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Corte di giustizia UEsentenza

Corte di giustizia UE n. 954/2014

ECLI:EU:C:2014:270
Testo integrale del provvedimento

Testo integrale del provvedimento

62013CO0374_EN

[OSCURATO:PERSONA] part

[OSCURATO:PERSONA] C‑374/13 P,

APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 1 July 2013, [OSCURATO:PERSONA] y Restauraciones SL, established in Barcelona (Spain), represented by J. [OSCURATO:PERSONA], abogado, appellant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]), represented by J. [OSCURATO:PERSONA], acting as Agent, defendant at first instance, MIP [OSCURATO:PERSONA] GmbH & Co.

KG, established in Düsseldorf (Germany), represented by J.-C.

Plate, Rechtsanwalt, intervener at first instance,

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]),

composed of A. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], S. Rodin (Rapporteur) and F. Biltgen, Judges, [OSCURATO:PERSONA]: P. Mengozzi, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give its decision by reasoned order, in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following

[OSCURATO:PERSONA]

1. By its appeal, [OSCURATO:PERSONA] y Restauraciones SL (‘[OSCURATO:PERSONA]’) seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] in [OSCURATO:PERSONA] T‑284/11 [OSCURATO:PERSONA] y Restauraciones v [OSCURATO:PERSONA] — MIP [OSCURATO:PERSONA] (METROINVEST) EU:T:2013:218 (‘the judgment under appeal’), by which that court dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]) of 17 March 2011 ([OSCURATO:PERSONA] R 954/2010-1) relating to opposition proceedings between MIP [OSCURATO:PERSONA] GmbH & Co.

KG (‘MIP’) and [OSCURATO:PERSONA] concerning an application for registration of the word sign ‘METROINVEST’ as a [OSCURATO:PERSONA] trade mark (‘the contested decision’).

Legal context

2. [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the [OSCURATO:PERSONA] trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. [OSCURATO:PERSONA], given the date on which the application for registration in question was filed, the present case remains governed by [OSCURATO:PERSONA] 40/94.

3. [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 provided: ‘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.’ Background to the dispute

4. On 30 July 2006, [OSCURATO:PERSONA] filed at [OSCURATO:PERSONA] an application for registration as a [OSCURATO:PERSONA] trade mark of the word sign ‘METROINVEST’.

5. The services in respect of which registration was sought are in Class 36 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]’), and correspond to the following description: ‘Financial affairs relating only to real estate services; financial services relating only to real estate services; financial planning services relating only to real estate services; real estate affairs; real estate agency services and real estate services provided on the internet; rent and lease negotiations; real estate selection and acquisition; property investment services; property sales, leasing, management and acquisition services; valuation of property; valuations relating to the surveying of buildings; land and estate management; advice on real estate management; real estate operations and transactions; electronic payment services; providing and managing electronic cash systems; account crediting and debiting services’.

6. [OSCURATO:PERSONA] trade mark registration application was published in the [OSCURATO:PERSONA] 39/2008 of 29 September 2008.

7. On 11 November 2008, MIP filed a notice of opposition under [OSCURATO:PERSONA] 42 of [OSCURATO:PERSONA] 40/94 to registration of the mark applied for in respect of all the services referred to in paragraph 5 of the present order.

8. The opposition was based, first, on the earlier German figurative mark, filed on 22 September 2003 and registered on 27 April 2004 under number 30348717, for various goods and services in Classes 1 to 45 of the [OSCURATO:PERSONA], only the services in Class 36 of that agreement corresponding to the following description providing the basis for the opposition: ‘Insurance services; financial services; cash transactions; real estate services’.

The intervener claimed the colours blue and yellow for that figurative sign, represented as follows: >image>5

9. The opposition was based, secondly, on the application for a [OSCURATO:PERSONA] figurative mark, filed on 20 March 1998 under number 779116 for various goods and services in Classes 1 to 42 of the [OSCURATO:PERSONA].

The intervener claimed the colour yellow for that figurative sign, represented as follows: >image>6

10. The ground relied on in support of the opposition was the existence of a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94.

11. By decision of 26 March 2010, the [OSCURATO:PERSONA] of [OSCURATO:PERSONA] upheld the opposition, taking the view that there was a likelihood of confusion between the earlier German figurative mark, that mark alone constituting a registered mark, and the mark in respect of which registration is sought.

12. On 26 May 2010, [OSCURATO:PERSONA] filed an appeal with [OSCURATO:PERSONA] against the decision of the [OSCURATO:PERSONA].

13. By the contested decision, the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] dismissed the appeal, confirming the existence of a likelihood of confusion between the earlier German figurative mark and the mark for which registration is sought.

Procedure before the [OSCURATO:PERSONA] and the judgment under appeal

14. By application lodged at the [OSCURATO:PERSONA] on 7 June 2011, [OSCURATO:PERSONA] brought an action for annulment of the contested decision before the [OSCURATO:PERSONA]. [OSCURATO:PERSONA] relied on two pleas in law, the first, alleging infringement of Articles 6 and 14 of the [OSCURATO:PERSONA] for the Protection of [OSCURATO:PERSONA] and [OSCURATO:PERSONA], signed in Rome on 4 November 1950 (‘the ECHR’), and the second, infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94.

