JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

20 June 2017 ( )

(EU trade mark — Opposition proceedings — Application for EU word mark NSU — Earlier national word mark NSU — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009)

In Case T‑541/15,

Industrie Aeronautiche Reggiane Srl, established in Reggio Emilia (Italy), represented by M. Gurrado, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. Kunz, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Audi AG, established in Ingolstadt (Germany),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 July 2015 (Case R 2132/2014-2), relating to opposition proceedings between Audi and Industrie Aeronautiche Reggiane,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and K. Kowalik-Bańczyk (Rapporteur), Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 17 September 2015,

having regard to the response lodged at the Court Registry on 15 December 2015,

further to the hearing on 9 March 2017,

gives the following

Judgment

Background to the dispute

1 On 13 December 2010, the applicant, Industrie Aeronautiche Reggiane Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the word sign NSU.

3 The goods in respect of which registration was sought are in, inter alia, following the restriction made during the proceedings before EUIPO, Class 12 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 correspond to the following description: ‘Automobiles; Motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 240/2010 of 22 December 2010.

5 On 21 March 2011, Audi AG filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods in Class 12 initially covered by the trade mark application.

6 The opposition was based on the earlier word mark NSU, registered in Germany on 14 December 1918 under No 228036 for goods in Classes 7, 8 and 12 and corresponding, for each of those classes, to the following description:

– Class 7: ‘Machines, parts of machines’;

– Class 8: ‘Tools’;

– Class 12: ‘Land vehicles, air vehicles and water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, parts of vehicles’.

7 The grounds relied upon in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.

8 On 17 September 2013, at the request of the applicant, the opponent was invited by EUIPO to adduce evidence, in accordance with Article 42(2) and (3) of Regulation No 207/2009, that the earlier trade mark had been put to genuine use, in the five years preceding the publication of the EU trade mark application, in the Member State in which that mark was protected.

9 On 18 November 2013, the opponent produced evidence of use of the earlier trade mark. Among that evidence was, inter alia:

– a free licence agreement, dated 1985, between the opponent and its subsidiary, NSU GmbH, a company established in Neckarsulm (Germany), authorising the latter to make use of the trade mark NSU and of trade marks linked to it, accompanied by extracts from the commercial register of that subsidiary, extracts from its annual reports from between 2005 and 2015, examples of sales invoices for spare parts issued in 2005 and 2010 and the affidavit by M. T., managing director of that subsidiary between 1996 and 2012;

– printouts of screenshots from the website ‘trshop.audi.de’, one of which was dated 22 January 2010 and a number of others which were dated 12 November 2013;

– a licence agreement entered into between NSU and Zweirad-Einkaufs-Genossenschaft eG (‘ZEG’), a company established in Cologne (Germany), dated May 1996 and granting a licence in respect of the trade mark NSU and of trade marks linked to it for the production and distribution of bicycles, as well as various pieces of evidence relating to that agreement, namely printouts of screenshots from the online shop ‘www.ZEG.com’ and statements of ZEG’s royalty payments evidencing the production and sale, in accordance with that agreement, of several thousand bicycles during the years 2005 to 2010;

– a licence agreement entered into between NSU and NSU Quickly Ersatzteile, a company established in Friesenheim (Germany), dated July 2005, authorising the use of the trade mark NSU and of trade marks linked to it in order to ensure the supply of vehicles and spare parts bearing the trade mark NSU to interested consumers, as well as printouts of screenshots from the website ‘www.nsu-quickly.de’ showing the offer for sale of spare parts for NSU Quickly motorcycles, dated 12 November 2013;

– a licence agreement with Bucholtz, a company established in Vöhringen (Germany), dated August 2003, authorising the use of the trade mark NSU and of trade marks linked to it in order to ensure the supply of vehicles and spare parts bearing the trade mark NSU to interested consumers, as well as printouts of screenshots from the website ‘www.nsu-ro80.de’, belonging to that company, showing the offer for sale of, inter alia, vehicle parts and accessories for the NSU model Ro80 automobiles, dated 12 November 2013;

– a licence agreement with RoTECH Rotationskolbentechnik, a company established in Bad Soden (Germany), dated October 1990, authorising the provision of repair and restoration services in Germany for a number of types of rotary piston engines used in certain models of NSU automobiles, as well as the distribution and the sale of those motors worldwide.

