Corte di giustizia UE n. 1028/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 18 January 2018 ( * ) (Appeal — Rules of Procedure — [OSCURATO:PERSONA] 181 — EU trade mark — [OSCURATO:PERSONA] proceedings — Figurative mark containing the word elements ‘HotoGo self-heating can technology’ — Composite mark — Application for registration — [OSCURATO:PERSONA] — Rejection — Appeal manifestly inadmissible) [OSCURATO:PERSONA] C‑678/16 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 29 December 2016, [OSCURATO:PERSONA], established in Corona, California ([OSCURATO:PERSONA] of America), represented by P. Brownlow, Solicitor, appellant, the other party to the proceedings being: [OSCURATO:PERSONA] (EUIPO), represented by A. Folliard-Monguiral, acting as Agent, defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of J. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], M. Safjan and D. Šváby (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: H. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1 By its appeal, [OSCURATO:PERSONA] (‘[OSCURATO:PERSONA]’) seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 20 October 2016, [OSCURATO:PERSONA] v EUIPO — Hot-[OSCURATO:PERSONA] (HotoGo self-heating can technology) (T‑407/15, not published, ‘the judgment under appeal’, EU:T:2016:624), by which the [OSCURATO:PERSONA] dismissed its action seeking annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 4 May 2015 ([OSCURATO:PERSONA] R 1028/2014-5), relating to opposition proceedings between [OSCURATO:PERSONA] and Hot-[OSCURATO:PERSONA] (‘the decision at issue’). Legal context 2 [OSCURATO:PERSONA] the heading ‘Relative grounds for refusal’, [OSCURATO:PERSONA] 8 of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1) states, in paragraphs (1) and (5) thereof: ‘1.      Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: ... (b)      if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. ... 5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier [OSCURATO:PERSONA] trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] and, in the case of an earlier national trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’ Background of the dispute 3 On 12 December 2012, Hot-[OSCURATO:PERSONA] filed an application for registration of an EU trade mark with EUIPO pursuant to [OSCURATO:PERSONA] 207/2009. 4 Registration as a mark was sought for the following figurative sign: 5 The goods in respect of which registration was sought are in Classes 29, 30 and 33 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended (‘the [OSCURATO:PERSONA]’). 6 The EU trade mark application was published in [OSCURATO:PERSONA] 31/2013 of 13 February 2013. 7 On 13 May 2013 [OSCURATO:PERSONA] filed a notice of opposition, pursuant to [OSCURATO:PERSONA] 41 of [OSCURATO:PERSONA] 207/2009, to registration of the mark applied for in respect of the goods referred to. 8 The opposition was based on 10 earlier EU trade marks, registered in respect of a variety of goods in Classes 5, 16, 25, 29, 30, 32 and 33 of the [OSCURATO:PERSONA]. 9 The opposition was based, first, on the following EU trade mark No 3531639: 10 The opposition was based, secondly, on the following EU trade mark No 9491093: 11 The opposition was based, thirdly, on the following EU trade mark No 7451552: 12 The opposition was based, fourthly, on the following EU trade mark No 8214462: 13 The opposition was based, fifthly, on the following EU trade mark No 8463879: 14 The opposition was based, sixthly, on the following EU trade mark No 8527947: 15 The opposition was based, seventhly, on the following EU trade mark No 10346757: 16 The opposition was based, eighthly, on the following EU trade mark No 10346724: 17 The opposition was based, ninthly, on the following EU trade mark No 10346741: 18 The opposition was based, tenthly, on the following EU trade mark No 11154739: 19 The grounds relied on in support of that opposition were those set out in [OSCURATO:PERSONA] 8(1)(b) and 8(5) of [OSCURATO:PERSONA] 207/2009. 20 On 21 February 2014, the [OSCURATO:PERSONA] found that the marks were dissimilar and rejected the opposition. 21 On 11 April 2014, [OSCURATO:PERSONA] filed a notice of appeal with EUIPO against the decision of the [OSCURATO:PERSONA], pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009. 22 By the decision at issue, the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal. It found that the goods concerned were identical or similar, that the relevant public was the average consumer in the [OSCURATO:PERSONA] having a relatively low level of attention and that the marks at issue were visually, conceptually and phonetically dissimilar. It concluded from this that, regardless of the degree of similarity or even an identity of the goods at issue or of the reputation or enhanced distinctiveness of the earlier marks, there was no likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. [OSCURATO:PERSONA] of Appeal also found that, since the signs were dissimilar overall, the plea in law alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 also had to be rejected. The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 23 By application lodged at the Registry of the [OSCURATO:PERSONA] on 27 July 2015, [OSCURATO:PERSONA] brought an action seeking annulment of the decision at issue, putting forward, essentially, two pleas in law alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 and infringement of [OSCURATO:PERSONA] 8(5) of that regulation respectively. 