15. In paragraphs 21 to 60 of the judgment under appeal, the [OSCURATO:PERSONA], first, after declaring admissible certain documents produced for the first time before it by [OSCURATO:PERSONA], examined the second plea in law.

16. After considering, in the light of the relevant case-law, the assessment by the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] of the likelihood of confusion between the earlier German figurative mark and the mark in respect of which registration is sought, the [OSCURATO:PERSONA] confirmed the contested decision on that point.

17. In that context, the [OSCURATO:PERSONA] held, in particular, in paragraphs 40 to 48 of the judgment under appeal, that there was some degree of visual, aural and conceptual similarity between the signs at issue and concluded, within the context of a global assessment of the likelihood of confusion, in paragraphs 48 to 59 of the judgment, that there was a likelihood of confusion between those signs having regard, on the one hand, to the distinctive character of the word ‘metro’ in relation to the services concerned, and, on the other, to the descriptive character of the word ‘invest’ with reference to those same services and because the distinctive and dominant element of the two signs at issue was identical and the services concerned were also identical.

18. [OSCURATO:PERSONA] consequently rejected the second plea in law.

19. [OSCURATO:PERSONA], in paragraphs 61 to 79 of the judgment under appeal, the [OSCURATO:PERSONA] also rejected the first plea in law, alleging infringement of Articles 6 and 14 of the ECHR.

20. As regards, in the first place, the alleged infringement of [OSCURATO:PERSONA] 6 of the ECHR, the [OSCURATO:PERSONA], in paragraphs 62 to 70 of the judgment under appeal, rejected that plea in law, holding that the plea in fact concerned an infringement by the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] of the obligation to state reasons under [OSCURATO:PERSONA] 73 of [OSCURATO:PERSONA] 40/94, which, in the circumstances of the case, had not however been established.

As regards, in the second place, the alleged infringement of [OSCURATO:PERSONA] 14 of the ECHR, which plea in law, according to the [OSCURATO:PERSONA], relates in fact to a lack of consistency within the contested decision and thus to a breach of the principle of equal treatment, the [OSCURATO:PERSONA], in paragraphs 71 to 79 of the judgment under appeal, rejected that plea, holding, in particular, that [OSCURATO:PERSONA] could not rely on an unlawful act committed in another procedure, or on the previous or subsequent decisions of [OSCURATO:PERSONA] for the purposes of casting doubt on the contested decision.

21. Having regard to the foregoing, the [OSCURATO:PERSONA] therefore dismissed the action in its entirety. Forms of order sought by the parties

22. [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should: – set aside the judgment under appeal and, consequently, grant [OSCURATO:PERSONA] trade mark registration application No 7.112.11.3 METROINVEST, for services in Class 36 of the [OSCURATO:PERSONA]; and – order the other parties to pay the costs.

23. [OSCURATO:PERSONA] contends that the [OSCURATO:PERSONA] should dismiss the appeal as being inadmissible or, in the alternative, as being unfounded, and order [OSCURATO:PERSONA] to pay the costs.

24. MIP contends that the appeal should be dismissed and that [OSCURATO:PERSONA] should be ordered to pay the costs incurred by the other parties to the proceedings, including those incurred by MIP. The appeal

25. [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], where the 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], by reasoned order decide to dismiss that appeal in whole or in part.

26. It is appropriate to apply that provision in the present appeal.

27. In support of its appeal, [OSCURATO:PERSONA] raises a single ground of appeal, alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94.

That ground of appeal is made up of four parts, alleging, in essence, that the [OSCURATO:PERSONA] erred as to, respectively: – the comparative assessment of the signs; – the global assessment of the likelihood of confusion; – consistency with the case-law of [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA]; and – the pacific coexistence of the trade mark METROINVEST in respect of which registration is sought with other trade marks containing the word ‘[OSCURATO:PERSONA]’ in various classes.

28. Those parts should be examined in turn. The first and second parts of the single ground of appeal Arguments of the parties

29. By the first part of its single ground of appeal, [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] assessed incorrectly the visual, aural and conceptual similarity of the signs at issue.

Referring to the relevant settled case-law of the [OSCURATO:PERSONA], it submits, first, that the similarity of the goods or services covered by the signs at issue is offset by a lesser degree of similarity of the word element of those signs.

Moreover, the [OSCURATO:PERSONA] did not take into consideration the fact that the signs at issue are not ‘[OSCURATO:PERSONA]’ and ‘INVEST’ as independent words and ‘[OSCURATO:PERSONA]’, but ‘METROINVEST’ and ‘[OSCURATO:PERSONA]’, and that the global assessment of the likelihood of confusion requires the trade mark to be analysed as a whole, and not broken down in an artificial manner.

30. [OSCURATO:PERSONA], [OSCURATO:PERSONA] carries out a visual, aural and conceptual comparison of the signs at issue for the purposes of demonstrating the lack of similarity between those signs.

As regards the conceptual comparison in particular, it draws attention to, inter alia, the connection which it is claimed exists between the word ‘[OSCURATO:PERSONA]’ and the word ‘metropole’ and maintains that that argument was not a new plea in law relied on before the [OSCURATO:PERSONA].

