Contents
Judgment of the General Court (Sixth Chamber)19 July 2016note(EU trade mark — Invalidity proceedings — EU figurative mark CALCILITE — Earlier EU word mark Calcilit — Relative ground for refusal — Likelihood of confusion — Similarity of the goods — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Relevant public — Public common to the goods in question)In Case T‑742/14,Alpha Calcit Füllstoffgesellschaft mbH, established in Cologne (Germany), represented by F. Hauck, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingMateris Paints Italia SpA, established in Novate Milanese (Italy), represented by P.L. Roncaglia, F. Rossi and N. Parrotta, lawyers,THE GENERAL COURT (Sixth Chamber),composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,Registrar: E. Coulon,having regard to the application lodged at the Court Registry on 3 November 2014,having regard to the response of EUIPO lodged at the Court Registry on 23 February 2015,having regard to the response of the intervener lodged at the Court Registry on 13 March 2015,having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,gives the following
Judgment
Background to the dispute
1On 15 May 2006, the intervener, Materis Paints Italia SpA (then Materis Coatings Italia SpA), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2The mark in respect of which registration was sought is the following figurative sign:
3The goods in respect of which registration was initially sought are in Classes 2 and 19 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:— Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists’;— Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.
4The EU trade mark application was published in Community Trade Marks Bulletin No 28/2008 of 14 July 2008.
5Following examination of the trade mark application and, in particular, a notice of opposition to registration of that mark filed by the applicant, Alpha Calcit Füllstoffgesellschaft mbH, pursuant to Article 41 of Regulation No 207/2009, the sign in question was registered as an EU trade mark on 9 February 2012 under No 5074745 in respect of goods in Classes 2 and 19 and corresponding, for each of those classes, to the following description:— Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists’;— Class 19: ‘Pargets’.
6On 13 February 2012, the applicant filed an application for a declaration of invalidity against the EU trade mark registered under No 5074745 on the basis of Article 53(1)(a) of Regulation No 207/2009 and of Article 8(1)(a) and (b) and Article 8(5) of that regulation.
7The trade mark relied on in support of the application for a declaration of invalidity was the earlier EU word mark Calcilit, registered on 29 November 2000 under No 1234822, designating goods in Classes 1 and 19 and corresponding, for each of those classes, to the following description:— Class 1: ‘Crystalline calcium carbonate as a filler’ (‘CCCF’);— Class 19: ‘Marble in the form of granules, grains and powders’.
8In response to a communication from EUIPO of 20 February 2012, by letter of 28 March 2012 the applicant indicated that it was not invoking Article 8(5) of Regulation No 207/2009 in support of its application for a declaration of invalidity.
9The application for a declaration of invalidity was directed against all the goods referred to in paragraph 5 above.
10On 7 March 2013, the Cancellation Division, pursuant to Article 57(2) of Regulation No 207/2009, rejected the application for a declaration of invalidity so far as the product in Class 19 covered by the earlier trade mark was concerned. It also rejected the application for a declaration of invalidity so far as the product in Class 1 covered by the earlier trade mark was concerned, owing to a lack of identity for the purposes of Article 8(1)(a) of Regulation No 207/2009, and a lack of similarity for the purposes of Article 8(1)(b) of that regulation, between that product and the goods covered by the mark applied for.
11On 23 April 2013, the applicant, while not continuing to claim that the goods at issue were identical, filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.
12By decision of 4 September 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
13The Board of Appeal considered that evidence of genuine use of the earlier word mark Calcilit had been adduced so far as the CCCF in Class 1 was concerned, but that no such evidence had been adduced so far as the ‘marble in the form of granules, grains and powders’ in Class 19 was concerned.
14Regarding the comparison between CCCF and the goods covered by the contested trade mark, the Board of Appeal considered that those goods were not similar.