10 By decision of 20 June 2014, the Opposition Division upheld the opposition in part and refused registration of the mark applied for in relation to certain goods in Class 12, initially covered by the trade mark application, and rejected the opposition for the remainder.

11 On 18 August 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision, in so far as it upheld the opposition in part.

12 On 16 October 2014, the applicant applied to the Board of Appeal of EUIPO to restrict the list of goods in Class 12 covered by the trade mark application and restricted those goods to those referred to in paragraph 3 above.

13 On 30 January 2015, the opponent submitted its observations and requested, pursuant to Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), that the Opposition Division’s decision be annulled with regard to the goods in Class 12 for which the opposition had been rejected.

14 By decision of 6 July 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the opponent’s ancillary appeal and dismissed the applicant’s primary appeal.

15 As regards the proof of genuine use of the earlier mark, the Board of Appeal found, in paragraphs 74 to 91 of the contested decision, that such use had been shown not only for ‘bicycles’ in Class 12, as had been found by the Opposition Division, but also for ‘parts of machines’ in Class 7 and for ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12. By contrast, the Board of Appeal stated that genuine use had not been proven by the opponent for ‘machines’ in Class 7 and ‘tools’ in Class 8. As regards the goods in Class 12, the Board of Appeal took the view that the evidence did not show genuine use of the earlier mark for ‘air vehicles and water vehicles’ and was very limited with regard to ‘land vehicles’ and ‘automobiles’.

16 As regards the likelihood of confusion, the Board of Appeal took the view, in paragraphs 97 to 116 of the contested decision, that the relevant public comprised both the general public, which has a slightly higher than average degree of attentiveness, and a specialised public, which has a high degree of attentiveness, in Germany. It found that the signs at issue were identical and that ‘parts of vehicles’ in Class 12 covered by the earlier mark were complementary to all the goods in Class 12 covered by the mark applied for and that, accordingly, the goods covered by the marks at issue were similar. It therefore concluded that there was a likelihood of confusion.

17 Consequently, the Board of Appeal annulled the Opposition Division’s decision in relation to all the goods in Class 12 for which the opposition had been rejected and upheld the opposition in relation to the goods in Class 12, as defined following the restriction imposed by the applicant, namely ‘automobiles; motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles’.

Forms of order sought

18 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO to proceed with the registration of the mark applied for;

– order the opponent to pay the costs, including those incurred in the proceedings before the Opposition Division and before the Board of Appeal of EUIPO.

19 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

20 At the hearing, the applicant limited its request for costs only to recoverable costs ‘according to the applicable provisions’ and the Court took formal note of that in the minutes of the hearing.

Law

21 In support of its action for annulment, the applicant raises two pleas in law, alleging, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 and, second, infringement of Article 8(1)(b) of that regulation.

The first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009

22 By the first plea in law, the applicant submits that the Board of Appeal was wrong to find that genuine use of the earlier mark had been shown not only with regard to ‘bicycles’ in Class 12, but also with regard to ‘parts of machines’ in Class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12.

23 EUIPO disputes the applicant’s arguments.

24 By virtue of Article 42(2) of Regulation No 207/2009, an applicant for an EU trade mark, against which opposition has been filed, may require proof that the earlier mark relied on in support of that opposition has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and on which the opposition is based, during the five years preceding publication of the application.

25 Pursuant to Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, proof of use must relate to the place, time, extent and nature of use of the earlier mark.

26 In that regard, it must be recalled that it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation and Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is sound commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 13 December 2016, Sovena Portugal — Consumer Goods v EUIPO — Mueloliva (FONTOLIVA), T‑24/16, EU:T:2016:726, paragraph 38 and the case-law cited).

27 There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 78 and the case-law cited).

28 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, Sunrider v OHIM — Espadafor (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).

29 In the present case, it is necessary to examine whether the Board of Appeal was right to take the view that the evidence presented by the opponent showed genuine use of the earlier mark in Germany between 22 December 2005 and 21 December 2010 (‘the relevant period’) with regard to ‘parts of machines’ in Class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12.