31. In the second part of its single ground of appeal, [OSCURATO:PERSONA] states that, according to the settled case-law of the [OSCURATO:PERSONA], the global assessment of the likelihood of confusion must, in relation to the similarity of the signs at issue, be based on the overall impression produced by them.

It claims that it follows from that principle that the assessment concerning the similarity of the signs ought to be made, not on the b asis of the sign as broken down into two independent words, as the [OSCURATO:PERSONA] is alleged to have done in paragraphs 53 to 56 of the judgment under appeal, but on the basis of one word, in this instance, namely, ‘METROINVEST’, which, furthermore, does not as such contain any dominant element.

32. [OSCURATO:PERSONA] and MIP contend that the first and second parts of the single ground of appeal must be rejected as being inadmissible or, in any event, unfounded. Findings of the [OSCURATO:PERSONA]

33. By the first and second parts of the single ground of appeal, [OSCURATO:PERSONA] alleges, in essence, that the [OSCURATO:PERSONA] made errors in the assessment of the similarity of the signs at issue and, consequently, in the global assessment of the likelihood of confusion between them.

34. In this connection, it must be recalled, at the outset, that it is settled case-law that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case.

That global assessment must, in relation to the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, [OSCURATO:PERSONA] C‑334/05 P [OSCURATO:PERSONA] v Shaker EU:C:2007:333, paragraphs 34 and 35, and [OSCURATO:PERSONA] C‑498/07 P Aceites del Sur-Coosur v Koipe EU:C:2009:503, paragraphs 59 and 60 and the case-law cited).

35. [OSCURATO:PERSONA] claims, in the first and second parts of the single ground of appeal, that, having regard to the case-law referred to above, the [OSCURATO:PERSONA] ought to have analysed the sign ‘METROINVEST’, not on the basis of the sign broken down into two words, but as a whole, it must be stated that, although according to that case-law the global assessment of the likelihood of confusion must be based on the overall impression given by the signs at issue, this in no way means that, for the purposes of that assessment, their elements or their components, including the various elements making up a single word, cannot be taken into account (see, to that effect, order in [OSCURATO:PERSONA] C‑512/04 P Vitakraft-[OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2005:736, paragraph 23).

36. In this connection, it is apparent from paragraphs 40 to 42 and 53 to 55 of the judgment under appeal, and, in particular, from paragraphs 39 and 47 of that judgment, that the [OSCURATO:PERSONA] did carry out such a global assessment of the likelihood of confusion, taking into account the elements and components of the signs at issue, inasmuch as it compared the signs ‘[OSCURATO:PERSONA]’ and ‘METROINVEST’, the latter taken as a whole.

37. [OSCURATO:PERSONA]’ argument must, therefore, be rejected as being manifestly unfounded.

38. Furthermore, inasmuch as [OSCURATO:PERSONA] disputes the findings made by the [OSCURATO:PERSONA] in relation to the visual, aural and conceptual similarity of the signs at issue with a view to demonstrating that it ought to have concluded that there was no similarity between the signs, the fact of the matter is clearly that [OSCURATO:PERSONA] merely calls in question, without pleading any distortion of the material in the file, the assessment of the facts carried out by the [OSCURATO:PERSONA] in that context.

39. [OSCURATO:PERSONA], [OSCURATO:PERSONA] cannot require the [OSCURATO:PERSONA] to substitute its own assessment for that of the [OSCURATO:PERSONA] in that regard.

As is apparent from settled case-law, under [OSCURATO:PERSONA] 256(1) 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] 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 a point of law subject, as such, to review by the [OSCURATO:PERSONA] of Justice on appeal (see, inter alia, [OSCURATO:PERSONA] C‑104/00 P DKV v [OSCURATO:PERSONA]:C:2002:506, paragraph 22; [OSCURATO:PERSONA] C‑412/05 P Alcon v [OSCURATO:PERSONA]:C:2007:252, paragraph 71; [OSCURATO:PERSONA] C‑16/06 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2008:739, paragraph 68; and [OSCURATO:PERSONA] C‑254/09 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2010:488, paragraph 49).

40. As for [OSCURATO:PERSONA]’ argument as to the connection it claims exists between the word ‘[OSCURATO:PERSONA]’ and the word ‘metropole’, suffice it to point out that, even if the [OSCURATO:PERSONA] was wrong to find, in paragraph 47 of the judgment under appeal, that that argument had been raised for the first time during the hearing before it, the [OSCURATO:PERSONA], in paragraph 48 of the judgment, examined that argument only to reject it on the merits.

In accordance with the case-law cited in paragraph 39 of the present order, the assessment that the [OSCURATO:PERSONA] carried out in that context may not, in any event, be put in question in the present appeal.

