Order of 9 Mar 2007, C-196/06 (Alecansan - compusa), ECLI:EU:C:2007:159.

ORDER OF THE COURT (Seventh Chamber)

9 March 2007 (*)

(Appeals – Community trade mark – Regulation (EC) No 40/94 ? Article 8(1)(b) ? Application for registration of a figurative mark – Opposition of the proprietor of an earlier national figurative mark – Likelihood of confusion ? None – No similarity between the goods and services covered by the conflicting trade marks)

In Case C-196/06 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged at the Court on 24 April 2006,

Alecansan SL, established in Segovia (Spain), represented by P. Merino Baylos and A. Velázquez Ibáñez, abogados,

applicant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant at first instance,

CompUSA Management Co., established in Dallas (United States),

intervener at first instance,

THE COURT (Seventh Chamber),

composed of J. Klu?ka, President of the Chamber, A. Ó Caoimh (Rapporteur) and P. Lindh, Judges,

Advocate General: E. Sharpston,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1        By its appeal, Alecansan SL (‘Alecansan’) claims that the Court should set aside the judgment of the Court of First Instance of the European Communities of 7 February 2006 in Case T-202/03 Alecansan v OHIM – CompUSA (COMP USA) [2006] ECR II-19, (‘the judgment under appeal’) by which that Court dismissed Alecansan’s action for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 March 2003 (Case R 711/2002-1), (‘the contested decision’), concerning the registration, on application by CompUSA Management Co. (‘CompUSA’), of the figurative mark ‘COMP USA’ as a Community trade mark.

 Legal context

2        Article 8(1) and (2)(a)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provide:

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

(a)      if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(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.

2.      for the purposes of paragraph 1, “Earlier trade marks” means:

(a)      trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark ...:

…

(ii)      trade marks registered in a Member State ...’.

3        Article 42 of Regulation No 40/94 is worded as follows:

‘1.      Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

(a)      by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

...’

 Background to the dispute

4        On 8 June 1998, CompUSA applied to OHIM for registration as a Community trade mark of the figurative sign ‘COMP USA’, reproduced below:

5        The goods and services in respect of which registration was sought fall within Classes 9, 37 and 42 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 9: ‘Computer hardware; computer software’;

–      Class 37: ‘Inspection and repair of electronic circuitry and components in computer hardware’;

–      Class 42: ‘Retail store services to individuals, corporate and governmental entities in the field of computer hardware and software’.

6        On 2 November 1998, CompUSA withdrew its application for registration in respect of the services in Class 42.

7        On 22 July 1999, Alecansan gave notice of opposition, under Article 42 of Regulation No 40/94, to registration of the trade mark at issue, relying on Article 8(1)(a) and (b) of that regulation. That notice of opposition was based on the existence of the earlier national figurative mark COMP USA, reproduced below, registered in Spain for ‘transport; packaging and storage of goods; travel arrangement’, the services covered by Class 39 under the Nice Agreement:

8        So far as the trade mark applied for is concerned, the opposition related to the goods and services in Classes 9 and 37.

9        By decision of 17 June 2002, the Opposition Division of OHIM rejected that opposition on the ground that the services covered by the earlier national trade mark were neither identical nor similar to the goods and services covered by the trade mark applied for.

10      By the contested decision, the First Board of Appeal of OHIM dismissed the appeal. It held that there was no similarity whatsoever between the goods and services in question and that, consequently, there could be no likelihood of confusion between the trade mark applied for and the earlier national trade mark on the part of the relevant public – that is to say, Spanish consumers – even though the signs in question were almost identical.

 Proceedings before the Court of First Instance and the judgment under appeal

11      By application lodged at the Registry of the Court of First Instance on 2 June 2003, Alecansan brought an action for annulment of the contested decision. For this purpose, it raised a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94. That plea was in two parts, the first of which alleged mistake as to the likelihood of confusion and the second of which alleged failure to take into account the Spanish case-law relating to likelihood of confusion.

12      So far as the first part of the plea was concerned, the Court of First Instance held as follows:

‘34      It is settled case-law that the likelihood of confusion regarding the commercial origin of the products must be assessed globally according to the perception that the relevant public has of the signs and of the products or services in question, 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 …

35      However, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services referred to in the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative ([Case C-39/97] Canon [[1998] ECR I-5507], paragraph 22, concerning the provisions of Article 4(1)(b) 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), and Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 51, concerning Article 8(1)(b) of Regulation No 40/94). Thus, even where the sign applied for is identical to a mark which is highly distinctive, it must be established that the goods or services covered by the opposing marks are similar ...

36      It is common ground in the present case that the relevant public is the average Spanish final consumer, and that the signs in dispute are identical within the meaning of Article 8(1)(b) of Regulation No 40/94 from a phonetic point of view. They are also almost identical from a visual point of view.

…

39      According to settled case-law, in order to assess the similarity of the goods and services concerned, all the relevant factors which characterise the relationship between those services should be taken into account, those factors including, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (... see also, by analogy, Canon, paragraph 23).