Forms of order sought
15The applicant claims that the Court should:— annul the contested decision with regard to the goods in Classes 2 and 19 corresponding to the following descriptions:— Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins’;— Class 19: ‘Pargets’;— order EUIPO to pay the costs.
16EUIPO and the intervener contend that the Court should:— dismiss the action;— order the applicant to pay the costs.
Law
17In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.
18The applicant argues that the Board of Appeal incorrectly considered that there were no similarities between CCCF and the goods in Classes 2 and 19 covered by the contested trade mark and corresponding to the following descriptions: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins’ and ‘Pargets’.
19CCCF is normally used as a filler in the manufacture of the goods covered by the contested trade mark, in respect of some of which it is one of the key components. It is often the case that one or several economically linked undertakings carry out a vertical integration and simultaneously market the components of a product and the finished product itself. This could be applied to the present case and the applicant’s customers, who are manufacturers of paints and purchasers of CCCF from the applicant under the earlier trade mark Calcilit which is very well known to them, would certainly be irritated to note the appearance of a paint brand Calcilit on the market. Therefore, the Board of Appeal’s assertion that there can be no similarity between finished products and non-finished products is not established.
20Furthermore, the Board of Appeal disregarded the fact that a likelihood of confusion would also arise among industrial operators who purchase CCCF as well as paints and other coating agents for the manufacture of their goods.
21The applicant challenges the finding in the contested decision that CCCF is a raw material. It is a semi-finished product, tailored to the production requirements of different purchasers. As a result, the connection between CCCF and the goods covered by the contested trade mark is closer than the one between those goods and a true raw material, such as marble.
22In addition, it is not established that the goods covered by the contested trade mark are finished products. They are intermediary products in many industrial applications. Accordingly, the Board of Appeal’s argument that the goods covered by the contested trade mark are intended for a public of end consumers whereas the goods covered by the earlier trade mark are intended for industry professionals is without foundation. The applicant submits that there may be some areas of overlap, in particular at the level of purchasers of goods covered by both of the marks at issue.
23Regarding the comparison between CCCF and raw natural resins, the applicant argues that the goods are similar, in so far as they complement each other and share the same purpose since both are used in the manufacture of adhesives, and that, consequently, they are intended for the same public.
24Regarding CCCF and pargets, the applicant argues that there is a strong similarity between them given that the former is often a key component of the latter, and that this is true notwithstanding the fact that those goods are in different classes.
25Lastly, the applicant argues that, in view of the average distinctive character of the earlier trade mark Calcilit, the pronounced similarity between the signs at issue and the clear similarity between the goods, there is a likelihood of confusion between the signs at issue. It argues that the conditions for applying Article 8(1)(b) of Regulation No 207/2009 have been met and that, accordingly, the contested decision must be annulled.
26EUIPO contests the applicant’s arguments.
27In particular, regarding, first, the comparison between CCCF and ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’, EUIPO contends that, even though the former may be a component of the latter, given that the one is a raw material and the others are finished products, the connection between them is not close enough to enable them to be regarded as being similar. EUIPO contests the applicant’s arguments that, first, CCCF is not a raw material and, second, the goods covered by the contested trade mark are not always marketed as finished products. It argues that, by reason of their different natures, the goods in question can be regarded neither as being interchangeable nor as being in competition with each other. It adds that they also differ as to their intended purpose, in so far as the one is normally used in the production of other goods, whereas the others are normally purchased by end consumers for use in decoration. EUIPO argues that, according to case-law, raw materials which are subjected to a transformation process are essentially different from finished products which either incorporate or are covered by those raw materials, both in terms of their nature and in terms of their aim and intended purpose, and that, when that type of relationship exists between products, those products cannot be regarded as complementing each other. It adds that the applicant has not proved the existence of companies producing raw materials such as the product covered by the earlier trade mark and marketing finished products such as those covered by the contested trade mark. EUIPO contests the applicant’s argument that there is an overlap between purchasers of CCCF and purchasers of goods covered by the mark applied for and argues that, in any event, potential industrial purchasers will notice the differences between the goods in question.
