Order of 19 Nov 2015, C-190/15 (Fetim v OHIM), ECLI:EU:C:2015:778.

ORDER OF THE COURT (Sixth Chamber)

19 November 2015 (*)

(Appeal — Community trade mark — Figurative mark including the word elements ‘Solidfloor The professional’s choice’ — Opposition by the proprietor of the national figurative mark, trade name and domain name including the word elements ‘SOLID floor’ — Refusal to register by the Board of Appeal — Likelihood of confusion — Regulation (EC) No 207/2009 — Article 8(1)(b) — Weak distinctive character of earlier trade mark)

In Case C-190/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 April 2015,

Fetim BV, established in Amsterdam (Netherlands), represented by L. Bakers, advocaat,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),

defendant at first instance,

Solid Floor Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,

intervener at first instance,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, J.-C. Bonichot and S. Rodin (Rapporteur), Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

makes the following

Order

1        By its appeal, Fetim BV (‘Fetim’) asks the Court to set aside the judgment of the General Court of the European Union of 11 February 2015 in Fetim v OHIM — Solid Floor (Solidfloor The professional’s choice) (T-395/12, EU:T:2015:92, ‘the judgment under appeal’), by which that court dismissed its action for annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 15 June 2012 (Case R 884/2011-2), given in opposition proceedings between Solid Floor Ltd and Fetim (‘the decision at issue’).

Legal context

2        Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

b)      if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.’

Background to the dispute

3        On 6 February 2007, Fetim, the appellant, filed an application for registration of a Community trade mark at OHIM under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), now repealed and replaced by Regulation No 207/2009.

4        Registration as a mark was sought for the following figurative sign:

5        The goods in respect of which registration was sought fall within Class 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 to the following description: ‘Building materials, not of metal, parquet flooring of plastic and wood, flooring of wood, cork and laminate; subfloors; transportable floors, not of metal’.

6        On 31 December 2007, Solid Floor Ltd 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 sign as a trade mark in respect of the goods referred to in paragraph 5 above.

7        The opposition was, in the first place, based on the earlier figurative mark registered on 13 October 2006 in the United Kingdom both for ‘solid wood flooring; wooden parquet flooring’ in Class 19 within the meaning of the Nice Agreement cited in paragraph 5 above and ‘installation of wood flooring’ in Class 37 of the Nice Agreement, reproduced below:

8        The opposition was, in the second place, based on the trade name Solid Floor Ltd and on the domain name ‘Solid Floor Ltd’, used in the course of trade in the United Kingdom for the following goods and services: ‘Non-metallic building materials; building components; wood; wood products for use in building; non-metallic flooring; floorboards; floor coverings; parquet flooring; plywood boards for flooring; floor panels; decking; floor tiles; slate flooring; stone flooring, parts and fittings for all the aforesaid goods; carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); retail services in respect of the foregoing; floor construction and installation services; flooring installation services; carpentry services; maintenance and repair services all relating to floor coverings’.

9        The ground relied on in support of the opposition was, inter alia, that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

10      By decision of 28 February 2011, the Opposition Division of OHIM rejected the opposition.

11      On 25 April 2011, Solid Floor Ltd filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision.

12      By the decision at issue, the Second Board of Appeal of OHIM (‘the Board of Appeal’) annulled the Opposition Division’s decision, upheld the opposition in its entirety and refused the Community trade mark application.

13      The Board of Appeal held, in the first place, that the goods in question were partially identical and partially similar.

14      In the second place, it found that the trade mark for which registration is sought and the earlier trade mark were highly similar from a visual and phonetic point of view and from a conceptual point of view in respect of their common word element.

15      The Board of Appeal concluded that, given the overall impression created by the signs at issue, the level of similarity of the goods and the imperfect recollection and interdependence principles, there was a likelihood of confusion between those signs on the part of the relevant public, which consisted, in the present case, of the public at large and professionals in the field at issue.