30 In that regard, in the first place, the applicant complains that the Board of Appeal based its assessment on evidence which was not authentic, in that it was not drawn up or authenticated by a notary. The applicant disputes, in particular, the authenticity of the extracts from NSU’s annual reports, the sales invoices for spare parts and all the printouts of screenshots from various websites submitted by the opponent (see paragraph 9 above).

31 That argument cannot be accepted since neither Regulation No 207/2009 nor Regulation No 2868/95 requires that the evidence of genuine use of the earlier mark be authenticated. In accordance with Rule 22 of Regulation No 2868/95, evidence of that use is to be filed in accordance with Rules 79 and 79a of that regulation and is, in principle, confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspapers, advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009.

32 In the second place, the applicant disputes the Board of Appeal’s assessment relating to the time and extent of the use of the earlier mark. To a lesser degree, the applicant also contests the assessment relating to the place of use of that mark.

33 As regards the time, place and extent of the use of the earlier mark, the Board of Appeal, in the contested decision, made the following observations.

34 First, as regards the time of the use of the earlier mark, the Board of Appeal took the view, in paragraphs 44 and 45 of the contested decision, that the use of that mark during the relevant period was confirmed by the invoices, the majority of which were dated within the relevant period, by the extracts from NSU’s annual reports from 2005 to 2010, by one of the opponent’s website extracts relating to 22 January 2010 and by the licence agreement entered into between NSU and NSU Quickly Ersatzteile, dated July 2005.

35 Secondly, as regards the place of the use of the earlier mark, the Board of Appeal took the view, in paragraphs 46 and 47 of the contested decision, that the use of that mark in Germany was clear from the use of the German language in the documents provided by the opponent, from the place where those documents had been drafted or the place in which the undertakings concerned were located according to those documents, as well as from the use of the domain name ‘.de’ by the websites concerned.

36 Thirdly and finally, as regards the extent of the use of the earlier mark, the Board of Appeal found, in paragraphs 51 to 55 of the contested decision, that that mark had been principally used by the opponent’s licensees, mainly by NSU, but also by NSU’s sub-licensees. That use, confirmed by a number of licence agreements — copies of which had been submitted by the opponent — confirmed a public and outward use of the earlier mark with the consent of the opponent. The Board of Appeal found, moreover, that the invoices and the extracts from NSU’s annual reports showed the performance of commercial business with a particular frequency, thus showing genuine use and not merely symbolic use of the earlier mark. The Board of Appeal noted that the relevant invoices had been issued for a total amount of around EUR 2 000 and that the sales carried out by NSU were for amounts varying between EUR 15 000 and EUR 228 000 with regard to Audi ‘spare parts’ and ‘spares to non-group entities’ in the period from 2006 to 2010, and between EUR 15 000 and EUR 25 000 with regard to ‘accessories to non-group entities’ in the period from 2009 to 2010. Finally, according to the Board of Appeal, the extent of the use was also corroborated by the affidavit by M. T., who had stated that the earlier mark had been put to genuine use in Germany during the relevant period for a variety of spare parts for NSU automobiles, such as gaskets, exhausts, gearbox parts, headlights and rear lights, bumpers, bearing shells, cylinders and engine parts.

37 It should be observed, at the outset, that it is clear from EUIPO’s file, and in particular from an extract from the commercial register and from a licence agreement provided by the opponent, that the opponent set up, in 1984, a subsidiary company called NSU GmbH, established in Neckarsulm. The object of the subsidiary was the continuation of the traditions of the former manufacturers NSU Motorenwerke AG and Audi NSU AUTO UNION AG within the field of their manufacturing business, in particular with regard to the rotary piston engine technology which they had developed, the sale and purchase of motor vehicles, the manufacture, purchase and sale of two-wheeled vehicles, as well as their spare parts and accessories, in relation to the commercial brand name NSU, the preservation and use of the commercial brand name NSU and the marketing of goods and services in relation to the commercial brand name NSU. For the purposes of achieving that object, the opponent granted its subsidiary, in 1985, a free licence with a right to consent to sub-licences for the use of the trade mark NSU as well as all other trade marks related to that mark and belonging to the opponent. That licence agreement remained in force until, following a restructuring within the Audi group, the business activities linked to the use of the NSU trade mark described above were conferred upon another subsidiary within the group in 2013.