28Regarding, next, the comparison between CCCF and raw natural resins, EUIPO argues that, although those goods may both be used as intermediate products in the production of adhesives, they have different purposes, the former being used as a filler and the latter as sticking substances. In addition, those goods are neither complementary nor in competition with each other.
29Regarding, lastly, the comparison between CCCF and pargets, EUIPO argues that, while it is true that the former may appear among the ingredients of the latter, those goods have a different nature, function and method of use. It adds that the arguments set out in the context of the comparison between CCCF and ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ can also be applied in that regard.
30EUIPO concludes that, owing to the lack of similarity between the goods in question, one of the conditions for establishing the existence of a likelihood of confusion is not satisfied and that, accordingly, the Board of Appeal was entitled to conclude that the appeal should be dismissed.
31The intervener contests the applicant’s arguments.
32In particular, it argues that the Board of Appeal correctly considered that the goods covered by the marks at issue were dissimilar. It remarks that the applicant had considered in the administrative procedure that CCCF was a raw material. It contends that such is indeed the case and infers that CCCF is not similar to the goods covered by the contested trade mark, as the latter are intended for end consumers. It makes reference to the case-law of the courts of the European Union according to which the fact that one product is used in the manufacture of another is not sufficient reason to regard them as being similar products. It maintains that the goods in question differ in terms of the publics concerned and their distribution channels. The intervener contends that the applicant’s argument concerning the possibility of vertical integration between the undertakings marketing the different types of product in question is not substantiated. It refers to the arguments used by the Board of Appeal to conclude that the goods in question are not similar. It maintains that the Board of Appeal was entitled to exclude the possibility of a likelihood of confusion between the goods in question owing to the differences between their intended purposes, distribution channels, users and methods of use.
Preliminary observations
The goods in question
33As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s conclusions concerning the insufficient proof of use of the earlier trade mark in respect of the ‘marble in the form of granules, grains and powders’ in Class 19. Nor does the applicant dispute the finding, made in paragraph 31 of the contested decision, that the only products in Class 2 covered by the contested trade mark needing to be compared with the goods covered by the earlier trade mark were those concerned by the registration, and not all the items from the alphabetical list pertaining to that class.
34In addition, the applicant specifies, in its heads of claim, that it is seeking annulment of the contested decision in so far as the Board of Appeal concluded in that decision that the goods covered by the earlier trade mark were dissimilar to the goods in Classes 2 and 19 covered by the mark applied for, which are described as follows:— Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins’;— Class 19: ‘Pargets’.
35Accordingly, the applicant does not dispute the Board of Appeal’s findings concerning the ‘metals in foil and powder form for painters, decorators, printers and artists’ covered by the mark applied for.
36It follows from the foregoing that the goods still at issue at the stage of the action before the General Court are, as regards the contested trade mark, the goods mentioned in paragraph 34 above and, as regards the earlier trade mark, CCCF.
Reputation of the earlier trade mark
37In the application, the applicant argued that its earlier trade mark Calcilit was very well known among purchasers of CCCF who are manufacturers of paints, plaster and other pargets, and proceeded, in that context, to draw an analogy between that mark and another mark, Caparol, alleged to have a reputation for paints, lacquers and pargets.
38Those arguments, which amount to suggesting before the Court that the earlier trade mark is a trade mark with a reputation, must be rejected as inadmissible on the basis of Article 188 of the Rules of Procedure of the General Court, pursuant to which the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.
39Indeed, in the administrative procedure, having made reference to the reputation of its earlier trade mark in the grounds of the application for a declaration of invalidity, the applicant expressly stated, by letter of 28 March 2012, that it was not invoking Article 8(5) of Regulation No 207/2009 in support of that application.
Likelihood of confusion
40Pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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.
