Basic AG Lebensmittelhandel v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-372/11)

Contents

Judgment of the General Court (Sixth Chamber)26 June 2014^note(Community trade mark — Opposition proceedings — Application for the Community figurative mark basic — Earlier Community figurative mark BASIC — Relative ground for refusal — Similarity of the services — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)In Case T‑372/11,Basic AG Lebensmittelhandel, established in Munich (Germany), represented by D. Altenburg and H. Bickel, lawyers,vOffice for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,Repsol YPF, SA, established in Madrid (Spain), represented by J.-B. Devaureix, lawyer,THE GENERAL COURT (Sixth Chamber),composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,Registrar: C. Heeren, Administrator,having regard to the application lodged at the Registry of the General Court on 15 July 2011,having regard to the response of OHIM lodged at the Registry on 15 November 2011,having regard to the response of the intervener lodged at the Registry on 16 November 2011,having regard to the change in the composition of the Chambers of the General Court,further to the hearing on 12 February 2014,gives the following

Judgment

Background to the dispute

1On 14 March 2008, the applicant, Basic AG Lebensmittelhandel, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2The mark in respect of which registration was sought is the following figurative sign:

3The goods and services for which registration was sought are in, inter alia, Classes 35 and 39 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:— Class 35: ‘Franchising, namely providing of commercial and organisational know-how, for a fee, for the marketing of goods and services; business administration, merchandising (sales promotion), dialogue marketing, business consultancy and business management with regard to the planning, arranging and conducting of customer attraction and customer loyalty systems, in particular in the field of mailing, discount, voucher and reward schemes; issuing information and data carriers, for others (included in class 35), for entering discount, voucher and reward transactions, in particular voucher books, credit cards and cheque cards containing visually readable and/or machine-readable identification data and/or information, in particular magnetic cards and chip cards (smart cards); sales promotion, conducting prize games and competitions as advertising initiatives, included in class 35; retail and wholesale services in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, medicated bath preparations, food supplements for medical and non-medical purposes, paper, cardboard and goods made from these materials, printed matter, photographs, stationery, instructional and teaching material, plastic materials for packaging, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, bags, rucksacks, umbrellas, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes, brushmaking materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, clothing, footwear, headgear, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, foodstuffs, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to pharmacy goods, cosmetics, perfumery, stationery, textiles, beverages and foodstuffs’;— Class 39: ‘Transport; packaging and storage of goods; travel arrangement’.

4The Community trade mark application was published in Community Trade Marks Bulletin No 23/2008 of 9 June 2008.

5On 8 September 2008, the intervener, Repsol YPF SA, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

6The opposition was based on the earlier Community figurative mark reproduced below:

7The services covered by the earlier mark forming the basis of the opposition are in Classes 35, 37 and 39 and correspond, for each of those classes, to the following description:— Class 35: ‘Commercial retailing of tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuel for cars; advertising; office functions’;— Class 37: ‘Building construction; repair; installation, service stations (petrol stations); repair of vehicles; maintenance, greasing and washing of vehicles; repair of tyres’;— Class 39: ‘Distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuels and fuel for cars, transport; packaging, storage and supply of goods of all kinds, including fuels; travel arrangement’.

8The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9On 28 May 2010, the Opposition Division upheld the opposition in part: the opposition was upheld in respect of some of the services in Class 35 and in respect of those in Class 39.

10On 28 July 2010, the intervener filed a notice of appeal at OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11By decision of 31 March 2011 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal in part. In particular, the Board of Appeal considered that ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ covered by the mark applied for in Class 35 were similar to the services in Class 39 covered by the earlier mark. On the other hand, the Board of Appeal found that the other services in Class 35 covered by the mark applied for were different from the services covered by the earlier mark. The Board of Appeal found that there was a low degree of visual similarity between the marks at issue but that they were phonetically and conceptually identical. Moreover, it found that the distinctive character of the earlier mark as a whole was rather low.