40      Thus, in the present case, the fact relied upon by [Alecansan] to the effect that [CompUSA’s] sales services, the sale of computer hardware and various retail services of a technological and digital nature provided by internet, are connected with [Alecansan’s] transport services, is not sufficient for those services to be regarded as similar if they otherwise differ significantly in relation to all the relevant factors which characterise the ways in which they are linked.

41      The contested decision took account of the relevant factors which are, first, the consumers of the goods offered by the proprietors of the two marks and the customers engaging the services provided by them, and second, the distribution channels or retail outlets.

42      In that regard, OHIM rightly pointed out that [Alecansan’s] Spanish consumers are not the same as [CompUSA’s] and that those consumers do not buy the goods and avail of the services in dispute in the same places. Whilst the client base of the two undertakings consists of average Spanish consumers, the consumers engaging [Alecansan’s] transport services are not the same as those wishing to buy or rent computer software or computer hardware, even if they wish to make a distance purchase. Consumers engaging [Alecansan’s] travel arrangement services will not usually think of buying, at the same time, computer software or computer hardware and go to a shop selling IT equipment.

43      As regards the nature of the goods and services, the contested decision rightly considers the “transport services” referred to by [Alecansan] to mean a fleet of trucks or ships used to move goods from A to B. Equally, “packaging and storage” services merely means, in reality, the service whereby a company’s merchandise is put into containers for a fee. Those services are not similar to the services or the IT products offered by [CompUSA].

44      As to whether the goods and services are in competition, the goods and services of the trade mark applied for, namely “Computer hardware; computer software” and “Inspection and repair of electronic circuitry and components in computer hardware”, and the services of the earlier trade mark, namely “transport; packaging and storage of goods; travel arrangement”, do not compete with one another.

45      While the goods and services covered by the trade mark applied for are used for services for the distance selling or renting of IT goods or services, the provision of transport services does not amount to a service which competes with services for the distance selling or renting of IT goods and services. Those services are neither interchangeable nor substitutable for one another.

46      As regards the complementary nature of the goods and services, it must be pointed out that, according to the definition given by OHIM in point 2.6.1 of Part 2, Chapter 2, of the Opposition Guidelines of 10 May 2004, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (see also to that effect Case T-85/02 Díaz v OHIM [2003] ECR II-4835, paragraph 36).

47      As stated above, the trade mark applied for also covers services for the distance selling or renting of IT goods and services, and the provision of IT services. However, physically sending computer software and computers bought or rented from an undertaking offering its goods by means of the internet to both consumers and professionals is merely the execution of a distance selling contract or of a service contract which is not connected to transport services.

48      Consequently, sales by internet and goods transportation services are by no means complementary in nature.

49      It follows from the foregoing considerations that the goods and services of the trade mark applied for are not similar to the services covered by [Alecansan’s] mark.

50      It is true that, according to the case-law, a lesser degree of similarity between the goods or services concerned may be compensated by a greater degree of similarity between the marks, and vice versa (see, by analogy, Canon, paragraph 17; [Case C-342/97] Lloyd Schuhfabrik Meyer [[1999] ECR I-3819], paragraph 19; and Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40).

51      However, although there is a high degree of similarity between the marks now in question, the two marks being almost identical, it is apparent from the foregoing considerations that the goods and services of the trade mark applied for and the services covered by the earlier Spanish trade mark are not similar. [Alecansan] cannot, therefore, rely on the existence of a likelihood of confusion between the two marks because even the fact that the two marks are identical cannot compensate for the absence of similarity between the services and the goods in question.’

13      The Court of First Instance therefore rejected the first part of Alecansan’s plea as unfounded and, subsequently, after also rejecting the second part of the plea, dismissed the action in its entirety.

 Forms of order sought

14      Alecansan claims that the Court should set aside the judgment under appeal.

15      OHIM contends that the Court should dismiss the appeal in its entirety as inadmissible and/or as unfounded and order Alecansan to pay the costs.

 The appeal

16      In support of its appeal Alecansan raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. There are essentially three parts to that plea, based, respectively, on:

–        a legal mistake in the application of the principle of interdependence and the failure to take into account, on one hand, the complementary nature of the relationship between the goods and services in question and, on the other hand, the targeted consumers;

–        failure to take into account the distinctive character of the earlier national trade mark in the assessment of the likelihood of confusion,

and

–        the significance that should be attributed, in that assessment, to the fact that the conflicting trade marks are also identical from a conceptual point of view.

17      Under Article 119 of the Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal by reasoned order.

 On the first part of the plea in law, alleging a legal mistake in the application of the principle of interdependence, and failure to take into account the complementary nature of the relationship between the goods and services in question or the targeted consumers

 Arguments of the parties

18      Referring to Canon, and in particular to paragraph 17 thereof, Alecansan points out that a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered. A lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa. Alecansan claims that since the conflicting trade marks in this case are identical, the application of that principle – which it refers to as the principle of interdependence – should have offset the low degree of similarity between the relevant goods and services.