41. Consequently, the first and second parts of the single ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded. The third part of the single ground of appeal Arguments of the parties

42. By the third part of its single ground of appeal, [OSCURATO:PERSONA] claims that there is a contradiction between the judgment under appeal and [OSCURATO:PERSONA]’s decision to reject the opposition filed by [OSCURATO:PERSONA], on the basis of [OSCURATO:PERSONA] trade mark No 7.111.974 GRUPOMETROPOLIS, to registration of the [OSCURATO:PERSONA] figurative mark No 7.585.045 ‘[OSCURATO:PERSONA]’ to the benefit of MIP. [OSCURATO:PERSONA] had, furthermore, contested that decision before [OSCURATO:PERSONA] and before the [OSCURATO:PERSONA].

Notwithstanding the statements made by the [OSCURATO:PERSONA] in paragraph 77 of the judgment under appeal, [OSCURATO:PERSONA] claims that it is necessary, in the interests of legal certainty and consistency in registration policy, to follow the same line and to avoid inconsistency with regard to previous decisions.

43. According to [OSCURATO:PERSONA] and MIP, that part of the single ground of appeal is manifestly inadmissible or, in any event, manifestly unfounded. Findings of the [OSCURATO:PERSONA]

44. As the [OSCURATO:PERSONA] correctly pointed out in paragraph 77 of the judgment under appeal, it is apparent from settled case-law that the lawfulness of decisions of the Boards of Appeal of [OSCURATO:PERSONA] falls to be assessed not on the basis of their decision-making practice, but solely on the basis of [OSCURATO:PERSONA] 40/94, as interpreted by the [OSCURATO:PERSONA] judicature (see, to that effect, [OSCURATO:PERSONA] C‑37/03 P BioID v [OSCURATO:PERSONA]:C:2005:547, paragraph 47, and Alcon v [OSCURATO:PERSONA]:C:2007:252, paragraph 65).

45. Consequently, the Tribunal was entitled to hold, without erring in law, in paragraph 78 of the judgment under appeal, that [OSCURATO:PERSONA] could not reasonably rely, for the purposes of casting doubt on the conclusion reached by the [OSCURATO:PERSONA] of Appeal in the contested decision, on [OSCURATO:PERSONA]’s decision concerning the opposition proceedings relating to the trade mark GRUPOMETROPOLIS and the trade mark [OSCURATO:PERSONA].

46. Moreover, so far as concerns the alleged contradiction between the judgment under appeal and the case-law of the [OSCURATO:PERSONA], [OSCURATO:PERSONA] has in no way explained why the judgment under appeal is inconsistent in this regard.

47. It follows that the third part of the single ground of appeal must be rejected as being manifestly unfounded. The fourth part of the single ground of appeal Arguments of the parties

48. By the fourth part of its single ground of appeal, [OSCURATO:PERSONA] claims that there are hundreds of other [OSCURATO:PERSONA] trade marks, a list of which is attached to the appeal, which, like the trade mark in respect of which registration is sought, contain the word ‘[OSCURATO:PERSONA]’ and which coexist peacefully.

That fact would indicate that there is no real likelihood of confusion at all.

49. [OSCURATO:PERSONA] and MIP submit, in essence, that the fourth part of the single ground of appeal is also manifestly inadmissible or, at least, manifestly unfounded. Findings of the [OSCURATO:PERSONA]

50. It must be recalled that an appeal must indicate precisely the contested elements of the judgment or order which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, [OSCURATO:PERSONA] C‑352/98 P Bergaderm and Goupil v Commission EU:C:2000:361, paragraph 34, and [OSCURATO:PERSONA] C‑131/03 P [OSCURATO:PERSONA] and Others v Commission EU:C:2006:541, paragraph 49).

51. Where an appeal merely reproduces the pleas in law and arguments previously submitted to the [OSCURATO:PERSONA], without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, it fails to satisfy that requirement.

In reality, such an appeal amounts to no more than a request for re-examination of the application submitted to the [OSCURATO:PERSONA], which falls outside the jurisdiction of the [OSCURATO:PERSONA] of Justice (see, inter alia, [OSCURATO:PERSONA] C‑286/04 P Eurocermex v [OSCURATO:PERSONA]:C:2005:422, paragraph 50, and C‑401/09 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2011:370, paragraph 61).

52. In the present appeal, [OSCURATO:PERSONA], in the fourth part of its single ground of appeal, merely refers generally to a list of [OSCURATO:PERSONA] trade marks containing the word ‘[OSCURATO:PERSONA]’, attached as an annex to the appeal, which it had already produced before the [OSCURATO:PERSONA] and which it claimed demonstrated that there was no likelihood of confusion, without explaining what error of law the [OSCURATO:PERSONA] allegedly made in the judgment under appeal.

53. Therefore, the fourth part of the single ground of appeal must be rejected as being manifestly inadmissible.

54. In the light of the foregoing, the present appeal must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded. Costs

55. In accordance with [OSCURATO:PERSONA] 138(1) of the Rules of Procedure, which applies to appeal proceedings by virtue of [OSCURATO:PERSONA] 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since [OSCURATO:PERSONA] and MIP have applied for an order that [OSCURATO:PERSONA] pay the costs and the latter’s single ground of appeal has been unsuccessful, [OSCURATO:PERSONA] must be ordered to pay the costs. [OSCURATO:PERSONA] part On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders:

1. The appeal is dismissed.

2. [OSCURATO:PERSONA] y Restauraciones SL is to pay the costs.

