Les Éditions Albert René SARL v European Union Intellectual Property Office.
Date: 2008-12-18
38. Pursuant to Article 63(2) of Regulation No 40/94, the Court of First Instance is called upon to assess the legality of the decisions of the Boards of Appeal of OHIM by reviewing their application of Community law, having regard, in particular, to the facts which were submitted to them (see, to that effect, judgment of 4 October 2007 in Case C-311/05 P Naipes Heraclio Fournier  v OHIM , paragraph 38 and the case-law cited).
39. Thus, within the restrictions of Article 63 of Regulation No 40/94, as interpreted by the Court of Justice, the Court of First Instance can carry out a full review of the legality of the decisions of OHIM’s Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute (see, to that effect, Naipes Heraclio Fournier  v OHIM , paragraph 39) or whether their assessment of the facts submitted to them was flawed.
44. In this respect, the Court notes 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 by the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative (see Case C-106/03 P Vedial  v OHIM  [2004] ECR I-9573, paragraph 51, and Case C-234/06 P Ponte Finanziaria  v OHIM and F.M.G Textile (formerly Marine Enterprise Projects) [2007] ECR I-7333, paragraph 48).
46. That global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (see T.I.M.E. ART  v OHIM , paragraph 35, and, as regards First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer : [1998] ECR I-5507, paragraph 17; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 19).
47. Therefore, since the appellant called into question the Board of Appeal’s assessment relating to the likelihood of confusion by virtue of the principle of the interdependence of the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, the Court of First Instance was competent to examine the Board of Appeal’s assessment of the similarity of the signs at issue.
48. Where it is called upon to assess the legality of a decision of the Board of Appeal of OHIM, the Court of First Instance cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the Court of First Instance.
64. Therefore, the Court has held, concerning Article 4(1)(b) of Directive 89/104, a provision which is essentially identical to Article 8(1)(b) of Regulation 40/94, that the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to a likelihood of confusion (see Canon , paragraph 24).
65. However, as the Court of First Instance rightly observed in paragraph 59 of the judgment under appeal, in order to assess whether the goods and the services are similar or identical, all the relevant factors relating to the link between those goods or those services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see Canon , paragraph 23, and Case C-416/04 P Sunrider  v OHIM  [2006] ECR I-4237, paragraph 85).
68. Secondly, since the appellant is calling into question the consistency and basis of the findings of the Court of First Instance in the comparison of the goods and services designated by the marks at issue, it should be recalled that, in accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, in particular, Case C-104/00 P DKV  v OHIM  [2002] ECR I-7561, paragraph 22; Case C‑173/04 P Deutsche SiSi-Werke  v OHIM  [2006] ECR I-551, paragraph 35; and Case C‑25/05 P  Storck  v OHIM  [2006] ECR I-5719, paragraph 40).
69. Such distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence (see Case C-8/95 P New Holland Ford v Commission  [1998] ECR I-3175, paragraph 72; Case C-551/03 P General Motors  v Commission  [2006] ECR I‑3173, paragraph 54; and Case C-167/04 P JCB Service  v Commission  [2006] ECR I-8935, paragraph 108).
74. Concerning the alleged contradiction between the statement in paragraph 62 of the judgment under appeal in the language of the case (‘That list of goods and services is close to that which is claimed in the Community trade mark’) and the finding that the goods protected by the earlier mark and those covered by the mark for which registration is sought are not similar, it should be noted that the question whether the grounds of a judgment of the Court of First Instance are contradictory or inadequate is a point of law which is amenable, as such, to judicial review on appeal (see Case C-401/96 P Somaco  v Commission  [1998] ECR I-2587, paragraph 53; Case C-446/00 P Cubero Vermurie  v Commission  [2001] ECR I‑10315, paragraph 20; and Case C-3/06 P Groupe Danone  v Commission  [2007] ECR I-1331, paragraph 45).
78. As a result, the drafting error pointed out by the appellant cannot be regarded as an error of reasoning which could justify the annulment of the judgment under appeal on that point (see Case C-326/91 P de Compte  v Parliament [1994] ECR I‑2091, paragraph 96).
96. In fact, in paragraph 79 of the judgment under appeal the Court of First Instance merely stated, in a factual assessment, which it is not for the Court to review, that the ‘OBELIX’ sign conveys a reference to a famous character from a comic strip and, as a result, is conceptually different from the ‘MOBILIX’ sign; it did not thus rule on the well known nature of the OBELIX trade mark.
