ORDER OF THE COURT (Eighth Chamber)

25 November 2010 ( )

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Articles 8(1)(b) and (5), 73, 74 and 79 – Figurative mark A+ – Opposition by the proprietor of the Community word mark AirPlus International – Opposition rejected)

In Case C‑216/10 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union brought on 4 May 2010,

Lufthansa AirPlus Servicekarten GmbH, established in Neu-Isenburg (Germany), represented by R. Kunze, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

Applus Servicios Tecnológicos SL, established in Barcelona (Spain),

intervener at first instance,

THE COURT (Eighth Chamber),

composed of K. Schiemann, President of the Chamber, A. Prechal and E. Jarašiūnas (Rapporteur), Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Lufthansa AirPlus Servicekarten GmbH (‘Lufthansa AirPlus Servicekarten’) seeks to have set aside the judgment of the General Court of the European Union of 3 March 2010 in Case T-321/07 Lufthansa AirPlus Servicekarten v OHIM – Applus Servicios Tecnológicos (A+) (‘the judgment under appeal’), by which the General Court dismissed the action brought by the appellant against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 June 2007 (Case R 310/2006-2, ‘the contested decision’) dismissing the appeal brought against the decision of the Opposition Division of OHIM which in turn had rejected the opposition filed by the appellant against the application for registration of the figurative mark A+.

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the date of the facts, the present proceedings remain governed by Regulation No 40/94.

3 Article 8 of Regulation No 40/94, entitled ‘Relative grounds for refusal’, provides:

‘1. 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.

…

5. 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.’

4 Under Article 73 of the regulation, entitled ‘Statement of reasons on which decisions are based’:

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.’

5 Article 74 of the regulation, entitled ‘Examination of the facts by the Office of its own motion’, provides:

‘1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’

6 Article 78 of the regulation, entitled ‘Restitutio in integrum’, states in paragraph 1:

‘The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to observe a time-limit vis-à-vis the Office shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress.’

7 Article 79 of Regulation No 40/94, entitled ‘Reference to general principles’, provides:

‘In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.’

Background to the dispute

8 On 13 November 2002, Applus Servicios Tecnológicos SL, formerly Agbar Automotive SL (‘Applus Servicios Tecnológicos’), filed an application for registration of a Community trade mark with OHIM for various goods and services in Classes 9, 35, 36, 40, 41 and 42 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. The mark in respect of which registration was sought is the figurative sign reproduced below:

9 On 29 December 2003, Lufthansa AirPlus Servicekarten filed a notice of opposition, under Article 8(1)(b) of Regulation No 40/94, against registration of that mark in respect of all the services to which it referred. The opposition was based on the earlier Community word mark AirPlus International, registered under number 2 335 693 on 26 September 2002, which also related to various goods and services in Classes 9, 35, 36 and 42 of the Nice Agreement.

10 By decision of 22 December 2005, the Opposition Division of OHIM rejected the opposition.

11 On 12 January 2006 Lufthansa AirPlus Servicekarten filed a notice of appeal with OHIM against that decision.

12 That appeal was dismissed by the contested decision on the ground that there was no likelihood of confusion between the marks at issue.

The action brought before the General Court and the judgment under appeal

13 By application lodged at the Registry of the General Court on 28 August 2007, Lufthansa AirPlus Servicekarten brought an action seeking annulment of the contested decision and refusal to register the trade mark applied for. In support of its action it relied on four pleas in law, alleging infringement of Articles 8(1)(b) and (5), 73, 74 and 79 of Regulation No 40/94.

14 By the judgment under appeal, the General Court dismissed the action and ordered Lufthansa AirPlus Servicekarten to pay the costs. However, by order of 19 May 2010, handed down after the present appeal was lodged, the General Court, rectifying the judgment under appeal, held that Applus Servicios Tecnológicos should bear its own costs.

15 In dismissing the first plea in law, the first part of which related to the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, and the second part of which related to the reputation of the earlier mark within the meaning of Article 8(5), the General Court held, first of all, that the Second Board of Appeal of OHIM had been right to find that the signs at issue were not visually similar, that, overall, they were not similar phonetically and that there was a low degree of conceptual similarity between them. The Court also found that the Board had been right to find that, in light of the significant differences between the signs at issue, it was not necessary to determine whether the goods covered by the marks at issue were similar. Secondly, the Court held that the Board had been right to find that Article 8(5) of Regulation No 40/94 was not applicable, given that the signs at issue were neither identical nor similar.

16 The second plea in law, in essence alleging that the statement of reasons for the contested decision was insufficient, was dismissed on the grounds that the decision did disclose in a clear and unequivocal manner the reasoning followed by the Second Board of Appeal of OHIM and that, for reasons of economy of procedure, the Board was entitled not to conduct a full examination of all the arguments put forward by the appellant.