41According 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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraphs 16, 17 and 29 and the case-law cited, and 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
42A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
Relevant public
43According to 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 judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
44In addition, it should be noted that only the public common to the goods at issue is to be taken into consideration in the context of the comparison of those goods. According to case-law, the relevant public is composed of consumers likely to use both the goods covered by the earlier trade mark and those covered by the contested trade mark (judgments of 24 May 2011 in ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38; 4 February 2013 in Hartmann v OHIM — Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 30; 2 October 2013 in Cartoon Network v OHIM — Boomerang TV (BOOMERANG), T‑285/12, not published, EU:T:2013:520, paragraph 19; 26 June 2014 in Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 27; and 22 January 2015 in Novomatic v OHIM — Simba Toys (AFRICAN SIMBA), T‑172/13, not published, EU:T:2015:40, paragraph 67).
45In the present case, it is common ground that the professional public and, more specifically, the professional public in the industrial sector, is the only public likely to use the product covered by the earlier trade mark, namely CCCF. As is apparent from both the name of that product and the arguments of the parties, CCCF is a product used as a filler in the manufacture of many products, including plastic products, paper, coatings, paints and pargets. It is common ground, and is, moreover, essentially noted in the contested decision, that CCCF is not intended for private individuals; nor is it intended for non-industrial professionals.
46It follows that the relevant public for the assessment of the likelihood of confusion cannot extend, in any event, beyond the professional public in the industrial sector.
47That first determination having been made, it is still necessary, in order to establish whether a relevant public exists, to verify whether and, if so, to what extent, that professional public in the industrial sector also uses the goods covered by the contested trade mark.
48However, as is stated below, the Board of Appeal, which did not specifically discuss determining the relevant public, did not satisfactorily address that issue at the stage of the comparison of the goods as regards at least part of the goods in question.
49It is in the context of the comparison of the goods, directly addressed by the Board of Appeal, that it is necessary to continue examining the action.
Comparison of the goods
–Regarding the paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants
50In paragraphs 33 to 37 of the contested decision, the Board of Appeal, having made certain statements relating to the nature and intended use of the products under comparison, stated, in essence, that CCCF was different from ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ on the ground that CCCF was a raw material while those goods were finished products, and on the ground that CCCF was intended for industrial use and for the manufacture of finished products while ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ were essentially purchased by end consumers — either professionals or members of the general public — for decorative or protective purposes.
51Regarding those findings, it should however be noted, first, that the fact that a product is described as being a finished product does not mean it may not be used in industry as an ingredient, raw material or component in the manufacture of another product. Indeed, the concept of a finished product refers to a product which is ready to be marketed. It can therefore be applied to products marketed to industry. In addition, even if that concept is used in a narrower sense, to distinguish manufactured goods from unprocessed raw materials, it cannot be used as a basis for the position taken by the Board of Appeal. Indeed, a manufactured product may constitute an ingredient, raw material or component of another manufactured product.
52Accordingly, the Board of Appeal’s description of ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ as being finished products in no way allowed it to exclude the possibility of those products being used in an industrial process for manufacturing other products. The fact that paints, varnishes and lacquers may be sold to private individuals or to painting businesses in the building sector does not mean that products meeting those descriptions may not be marketed to industrial professionals for the manufacture of other products.
53Second, the Board of Appeal, in essence, unconvincingly asserted, using absolute and general terms, that ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ were ‘basically’ purchased by non-industrial consumers for decorative or protective purposes.
54It is true that it is well known that, among those products, ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood’ are purchased and used by non-industrial consumers, such as painting businesses involved in finishing works on buildings or private individual DIY enthusiasts.
55However, that well-known fact relating to painting businesses and the general public has no connection with the industrial sector and provides no information regarding the products which that sector is likely to use. Therefore, it cannot be inferred from that fact that industrial professionals are not also consumers of those products.