Anonimizzato ex art. 52 D.Lgs. 196/2003
62013CO0374_EN [OSCURATO:PERSONA] part [OSCURATO:PERSONA] C‑374/13 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 1 July 2013, [OSCURATO:PERSONA] y Restauraciones SL, established in Barcelona (Spain), represented by J. [OSCURATO:PERSONA], abogado, appellant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]), represented by J. [OSCURATO:PERSONA], acting as Agent, defendant at first instance, MIP [OSCURATO:PERSONA] GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate, Rechtsanwalt, intervener at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of A. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], S. Rodin (Rapporteur) and F. Biltgen, Judges, [OSCURATO:PERSONA]: P. Mengozzi, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give its decision by reasoned order, in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following [OSCURATO:PERSONA] 1. By its appeal, [OSCURATO:PERSONA] y Restauraciones SL (‘[OSCURATO:PERSONA]’) seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] in [OSCURATO:PERSONA] T‑284/11 [OSCURATO:PERSONA] y Restauraciones v [OSCURATO:PERSONA] — MIP [OSCURATO:PERSONA] (METROINVEST) EU:T:2013:218 (‘the judgment under appeal’), by which that court dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) ([OSCURATO:PERSONA]) of 17 March 2011 ([OSCURATO:PERSONA] R 954/2010-1) relating to opposition proceedings between MIP [OSCURATO:PERSONA] GmbH & Co. KG (‘MIP’) and [OSCURATO:PERSONA] concerning an application for registration of the word sign ‘METROINVEST’ as a [OSCURATO:PERSONA] trade mark (‘the contested decision’). Legal context 2. [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the [OSCURATO:PERSONA] trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. [OSCURATO:PERSONA], given the date on which the application for registration in question was filed, the present case remains governed by [OSCURATO:PERSONA] 40/94. 3. [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94 provided: ‘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.’ Background to the dispute 4. On 30 July 2006, [OSCURATO:PERSONA] filed at [OSCURATO:PERSONA] an application for registration as a [OSCURATO:PERSONA] trade mark of the word sign ‘METROINVEST’. 5. The services in respect of which registration was sought are in Class 36 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]’), and correspond to the following description: ‘Financial affairs relating only to real estate services; financial services relating only to real estate services; financial planning services relating only to real estate services; real estate affairs; real estate agency services and real estate services provided on the internet; rent and lease negotiations; real estate selection and acquisition; property investment services; property sales, leasing, management and acquisition services; valuation of property; valuations relating to the surveying of buildings; land and estate management; advice on real estate management; real estate operations and transactions; electronic payment services; providing and managing electronic cash systems; account crediting and debiting services’. 6. [OSCURATO:PERSONA] trade mark registration application was published in the [OSCURATO:PERSONA] 39/2008 of 29 September 2008. 7. On 11 November 2008, MIP filed a notice of opposition under [OSCURATO:PERSONA] 42 of [OSCURATO:PERSONA] 40/94 to registration of the mark applied for in respect of all the services referred to in paragraph 5 of the present order. 8. The opposition was based, first, on the earlier German figurative mark, filed on 22 September 2003 and registered on 27 April 2004 under number 30348717, for various goods and services in Classes 1 to 45 of the [OSCURATO:PERSONA], only the services in Class 36 of that agreement corresponding to the following description providing the basis for the opposition: ‘Insurance services; financial services; cash transactions; real estate services’. The intervener claimed the colours blue and yellow for that figurative sign, represented as follows: >image>5 9. The opposition was based, secondly, on the application for a [OSCURATO:PERSONA] figurative mark, filed on 20 March 1998 under number 779116 for various goods and services in Classes 1 to 42 of the [OSCURATO:PERSONA]. The intervener claimed the colour yellow for that figurative sign, represented as follows: >image>6 10. The ground relied on in support of the opposition was the existence of a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. 11. By decision of 26 March 2010, the [OSCURATO:PERSONA] of [OSCURATO:PERSONA] upheld the opposition, taking the view that there was a likelihood of confusion between the earlier German figurative mark, that mark alone constituting a registered mark, and the mark in respect of which registration is sought. 12. On 26 May 2010, [OSCURATO:PERSONA] filed an appeal with [OSCURATO:PERSONA] against the decision of the [OSCURATO:PERSONA]. 13. By the contested decision, the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] dismissed the appeal, confirming the existence of a likelihood of confusion between the earlier German figurative mark and the mark for which registration is sought. Procedure before the [OSCURATO:PERSONA] and the judgment under appeal 14. By application lodged at the [OSCURATO:PERSONA] on 7 June 2011, [OSCURATO:PERSONA] brought an action for annulment of the contested decision before the [OSCURATO:PERSONA]. [OSCURATO:PERSONA] relied on two pleas in law, the first, alleging infringement of Articles 6 and 14 of the [OSCURATO:PERSONA] for the Protection of [OSCURATO:PERSONA] and [OSCURATO:PERSONA], signed in Rome on 4 November 1950 (‘the ECHR’), and the second, infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. 