ACTC GmbH v European Union Intellectual Property Office.
Date: 2020-07-16
2


Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1) was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. Regulation No 207/2009, as amended by Regulation 2015/2424, was repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). Nevertheless, in view of the date on which the application for registration at issue was filed, namely 28 December 2012, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in its initial version (see, to that effect, judgment of 4 July 2019, FTI Touristik v EUIPO, C‑99/18 P, EU:C:2019:565, paragraph 2).
29


As a preliminary point, it is appropriate to reject the line of argument of EUIPO relating to the inadmissibility of the first ground of appeal. The appellant does not in fact challenge a factual assessment of the General Court, but calls into question the methodology and criteria applied by the General Court to define use ‘in relation to part … of the goods or services’, within the meaning of Article 42(2) of Regulation No 207/2009. Since this ground of appeal thus concerns criteria in respect of which the General Court must assess the existence of genuine use for the goods or services for which it is registered, or part of those goods or services, within the meaning of that provision, that ground raises a question of law which can be subject to review by the Court of Justice on appeal (see, to that effect, judgment of 12 December 2019, Der Grüne Punkt v EUIPO, C‑143/19 P, EU:C:2019:1076, paragraph 51 and the case-law cited).
34


First of all, it must be recalled that the concept of ‘genuine use’ is an autonomous concept of EU law (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 25 to 31).
35


In that regard, in order for a mark to be regarded as being put to ‘genuine use’, within the meaning of the first sentence of Article 42(2) of Regulation No 207/2009, it is necessary that that mark be used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered for the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, judgment of 17 October 2019, Landeskammer für Land- und Forstwirtschaft in Steiermark v Schmid, C‑514/18 P, not published, EU:C:2019:878, paragraphs 36 and 37 and the case-law cited). Indeed, a trade mark which is not used obstructs not only competition — since it limits the range of signs which can be registered as trade marks by others and denies competitors the opportunity to use that trade mark or a similar one when putting on to the internal market goods or services which are identical or similar to those covered by the mark in question — but also the free movement of goods and services (judgment of 19 December 2012, Merken, C‑149/11, EU:C:2012:816, paragraph 32).
40


So far as concerns the concept of ‘part of the goods or services’ referred to in Article 42(2) of Regulation No 207/2009, it must be recalled that the Court has held, in the context of the application of Article 43(1) of that regulation, that a subcategory of the goods covered by an application for registration as an EU trade mark must be identified having recourse to a criterion enabling that subcategory to be delimited in a sufficiently precise manner (see, to that effect, judgment of 11 December 2014, OHIM v Kessel medintim, C‑31/14 P, not published, EU:C:2014:2436, paragraph 37).
44


With regard to the relevant criterion or criteria to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently, the Court has held, in essence, that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods (see, to that effect, judgment of 11 December 2014, OHIM v Kessel medintim, C‑31/14 P, not published, EU:C:2014:2436, paragraph 39).
50


It is apparent from the judgment of 11 December 2014, OHIM v Kessel medintim (C‑31/14 P, not published, EU:C:2014:2436, paragraphs 37 and 39 to 41) that the aim of the criterion of the purpose and intended use of the goods in question is not to provide an abstract or artificial definition of independent subcategories of goods; it must be applied coherently and specifically, as the Advocate General observed in points 70 and 71 of her Opinion.
53


Last, the second complaint of the second part of the first ground of appeal, by which the appellant claims that the Court failed to take into account the fact that the goods were aimed at different publics and were sold in different shops, must also be rejected as unfounded, in so far as such criteria are not relevant for defining an independent subcategory of goods, but for assessing the relevant public (see, to that effect and by analogy, judgment of 11 December 2014, OHIM v Kessel medintim, C‑31/14 P, not published, EU:C:2014:2436, paragraphs 37 and 41).
67


It should be recalled that, in accordance with the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence submitted to it. The appraisal of those facts and evidence does not, therefore, save where they have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal. The assessment of the visual and phonetic similarity of the signs at issue is an assessment of a factual nature (judgment of 19 March 2015, MEGA Brands International v OHIM, C‑182/14 P, EU:C:2015:187, paragraphs 47 and 48 and the case-law cited).
73


By that line of argument, the appellant, without developing a legal argument aimed specifically at identifying the error of law vitiating the judgment under appeal, seeks to have the Court make a fresh assessment of the facts and evidence. In so far as it does not invoke any distortion of those elements, that line of argument must, accordingly, be rejected as inadmissible (see, to that effect, judgment of 13 November 2019, Outsource Professional Services v EUIPO, C‑528/18 P, not published, EU:C:2019:961, paragraph 47 and the case-law cited).
74


In the second place, in so far as the appellant challenges the methodology and criteria applied by the General Court in its assessment of the conceptual similarity of the signs at issue, it actually reproaches it for having erroneously applied Article 8(1)(b) of Regulation No 207/2009, which is a question of law which can be subject to review by the Court of Justice on appeal (see, to that effect, judgment of 12 December 2019, Der Grüne Punkt v EUIPO, C‑143/19 P, EU:C:2019:1076, paragraph 51 and the case-law cited).
76


The Court, however, has held that, where a proprietor of an EU trade mark opposes, pursuant to Article 8(1)(b) of Regulation No 207/2009, registration of a similar EU trade mark which would create a likelihood of confusion, such an opposition must be upheld where it is established that there is a likelihood of confusion in part of the European Union (judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 26 and the case-law cited).
77


Consequently, if visual or phonetic similarities between the signs at issue exist for a substantial part of the relevant public, for which conceptual differences between those signs, liable to counteract those similarities, have not been proved, the General Court must carry out a global assessment of the likelihood of confusion (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraphs 74 to 76 and the case-law cited).
83


The third part of the second ground of appeal must be rejected as unfounded since the appellant does not identify any paragraph of the judgment under appeal which it is challenging nor does it allege any error of law on the part of the General Court, but merely reiterates the line of argument it had already developed in its application at first instance (see, to that effect, judgment of 6 September 2018, Basic Net v EUIPO, C‑547/17 P, not published, EU:C:2018:682, paragraph 43 and the case-law cited).