Corte di giustizia UE n. 207/2019

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 1 October 2019 ( * ) (Appeal — [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] — EU trade mark — Opposition proceedings — Application for registration of the figurative mark containing the word element ‘pear’ — Earlier figurative mark depicting an apple — Relative ground for refusal — [OSCURATO:PERSONA] (EC) No 207/2009 — [OSCURATO:PERSONA] 8(5) — No similarity between the signs at issue — Appeal manifestly unfounded) [OSCURATO:PERSONA] C‑295/19 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 10 April 2019, [OSCURATO:PERSONA]., established in Cupertino ([OSCURATO:PERSONA]), represented by G. Tritton and J. [OSCURATO:PERSONA], [OSCURATO:PERSONA], instructed by J. Olsen and P. Andreottola, Solicitors, appellant, The other parties to the proceedings being: [OSCURATO:PERSONA], established in Macau (China), applicant at first instance, [OSCURATO:PERSONA] (EUIPO), defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of F. [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], C.G. Fernlund and L.S. Rossi, Judges, [OSCURATO:PERSONA]: E. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1 By its appeal, [OSCURATO:PERSONA]. asks the [OSCURATO:PERSONA] of Justice to set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 31 January 2019, [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) (T‑215/17, not published, ‘the judgment under appeal’, EU:T:2019:45), by which the [OSCURATO:PERSONA] upheld the action of [OSCURATO:PERSONA] for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 18 January 2017 ([OSCURATO:PERSONA] R 860/2016-5) relating to opposition proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA]. 2 Those opposition proceedings were filed by [OSCURATO:PERSONA], proprietor of an earlier EU figurative mark in the shape of an apple, against [OSCURATO:PERSONA]’ application for registration as an EU trade mark of a figurative sign in the shape of a pear accompanied by the word element ‘pear’. 3 In support of its appeal, the appellant relies on a single ground, alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended by [OSCURATO:PERSONA] (EU) 2015/2424 of the [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA] of 16 December 2015 (OJ 2015 L 341, p. 21) (‘[OSCURATO:PERSONA] 207/2009’). The appeal 4 [OSCURATO:PERSONA] 181 of its Rules of Procedure, 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], decide by reasoned order to dismiss that appeal in whole or in part. 5 That provision must be applied in the present case. 6 On 9 July 2019, the [OSCURATO:PERSONA] took the following position: ‘1.      For the reasons set out below, I propose that the [OSCURATO:PERSONA] should dismiss the appeal in the present case as being manifestly unfounded, in accordance with [OSCURATO:PERSONA] 181 of its Rules of Procedure, and order the appellant to pay the costs, in accordance with [OSCURATO:PERSONA] 137 and [OSCURATO:PERSONA] 184(1) of the Rules of Procedure. 2.      The appellant relies on a single ground in support of its appeal, alleging infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] [No 207/2009]. 3.      I recall that, under the terms of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009, “upon opposition by the proprietor of a registered 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, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] or, 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” … 4.      As regards the first part of the single ground of appeal, the appellant complains, in essence, that the [OSCURATO:PERSONA] infringed [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 in that it never examined, in actual fact, whether there was any similarity between the two marks at issue, and that it ruled out that there was any such similarity, and refused to apply that provision, based on an abstract analysis. According to the appellant, the legal question which the [OSCURATO:PERSONA] ought to have addressed was whether the differences between those marks were sufficient to preclude any link being established between them by the relevant public, given the distinctive character and international reputation of the earlier mark and the high level of attention of the relevant public. 5.      In my view, that part of the single ground of appeal should be rejected, since the [OSCURATO:PERSONA] concluded that the marks at issue are not similar and therefore annulled the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 18 January 2017 ([OSCURATO:PERSONA] R 860/2016-5) relating to opposition proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA], which had found that there was a low degree of similarity at a visual and conceptual level, with the [OSCURATO:PERSONA] doing so without examining the other parts of the single plea in the action. 6.      In that regard, it suffices to note that the [OSCURATO:PERSONA] has adhered to the case-law of the [OSCURATO:PERSONA] of Justice, according to which the trade marks at issue must be identical or similar as a precondition for [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 to apply (see, to that effect, order of 27 October 2010, Guedes — Indústria e Comércio v OHIM , C‑342/09 P, not published, EU:C:2010:639, paragraph 25), and the similarity must be sufficient for the relevant section of the public to establish a link between those marks (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177, paragraphs 52 and 53). 7.      First, as the [OSCURATO:PERSONA] noted in paragraph 65 of the latter judgment, although the global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may, therefore, be offset by the strong distinctive character of the earlier mark (see, to that effect, judgment of 7 May 2009, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] (Proprietary) , C‑398/07 P, not published, EU:C:2009:288, paragraph 33), the fact remains that where there is no similarity between the earlier mark and the contested mark, the reputation of or the well-known nature attaching to the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue or that the relevant public makes a link between them (see, to that effect, judgment of 2 September 2010, [OSCURATO:PERSONA] v OHIM , C‑254/09 P, EU:C:2010:488, paragraph 53 and the case-law cited). 8.      Secondly, as is apparent from paragraph 66 of the judgment of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177), referred to by the appellant itself, [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 is manifestly inapplicable where the [OSCURATO:PERSONA] has ruled out any similarity between the marks at issue and it is only if there is some similarity, even faint, between those marks that the [OSCURATO:PERSONA] must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between those marks, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a link made between those marks by the relevant public. 