Ferrero SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2011-03-24
39. It should be recalled at the outset that the interest in bringing proceedings – a condition of admissibility – must continue up until the Court’s ruling on the substance. According to the case-law of the Court, such an interest exists as long as the appeal may, if successful, procure an advantage for the party bringing it (Case C-550/07 P Akzo Nobel Chemicals and Akcros Chemicals  v Commission  [2010] ECR I‑0000, paragraphs 22 and 23).
52. That condition of similarity between the mark and the sign requires, in the context both of Article 8(1)(b) and of Article 8(5) of Regulation No 40/94, the existence, in particular, of elements of visual, aural or conceptual similarity (see, to that effect, Adidas-Salomon and Adidas Benelux , paragraph 28).
53. It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 40/94 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see, to that effect, Adidas-Salomon and Adidas Benelux , paragraphs 27, 29 and 31, and Intel Corporation , paragraphs 57, 58 and 66).
56. In Intel Corporation , the Court confirmed its case-law to the effect that the existence of a link between the marks at issue must, like the existence of a likelihood of confusion, be assessed globally, account being taken of all factors relevant to the circumstances of the case, which include not only the degree of similarity between the conflicting marks, but also the degree of the earlier mark’s distinctive character and the strength of its reputation (see Intel Corporation , paragraphs 41 and 42 and the case-law cited).
57. As regards in particular the strength of the earlier mark’s reputation, the Court has stated that, for the purposes of assessing whether there is a link between the marks at issue, it may be necessary to take into account the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark. The Court explained inter alia in that regard that it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered (see Intel Corporation , paragraphs 52 and 53).
64. As was pointed out in paragraph 56 above, the existence of a link between the earlier mark and the challenged mark for the purposes of Article 8(5) of Regulation No 40/94 must – like a likelihood of confusion under Article 8(1)(b) – be assessed globally, account being taken of all factors relevant to the circumstances of the case, which include inter alia the degree of similarity between the marks at issue and the goods covered by those marks and also the strength of the earlier mark’s reputation and its degree of distinctive character, whether inherent or acquired through use.
65. Although that global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may therefore be offset by the strong distinctive character of the earlier mark (see, to that effect, judgment of 7 May 2009 in Case C-398/07 P Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM , not published in the ECR, paragraph 33), the fact remains that where there is no similarity between the earlier mark and the challenged mark, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue or that the relevant public makes a link between them (see, to that effect, Case C-254/09 P Calvin Klein Trademark Trust v OHIM  [2010] ECR I‑0000, paragraph 53 and the case-law cited).
66. As is apparent from paragraph 51 above, in order for Article 8(1)(b) or (5) of Regulation No 40/94 to be applicable, the marks at issue must be identical or similar. Consequently, those provisions are manifestly inapplicable where the General Court has ruled out any similarity between the marks at issue (see, to that effect, Calvin Klein Trademark Trust v OHIM , paragraph 68). It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.
68. In those circumstances, the General Court was right to find, in paragraphs 61 and 62 of the judgment under appeal, that the reputation of the earlier mark and the similarity between the goods respectively covered by the marks at issue – even if those factors may be taken into consideration in order to assess likelihood of confusion – do not affect the assessment of the similarity of the signs at issue, with the result that they are incapable of calling into question the lack of similarity that was found to exist (see, to that effect, judgment of 11 December 2008 in Case C-57/08 P Gateway  v OHIM , not published in the ECR, paragraphs 55 to 57).
73. It should be noted at the outset that it is apparent from the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court that an appeal lies on a point of law only. The General Court therefore has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence placed before it. The appraisal of those facts and the assessment of that evidence thus do not, save where they distort the evidence, constitute a point of law which, as such, is open to review by the Court of Justice on appeal (see, inter alia, Calvin Klein Trademark Trust  v OHIM , paragraph 49 and the case-law cited, and Case C-92/10 P Media-Saturn-Holding  v OHIM  [2011] ECR I-0000, paragraph 27).
74. However, provided that the appellant challenges the interpretation or the application of European Union law by the General Court, the points of law examined at first instance may be discussed again in the context of an appeal (see, inter alia, Case C-488/06 P L & D  v OHIM  [2008] ECR I‑5725, paragraph 43).
78. Moreover, in so far as Ferrero alleges distortion of the facts submitted to the General Court for assessment, it should be borne in mind that, under the second subparagraph of Article 256(1) TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice and point (c) of the first subparagraph of Article 112(1) of the Rules of Procedure of the Court of Justice, the appellant must indicate precisely the evidence alleged to have been distorted by the General Court and show the errors of appraisal which, in his view, led to that distortion (see, inter alia, Joined Cases C-204/00 P, C‑205/00 P, C-211/00 P, C-213/00 P, C‑217/00 P and C-219/00 P Aalborg Portland and Others  v Commission  [2004] ECR I-123, paragraph 50).
85. As to substance, it should be borne in mind that, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed (Case C-334/05 P OHIM  v Shaker  [2007] ECR I-4529, paragraph 36).
86. Furthermore, the visual, aural and conceptual similarities between the signs at issue must be the subject of a global assessment in which the assessment of any aural similarity is but one of the relevant factors (see, to that effect, Case C‑206/04 P Mülhens  v OHIM  [2006] ECR I‑2717, paragraph 21).
89. As to the remainder, in so far as it seeks to secure a new assessment of the facts, that part of the ground of appeal is, in accordance with the case-law referred to in paragraph 73 above, inadmissible since Ferrero has not alleged any distortion of the facts or evidence submitted to the General Court.
The fifth part of the sole ground of appeal
– Arguments of the parties
97. As to the substance, it should be borne in mind that it is settled law that the existence of a ‘family’ or a ‘series’ of trade marks is an element which must be taken into account for the purposes of assessing the likelihood of confusion. In those circumstances, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and may consider, erroneously, that that trade mark is part of that family or series of marks ( Il Ponte Finanziaria  v OHIM , paragraph 63).