38 As regards, first, the time of the use of the earlier mark, the applicant argues that the evidence accepted by the Board of Appeal, and referred to in paragraph 34 above, is not sufficient to prove use of the earlier mark during the relevant period.

39 That argument must be rejected since, first, NSU’s business activity reports, the dates of which fall between the years 2005 and 2010, contain NSU’s sales figures during those years and, in particular, the sales figures relating to spare parts and accessories sold to entities outside the Audi group, as well as the royalties received by NSU from its sub-licensees. Furthermore, the examples of the invoices provided by the opponent relate to dates which fall within the relevant period. It is necessary to recall in that regard that, apart from the date, those invoices contain, alongside the name of NSU, the inscription ‘Traditiongesellschaft der Audi AG’, three representations of the earlier mark in different styles and a schematic representation of a rotary piston engine. A number of spare parts for motor vehicles are also featured on those invoices, such as, for example, ‘NSU Prinz 4 running boards’, ‘NSU cylinder heads’ or ‘NSU crank bearing standards’. Thus, the extracts from NSU’s annual reports and the invoices issued by that company confirm that, during the years 2005 to 2010, NSU carried out business activities falling within the object of the company and consisting, in essence, of maintaining the traditions of the two vehicle manufacturers bearing the trade mark NSU and that it made commercial use of that mark through the sale of spare parts and accessories for those vehicles.

40 Second, it must be held that the extract from the opponent’s website, which comes from the archive of a website called ‘Audi Tradition Online Shop’ (http://www.trshop.audi.de), displays images of NSU vehicles, as well as images of spare parts and accessories for those vehicles, and it is clear that that website sought to enable the sale of those spare parts and accessories online. That extract is dated 22 January 2010 and constitutes additional evidence indicating that the opponent made commercial use of the earlier mark during the relevant period.

41 The documents referred to in paragraphs 39 and 40 above are, by themselves, sufficient to show that the opponent had made use of the earlier mark during the relevant period, either itself or through its subsidiarity, to whom it had granted a free licence for the use of that mark, and, accordingly, are sufficient to support the Board of Appeal’s finding on the use of the earlier mark during the relevant period. In those circumstances, the applicant cannot reasonably claim that the latter document to which the Board of Appeal made reference, namely the licence agreement with NSU Quickly Ersatzteile, was dated August 2005 and that nothing confirmed that it was applied beyond December 2005.

42 Regarding, secondly, the extent of the use of the earlier mark, the applicant argues, first, that the financial documentation produced by the opponent does not mention the earlier trade mark NSU, a fact which suggests that the incomes indicated on pages 3 and 5 of those documents submitted by the opponent are not linked to the marketing of the products bearing the trade mark NSU. Next, the applicant states that the number of invoices submitted by the opponent and the corresponding sales volume are insufficient to prove genuine use of the earlier mark and that those invoices do not prove that that mark was actually affixed to the goods to which it makes reference. Furthermore, the applicant states that the licence agreements which the Board of Appeal took into account in its assessment contain a start date which is before the relevant period and that there is no evidence that those agreements were still in force during that period. Finally, the printouts of screenshots from various websites produced by the opponent and showing various spare parts for NSU vehicles failed to establish the extent of the use since they were not dated and were not authentic.

43 In that regard, it must be noted, first, that the fact that the extracts from NSU’s annual reports do not refer to the earlier mark is not decisive in the present case, since, as the Board of Appeal correctly pointed out, those reports confirm the extent of the business activities of that company, which was established precisely for the sale of spare parts and accessories under the trade mark NSU.

44 Next, as regards the invoices, their small number and the relatively low amounts are explained by the fact that they were produced as an example. Assessed overall with the other evidence, in particular with NSU’s annual reports, they confirm that the sales carried out by that company had, as their object, spare parts and accessories for NSU vehicles.

45 Moreover, it must be recalled that, according to settled case-law, it is not possible to determine, a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use of an earlier right is genuine or not. A de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited). Thus, use of the earlier mark need not always be quantitatively large in order to be deemed genuine. The turnover and volume of sales of the goods achieved under the earlier trade mark cannot be assessed in absolute terms, but by taking account of other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the market concerned (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225 paragraph 42).