15. In paragraphs 21 to 60 of the judgment under appeal, the [OSCURATO:PERSONA], first, after declaring admissible certain documents produced for the first time before it by [OSCURATO:PERSONA], examined the second plea in law. 16. After considering, in the light of the relevant case-law, the assessment by the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] of the likelihood of confusion between the earlier German figurative mark and the mark in respect of which registration is sought, the [OSCURATO:PERSONA] confirmed the contested decision on that point. 17. In that context, the [OSCURATO:PERSONA] held, in particular, in paragraphs 40 to 48 of the judgment under appeal, that there was some degree of visual, aural and conceptual similarity between the signs at issue and concluded, within the context of a global assessment of the likelihood of confusion, in paragraphs 48 to 59 of the judgment, that there was a likelihood of confusion between those signs having regard, on the one hand, to the distinctive character of the word ‘metro’ in relation to the services concerned, and, on the other, to the descriptive character of the word ‘invest’ with reference to those same services and because the distinctive and dominant element of the two signs at issue was identical and the services concerned were also identical. 18. [OSCURATO:PERSONA] consequently rejected the second plea in law. 19. [OSCURATO:PERSONA], in paragraphs 61 to 79 of the judgment under appeal, the [OSCURATO:PERSONA] also rejected the first plea in law, alleging infringement of Articles 6 and 14 of the ECHR. 20. As regards, in the first place, the alleged infringement of [OSCURATO:PERSONA] 6 of the ECHR, the [OSCURATO:PERSONA], in paragraphs 62 to 70 of the judgment under appeal, rejected that plea in law, holding that the plea in fact concerned an infringement by the [OSCURATO:PERSONA] of Appeal of [OSCURATO:PERSONA] of the obligation to state reasons under [OSCURATO:PERSONA] 73 of [OSCURATO:PERSONA] 40/94, which, in the circumstances of the case, had not however been established. As regards, in the second place, the alleged infringement of [OSCURATO:PERSONA] 14 of the ECHR, which plea in law, according to the [OSCURATO:PERSONA], relates in fact to a lack of consistency within the contested decision and thus to a breach of the principle of equal treatment, the [OSCURATO:PERSONA], in paragraphs 71 to 79 of the judgment under appeal, rejected that plea, holding, in particular, that [OSCURATO:PERSONA] could not rely on an unlawful act committed in another procedure, or on the previous or subsequent decisions of [OSCURATO:PERSONA] for the purposes of casting doubt on the contested decision. 21. Having regard to the foregoing, the [OSCURATO:PERSONA] therefore dismissed the action in its entirety. Forms of order sought by the parties 22. [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should: – set aside the judgment under appeal and, consequently, grant [OSCURATO:PERSONA] trade mark registration application No 7.112.11.3 METROINVEST, for services in Class 36 of the [OSCURATO:PERSONA]; and – order the other parties to pay the costs. 23. [OSCURATO:PERSONA] contends that the [OSCURATO:PERSONA] should dismiss the appeal as being inadmissible or, in the alternative, as being unfounded, and order [OSCURATO:PERSONA] to pay the costs. 24. MIP contends that the appeal should be dismissed and that [OSCURATO:PERSONA] should be ordered to pay the costs incurred by the other parties to the proceedings, including those incurred by MIP. The appeal 25. [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], where the 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], by reasoned order decide to dismiss that appeal in whole or in part. 26. It is appropriate to apply that provision in the present appeal. 27. In support of its appeal, [OSCURATO:PERSONA] raises a single ground of appeal, alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94. That ground of appeal is made up of four parts, alleging, in essence, that the [OSCURATO:PERSONA] erred as to, respectively: – the comparative assessment of the signs; – the global assessment of the likelihood of confusion; – consistency with the case-law of [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA]; and – the pacific coexistence of the trade mark METROINVEST in respect of which registration is sought with other trade marks containing the word ‘[OSCURATO:PERSONA]’ in various classes. 28. Those parts should be examined in turn. The first and second parts of the single ground of appeal Arguments of the parties 29. By the first part of its single ground of appeal, [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] assessed incorrectly the visual, aural and conceptual similarity of the signs at issue. Referring to the relevant settled case-law of the [OSCURATO:PERSONA], it submits, first, that the similarity of the goods or services covered by the signs at issue is offset by a lesser degree of similarity of the word element of those signs. Moreover, the [OSCURATO:PERSONA] did not take into consideration the fact that the signs at issue are not ‘[OSCURATO:PERSONA]’ and ‘INVEST’ as independent words and ‘[OSCURATO:PERSONA]’, but ‘METROINVEST’ and ‘[OSCURATO:PERSONA]’, and that the global assessment of the likelihood of confusion requires the trade mark to be analysed as a whole, and not broken down in an artificial manner. 