24 By the judgment under appeal, the [OSCURATO:PERSONA] dismissed the action. 25 [OSCURATO:PERSONA] examined the two pleas in law in turn. 26 As regards the first plea in law alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, and in response to the ground of challenge alleging an incorrect assessment of the distinctive and dominant elements of the mark applied for, the [OSCURATO:PERSONA] ruled in paragraph 38 of the judgment under appeal that: ‘It is to be noted that as regards the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgment of 23 October 2002, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑6/01, EU:T:2002:261, paragraphs 33 to 35). Similarly, the notion of the distinctive character which an element of a complex mark possesses is concerned with its ability to dominate the overall impression created by that mark (order of 27 April 2006, L’Oréal v OHIM , C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 9 April 2014, MHCS v OHIM — Ambra (DORATO) , T‑249/13, not published, EU:T:2014:193, paragraph 47).’ 27 After carrying out a detailed analysis of the figurative and word elements of the mark applied for in paragraphs 39 to 44 of the judgment under appeal, the [OSCURATO:PERSONA] found, in paragraph 45 of that judgment, that those elements constituted a whole and that none of those elements could be considered negligible in the overall perception of the mark applied for. 28 In paragraph 46 of the judgment under appeal, the [OSCURATO:PERSONA] considered that the [OSCURATO:PERSONA] of Appeal had acted correctly in finding that the three wavy lines were not the dominant element in the mark applied for, and went on to infer from this in paragraph 47 of that judgment that the comparison of the mark applied for with the earlier marks could not be carried out on the sole basis of that single figurative element composed of three wavy lines, but had to take into account all the elements of the mark applied for, none of which was negligible. 29 As regards the ground of challenge alleging an incorrect assessment of the overall impression and of the comparison of the signs, the [OSCURATO:PERSONA], before finding that there was no visual similarity in paragraph 52 of the judgment under appeal, observed in paragraph 51 of that judgment that: ‘... the argument that the [OSCURATO:PERSONA] of Appeal incorrectly presented the figurative element of the earlier marks as representing the letter “m” must be rejected. Visually, the [OSCURATO:PERSONA] of Appeal identified that figurative element as a “claw device”. If the figurative element of the three wavy lines in the mark applied for is alone compared with the “claw device” of the earlier marks, it must be found that there are considerable differences. The “claw device” may be described as three vertical slashes that claws might make, ripping from top to bottom. As the [OSCURATO:PERSONA] of Appeal stated, those lines, roughly drawn, are reminiscent of prongs or scratches, with the middle line longer than the other two. In the mark applied for, by contrast, the three wavy lines are identical to each other (but for shading), smooth, curvy and altogether softer. Visually, the earlier marks’ device gives the impression of a vigorous “slash” downwards, while the lines in the mark applied for give the impression of vapour (steam) gently rising upwards. Those figurative elements display, therefore, considerable differences. Moreover, and above all, if all the elements — figurative and word — in the mark applied for are taken into consideration, the marks at issue are very different visually. The mere fact that the marks include three parallel, non-straight lines does not invalidate that finding, since there is no element in the earlier marks which resembles the word elements in the mark applied for.’ 30 [OSCURATO:PERSONA] held, first, in paragraphs 53 and 54 of the judgment under appeal, that the marks in question are dissimilar conceptually and, secondly, in paragraphs 55 to 57 of that judgment, that those marks are not phonetically similar. 31 In paragraph 58 of the judgment under appeal, the [OSCURATO:PERSONA] concluded from all of those considerations that the marks at issue are dissimilar overall. Moreover, observing, in paragraph 59 of that judgment, that one of the cumulative conditions necessary for finding a likelihood of confusion was not fulfilled, it accordingly held that the [OSCURATO:PERSONA] of Appeal was fully entitled to conclude that there was no such likelihood of confusion in the present case. In paragraph 60 of that judgment, the [OSCURATO:PERSONA] found that the first plea in law had to be rejected as unfounded. 