12In those circumstances, the Board of Appeal concluded that there was a likelihood of confusion in respect of the services found to be similar referred to in paragraph 11 above. Consequently, the Board of Appeal upheld the opposition and rejected the application for registration of the Community trade mark in respect of those services, and rejected the appeal in respect of the other services in Class 35.

Forms of order sought

13The applicant claims that the Court should:— annul the contested decision;— dismiss the appeal against the Opposition Division’s decision;— order OHIM to pay the costs.

14OHIM and the intervener contend that the Court should:— dismiss the action;— order the applicant to pay the costs.

15At the hearing, the applicant amended the form of order sought by it to the effect that it now claims that the Court should:— amend the contested decision to the effect that the appeal against the Opposition Division’s decision be dismissed in its entirety;— alternatively, annul the contested decision to the extent that it upholds the intervener’s appeal;— order OHIM to pay the costs.

16At the hearing, the applicant reiterated its request for a stay of proceedings following the decision of the Cancellation Division of OHIM of 8 October 2013 (5863 C), by which the Cancellation Division declared the earlier mark invalid in respect of some of the services at issue. In that context, the intervener requested that the Court take into consideration its appeal against that decision. The Court dismissed the request for a stay of the proceedings.

Law

17The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

18The applicant submits that there is no similarity between the services in Class 35 covered by the mark applied for and the services in Class 39 covered by the earlier mark and that there is therefore no likelihood of confusion between the marks at issue.

19OHIM and the intervener dispute the applicant’s arguments.

20According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, an 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.

21According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

22For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

23The question as to whether the Board of Appeal correctly held that there was a likelihood of confusion between the marks at issue as regards some of the services in Class 35 covered by the mark applied for and the services in Class 39 covered by the earlier mark must be examined in the light of those considerations.

The relevant public

24According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

25In the first place, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the services in question in that territory. That finding is not disputed in the present case.

26In the second place, the Board of Appeal found, in paragraph 15 of the contested decision, that the relevant public was composed of professionals as regards the services in Class 39 covered by the earlier mark. That finding is not challenged by the applicant. The applicant merely states that the retail services in Class 35 covered by the mark applied for are not directed at professionals but at end consumers.

27In that regard, it should be borne in mind that only the relevant public common to the services at issue should be taken into account for the purposes of the comparison of those services. It is settled case-law that the relevant public is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 30 September 2010 in Case T‑270/09 PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28 and the case-law cited).

28In the present case, it is common case that the services in Class 39 covered by the earlier mark are distribution services. Those services are aimed at a professional public.

29Regarding the retail services in Class 35 covered by the mark applied for which are at issue in the present case, the applicant is wrong to attempt, by the line of argument raised in paragraph 26 above, to suggest that those services could not be aimed at a professional public. Although it is true that such services are directed at the end consumer, it is also true that they are additionally directed at the manufacturer of the product and at any business intermediaries operating upstream of the final retail sale, as services enabling those economic operators to carry out the final marketing of the product.

30The Board of Appeal was therefore correct to find, in essence, that the relevant public is composed of professionals, who alone are likely to use both the services in Class 35 covered by the mark applied for which are at issue in the present case and those in Class 39 covered by the earlier mark, also at issue in the present case.

31In those circumstances, the Court upholds the definition of the relevant public relied on by the Board of Appeal in paragraph 15 of the contested decision as regards the services in Classes 35 and 39.

The comparison of the services

32According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).

33Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same undertaking is responsible for manufacturing these goods or supplying these services. It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking. Accordingly, services intended for different publics cannot be complementary (see easyHotel, paragraph 22 above, paragraphs 57 and 58 and the case-law cited).

34With respect to the OHIM decisions relied on by the parties, it should also be borne in mind that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-1541, paragraphs 73 to 77).

35With respect to the national decisions on which the parties rely, it is apparent from settled case-law that registrations already made in Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark (Case T-122/99 Procter & Gamble v OHIM (Soap shape) [2000] ECR II-265, paragraph 61, and Case T-337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II-2597, paragraph 58).

36It is in the light of those considerations that ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ in Class 35 covered by the mark applied for and ‘distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals’ in Class 39 covered by the earlier mark should be compared.

