercial origin of goods or services.

53 Fourthly and lastly, the appellant submits that the General Court erred in holding, in paragraph 80 of the judgment under appeal, that a conceptual comparison of the marks at issue could not be made. It takes the view that those marks are conceptually different since the words ‘LIDL MUSIC’ refer to the artistic result of using musical instruments and the words ‘LiDL express’ refer to rapidness.

54 The appellant maintains that an average Czech consumer will perceive the differences between the two marks at issue at the time of purchasing a musical instrument, not least on account of the different figurative elements of the earlier mark and the different composition of those marks.

55 EUIPO submits that the third ground of appeal is inadmissible since the appellant is attempting to obtain a new assessment of the facts and evidence from the Court. It maintains that that ground of appeal is, in any event, manifestly unfounded.

56 The argument set out in paragraph 51 of the present order must be rejected at the outset as manifestly unfounded. Although it is true that the General Court referred, in paragraph 75 of the judgment under appeal, to the word ‘music’ rather than to the word ‘express’, that is obviously a clerical mistake which cannot under any circumstances result in the setting aside of the judgment under appeal. In that regard, it is sufficient to point out that it is apparent from a reading of that judgment as a whole and, in particular, from paragraph 80 thereof, that the General Court was perfectly aware of the various components of the marks at issue.

57 As regards the arguments set out in paragraphs 48 to 50, 53 and 54 of the present order, it must be pointed out that, under the guise of arguments relating to errors of law allegedly made by the General Court, the appellant is requesting that the Court carry out a new assessment of the facts with a view to substituting that assessment for that carried out by the General Court.

58 First of all, it is apparent from the arguments summarised in paragraph 50 of the present order that the alleged errors of law referred to by the arguments summarised in paragraphs 48 and 49 of the present order could be confirmed only by means of an assessment of the distinctive character of the various elements of the marks at issue which differs from that carried out by the General Court. However, such an assessment is manifestly part of the assessment of the facts.

59 Secondly, as regards the line of argument referred to in paragraph 53 of the present order, the appellant is requesting that the Court confirm an error of assessment which was allegedly made by the General Court during the conceptual comparison of the signs at issue. First, such an assessment is part of the assessment of the facts and, secondly, that alleged error could, once again, be confirmed only by means of an assessment of the distinctive character of the various elements of the signs at issue which differs from that carried out by the General Court.

60 Lastly, as the arguments set out in paragraphs 52 and 54 of the present order also seek to have the Court hold that elements of the marks at issue have a distinctive character which differs from that which the General Court held them to have, all of those arguments must be rejected as manifestly inadmissible.

61 Consequently, the third ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

62 It follows from all of the foregoing considerations that the appeal must be dismissed.

Costs

63 Under Article 138(1) of the Rules of Procedure of the Court, which applies to appeal proceedings pursuant to 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. Since EUIPO has applied for costs to be awarded against Lidl Stiftung and the latter has been unsuccessful, it must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Lidl Stiftung & Co. KG shall pay the costs.

[Signatures]