46 In the present case, the level of turnover achieved by the opponent and its licensees is explained by the very nature of the goods concerned, which are intended to be sold to a restricted group of customers, comprised of NSU vehicle users. Although the market on which the earlier mark is used is relatively restricted, such a market nevertheless does exist.

47 Finally, as regards the licence agreements provided by the opponent, it must be stated that the name of at least one sub-licensee, namely ZEG, as well as the amounts paid by that company as royalties, feature in all the extracts from NSU’s annual reports. That confirms that the licence agreement entered into with that company applied during the relevant period. The operation of that licence agreement, relating to the sale by ZEG of bicycles under the trade mark NSU, is also confirmed by the statements of the royalty payments containing, inter alia, the number of those bicycles sold by ZEG between 2005 and 2009 pursuant to that agreement. As regards the other sub-licensees, the sole fact that their names do not feature in NSU’s annual reports is not sufficient to find that they did not use the earlier mark commercially. In that regard, it must be noted that the opponent provided screenshots from the websites of those sub-licensees showing the offer for sale of spare parts and accessories for NSU vehicles (see paragraph 9 above).

48 As regards, thirdly, the place of use of the earlier mark, contrary to that which was argued by the applicant, the evidence relied upon by the Board of Appeal proves to the requisite legal standard that that mark was used in Germany. All the documents which comprise the evidence of genuine use filed by the opponent are drafted in German, NSU and its commercial partners, with whom it had entered into sub-licence agreements, all have their registered offices located in Germany and the websites from which the opponent provided extracts bear the domain name ‘.de’.

49 It follows from the foregoing that the Board of Appeal was right to find that genuine use of the earlier mark had been shown both for ‘bicycles’ in Class 12 and ‘parts of machines’ in Class 7, and for ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12.

50 Therefore, the first plea in law must be rejected.

The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

51 By the second plea in law, the applicant submits that the goods covered by the earlier mark and the goods covered by the mark applied for are not similar and that, consequently, the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 is excluded in the present case.

52 EUIPO disputes the applicant’s arguments.

53 Article 8(1)(b) of Regulation No 207/2009 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 trade mark.

54 The risk that the public might 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 signs 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 signs 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).

55 In assessing the similarity between the goods and the services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

56 Goods or services which are complementary are those with a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

57 In the present case, the parties agree that the marks at issue are identical. By contrast, the applicant takes the view that the Board of Appeal was wrong to find that the goods covered by the marks at issue were similar.

58 With regard to the similarity of the goods, in paragraphs 110 and 111 of the contested decision, the Board of Appeal took account of the fact that the goods covered by the mark applied for were motor vehicles which needed different parts and components in order to function and that therefore there was a complementary connection between ‘parts of vehicles’ in Class 12 covered by the earlier mark and the vehicles covered by the mark applied for in Class 12, namely ‘automobiles; motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles’. The Board of Appeal found that there was a direct connection between those products, since ‘parts of vehicles’ covered by the earlier mark are essential for the use of all the vehicles covered by the mark applied for. It also stated that those two groups of goods could be intended for the same public and marketed alongside each other in the same outlets and that, accordingly, they were similar.

59 In the first place, the applicant submits that the Board of Appeal found that there was genuine use of the earlier mark for parts and accessories for bicycles and vehicles, that is to say for components of a finished good. However, the goods covered by the mark applied for are finished goods which differ, in terms of their nature, their intended purpose and their method of use, from the goods covered by the earlier mark.

60 That argument cannot be accepted. The differences, as regards their nature, intended purpose and method of use, between a finished product and the components of that product do not necessarily affect the complementarity between them. In other words, in spite of those differences, the components of a finished product and that finished product may be regarded as being similar precisely because of that close connection, as referred to in the case-law cited in paragraph 56 above, which makes the former indispensable or important for the use of the latter.

61 In the present case, by assessing the similarity of the goods in question, the Board of Appeal based its findings on the complementarity between those goods and correctly found that ‘parts of vehicles’, for which the earlier mark was registered, were essential for the use of all motor vehicles covered by the applicant’s trade mark application.

62 In the second place, the applicant relies on case-law under which the mere fact that a particular product is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different (judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 61).

63 That argument cannot be accepted in so far as, in the present case, in addition to the functional complementarity between the goods covered by the marks at issue, which is moreover not disputed by the applicant, the Board of Appeal took account of the fact that they were directed at the same public and that they used the same distribution channels.