The proceedings before the General Court and the judgment under appeal

16      On 4 September 2012, Fetim brought an action for annulment of the decision at issue before the General Court. In support of its action, it raised a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

17      By the judgment under appeal, the General Court dismissed the action as unfounded.

Form of order sought on appeal

18      By its appeal, Fetim claims that the Court should:

–        set aside the judgment under appeal;

–        uphold its action against the decision at issue, and

–        order OHIM to pay the costs.

The appeal

19      Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court of Justice may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

20      It is appropriate to apply that provision to the present case.

21      In support of its appeal, Fetim puts forward a single ground of appeal, divided into three parts, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

The first part of the single ground of appeal

22      By the first part of the single ground of appeal, Fetim claims that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 by not having regard to the ‘case history’ of the earlier trade mark.

23      In particular, Fetim submits that the General Court cannot confer a greater degree of protection upon a national trade mark than that which it enjoys at national level. According to Fetim, it follows that OHIM and the General Court were bound by the finding of the United Kingdom Intellectual Property Office (‘the UK IPO’) that the earlier trade mark was of a weak distinctive character and was so exclusively with regard to its figurative elements and not the word elements ‘solid floor’.

24      In that regard, it should be recalled that it is settled case-law of the Court that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of OHIM must be evaluated solely on the basis of Regulation No 207/2009, as it is interpreted by the EU judicature (see judgment in Reber Holding v OHIM, C-141/13 P, EU:C:2014:2089, paragraph 36 and the case-law cited).

25      In paragraph 31 of the judgment under appeal, the General Court held, in accordance with that case-law, that it was neither bound by national case-law, by the analysis carried out by the UK IPO in the proceedings for the registration of the earlier trade mark, nor by the UK IPO’s decision of 29 January 2010, which did not concern the earlier mark.

26      Thus, the General Court could reasonably conclude, in paragraph 32 of the judgment under appeal, in the first place, that the weak distinctive character of the word element ‘solid floor’ of the earlier trade mark did not necessarily imply that that element cannot constitute a dominant element provided that, because, in particular, of its position in the sign or its size, it is capable of making an impression on consumers and of being remembered by them, and, in the second place, that the Board of Appeal did not err in law by finding that the distinctiveness of those word elements was higher than that of the figurative elements on the basis that the average consumer refers more readily to goods by quoting the name of the mark at issue than by describing the figurative element.

27      Consequently, given that the General Court correctly applied the settled case-law cited in paragraph 24 above, the first part of the single ground of appeal must be rejected as manifestly unfounded.

The second part of the single ground of appeal

28      Fetim claims that the General Court applied an incorrect legal criterion in comparing the earlier trade mark and the trade mark for which registration is sought.

29      Thus, Fetim submits that, in assessing the similarity between the earlier trade mark and the trade mark for which registration is sought, the General Court erred in not attributing to the element ‘the professional’s choice’ all the importance it deserved. In so doing, the General Court arrived at the erroneous conclusion that the two trade marks were similar from a visual, phonetic and conceptual point of view.

30      In that regard, it should be recalled that, under Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts. The appraisal of those facts thus does not, save where it distorts them, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see judgment in Media-Saturn-Holding v OHIM, C-92/10 P, EU:C:2011:15, paragraph 27 and the case-law cited).

31      It should be noted that the second part of the single ground of appeal seeks, in essence, to contest, first, the General Court’s findings concerning the dominant element of the trade mark for which registration is sought and, second, the manner in which that court weighed up the various elements of the signs at issue.

32      However, in the first place, in contesting the facts found by the General Court concerning the dominant element of the trade mark for which registration is sought, Fetim merely calls into question the General Court’s assessment of the facts without invoking any distortion of the material in the file. However, that assessment does not constitute a point of law which is subject, as such, to review by the Court of Justice (see order in Marsza?kowski v OHIM, C-177/13 P, EU:C:2014:183, paragraph 59 and the case-law cited).