The similarity between the goods concerned by the services at issue

37The applicant submits that the goods concerned by the services at issue in the present case, namely beverages and foodstuffs, are not sufficiently similar to establish that wholesale and retail services relating to beverages are similar to distribution services relating to foodstuffs. In its submission, beverages and foodstuffs are, by their nature, distributed, marketed and consumed differently.

38At the hearing, the parties agreed with the interpretation that both the goods concerned by the services at issue and the services themselves must be compared.

39In that regard, the Board of Appeal correctly stated in paragraphs 26 and 27 of the contested decision that the goods concerned by ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ covered by the mark applied for were identical or highly similar to ‘staple foodstuffs’ covered by the earlier mark. Beverages and foodstuffs are of the same nature and have the same purpose in that they are intended for human consumption. Moreover, those goods are likely to be processed by the same undertakings, are generally sold in the same sales outlets and are also often consumed at the same time.

40In those circumstances, the applicant’s arguments, which are aimed at contesting the existence of similarity between the services in question on account of the absence of sufficient similarity between the goods concerned by those services, must be rejected.

The definition of distribution and wholesale services

41The applicant claims that the Board of Appeal was wrong to find that the services at issue in Class 35 were identical or similar to the services in Class 39 covered by the earlier mark. The Board of Appeal based its reasoning on a misinterpretation of the word ‘distribution’, the meaning of which should be inferred from the Nice Classification. The intervener interpreted the word ‘distribution’ by deliberately choosing to register the earlier mark in respect of, in particular, services in Class 39. Accordingly, the term ‘distribution’ relates only to loading, delivery, storage and transport services.

42With respect, first, to the definition of distribution and wholesale services, the applicant’s argument relating to the understanding of the words ‘distribution’ and ‘wholesale’ in everyday language must be rejected. The applicant does not specify how the definitions of those concepts that it advances preclude the services at issue being identical.

43With respect, second, to the alleged decisive nature of the Nice Classification in the definition of services, it should be borne in mind that, according to Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, that classification is to serve exclusively administrative purposes. Thus, that classification cannot determine, in itself, the nature and characteristics of the services at issue in the present case.

44In those circumstances, the definition of the concept of distribution advanced by the applicant, which is based on the wording of Class 39, cannot be accepted. Moreover, the explanatory note to Class 39, which the applicant cites, does not constitute an exhaustive enumeration of the services covered by that class.

The alleged lack of similarity between distribution and wholesale services

45According to the applicant, wholesale services are different from distribution services. Having regard to OHIM decisions and the explanatory notes to Classes 35 and 39 of the Nice Classification, those two categories of services are not similar, irrespective of their nature or purpose, and cannot be considered to be complementary in the light of the relevant public. Moreover, unlike distribution services, wholesale and retail services do not include the transport of goods.

46In that regard, it is also apparent from Rule 2(4) of Regulation No 2868/95 (see paragraph 43 above) that services may not be regarded as dissimilar from each other on the sole ground that they appear in different classes under the Nice Classification. That rule is supported by the case-law according to which goods or services do not necessarily have to fall within the same class, or in the same category within a given class, in order reasonably to be the subject of a comparison and give rise to a finding of similarity or of lack of similarity between those goods or services (see judgment of 14 December 2006 in Case T‑392/04 Gagliardi v OHIM — Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraph 77 and the case-law cited). Accordingly, the applicant’s argument relating to the intervener’s deliberate choice to register the earlier mark solely for services in Class 39 must be rejected.

47Moreover, the Court finds that distribution and wholesale services enable a product to be marketed and have an intermediate function between the production and final consumption of a product. Those two categories of services contribute to the attainment of the same ultimate objective which is the sale to the end consumer.

48In the light of the case-law cited in paragraph 33 above, the Court further notes the close link between those two categories of services since a wholesaler may use distribution services and a distributor may also use wholesale services. Moreover, a wholesaler may offer distribution services, just as wholesale may form part of the services offered by a distributor.

