Case T‑657/13

BH Stores BV

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for Community word mark ALEX — National word and figurative marks ALEX — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Admissibility of the appeal before the Board of Appeal — Obligation to state reasons — Article 75 of Regulation No 207/2009 — No similarity between the goods and services covered by the marks at issue — No likelihood of confusion’

Summary — Judgment of the General Court (Seventh Chamber, Extended Composition), 2 July 2015

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Overlap between two categories of goods having different purposes

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word mark ALEX and word and figurative marks ALEX

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

Community trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal adjudicating in opposition proceedings — Challenged by the adducing of new facts — Not permissible — Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the OHIM bodies — Lawfulness

See the text of the decision. (see paras 25, 26)

The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM must state the reasons on which they are based. It is settled case-law that this obligation to state reasons has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required under that provision must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The duty to state the reasons on which decisions of OHIM are based has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision. According to the case-law, the question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question. It is settled case-law that the Boards of Appeal are not required to provide an account which follows exhaustively and point by point all the arguments put forward by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review. It is sufficient if the Boards of Appeal set out the facts and legal considerations having decisive importance in the context of the decision. (see paras 29-31)

The decisions which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice. None the less, OHIM is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The principles of equal treatment and sound administration must however be reconciled with the principle of legality. Consequently, no party to proceedings before OHIM may rely, to his advantage and in order to secure an identical decision, on an unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case. Furthermore, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and it applies independently of any national system. It is apparent from settled case-law that registrations already made in Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark. (see paras 42, 90, 92)

See the text of the decision. (see paras 48, 49, 95)

For the general public in Germany, there is no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, between the word mark ALEX, registration of which as a Community trade mark is sought in respect of ‘children’s bath toys’ and children’s educational and developmental activity toys’ in Class 28 of the Nice arrangement and the word and figurative marks ALEX, previously registered in Germany for ‘sporting articles’ within the same class, since the products are not similar. In the first place, the toys covered by the mark applied for have a different nature from that of the ‘sporting articles’ covered by the earlier marks. In particular, the existence of a simplified form and a reduced size for ‘children’s educational and developmental activity toys’ makes it possible precisely to distinguish them from, and not to confuse them with, ‘sporting articles’. ‘Children’s educational and developmental activity toys’, as the title indicates, are aimed at relatively young children and can be distinguished from ‘sporting articles’ (even if they imitate them) by a lower level of technicality, a different appearance (reduced size, light weight), safety appropriate for children in accordance with Directive 2009/48/EC of the European Parliament and of the Council of 18 June 2009 on the safety of toys and a generally lower price. A mini golf set, to take an example of goods covered by the mark applied for and cited by the applicant, will be adapted to the size of children, and the clubs will lack the precision of real golf clubs and will be made of light plastic. That reasoning applies a fortiori to ‘children’s bath toys’ which have no ‘sporting’ equivalent. In the second place, the products at issue have an essentially different purpose. ‘Sporting articles’ are intended to train the body through physical exercise whereas ‘children’s educational and developmental activity toys’ are intended both to amuse and educate children. Children’s bath toys’ are ‘clearly only intended to amuse small children’. The purpose of pure amusement of ‘children’s bath toys’ is even more evident than for ‘children’s educational and developmental activity toys’. Since the nature and intended purpose of the goods covered by the marks at issue are different, they are not interchangeable and are therefore not competing. In any event, although sometimes, depending on the circumstances, there may be some interchangeability between the goods at issue, this occurs only in one sense, that is to say only the consumers of some toys covered by the mark applied for are likely to resort to the corresponding ‘sporting articles’ covered by the earlier marks in the event of an increase in the price of those toys. It is clear that, even if the price of ‘sporting articles’ rose, consumers of ‘sporting articles’ would still not resort to those toys in order to replace genuine ‘sporting articles’. In the third place, the manufacture and distribution channels of the goods covered by the marks at issue are different. Without any similarity between the goods at issue, there can be no likelihood of confusion, even taking into account the identity of the signs, since an essential condition for the application of Article 8(1)(b) of Regulation No 207/2009, that is to say the identity or similarity of the goods, is not met. (see paras 50, 51, 59, 61, 67, 70, 71, 74, 80, 97)