56Nevertheless, given that the relevant public for the assessment of the likelihood of confusion could not, in any event, extend beyond industry professionals (see paragraph 46 above), the only question which the Board of Appeal had to decide was the question whether industry professionals, being undisputed users of CCCF, were also likely to use products described as ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood’ in the manufacture of their own products.
57Those considerations apply, a fortiori, as regards ‘colorants’ and ‘mordants’, in so far as, those products being a priori more technical than many paints, varnishes and lacquers, it is not even well known that they were intended, as was held, in essence, by the Board of Appeal, for painting businesses and the general public.
58It follows from the foregoing that, in paragraphs 34 to 37 of the contested decision, the Board of Appeal, without carrying out a specific examination, but rather relying on irrelevant and questionable considerations, inferred, in essence, that the industrial public consuming CCCF was not a consumer of ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’.
59The applicant is therefore entitled to criticise the Board of Appeal for, in essence, having failed to take into consideration the fact that industry professionals using CCCF also purchase paints or other covering agents in order to manufacture their finished products. That criticism, which the applicant made by taking as an example, without being contradicted, professionals in the plastic products industry, is also valid, taking into account the statements made by the parties, with regard to professionals in the paper industry, the paint industry and the pargets industry.
60As a result, the Board of Appeal, having failed to identify the relevant public for the purposes of examining the likelihood of confusion between CCCF and ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ correctly beforehand, concluded that there was no similarity between those goods and CCCF on the basis of irrelevant and questionable considerations.
61In those circumstances, the single plea in law relied on by the applicant must be upheld as regards the ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ covered by the contested trade mark, and the contested decision must be annulled in respect of those goods.
–Regarding the raw natural resins
62In paragraph 39 of the contested decision, the Board of Appeal considered that raw natural resins have different natures, purposes and uses from CCCF. The Board of Appeal observed that those resins are sticky and viscous flammable substances, secreted by certain trees and insoluble in water, which are used in the manufacture of varnishes and adhesives. It considered that, although the goods in question are both raw materials which can be used in the production of varnishes or adhesives, their purpose is quite different: either to provide sticking or adhesive qualities or to be added as a filler in order to give them body, dilute them or modify their viscosity.
63The Board of Appeal also observed that the companies which extract natural resins from trees and other plants are generally different from those which obtain CCCF from rocks. In addition, those goods do not complement each other. Their functions are completely different and they are not in competition with each other either. As a result, the Board of Appeal concluded that CCCF and raw natural resins were not similar (paragraph 40 of the contested decision).
64The applicant argues that there are such close connections between CCCF and raw natural resins that a similarity between those goods can easily be established: both are used as intermediate products in the manufacture of adhesives. They complement each other and serve the same purpose, namely the manufacture of adhesives. Consequently, the purchasers of those products are the same.
65In the first place, it should be noted that, unlike the Board of Appeal’s assessment relating to ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ examined above, the Board of Appeal’s assessment regarding the comparison between CCCF and raw natural resins correctly takes place purely from the point of view of the relevant public, namely the professional public in industry. Indeed, the contested decision concerns only the use of those products for the manufacture of adhesives, that is, an industrial use.
66In the second place, it should be noted that, unlike all or part of the products examined by the Board of Appeal in paragraphs 33 to 38 of the contested decision, of which CCCF was a possible component, CCCF is not used in the manufacture of raw natural resins, which, as their name implies, are raw natural products.
67In the third place, it cannot seriously be disputed that, for the reasons correctly noted by the Board of Appeal in paragraph 39 of the contested decision and recalled in paragraph 62 above, raw natural resins and CCCF are very different products both in terms of their nature and in terms of their intended purpose. They are in no way in competition with each other. The applicant’s assertion that those products complement each other is entirely unsubstantiated.
68In the fourth place, the applicant does not contradict the Board of Appeal’s assessment that the companies which extract natural resins from trees are generally different from those which manufacture CCCF from rocks.
