El Corte Inglés, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs).
Date: 2015-12-10
27. In any event, it must be pointed out that whether a conceptual similarity is slight, low or minimal in degree is part of an assessment of the facts of the case. However, the General Court is not bound by such an assessment carried out by the Board of Appeal, as that assessment forms part of the reasons for the decision the legality of which is being disputed before it (see, to that effect, judgment in Éditions Albert René  v OHIM , C‑16/06 P, EU:C:2008:739, paragraphs 47 and 48).
31. It is apparent from Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union that an appeal lies on points of law only. As the appraisal of the facts and the assessment of the evidence do not constitute points of law subject, as such, to review by the Court of Justice on appeal, the General Court thus has exclusive jurisdiction to find and appraise those facts and to assess that evidence (see, to the effect, inter alia, judgment in Les Éditions Albert René  v OHIM , C‑16/06 P, EU:C:2008:739, paragraph 68, and order in Repsol YPF v OHIM , C‑466/13 P, EU:C:2014:2331, paragraph 54).
33. El Corte Inglés submits that, according to the case-law of the Court of Justice, the degree of similarity between the signs at issue that is required for the application of Article 8(1)(b) and Article 8(5) respectively of Regulation No 207/2009 is different. In its view, it is apparent from the case-law of the Court of Justice, and in particular from paragraphs 72 to 78 of the judgment in Intra-Presse  v OHIM (C‑581/13 P and C‑582/13 P, EU:C:2014:2387), that, contrary to Article 8(1)(b) of Regulation No 207/2009, Article 8(5) of that regulation requires only a low degree of similarity between the signs at issue. It maintains that, consequently, since, in the present case, the General Court acknowledged that there was a conceptual similarity, albeit low in degree, between those signs, that Court erred in not examining whether, on account of the presence of other relevant factors, such as the renown or reputation of the earlier marks, that low degree of conceptual similarity was not, nevertheless, sufficient for the relevant public to establish a link between those signs.
34. OHIM submits that the judgment in Intra-Presse  v OHIM (C‑581/13 P and C‑582/13 P, EU:C:2014:2387) on which El Corte Inglés relies in order to develop its arguments must be put into perspective with the judgments in Calvin Klein Trademark Trust  v OHIM (C‑254/09 P, EU:C:2010:488) and Ferrero  v OHIM (C‑552/09 P, EU:C:2011:177). It takes the view that, in the latter two judgments, the Court of Justice held that the General Court had been right to conclude that Article 8(5) of Regulation No 40/94, the provisions of which were identical to those of Article 8(5) of Regulation No 207/2009, was manifestly inapplicable, even though the General Court had pointed out that the signs at issue had a word or figurative element in common when it examined the conditions for the application of the protection currently provided for in Article 8(1)(b) of Regulation No 207/2009.
35. According to OHIM, that difference in outcome is explained by the fact that, in the cases which gave rise to the judgments in Calvin Klein Trademark Trust  v OHIM (C‑254/09 P, EU:C:2010:488) and Ferrero  v OHIM (C‑552/09 P, EU:C:2011:177), in contrast to the situation which obtained in the judgment in Intra-Presse  v OHIM (C‑581/13 P and C‑582/13 P, EU:C:2014:2387), the General Court took into account, at the stage of the visual, phonetic and conceptual comparison of the signs at issue, factors such as the distinctive and dominant elements of each of those signs which, in other situations, are examined only in the context of a global assessment of the likelihood of confusion. OHIM deduces from that that, if the General Court takes the distinctive and dominant elements of each of the signs at issue into account at the stage of the comparison of those signs, which is the case here, but reaches the conclusion, as a result of that examination, that there is no likelihood of confusion, in spite of the existence of a slight degree of conceptual similarity, that Court is entitled to deduce from this that the application of Article 8(5) of Regulation No 207/2009 is necessarily excluded.
39. Given that it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 or from the case-law of the Court of Justice that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point. Conversely, if the General Court takes the view, in the context of that same examination, that there is some similarity between the signs at issue, such a finding is equally valid with regard to the application of both Article 8(1)(b) and Article 8(5) of that regulation.
42. Since Article 8(5) of Regulation No 207/2009 merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, it must be held that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue (see, by analogy, judgment in Adidas-Salomon and Adidas Benelux , C‑408/01, EU:C:2003:582, paragraphs 27, 29 and 31, and judgment in Intel Corporation , C‑252/07, EU:C:2008:655, paragraphs 57, 58 and 66).
43. It follows that, if the examination of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 has shown that there is some similarity between the signs at issue, the General Court must, in order to ascertain, this time, whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, the relevant public is capable of establishing a link between those signs (see, to that effect, judgment in Intra-Presse  v OHIM , C‑581/13 P and C‑582/13 P, EU:C:2014:2387, paragraph 73).