30. [OSCURATO:PERSONA], [OSCURATO:PERSONA] carries out a visual, aural and conceptual comparison of the signs at issue for the purposes of demonstrating the lack of similarity between those signs. As regards the conceptual comparison in particular, it draws attention to, inter alia, the connection which it is claimed exists between the word ‘[OSCURATO:PERSONA]’ and the word ‘metropole’ and maintains that that argument was not a new plea in law relied on before the [OSCURATO:PERSONA]. 31. In the second part of its single ground of appeal, [OSCURATO:PERSONA] states that, according to the settled case-law of the [OSCURATO:PERSONA], the global assessment of the likelihood of confusion must, in relation to the similarity of the signs at issue, be based on the overall impression produced by them. It claims that it follows from that principle that the assessment concerning the similarity of the signs ought to be made, not on the b asis of the sign as broken down into two independent words, as the [OSCURATO:PERSONA] is alleged to have done in paragraphs 53 to 56 of the judgment under appeal, but on the basis of one word, in this instance, namely, ‘METROINVEST’, which, furthermore, does not as such contain any dominant element. 32. [OSCURATO:PERSONA] and MIP contend that the first and second parts of the single ground of appeal must be rejected as being inadmissible or, in any event, unfounded. Findings of the [OSCURATO:PERSONA] 33. By the first and second parts of the single ground of appeal, [OSCURATO:PERSONA] alleges, in essence, that the [OSCURATO:PERSONA] made errors in the assessment of the similarity of the signs at issue and, consequently, in the global assessment of the likelihood of confusion between them. 34. In this connection, it must be recalled, at the outset, that it is settled case-law that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment must, in relation to the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, [OSCURATO:PERSONA] C‑334/05 P [OSCURATO:PERSONA] v Shaker EU:C:2007:333, paragraphs 34 and 35, and [OSCURATO:PERSONA] C‑498/07 P Aceites del Sur-Coosur v Koipe EU:C:2009:503, paragraphs 59 and 60 and the case-law cited). 35. [OSCURATO:PERSONA] claims, in the first and second parts of the single ground of appeal, that, having regard to the case-law referred to above, the [OSCURATO:PERSONA] ought to have analysed the sign ‘METROINVEST’, not on the basis of the sign broken down into two words, but as a whole, it must be stated that, although according to that case-law the global assessment of the likelihood of confusion must be based on the overall impression given by the signs at issue, this in no way means that, for the purposes of that assessment, their elements or their components, including the various elements making up a single word, cannot be taken into account (see, to that effect, order in [OSCURATO:PERSONA] C‑512/04 P Vitakraft-[OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2005:736, paragraph 23). 36. In this connection, it is apparent from paragraphs 40 to 42 and 53 to 55 of the judgment under appeal, and, in particular, from paragraphs 39 and 47 of that judgment, that the [OSCURATO:PERSONA] did carry out such a global assessment of the likelihood of confusion, taking into account the elements and components of the signs at issue, inasmuch as it compared the signs ‘[OSCURATO:PERSONA]’ and ‘METROINVEST’, the latter taken as a whole. 37. [OSCURATO:PERSONA]’ argument must, therefore, be rejected as being manifestly unfounded. 38. Furthermore, inasmuch as [OSCURATO:PERSONA] disputes the findings made by the [OSCURATO:PERSONA] in relation to the visual, aural and conceptual similarity of the signs at issue with a view to demonstrating that it ought to have concluded that there was no similarity between the signs, the fact of the matter is clearly that [OSCURATO:PERSONA] merely calls in question, without pleading any distortion of the material in the file, the assessment of the facts carried out by the [OSCURATO:PERSONA] in that context. 39. [OSCURATO:PERSONA], [OSCURATO:PERSONA] cannot require the [OSCURATO:PERSONA] to substitute its own assessment for that of the [OSCURATO:PERSONA] in that regard. As is apparent from settled case-law, under [OSCURATO:PERSONA] 256(1) 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] 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 a point of law subject, as such, to review by the [OSCURATO:PERSONA] of Justice on appeal (see, inter alia, [OSCURATO:PERSONA] C‑104/00 P DKV v [OSCURATO:PERSONA]:C:2002:506, paragraph 22; [OSCURATO:PERSONA] C‑412/05 P Alcon v [OSCURATO:PERSONA]:C:2007:252, paragraph 71; [OSCURATO:PERSONA] C‑16/06 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2008:739, paragraph 68; and [OSCURATO:PERSONA] C‑254/09 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2010:488, paragraph 49). 40. As for [OSCURATO:PERSONA]’ argument as to the connection it claims exists between the word ‘[OSCURATO:PERSONA]’ and the word ‘metropole’, suffice it to point out that, even if the [OSCURATO:PERSONA] was wrong to find, in paragraph 47 of the judgment under appeal, that that argument had been raised for the first time during the hearing before it, the [OSCURATO:PERSONA], in paragraph 48 of the judgment, examined that argument only to reject it on the merits. In accordance with the case-law cited in paragraph 39 of the present order, the assessment that the [OSCURATO:PERSONA] carried out in that context may not, in any event, be put in question in the present appeal. 