97. Inasmuch as, fifthly, the appellant calls into question the Court of F irst Instance’s application of the ‘counteraction’ theory, it must be observed that that court examined all the evidence which, in accordance with settled case-law, must be taken into consideration in order to carry out a global assessment of the likelihood of confusion.
98. Case-law shows that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, to that effect, Case C-361/04 P Ruiz-Picasso and Others  v OHIM  [2006] ECR I-643, paragraph 20, and Case C‑206/04 P Mühlens  v OHIM  [2006] ECR I-2717, paragraph 35 et seq.).
101. However, it is where an opposition is based on the existence of several marks with shared characteristics enabling them to be regarded as part of the same ‘family’ or ‘series’ of trade marks that account should be taken, in the assessment of the likelihood of confusion, of the fact that, in the case of a ‘family’ or ‘series’ of trade marks, a likelihood of confusion results from the fact that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that the latter trade mark is part of that family or series of marks (see, to that effect, Ponte Finanziaria  v OHIM and F.M.G Textiles (formerly Marine Enterprise Projects) , paragraphs 62 and 63).
110. Admittedly, provided that an appellant challenges the interpretation or application of Community law by the Court of First Instance, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not thus base his appeal on pleas in law and arguments already relied on before the Court of First Instance, an appeal would be deprived of part of its purpose (see, in particular, Case C-41/00 P Interporc  v Commission  [2003] ECR I-2125, paragraph 17, and Storck  v OHIM , paragraph 48).
111. However, it follows from Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice, that 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. That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the Court of First Instance (see, in particular, Case C-352/98 P Bergaderm and Goupil  v Commission  [2000] ECR I-5291, paragraphs 34 and 35, and Storck  v OHIM , paragraph 47).
122. The appellant did not have the power to alter before the Court of First Instance the terms of the dispute as delimited in the respective claims and allegations submitted by Orange and itself (see, to that effect, Case C‑412/05 P Alcon  v OHIM  [2007] ECR I-3569, paragraph 43).
123. First, the review carried out by the Court of First Instance under Article 63 of Regulation No 40/94 is a review of the legality of the decisions of the Boards of Appeal of OHIM. The Court of First Instance may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 63(2) of that regulation (see, to that effect, Case C-29/05 P OHIM  v Kaul [2007] ECR I-2213, paragraph 53).
125. Secondly, as regards the assertion that the Board of Appeal was wrong to decide that Article 8(5) of Regulation No 40/94 was not part of the subject-matter of the dispute, it should be observed that, as the appellant has raised a ground of appeal which was not part of the action brought against that decision before the Court of First Instance, that argument constitutes a new plea which extends the subject-matter of the dispute and which therefore cannot be put forward for the first time at the appeal stage.
126. Indeed, to allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the Court of First Instance 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 Court of First Instance. In an appeal, the jurisdiction of the Court of Justice is thus confined to a review of the findings of law on the pleas argued before the Court of First Instance (see Case C-136/92 P Commission  v Brazzelli Lualdi and Others  [1994] ECR I-1981, paragraph 59; Case C-266/97 P VBA  v VGB and Others  [2000] ECR I-2135, paragraph 79; Joined Cases C-456/01 P and C‑457/01 P Henkel v OHIM  [2004] ECR I-5089, paragraph 50; and JCB Service  v Commission , paragraph 114).
136. As the Court of First Instance rightly stated in paragraph 16 of the judgment under appeal, the purpose of an action before it is to review the legality of the decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94.
137. It follows from that provision that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the Court of First Instance.
138. It is also apparent from that provision that the Court of First Instance cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision.
139. In this connection, the Court has already observed that it follows from Articles 61(2) and 76 of Regulation No 40/94 that, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 62(2) of Regulation No 40/94 states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi  of the Board of Appeal, ‘in so far as the facts are the same’. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before OHIM ( OHIM  v Kaul , paragraph 58).
142. The Court has stated in this connection that where such facts and evidence have not been submitted and produced by the party concerned within the time-limit set to that end under the provisions of Regulation No 40/94, and thus not ‘in due time’ within the meaning of Article 74(2) of that regulation, that party does not enjoy an unconditional right to have such information taken into account by the Board of Appeal of OHIM. On the contrary, that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give (see OHIM  v Kaul , paragraph 63).