17 As regards the third plea in law, alleging infringement of Article 74 of Regulation No 40/94, by which the appellant argued that the Second Board of Appeal of OHIM ought to have based its decision on undisputed facts and ought not to have taken into consideration the observations submitted by Applus Servicios Tecnológicos out of time, on 11 December 2006, the General Court pointed out that OHIM enjoyed a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take into account facts which the parties had not put forward or evidence that they had not produced in due time. It also noted that the contested decision stated that the observations in question had been received in due time, further to an extension of time granted by OHIM.

18 Lastly, the General Court dismissed the fourth plea in law, alleging infringement of Article 79 of Regulation No 40/94, by which the appellant complained that OHIM had not informed it of the change in the owner of the Community trade mark application and had thus breached its right to a fair hearing. The Court noted, in this connection, that only the name of the owner had changed and that the appellant had not stated how that change had adversely affected its procedural rights.

Forms of order sought before the Court of Justice

19 The appellant claims that the Court should set aside the judgment under appeal and order OHIM to pay the costs.

20 OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

The appeal

21 Under Article 119 of its Rules of Procedure, where an 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, dismiss the appeal by reasoned order without opening the oral procedure.

22 In support of its appeal, Lufthansa AirPlus Servicekarten maintains that the General Court misconstrued the relevant provisions of Regulation No 207/2009. However, given that the contested decision was adopted prior to the entry into force of that regulation, it must be considered that the provisions with which the appeal is concerned are in fact the corresponding provisions of Regulation No 40/94, the regulation applicable to the present dispute.

23 Furthermore, whilst the appellant puts forward six pleas in law, it must be observed that the sixth plea relates to the General Court’s ruling on costs. That ruling has, however, since given rise to the rectificatory order mentioned above and, consequently, the plea is now devoid of purpose.

24 The five pleas in law which remain to be examined in essence allege, respectively, infringement of Articles 8(1)(b), 8(5), 73 and 74 of Regulation No 40/94 and breach of the general principles referred to in Article 79 of that regulation.

The first plea in law

25 The first plea in law put forward by the appellant, which in essence alleges infringement of Article 8(1)(b) of Regulation No 40/94, comprises two parts. In the context of the first part of the plea, the appellant complains that the General Court held, in paragraph 43 of the judgment under appeal, that the Second Board of Appeal of OHIM had not erred in finding that there was no likelihood of confusion without first determining whether the goods covered by the marks at issue were similar, holding that the lack of similarity between the signs was sufficient to rule out any such likelihood. That conclusion, the appellant submits, failed to take into account the interdependence between the similarity of the signs and that of the goods or services, which must be taken into account in the global assessment of the likelihood of confusion. The conclusion arose from a restrictive interpretation of the likelihood of confusion and failed to take into account the identical nature of or significant similarity between the goods and services in question and the enhanced distinctiveness and reputation of the earlier mark.

26 However, the Court has pointed out on numerous occasions that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative (Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 51; Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48; judgment of 11 December 2008 in Case C‑57/08 P Gateway v OHIM, paragraph 45; Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 44; and order of 4 March 2010 in Case C-193/09 P Kaul v OHIM, paragraph 43). Thus, where there is no similarity between the earlier mark and the mark applied for, the reputation of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue (C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 53).

27 Thus, after finding that the signs at issue were dissimilar, the General Court clearly did not err in law in holding that the Second Board of Appeal of OHIM had been right to regard it as unnecessary to rule on the similarity of the goods covered by the marks at issue.

28 In the context of the second part of the first plea in law, the appellant submits that the General Court’s assessment of the similarity of the signs was mistaken and contradictory. Whilst the General Court emphasised that the assessment of the similarity of signs must focus on the marks considered as a whole, bearing in mind any distinctive and dominant elements, it gave its approval, wrongly, to a piecemeal assessment of the earlier mark. The General Court thus acknowledged, in paragraph 38 of the judgment under appeal, that the element ‘international’ of the earlier mark could not be disregarded entirely in assessing whether the marks at issue were similar phonetically and that it did not have such a low degree of distinctiveness by comparison with the ‘airplus’ element that it played no significant role in the earlier mark. That reasoning, if it were to be upheld, the appellant submits, would make it possible for the element ‘international’ to be monopolised even though it is descriptive. It could not, in any event, provide the basis for the conclusion that the acknowledged similarity in English between ‘A+’ and ‘airplus’ did not exist.