32 With regard to the second plea in law alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009, the [OSCURATO:PERSONA] held in paragraphs 65 to 70 of the judgment under appeal that one of the cumulative conditions necessary for the application of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009, that is to say, the similarity of the marks at issue, was not fulfilled, with the result that that plea was unfounded. Form of order sought before the [OSCURATO:PERSONA] of Justice 33 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] of Justice should: –        set aside the judgment under appeal; –        annul the decision at issue; –        annul the [OSCURATO:PERSONA] decision; –        reject the registration of the mark applied for in respect of all the goods in Classes 29, 30 and 33 of the [OSCURATO:PERSONA]; and –        order EUIPO to pay the costs. 34 EUIPO contends that the [OSCURATO:PERSONA] of Justice should dismiss the appeal and order [OSCURATO:PERSONA] to pay the costs. The appeal 35 [OSCURATO:PERSONA] 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 36 That provision must be applied in the present case. 37 In support of its appeal, [OSCURATO:PERSONA] relies on two grounds of appeal alleging, first, infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 and, secondly, infringement of [OSCURATO:PERSONA] 8(5) of that regulation. 38 The first ground of appeal is, essentially, divided into two parts. The first ground of appeal Arguments of the parties 39 By the first part of its first ground of appeal, [OSCURATO:PERSONA] argues that the [OSCURATO:PERSONA] infringed [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 in the context of the assessment of the dominant and distinctive elements of the mark applied for, and of the weight to be attached to those elements. It submits that the [OSCURATO:PERSONA], particularly in the last sentence of paragraph 38 of the judgment under appeal, wrongly took the view that an element of a composite mark could be distinctive only if it dominates the overall impression created by that mark. According to the appellant, the [OSCURATO:PERSONA] thus wrongly found that the three wavy lines did not have an independent distinctive role, as they did not constitute the dominant element of the composite mark. 40 By doing so, [OSCURATO:PERSONA] submits, the [OSCURATO:PERSONA] failed to have regard to the scope of the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594). In that judgment, the [OSCURATO:PERSONA] found that, where an element of a composite mark plays an independent distinctive role without being dominant, it is possible that the overall impression produced by the composite mark might lead the public to believe that the goods or services concerned derive from a company linked to the earlier mark, given the close similarity of that mark to the element that plays an independent distinctive role in the composite mark applied for. Thus, the [OSCURATO:PERSONA] ought to have concluded that, even if the wavy lines were not dominant, they nonetheless had an independent distinctive role. 41 By the second part of the first ground of appeal, [OSCURATO:PERSONA] challenges the overall assessment and the comparison of the signs carried out in paragraphs 50 to 60 of the judgment under appeal. 42 EUIPO contends that this first ground of appeal must be rejected as inadmissible to the extent to which it is a new plea. EUIPO maintains that the appellant did not claim before the [OSCURATO:PERSONA] that the figurative element of the sign at issue had an independent distinctive role and confined itself to asserting that that element was the dominant and distinctive element of the sign at issue. In any event, according to EUIPO, that ground of appeal is unfounded as it is based on an incorrect reading of the judgment under appeal. Moreover, findings of fact made by the [OSCURATO:PERSONA] in the judgment under appeal are not subject to review by the [OSCURATO:PERSONA] of Justice in an appeal. Findings of the [OSCURATO:PERSONA] 43 It should be borne in mind that, under [OSCURATO:PERSONA] 170(1) of the Rules of Procedure, the subject matter of the proceedings before the [OSCURATO:PERSONA] may not be changed in the appeal. The jurisdiction of the [OSCURATO:PERSONA] of Justice in an appeal is limited to review of the findings of law on the pleas argued before the [OSCURATO:PERSONA]. 44 A party cannot therefore put forward for the first time before the [OSCURATO:PERSONA] of Justice, in an appeal, a plea in law which it has not raised before the [OSCURATO:PERSONA] as that would allow it to bring before the [OSCURATO:PERSONA], the appellate jurisdiction of which is limited, a dispute of wider ambit than that which came before the [OSCURATO:PERSONA] (see, inter alia, order of 12 June 2014, Bimbo v OHIM , C‑285/13 P, not published, EU:C:2014:1751, paragraph 16, and judgment of 19 May 2011, [OSCURATO:PERSONA] v OHIM , C‑308/10 P, not published, EU:C:2011:327, paragraph 31). 