69In view of the foregoing, the fact pleaded by the applicant that the same public uses those products to manufacture the same product, namely adhesives, is not such as to justify a finding that the products in question are similar for the purposes of Article 8(1)(b) of Regulation No 207/2009. The relevant public, which is composed of industry professionals, will easily perceive that those products, although they both contribute to its industrial activity of manufacturing adhesives, are still completely different products.
70It follows from the foregoing that the single plea in law relied on by the applicant must be rejected so far as the ‘raw natural resins’ covered by the contested trade mark are concerned.
–Regarding the pargets
71In paragraph 41 of the contested decision, the Board of Appeal considered that pargets are decorative plastering materials applied to the walls of buildings or to line chimney flues in construction. It noted that, while it is true that those goods might contain CCCF among their ingredients, they have a different nature, function and method of use. Those products are used in the building sector for ornamental and decorative purposes, while CCCF is a raw material added to various finished products in order to limit consumption of more expensive binder materials or to augment or improve certain properties of mixed materials. In addition, pargets are not extracted or obtained by the same companies and are not even intended for the same type of consumer. Accordingly, the Board of Appeal concluded that those products and CCCF were not similar.
72The applicant disagrees with the position taken by the Board of Appeal, arguing that there is a strong similarity between CCCF and pargets. Thus, lime-based plaster, which falls under the category of ‘pargets’, essentially consists of a lime filler, lime being a synonym for calcium carbonate. The proportion of calcium carbonate in paste-like plaster can be as high as 70%. The calcium carbonate used as a filler in plaster also falls under the category of CCCF.
73It should be noted that, while the applicant states, without being contradicted, that pargets include products containing CCCF, by contrast it does not dispute the Board of Appeal’s assessment that the publics targeted by pargets and CCCF are different.
74Thus, it is not disputed that CCCF is a product intended only for the professional public in industry, in the present case the production of pargets, while the pargets produced by that industry are intended for building businesses and, where appropriate, for the general public.
75In those circumstances, which show that there is no public common to CCCF and pargets, the Board of Appeal correctly concluded that those products could not be regarded as similar for the purposes of Article 8(1)(b) of Regulation No 207/2009.
76That assessment is not called into question by the applicant’s argument that the manufacturers of plaster and other pargets to whom the applicant has delivered CCCF under its trade mark Calcilit will necessarily be led to believe, upon seeing pargets marketed by a third party under a trade mark consisting of the same name, that the same single manufacturer has begun to manufacture and sell, in the context of an economic vertical integration and under the same umbrella trade mark, both CCCF and CCCF-based pargets.
77Indeed, that argument is based on a failure to have regard to the case-law, cited in paragraph 44 above, according to which the relevant public which must be taken into consideration in the context of the comparison of the goods in question is composed of consumers likely to use both the goods covered by the earlier trade mark and those covered by the contested trade mark. However, it has been neither proved nor even alleged by the applicant that industrial professionals in the parget production sector, who consume CCCF for the purposes of that production, would also use pargets for that production.
78Having regard to the foregoing, the single plea in law relied on by the applicant must be rejected as regards the ‘pargets’ covered by the contested trade mark.
Conclusion
79Having regard to all of the foregoing, it is necessary to uphold the action in part and to annul the contested decision in so far as the Board of Appeal, regarding the ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ covered by the contested trade mark, concluded that there was a lack of similarity with CCCF. The action is dismissed as to the remainder.
Costs
80Pursuant to Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.
81In the present case, as each of the parties has succeeded on some heads and failed on others, they must all be ordered to bear their own costs.
Operative part
On those grounds,THE GENERAL COURT (Sixth Chamber)hereby:
1.Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 September 2014 (Case R 753/2013-4) as regards the ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants’ covered by the contested trade mark;
2.Dismisses the action as to the remainder;
3.Orders Alpha Calcit Füllstoffgesellschaft mbH, EUIPO and Materis Paints Italia SpA to bear their own costs.
Delivered in open court in Luxembourg on 19 July 2016.
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