41. Consequently, the first and second parts of the single ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded. The third part of the single ground of appeal Arguments of the parties 42. By the third part of its single ground of appeal, [OSCURATO:PERSONA] claims that there is a contradiction between the judgment under appeal and [OSCURATO:PERSONA]’s decision to reject the opposition filed by [OSCURATO:PERSONA], on the basis of [OSCURATO:PERSONA] trade mark No 7.111.974 GRUPOMETROPOLIS, to registration of the [OSCURATO:PERSONA] figurative mark No 7.585.045 ‘[OSCURATO:PERSONA]’ to the benefit of MIP. [OSCURATO:PERSONA] had, furthermore, contested that decision before [OSCURATO:PERSONA] and before the [OSCURATO:PERSONA]. Notwithstanding the statements made by the [OSCURATO:PERSONA] in paragraph 77 of the judgment under appeal, [OSCURATO:PERSONA] claims that it is necessary, in the interests of legal certainty and consistency in registration policy, to follow the same line and to avoid inconsistency with regard to previous decisions. 43. According to [OSCURATO:PERSONA] and MIP, that part of the single ground of appeal is manifestly inadmissible or, in any event, manifestly unfounded. Findings of the [OSCURATO:PERSONA] 44. As the [OSCURATO:PERSONA] correctly pointed out in paragraph 77 of the judgment under appeal, it is apparent from settled case-law that the lawfulness of decisions of the Boards of Appeal of [OSCURATO:PERSONA] falls to be assessed not on the basis of their decision-making practice, but solely on the basis of [OSCURATO:PERSONA] 40/94, as interpreted by the [OSCURATO:PERSONA] judicature (see, to that effect, [OSCURATO:PERSONA] C‑37/03 P BioID v [OSCURATO:PERSONA]:C:2005:547, paragraph 47, and Alcon v [OSCURATO:PERSONA]:C:2007:252, paragraph 65). 45. Consequently, the Tribunal was entitled to hold, without erring in law, in paragraph 78 of the judgment under appeal, that [OSCURATO:PERSONA] could not reasonably rely, for the purposes of casting doubt on the conclusion reached by the [OSCURATO:PERSONA] of Appeal in the contested decision, on [OSCURATO:PERSONA]’s decision concerning the opposition proceedings relating to the trade mark GRUPOMETROPOLIS and the trade mark [OSCURATO:PERSONA]. 46. Moreover, so far as concerns the alleged contradiction between the judgment under appeal and the case-law of the [OSCURATO:PERSONA], [OSCURATO:PERSONA] has in no way explained why the judgment under appeal is inconsistent in this regard. 47. It follows that the third part of the single ground of appeal must be rejected as being manifestly unfounded. The fourth part of the single ground of appeal Arguments of the parties 48. By the fourth part of its single ground of appeal, [OSCURATO:PERSONA] claims that there are hundreds of other [OSCURATO:PERSONA] trade marks, a list of which is attached to the appeal, which, like the trade mark in respect of which registration is sought, contain the word ‘[OSCURATO:PERSONA]’ and which coexist peacefully. That fact would indicate that there is no real likelihood of confusion at all. 49. [OSCURATO:PERSONA] and MIP submit, in essence, that the fourth part of the single ground of appeal is also manifestly inadmissible or, at least, manifestly unfounded. Findings of the [OSCURATO:PERSONA] 50. It must be recalled that an appeal must indicate precisely the contested elements of the judgment or order which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, [OSCURATO:PERSONA] C‑352/98 P Bergaderm and Goupil v Commission EU:C:2000:361, paragraph 34, and [OSCURATO:PERSONA] C‑131/03 P [OSCURATO:PERSONA] and Others v Commission EU:C:2006:541, paragraph 49). 51. Where an appeal merely reproduces the pleas in law and arguments previously submitted to the [OSCURATO:PERSONA], without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, it fails to satisfy that requirement. In reality, such an appeal amounts to no more than a request for re-examination of the application submitted to the [OSCURATO:PERSONA], which falls outside the jurisdiction of the [OSCURATO:PERSONA] of Justice (see, inter alia, [OSCURATO:PERSONA] C‑286/04 P Eurocermex v [OSCURATO:PERSONA]:C:2005:422, paragraph 50, and C‑401/09 P [OSCURATO:PERSONA] v [OSCURATO:PERSONA]:C:2011:370, paragraph 61). 52. In the present appeal, [OSCURATO:PERSONA], in the fourth part of its single ground of appeal, merely refers generally to a list of [OSCURATO:PERSONA] trade marks containing the word ‘[OSCURATO:PERSONA]’, attached as an annex to the appeal, which it had already produced before the [OSCURATO:PERSONA] and which it claimed demonstrated that there was no likelihood of confusion, without explaining what error of law the [OSCURATO:PERSONA] allegedly made in the judgment under appeal. 53. Therefore, the fourth part of the single ground of appeal must be rejected as being manifestly inadmissible. 54. In the light of the foregoing, the present appeal must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded. Costs 55. In accordance with [OSCURATO:PERSONA] 138(1) of the Rules of Procedure, which applies to appeal proceedings by virtue of [OSCURATO:PERSONA] 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since [OSCURATO:PERSONA] and MIP have applied for an order that [OSCURATO:PERSONA] pay the costs and the latter’s single ground of appeal has been unsuccessful, [OSCURATO:PERSONA] must be ordered to pay the costs. [OSCURATO:PERSONA] part On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed. 2. [OSCURATO:PERSONA] y Restauraciones SL is to pay the costs.
Sentenza Corte di giustizia UE n. 954/2014 — Fons Iuris — Fons Iuris