45 In the present case, it must be noted that the appellant did not raise before the [OSCURATO:PERSONA] the argument in support of the first part of its first ground of appeal, but relies on that argument for the first time in its appeal. 46 The application brought before the [OSCURATO:PERSONA] does not show that the appellant claimed that the figurative element consisting of three wavy lines had an independent distinctive role. On the contrary, in paragraphs 12 to 20 of that application, the appellant confined itself to challenging the assessment of the facts carried out by the [OSCURATO:PERSONA] of Appeal with regard to the dominant character of the figurative element of the mark applied for. It asserted before the [OSCURATO:PERSONA] that the figurative element in question, namely the three wavy lines, was the dominant element of the sign applied for and that the other figurative and word elements of that sign were descriptive and, therefore, negligible. That argument is therefore a new plea. 47 Consequently, the first part of the first ground of appeal must be rejected as being manifestly inadmissible. 48 As regards the second part of the first ground of appeal, it must be borne in mind that, in accordance with [OSCURATO:PERSONA] 256 TFEU and the first paragraph of [OSCURATO:PERSONA] 58 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], an appeal lies on points of law only. [OSCURATO:PERSONA] thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. 49 It is settled case-law that the assessment of the similarities between the signs at issue is of a factual nature and, save where the evidence and facts are distorted, is not subject to review by the [OSCURATO:PERSONA] of Justice (see, inter alia, judgment of 2 September 2010, [OSCURATO:PERSONA] v OHIM , C‑254/09 P, EU:C:2010:488, paragraph 50). 50 In the present case, taking account of the assessment carried out in paragraph 45 of the present order with regard to the admissibility of the first part of the first ground of appeal, it is clear that the appellant, in fact, confines itself to challenging the assessment of the facts carried out by the [OSCURATO:PERSONA], without adducing any evidence which would allow the inference that the [OSCURATO:PERSONA] distorted the facts or evidence put before it. 51 The second part of the first ground of appeal must therefore also be rejected as being manifestly inadmissible. 52 Accordingly, the first ground of appeal must be rejected as being manifestly inadmissible. The second ground of appeal Arguments of the parties 53 By its second ground of appeal, [OSCURATO:PERSONA] argues that the [OSCURATO:PERSONA] applied [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 incorrectly, inasmuch as, before finding that the marks at issue were dissimilar overall, it failed correctly to identify the distinctive and dominant elements of the mark applied for by not recognising the independent distinctive role of the three wavy lines. 54 EUIPO contends that this second ground of appeal must be rejected, in so far as it is based on the same arguments as those set out in the context of the first ground of appeal. Findings of the [OSCURATO:PERSONA] 55 It must be noted at the outset that this second ground of appeal is based on the incorrect premiss that the [OSCURATO:PERSONA] failed correctly to identify the distinctive and dominant elements of the mark applied for by not recognising the independent distinctive role of the three wavy lines. 56 As in the assessment carried out in paragraph 45 of the present order concerning the admissibility of the first part of the first ground of appeal, it must be noted that the appellant did not raise before the [OSCURATO:PERSONA] the argument in support of its second ground of appeal, but relies on that argument for the first time in its appeal. 57 Consequently, the second ground of appeal must be rejected as being manifestly inadmissible. 58 As none of the grounds of appeal has been upheld, the appeal must be dismissed in its entirety without there being any need to adjudicate on the second to fourth heads of claim seeking the annulment of the decision at issue, the annulment of the decision of the [OSCURATO:PERSONA] and the rejection of the application for registration of the mark applied for. Costs 59 [OSCURATO:PERSONA] 138 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, which applies to appeal proceedings by virtue of [OSCURATO:PERSONA] 184 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. [OSCURATO:PERSONA] has been unsuccessful and as EUIPO has applied for costs to be awarded against it, [OSCURATO:PERSONA] must be ordered to pay the costs of the present proceedings. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed. 2. [OSCURATO:PERSONA] shall pay the costs. Luxembourg, 18 January 2018. A. [OSCURATO:PERSONA] J. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.