29 The appellant submits that the same mistake vitiated the conclusion reached in paragraph 42 of the judgment under appeal, which was that the concept ‘plus’ cannot be monopolised and that no opposition is likely to succeed simply because the marks at issue both refer to the word ‘plus’ or to the sign ‘+’. That was contrary to the principle that the trade marks to be compared must be assessed as a whole, putting particular emphasis on the characteristic components of the marks. Moreover, it is difficult to see how the pronunciation of the marks at issue, which is acknowledged to be similar in English, has no bearing on their overall similarity.

30 In this connection, the General Court was right to state, in paragraphs 28 and 38 of the judgment under appeal, that the global assessment of the likelihood of confusion, in relation to the visual, phonetic and conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, any distinctive and dominant components.

31 It is clear from the findings made in paragraphs 38 and 40 to 42 of the judgment under appeal that, without contradicting its preceding pronouncements, the General Court did investigate whether the signs at issue contained distinctive or dominant elements and evaluated the relative importance of each of the elements of the signs, from a phonetic and conceptual point of view, so as to assess the overall impression given by the signs.

32 Thus, the General Court clearly did not err in law in finding in essence, in its unfettered assessment of the facts, that none of the component elements of the earlier mark was dominant or more distinctive than the others, that the element ‘international’ was not wholly without importance in the overall impression given by the earlier mark from a phonetic point of view and that, despite a certain similarity between the pronunciation of ‘A+’ and ‘airplus’ in English, the marks at issue were, as a whole, not phonetically similar. By going on to make a similar evaluation, from the conceptual point of view, of the relative importance of the element ‘plus’ of the earlier mark and of the sign ‘+’ of the mark applied for, the General Court again clearly did not err in law in finding, in essence, that the concept denoted by them was frequently used in trade marks and advertising, with the result that there was only a low degree of conceptual similarity between the signs at issue.

33 In so far as, by the second part of its first plea in law, the appellant complains that the General Court neglected to consider the alleged phonetic similarity, in English, between the elements ‘A+’ and ‘airplus’ of the marks at issue, in finding that these were not similar, suffice it to observe that that was an assessment of a factual nature and as such, save where the facts or evidence are distorted – which is not alleged in the present case – not subject to the review of the Court of Justice on appeal (see, to that effect, inter alia, Il Ponte Finanziaria v OHIM, paragraph 38 and the case-law cited). That being so, the present plea is therefore clearly inadmissible.

34 It follows that the first plea in law must be dismissed as being in part clearly unfounded and in part clearly inadmissible.

The second plea in law

35 The appellant states, in support of this plea, that, contrary to the conclusion of the General Court in paragraph 51 of the judgment under appeal, the Second Board of Appeal of OHIM in essence infringed Article 8(5) of Regulation No 40/94 by refusing to deal with the application of that provision. The Board of Appeal had been wrong to reject its opposition based on that provision on the ground that the condition of similarity between the signs had not been satisfied. The provision in question merely requires that the relevant section of the public should establish a link between the mark having a reputation and the mark applied for, and the assessment of such a link must take into account all factors relevant to the circumstances of the case.

36 However, it must be recalled that the identity of or similarity between the marks at issue is a necessary precondition of the application of Article 8(5) of Regulation No 40/94 (Gateway v OHIM, paragraph 62, and Calvin Klein Trademark Trust v OHIM, paragraph 68). Consequently, after finding that the signs at issue were neither identical nor similar, the General Court clearly did not err in law in holding that the Second Board of Appeal of OHIM had not infringed that provision.

37 Therefore, the second plea in law must be dismissed as clearly unfounded.

The third plea in law

38 By this plea, in essence alleging infringement of Article 73 of Regulation No 40/94, the appellant complains that the General Court held, in paragraph 64 of the judgment under appeal, that the Second Board of Appeal of OHIM was entitled, for reasons of economy of procedure, not to conduct a full examination of the arguments put forward, in particular those relating to the distinctiveness of the earlier mark, which could under no circumstances affect its decision. It submits that that approach, were it to be allowed, would undermine the protection of earlier trade marks that have been used extensively and in which investment has been made in order to prevent their unlawful appropriation. According to the appellant, Article 73 of Regulation No 40/94 should be construed in the light of general principles of law and the European Convention for the Protection of Human Rights and Fundamental Freedoms signed in Rome on 4 November 1950, which protects property. By failing to take account of its arguments, the Second Board of Appeal of OHIM denied the appellant its right to be heard and breached the duty to provide an impartial and comprehensive statement of reasons.

39 In this connection, as the General Court rightly recalled in paragraphs 59 and 60 of the judgment under appeal, the obligation upon OHIM to state reasons for its decisions, laid down in Article 73 of Regulation No 40/94, has the same scope as that which derives from Article 253 EC, which requires the disclosure, in a clear and unequivocal manner, of the reasoning followed by the institution which adopted the measure in question. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision.