49The applicant’s claim that distribution is not characteristic of the nature of wholesale services — even on the assumption that it is well founded — is not capable, in itself, of precluding similarity between the two categories of services.

50The applicant’s other arguments are based on the erroneous premiss that distribution services are limited to transport and delivery services. However, those services account for only some of the activities covered by distribution services.

51It follows from the foregoing that the Board of Appeal correctly held, in paragraph 27 of the contested decision, that there is similarity between the wholesale services covered by the mark applied for and the distribution services covered by the earlier mark, the goods covered by those services being identical or highly similar.

The alleged lack of similarity between distribution and retail services

52The applicant claims that the Board of Appeal was wrong to compare the services at issue in the present case from the point of the view of the manufacturer given that retail services are directed at end consumers. The applicant also points out that those two categories of services are different, both in terms of their nature and purpose, and are not complementary from the point of view of either the manufacturer or the end consumer. In addition, retailers do not offer delivery services to third parties.

53In that regard, it is apparent from paragraph 21 above that the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the services in question. Moreover, it was found, in paragraphs 26 to 31 above, that the relevant public was composed of professionals. Accordingly, the Board of Appeal did not err by not placing itself in the position of the end consumer.

54As regards the alleged distinct nature of the objective of retail services and the objective of distribution services, the Court would point out that those services share the same ultimate objective, which is the sale to the end consumer. As the Board of Appeal correctly found in paragraph 28 of the contested decision, those two categories of services consist in bringing goods to end consumers. That assessment is not contradicted by the case-law according to which the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, each activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction, and that that activity consists, in particular, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (see Case C-418/02 Praktiker Bau- und Heimwerkermärkte [2005] ECR I-5873, paragraph 34, and judgment of 15 February 2011 in Case T‑213/09 Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), not published in the ECR, paragraph 33 and the case-law cited).

55In any event, as the intervener correctly observed at the hearing, the applicant may not base its line of argument on paragraph 34 of Praktiker Bau- und Heimwerkermärkte, paragraph 54 above. That case-law stems from the limited context of the reference for a preliminary ruling made by the Bundespatentgericht (Federal Patent Court), which asked the Court of Justice whether retail trade in goods constitutes a service within the meaning of Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). The Court’s interpretation in that case cannot constitute an exhaustive definition of general scope of the concept of retail services.

56In the light of the case-law cited in paragraph 33 above, the Court upholds the Board of Appeal’s finding that retail and distribution services are complementary. Suppliers of retail services are generally dependent on the services of distributors to carry out their activities, in particular in so far as distributors dispatch goods to their sales outlets. Moreover, since distribution and retail activities pursue the same objective and occur at a relatively advanced stage of the marketing process, it is possible that the relevant public will think that those services are carried out by the same undertaking.

57In those circumstances, the Board of Appeal correctly held, in paragraph 28 of the contested decision, that distribution and retail services are similar where goods are identical or highly similar.

The comparison of the signs

58The Board of Appeal correctly found that there was a low degree of visual similarity between the marks at issue but that they were phonetically and conceptually identical; moreover, this is not contested by the parties.

The likelihood of confusion

59In the present case, the Court considers that the assessment of the Board of Appeal, which found, in paragraph 42 of the contested decision, that the distinctive character of the earlier mark as a whole was rather low, is correct; moreover, that assessment is not contested by the parties.

60In the global assessment of the likelihood of confusion, it should therefore be borne in mind that the services at issue are similar, that the signs at issue are visually similar to a low degree, that they are phonetically and conceptually identical, and that the distinctive character of the earlier mark is low. Accordingly, the Board of Appeal correctly found that there is a likelihood of confusion on the part of the relevant public.

61It follows from all the foregoing that the single plea in law must be rejected as unfounded.

62The action must therefore be dismissed in its entirety.

Costs

63Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

Operative part

On those grounds,THE GENERAL COURT (Sixth Chamber)hereby:

1.Dismisses the action;

2.Orders Basic AG Lebensmittelhandel to pay the costs.

Delivered in open court in Luxembourg on 26 June 2014.