33      In the second place, in accordance with the case-law of the Court, the General Court’s weighing up of the various elements of the signs at issue is factual in nature (see judgment in United States Polo Association v OHIM, C-327/11 P, EU:C:2012:550, paragraph 61).

34      In the light of all the foregoing considerations, the second part of the single ground of appeal must be rejected as manifestly inadmissible.

The third part of the single ground of appeal

35      By the third part of the single ground of appeal, Fetim claims that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 in failing to have regard to all the relevant circumstances for assessing the likelihood of confusion.

36      In particular, Fetim claims that the General Court failed to have regard to the fact that the distinctiveness of the word elements of that trade mark is virtually non-existent.

37      In accordance with the settled case-law of the Court, it should be noted that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. Whereas the evaluation of those factors is an issue of fact that cannot be reviewed by the Court, failure to take all of those factors into account constitutes an error of law and may, as such, be raised before the Court in the context of an appeal (see, to that effect, judgment in Union Investment Privatfonds v UniCredito Italiano, C-317/10 P, EU:C:2011:405, paragraph 45 and the case-law cited).

38      In this regard, it is settled case-law of the Court that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see order in Adler Modemärkte v OHIM, C-343/14 P, EU:C:2015:310, paragraph 31 and the case-law cited).

39      In addition, the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements (see judgment in Becker v Harman International Industries, C-51/09 P, EU:C:2010:368, paragraph 33 and the case-law cited).

40      Furthermore, although it is true that the more distinctive the earlier mark the greater the likelihood of confusion will be, such a likelihood of confusion cannot, however, be precluded where the distinctive character of the earlier mark is weak (see, to that effect, order in Messer Group v Air Products and Chemicals, C-579/08 P, EU:C:2010:18, paragraph 70).

41      In the present case, the General Court, first, found in paragraph 20 of the judgment under appeal that the assessment of the relevant public was not disputed by Fetim.

42      Second, in paragraph 23 of the judgment under appeal, the General Court upheld the Board of Appeal’s finding that the goods and services at issue were partially identical and partially similar.

43      Third, having stated in paragraph 31 of the judgment under appeal that it was not bound by the elements taken from national case-law with regard to the distinctiveness of the earlier trade mark, the General Court, in paragraphs 35 to 40 of that judgment, assessed the visual, phonetic and conceptual similarity between the trade marks at issue and concluded that they were similar from a visual and conceptual point of view and highly similar from a phonetic point of view.

44      The General Court therefore arrived at the conclusion, in paragraphs 45 and 46 of the judgment under appeal, that despite the weak distinctive character of the earlier trade mark there was a likelihood of confusion between the trade mark for which registration is sought and the earlier trade mark, having regard, first, to the partial identity and partial similarity of the goods and services in question and, second, to the similarity of the signs at issue.

45      In so doing, the General Court carried out an overall assessment of the likelihood of confusion in the light of the relevant case-law and did not err in law.

46      If accepted, Fetim’s contention would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. Such a result would not, however, be consistent with the very nature of the global assessment that the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, orders in L’Oréal v OHIM, C-235/05 P, EU:C:2006:271, paragraph 45; Hrbek v OHIM, C-42/12 P, EU:C:2012:765, paragraph 62; and Adler Modemärkte v OHIM, C-343/14 P, EU:C:2015:310, paragraph 61).

47      Consequently, the third part of the single ground of appeal must be rejected as manifestly unfounded.

48      It follows from all the foregoing considerations that the appeal must be dismissed.

 Costs

49      Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings.

50      As the present order has been adopted prior to notification of the appeal to the defendant at first instance and, therefore, before the latter could have incurred costs, Fetim should be ordered to bear its own costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1.      The appeal is dismissed.

2.      Fetim BV shall bear its own costs.

[Signatures]

* Language of the case: English.