40 That duty can be fulfilled without necessarily responding expressly and exhaustively to all of the arguments put forward.

41 In the present case, the General Court held, in paragraph 63 of the judgment under appeal, that the contested decision disclosed in a clear and unequivocal manner the reasoning followed by the Second Board of Appeal of OHIM. It held in paragraph 64 of the judgment that, since the Board of Appeal had concluded that the signs at issue were dissimilar and that neither Article 8(1)(b) nor Article 8(5) of Regulation No 40/94 applied in this case, and since it had set out clear reasons in support of that conclusion, it was entitled not to conduct a full examination of the remaining arguments which could not affect its decision. In so doing, the General Court clearly did not misconstrue the scope of the duty to state reasons.

42 Furthermore, it should be pointed out that the appellant’s submissions that, in essence, such an approach undermines the protection of trade marks and fundamental rights, in particular the right to property, and that the Second Board of Appeal of OHIM, by ignoring its arguments, denied it its right to be heard and failed to be impartial are lacking in any legal basis.

43 It must, therefore, be held that the third plea in law is clearly unfounded.

The fourth plea in law

44 The appellant complains that the General Court dismissed its plea alleging infringement of Article 74 of Regulation No 40/94, holding that the observations presented to the Second Board of Appeal of OHIM by Applus Servicios Tecnológicos were received in time, further to an extension of time duly granted it because of the breakdown of its fax machine. The Board of Appeal cannot, however, grant an extension of time after expiry of a deadline without circumventing the provisions of Article 78 of Regulation No 40/94 relating to resitutio in integrum and exceeding its powers. It was far from clear, contrary to the finding of the General Court, that an extension of time had been granted by the Second Board of Appeal of OHIM. That being so, the Board of Appeal had exceeded the powers conferred on it by Article 74 of Regulation No 40/94.

45 In this connection, it must be observed that, in paragraph 77 of the judgment under appeal, the General Court referred to paragraph 43 of the judgment in Case C‑29/05 P OHIM v Kaul [2007] ECR I-2213 and recalled that Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take into account facts or evidence which are not submitted in due time by the parties concerned.

46 Nevertheless, in paragraph 78 of the judgment under appeal, the General Court noted that paragraph 23 of the contested decision clearly stated that the observations in question had been received in time, further to an extension of time duly granted by OHIM to Applus Servicios Tecnológicos because the latter’s fax machine had broken down.

47 It must, therefore, be held that the General Court clearly did not err in law in dismissing the plea which the appellant raised before it, given that Article 61(2) of Regulation No 40/94 expressly provides that, in the examination of appeals, the Board of Appeal is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself. Indeed, since the Second Board of Appeal of OHIM had been able, under that provision, regularly to repeat its invitation to file observations, the General Court was right to deduce from its finding in paragraph 78 of the judgment under appeal that the provisions of Article 74 of Regulation No 40/94 upon which the appellant relied in support of its action could not have been infringed in this case.

48 Consequently, the fourth plea must be dismissed as clearly unfounded.

The fifth plea in law

49 In the context of this plea, the appellant states that, contrary to the General Court’s finding on this point, OHIM made a substantial procedural error by omitting to inform it of the change in the proprietor of the Community trade mark application or that Applus Servicios Tecnológicos had become a party to the opposition proceedings. Since there is no express provision concerning the manner in which a change in proprietorship during the course of opposition proceedings is to be dealt with, that amounted to a breach of general principles under Article 79 of Regulation No 40/94. In that the appellant had been deprived of the opportunity of presenting its observations on that change, its right to due process of law had been severely infringed and the proceedings had continued without its consent.

50 In this connection, the General Court noted, in paragraph 86 of the judgment under appeal, that only the name of the owner of the Community trade mark application had changed and that the appellant had not stated how that change had adversely affected its procedural rights.

51 It must therefore be held that, contrary to the appellant’s assertions, the owner of the application did not change during the course of the opposition proceedings; only its name changed. The appellant, who does not claim any distortion of the evidence produced to the General Court in this regard, has also failed to demonstrate to this Court how that change of name adversely affected its procedural rights.

52 The fifth plea must therefore be dismissed as being clearly unfounded.

53 It is apparent from all of the foregoing considerations that the appeal must be dismissed in its entirety as being, in part, clearly unfounded and, in part, clearly inadmissible.

Costs

54 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 of those rules, 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 Lufthansa AirPlus Servicekarten has been unsuccessful, the latter must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Lufthansa AirPlus Servicekarten GmbH shall pay the costs.

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