Corte di giustizia UE n. 2808/2017

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 15 June 2017 ( * ) (Appeal — [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice — EU trade mark — Opposition proceedings — Application for registration of the figurative mark including the word element ‘fortune’ — Partial rejection of the application for registration) [OSCURATO:PERSONA] C‑23/17 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 18 January 2017, [OSCURATO:PERSONA] sp. z o.o., established in Warsaw (Poland), represented by K. Popławska, adwokat, appellant, the other party to the proceedings being: [OSCURATO:PERSONA] (EUIPO), defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of E. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], C.G. Fernlund (Rapporteur) and S. Rodin, 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, pursuant to [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] sp. z o.o. seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 8 November 2016, [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] (fortune) (T‑579/15, not published, ‘the judgment under appeal’, EU:T:2016:644), by which the [OSCURATO:PERSONA] dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 7 August 2015 ([OSCURATO:PERSONA] R 2808/2014-5), relating to opposition proceedings between [OSCURATO:PERSONA] GmbH & Co. KG and [OSCURATO:PERSONA]. 2 In support of its appeal, [OSCURATO:PERSONA] raises a single ground of appeal, divided into a number of complaints, alleging misinterpretation of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1). The appeal 3 [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, 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. 4 That provision must be applied in the present case. 5 On 10 May 2017, the [OSCURATO:PERSONA] took the following position: ‘1      By its first complaint, [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] looked only for similarities between the signs at issue, and did not take into account the differences between them. 2      According to the settled case-law of the [OSCURATO:PERSONA], 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 assessment must, so far as concerns the visual, phonetic or conceptual similarities of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraphs 34 and 35). 3      Contrary to what is claimed by [OSCURATO:PERSONA], the [OSCURATO:PERSONA] did in fact carry out, in the judgment under appeal, just such a global assessment of the likelihood of confusion. In paragraphs 37 to 43, 48 to 50 and 56 to 58 of that judgment, the [OSCURATO:PERSONA] examined in detail the visual, phonetic and conceptual similarity of the signs at issue on the basis of the overall impression given by them. In the context of that examination, the [OSCURATO:PERSONA] duly took into account not only the elements that were similar but also the elements that distinguished them (paragraphs 42, 48 and 58 of that judgment), and stated the reasons why the latter were unable to offset the similarities identified. The first complaint of the single ground of appeal should therefore be rejected as being manifestly unfounded. 4      By its second complaint, [OSCURATO:PERSONA] alleges that the [OSCURATO:PERSONA] carried out a separate examination of each of the elements of which the signs at issue are composed and not, as the relevant case-law requires, a global comparison of the signs, for the purposes of assessing whether there is a likelihood of confusion. 5      That complaint is based on what is clearly a misreading of the judgment under appeal. In paragraphs 40 to 42, 48 to 50 and 56 to 58 of that judgment, having set out all the elements of the marks at issue, the [OSCURATO:PERSONA] identified the dominant element of those marks before going on to make a global comparison of the marks. In so doing, the [OSCURATO:PERSONA] correctly applied the case-law cited in paragraph 2 of this position. The second complaint should therefore be rejected as being manifestly unfounded. 6      By its third complaint, [OSCURATO:PERSONA] submits that the [OSCURATO:PERSONA] failed to take account of the fact that certain elements of the trade mark applied for are not negligible and have a significant impact on the overall perception of that trade mark. [OSCURATO:PERSONA] disputes the dominant nature of the element “fortune” and emphasises the visual differences between the signs at issue. 7      This complaint is really designed to challenge the findings of fact made by the [OSCURATO:PERSONA]. [OSCURATO:PERSONA] has not claimed any distortion by the [OSCURATO:PERSONA] in that respect, such findings fall within the appraisal of the facts and of the evidence by the [OSCURATO:PERSONA]. Consequently, this complaint is manifestly inadmissible. 8      In any event, the complaint is also manifestly unfounded. In so far as [OSCURATO:PERSONA] thereby maintains that the [OSCURATO:PERSONA] relied solely on the dominant element of the signs at issue — that is to say, the word “fortune” — in order to carry out a global assessment of the similarity of those signs, the complaint is based on what is clearly a misreading of the judgment under appeal. While the [OSCURATO:PERSONA] did indeed consider that element to dominate the signs at issue, it nevertheless included the other elements of those signs in its comparison (see, in that regard, paragraphs 39 to 44 of the judgment under appeal). 9      By the fourth complaint of the single ground of appeal, [OSCURATO:PERSONA] submits that the [OSCURATO:PERSONA] failed to take into account the judgment of 4 February 2014, [OSCURATO:PERSONA] v OHIM — Diset (MAGNEXT) (T‑604/11 and T‑292/12, not published, EU:T:2014:56, paragraph 29) as an example of a well-executed comparison between a word mark and a figurative mark containing a dominant word element. 10      There is no contradiction between [OSCURATO:PERSONA] argument, thus construed, and the [OSCURATO:PERSONA] finding in paragraph 44 of the judgment under appeal, according to which the [OSCURATO:PERSONA] declined to acknowledge any fundamental principle as having been established by that case-law. The fourth complaint of the single ground of appeal should therefore be rejected as being manifestly unfounded. 11      By the fifth complaint of the single ground of appeal, [OSCURATO:PERSONA] takes issue with the way in which the trade marks at issue were compared. It claims that the [OSCURATO:PERSONA] concluded that the fact that one element of one of the signs is similar to an element of the other sign is sufficient for the relevant public to associate the two signs in question, whereas the case-law confirmed that there may be trade marks the overall impression of which is different despite the fact that they share a common element, in particular where the comparison being made is between a word mark and a word and figurative mark. 12      This complaint, under the guise of arguments alleging that the case-law of the [OSCURATO:PERSONA] has been disregarded, is in fact designed to challenge afresh the assessment of the similarity of the marks at issue, which falls within the appraisal of the facts by the [OSCURATO:PERSONA]. Consequently, given that no distortion of the facts has been alleged, the complaint should be rejected as being manifestly inadmissible. 13      In addition, this complaint is based on a misreading of the judgment under appeal and, as such, is manifestly unfounded. Although the [OSCURATO:PERSONA] based its assessment in particular on the element “fortune” which dominates the signs at issue, it did not confine its assessment to that common element alone (see, in that regard, paragraphs 3 and 8 of the present position). 14      Having regard to the foregoing, I propose that the [OSCURATO:PERSONA] dismiss the appeal, in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure, as being in part manifestly inadmissible and in part manifestly unfounded, and that [OSCURATO:PERSONA] be ordered to bear its own costs.’ 6 On the same grounds as those stated by the [OSCURATO:PERSONA], the appeal must be dismissed as being in part manifestly inadmissible and in part manifestly unfounded. Costs 7 [OSCURATO:PERSONA] 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since the present order has been adopted before the appeal has been served on the defendant and, therefore, before the latter 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. 2. [OSCURATO:PERSONA] sp. z o.o. shall bear its own costs. Luxembourg, 15 June 2017. A. [OSCURATO:PERSONA] E. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.