BSH Bosch und Siemens Hausgeräte GmbH v European Union Intellectual Property Office.
Date: 2016-11-08
43


In accordance with settled case-law, to allow a party to put forward for the first time before the Court of Justice a plea and arguments which it did not raise before the General Court would be to authorise it to bring before the Court of Justice, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the General Court. In an appeal, the jurisdiction of the Court of Justice is thus confined to review of the findings of law on the pleas and arguments debated before the General Court (see, in particular, judgment of 21 September 2010, Sweden and Others v API and Commission, C‑514/07 P, C‑528/07 P and C‑532/07 P, EU:C:2010:541, paragraph 126 and the case-law cited).
48


In BSH’s submission, where the earlier mark is a readily recognisable variant of a descriptive indication and the later mark contains the descriptive indication itself, even the existence of major similarities between the signs and identity of the goods which the opposing marks cover are not capable of permitting the conclusion that there is a likelihood of confusion if the similarities of the signs are limited to the descriptive indications and concern only goods which are described by the indication. The public does not perceive any indication of origin in a descriptive indication, but is guided by the other elements of the mark. Furthermore, according to this argument, the extent of the protection of the earlier mark is not limited generally, but only as regards the descriptive indication itself, so that it remains intact in relation to other goods or other similar signs.
50


It is settled case-law that, under Article 256 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 thus has exclusive jurisdiction to find and appraise the relevant facts. The appraisal of those facts thus does not, save where they are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 59 and the case-law cited).
51


In addition, by virtue of those provisions and Article 168(1)(d) of the Rules of Procedure of the Court of Justice, an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, judgments of 4 September 2014, Spain v Commission, C‑197/13 P, EU:C:2014:2157, paragraph 43, and of 5 March 2015, Ezz and Others v Council, C‑220/14 P, EU:C:2015:147, paragraph 111). In this regard, Article 169(2) of the Rules of Procedure specifies that the pleas in law and legal arguments relied on must identify precisely those points in the grounds of the decision of the General Court which are contested (judgments of 28 July 2016, Tomana and Others v Council and Commission, C‑330/15 P, not published, EU:C:2016:601, paragraph 34, and of 20 September 2016, Mallis and Others v Commission and ECB, C‑105/15 P to C‑109/15 P, EU:C:2016:702, paragraph 34).
52


By its second plea, BSH does not in any way merely request a fresh appraisal of the facts, but complains that the General Court failed to take account of the legal principles applicable to assessment of the likelihood of confusion between opposing marks, a matter which constitutes a point of law that may be placed before the Court of Justice on appeal (see, inter alia, order of 7 May 2015, Adler Modemärkte v OHIM, C‑343/14 P, not published, EU:C:2015:310, paragraph 32 and the case-law cited).
61


Indeed, the Court of Justice, rejecting a line of argument similar to that advanced by BSH in the second plea, has already held on a number of occasions that, although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion globally, it is, however, only one factor among others involved in that assessment (see, in particular, orders of 29 November 2012, Hrbek v OHIM, C‑42/12 P, not published, EU:C:2012:765, paragraph 61, and of 2 October 2014, Przedsiębiorstwo Handlowe Medox Lepiarz v OHIM, C‑91/14 P, not published, EU:C:2014:2261, paragraph 22).
62


Furthermore, although it is true that the more distinctive the earlier mark the greater the likelihood of confusion will be, such a likelihood of confusion cannot, however, be precluded where the distinctive character of the earlier mark is weak (see, in particular, order of 19 November 2015, Fetim v OHIM, C‑190/15 P, not published, EU:C:2015:778, paragraph 40 and the case-law cited).
63


Consequently, even in a case involving an earlier mark of weak distinctive character, the General Court may hold that there is a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, in particular, orders of 2 October 2014, Przedsiębiorstwo Handlowe Medox Lepiarz v OHIM, C‑91/14 P, not published, EU:C:2014:2261, paragraph 24 and the case-law cited, and of 7 May 2015, Adler Modemärkte v OHIM, C‑343/14 P, not published, EU:C:2015:310, paragraph 59).
64


Thus, the findings made by the General Court in paragraph 31 of the judgment under appeal, which reject the proposition put forward by BSH and against which the second plea is directed, in fact do no more than recall the Court of Justice’s settled case-law according to which that proposition is not consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 since, contrary to the appellant’s contentions, it would have the effect of disregarding the similarity of the marks as a factor in favour of the factor constituted by the distinctive character of the earlier mark (see, in this regard, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 41, and order of 19 November 2015, Fetim v OHIM, C‑190/15 P, not published, EU:C:2015:778, paragraph 46 and the case-law cited).
66


So far as concerns, in particular, earlier national trade marks, the Court has already had occasion to point out that it follows from the coexistence of EU trade marks and such national marks, and from the fact that the registration of the latter does not fall within the sphere of competence of EUIPO and that judicial review in respect of them does not fall within the jurisdiction of the General Court, that in opposition proceedings directed against the registration of an EU trade mark the validity of national trade marks may not be called into question. Therefore, in such opposition proceedings, it is likewise not possible to find, with regard to a sign identical to a trade mark protected in a Member State, an absolute ground for refusal, such as descriptive character and the lack of distinctive character, provided for in Article 7(1)(b) and (c) of Regulation No 40/94 and Article 3(1)(b) and (c) of Directive 2008/95 (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 40 and 41).
67


It follows that, when applying Article 8(1)(b) of Regulation No 40/94, it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of an EU mark is based (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47).
68


Therefore, assuming that an earlier national mark is in fact descriptive in respect of some of the goods for which it has been registered and that its protection leads to improper monopolisation of the descriptive indication in question, such a consequence must be remedied not by an application of Article 8(1)(b) of Regulation No 40/94 excluding those goods as a matter of principle from the protection which that provision confers on the earlier marks, but by invalidity proceedings brought in the Member State concerned by virtue of Article 3(1)(b) and (c) of Directive 2008/95 (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 45).