9.      For the sake of completeness, it might be noted that, contrary to what the appellant claims, the [OSCURATO:PERSONA] did in fact carry out a specific and detailed examination of the degree of similarity of the marks at issue, at both a visual level (paragraphs 24 to 54 of the judgment under appeal) and a conceptual level (paragraphs 55 to 79 of the judgment under appeal), taking into account the perception of those marks by the relevant public. 10.      Accordingly, the first part of the single ground of appeal must be rejected as being manifestly unfounded. 11.      In the second part of single ground of appeal, the appellant complains, in essence, that the [OSCURATO:PERSONA] failed to take account of the services and goods in respect of which protection was sought when assessing the similarity of the two marks at issue. The appellant argues that when determining whether two figurative marks depicting an apple and a pear are similar at a conceptual level, such that the relevant public when confronted by the contested mark would call to mind the earlier mark, it is a statement of the obvious that the public would be much less likely to call to mind the earlier mark if both marks were used for fruits or fruit and vegetable delivery services, for instance, as opposed to electronic goods where an apple and pear cannot be said, in any way, to describe a characteristic of those goods. 12.      In arguing that the absence of a relationship between the marks at issue and the products and services covered by those marks is relevant to assessing whether those marks are conceptually similar, the appellant misconstrues the scope of the judgment of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177), rightly cited by the [OSCURATO:PERSONA] in paragraph 60 of the judgment under appeal; in paragraph 58 of its judgment, the [OSCURATO:PERSONA] of Justice held that the distinctive character of the earlier mark constitutes a relevant factor not for the purposes of assessing whether the marks at issue are similar, but whether the relevant section of the public makes a link between them. Indeed, in paragraph 60 of the judgment under appeal, the [OSCURATO:PERSONA] rejects the argument that ‘account should be taken … of the fact that there is no relationship between pears and apples and the goods and services covered by the conflicting marks’. 13.      It follows that the second part of the single ground of appeal must also be rejected as being manifestly unfounded. 14.      Lastly, as regards the third part of the single ground of appeal, the appellant complains that the [OSCURATO:PERSONA], in essence, first, failed to take into consideration the many characteristics shared by the marks at issue when assessing their conceptual similarity. Secondly, the appellant disputes the consideration given by the [OSCURATO:PERSONA] to the actual depiction of those marks. 15.      I am of the view that the [OSCURATO:PERSONA] has adhered to the case-law of the [OSCURATO:PERSONA] of Justice both in the context of its assessment and in support of its decision that there is no conceptual similarity between the marks at issue. 16.      In paragraph 71 of the judgment under appeal, the [OSCURATO:PERSONA] made a correct assessment of the relevance of the elements in the context of the conceptual comparison of the marks, in line with the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528). In that regard, the [OSCURATO:PERSONA] specified the context of that judgment, delivered in the context of a reference for a preliminary ruling, in which the [OSCURATO:PERSONA] of Justice did not rule on that question or make a comparison of the signs at issue in the case giving rise to that judgment, but rather relied on findings of the referring court that those signs were conceptually similar. 17.      Furthermore, the [OSCURATO:PERSONA] noted that the conceptual similarity between the signs at issue in that case was based, according to the referring court, on the fact that both used the image of a ‘bounding feline’ and was not, therefore, based on the fact that the pumas and cheetahs at issue in that case shared several characteristics in real life. 18.      In my view, it suffices to note that the [OSCURATO:PERSONA] correctly applied the case-law established by the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), particularly in paragraph 24 of that judgment, as well as its own case-law, set out in paragraph 22 of the judgment under appeal, by relying on a comparison of the marks at issue based on an overall impression given by those marks. 19.      Moreover, as regards the manner in which the [OSCURATO:PERSONA] took into account the actual depiction of the marks at issue, it should be added that the obligation to state reasons does not require the [OSCURATO:PERSONA] to provide an account that follows exhaustively and one by one all the reasoning articulated by the parties to the case and the [OSCURATO:PERSONA] reasoning may therefore be implicit, provided that it enables the persons concerned to know why the [OSCURATO:PERSONA] has not upheld their arguments and provides the [OSCURATO:PERSONA] of Justice with sufficient material for it to exercise its power of review. 20.      That is so in the present case. Accordingly, the third part of the single ground of appeal must also be rejected as being manifestly unfounded. 21.      Accordingly, the single ground of appeal must, in my view, be rejected in its entirety as being manifestly unfounded. 22.      Since the single ground must be rejected, the appeal must be dismissed and the appellant ordered to pay the costs, in accordance with [OSCURATO:PERSONA] 137 and [OSCURATO:PERSONA] 184(1) of the Rules of Procedure.’ 7 For the reasons given by the [OSCURATO:PERSONA], the appeal must be dismissed as being manifestly unfounded. [OSCURATO:PERSONA] 137 of the Rules of Procedure of the [OSCURATO:PERSONA], applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) thereof, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the other parties and, therefore, before they could have incurred costs, [OSCURATO:PERSONA] must be ordered to bear its own costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed as being manifestly unfounded. 2. [OSCURATO:PERSONA]. shall bear its own costs. Luxembourg, 1 October 2019. A. [OSCURATO:PERSONA] F. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.