64 In that regard, first, the applicant does admittedly argue that the goods covered by the marks at issue are intended for a different public. It submits, on the one hand, that due to their extremely technical nature, ‘parts of machines’ in Class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12 covered by the earlier mark are intended for a public comprised solely of professionals. On the other hand, the goods covered by the mark applied for in Class 12 are vehicles which are said to be intended only for the public at large.

65 However, as the Board of Appeal correctly pointed out, ‘parts of machines’ in Class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12 covered by the earlier mark are intended for not only a specialised public, but may also be purchased by the public at large for the repair or maintenance of a vehicle. Contrary to that which the applicant claims, those goods are not necessarily highly technical (for example, car or bicycle tyres, vehicle running boards and windscreen wipers).

66 Secondly, the applicant asserts that it is not possible to presume that an undertaking which manufactures and distributes finished goods also manufactures and distributes components and spare parts for those goods.

67 That argument must also be rejected. As regards, on the one hand, the manufacture of the goods, it is sufficient to note, as EUIPO does, that it cannot be excluded that certain automobile manufacturers themselves produce spare parts for vehicles of their brand. In any case, the Board of Appeal correctly took the view that, even if the public knew that the manufacturers of vehicles assemble parts made by other manufacturers, they would presume nonetheless that the manufacturer of the vehicles assumes control of the quality of the parts manufactured by a third party, hence the existence of a certain similarity.

68 As regards, on the other hand, the distribution of the goods, it is sufficient to find that a number of ‘parts of vehicles’ are sold at car or motorcycle dealerships and that the Board of Appeal therefore correctly took the view that the goods covered by the marks at issue, namely, on the one hand, parts of machines, accessories for automobiles and bicycles, bicycles and parts of vehicles and, on the other hand, automobiles, motorcycles and all-terrain vehicles, may be marketed alongside each other in the same outlets.

69 Thirdly, the applicant submits that the earlier mark was used only for spare parts for historical vehicles and sold via specific distribution channels.

70 That argument, even though it is raised in the context of the challenge to the assessment of the similarity of the goods, in reality forms part of the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. By its argument, the applicant submits, in essence, that such a likelihood of confusion on the part of the relevant public is excluded in the present case since the goods covered by the earlier mark are directed at a very specific public, composed of the owners of historic vehicles, who use specific distribution channels in order to purchase those goods.

71 That argument cannot be upheld. It is necessary to find that, after holding, without being challenged on this point by the applicant, that the relevant public is comprised of the German public at large, the Board of Appeal correctly took the view that, taking account of the fact that the signs at issue are identical, a significant part of that public, even where that part of the public displays a higher than average level of attention, could be led to mistakenly believe that goods such as automobiles, motorcycles and all-terrain vehicles bearing the mark applied for and the ‘parts of vehicles’ covered with the earlier mark come from the same undertaking or, as the case may be, from economically-linked undertakings.

72 In the third and final place, the applicant puts forward arguments relating to the comparison between ‘bicycles’ in Class 12 covered by the earlier mark and the goods covered by the mark applied for. It is sufficient to find that those arguments are ineffective in so far as the Board of Appeal based its finding relating to the similarity of the goods solely on the comparison between ‘parts of vehicles’ in Class 12 covered by the earlier mark and the goods covered by the mark applied for and did not carry out a comparison between the latter goods and ‘bicycles’ as covered by the earlier mark.

73 It follows from the foregoing that the Board of Appeal was right to find that ‘parts of vehicles’ in Class 12 covered by the earlier mark and vehicles in the same class covered by the mark applied for were similar. Consequently, taking account of that similarity between the goods in question and the identity of the marks at issue, it is also necessary to confirm the assessment made by the Board of Appeal in respect of the likelihood of confusion on the part of the relevant public.

74 It follows that the second plea in law must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to give a ruling on the admissibility of the applicant’s second head of claim.

Costs

75 Under Article 134(1) 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, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1. Dismisses the action;





2. Orders Industrie Aeronautiche Reggiane Srl to pay the costs.





Gervasoni Madise Kowalik-Bańczyk

Delivered in open court in Luxembourg on 20 June 2017.





E. Coulon S. Gervasoni