19      OHIM contends that Alecansan is accusing the Court of First Instance of having erred in its assessment of the relevant factors and that Alecansan is essentially seeking to lead the Court of Justice to substitute its own assessment of the facts for that of the Court of First Instance – which is not allowed in appeal proceedings.

20      On the substance, OHIM maintains that the Court of First Instance correctly applied the principle of interdependence in the situation in the case under appeal in so far as the similarity of the products and the services covered by the conflicting trade marks constitutes a necessary condition for the application of that principle. OHIM argues that, since the Court of First Instance correctly applied the criteria developed by the Court of Justice for the comparison of goods and services and concluded that those goods and services were clearly dissimilar, there was no need to apply that principle in the case before it.

 Findings of the Court

21      As a preliminary point, it should be recalled that, under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered 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. Such a likelihood of confusion includes the likelihood of association with the earlier trade mark.

22      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 requires some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services concerned may be compensated by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 17).

23      In addition, it is settled case-law that the overall assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks at issue, be based on the overall impression created by them, account being taken, in particular, of their distinctive and dominant elements (see, inter alia, the order in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraph 29).

24      However, as OHIM has rightly observed, for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, even where a mark is identical to another with a highly distinctive character – the issue with which the second part of the ground of appeal is concerned – it is still necessary to adduce evidence of similarity between the goods or services covered. In effect, Article 8(1)(b) provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar (see, to that effect, Canon, paragraph 22).

25      Accordingly, Alecansan’s argument that the Court of First Instance erred in law in so far as it misapplied the interdependence principle as established by the above case-law, is unfounded.

26      As is apparent from paragraphs 35, 50 and 51 in particular of the judgment under appeal, the Court of First Instance observed that the likelihood of confusion depends both on the similarity between the conflicting trade marks and on the similarity between the goods or services covered by those marks. Since the Court of First Instance found no such similarity between the goods and services covered by the conflicting trade marks in the present case, it was quite entitled to hold that even the identicalness of the conflicting trade marks cannot compensate the lack of similarity between those services and goods.

27      Alecansan claims, however, that there is a complementary relationship between the services for the transport of goods covered by the earlier national trade mark and the sale by internet of CompUSA computer goods, which necessarily implies or results in the use of transport services identical to those covered by its trade mark. If the judgment under appeal had taken into account the reality of commercial practices and the usual way of using that type of goods or services on the market, it would have acknowledged that complementary relationship, which would have been enough to establish that the goods and services at issue were similar.

28      In that connection, it should be recalled that, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between 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 (see Canon, paragraph 23, and Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, paragraph 85).

29      Consideration of paragraphs 40 to 49 of the judgment under appeal shows that, after making a detailed analysis of the various factors characterising the relationship between the goods and services at issue, the Court of First Instance was right to hold – without making any error of law – that the goods and services covered by CompUSA’s trade mark are in no way similar to the services covered by Alecansan’s mark.

30      As regards the argument alleging that the Court of First Instance denied the complementary nature of the goods and services at issue because it considered, wrongly, that the transport of CompUSA’s computer goods sold over the internet constitutes merely the execution of a distance selling contract or of a service contract which is not connected to transport services, it is clear that the essential aim of that argument is to call in question the assessment of the facts by the Court of First Instance and to invite the Court of Justice to substitute its own assessment of the facts for that made by the Court of First Instance in paragraphs 40 to 49 of the judgment under appeal.

31      However, it follows from Article 225(1) EC and from the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal is limited to points of law only. The assessment of the facts does not, save where those facts or the evidence are distorted (which has not been claimed in the present case), constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, to that effect, inter alia, Case C-470/00 P Parliament v Ripa di Meanaand Others [2004] ECR I-4167, paragraph 40; Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraphs 43 and 53; and Sunrider v OHIM, paragraph 88).

32      That argument on the part of Alecansan must therefore be rejected as clearly inadmissible.

33      On the same grounds, Alecansan’s argument as to the finding made by the Court of First Instance in paragraph 42 of the judgment under appeal, to the effect that consumers using Alecansan’s transport services are not the same as those wishing to buy or rent computer software or computer hardware, must be rejected. Without clearly indicating how the Court of First Instance is alleged to have erred in law, that argument essentially seeks to challenge a finding of fact made by the Court of First Instance, review of which falls outside the appellate jurisdiction of the Court of Justice.

34      It follows from all the above considerations that the first part of the plea in law must be rejected as being in part clearly inadmissible and in part clearly unfounded.

 On the second part of the plea in law, alleging failure to take into account the distinctive character of the earlier national mark in the assessment of the likelihood of confusion

 Arguments of the parties

35      Alecansan submits that the Court of First Instance should have taken into consideration, inter alia, the highly distinctive character of the earlier national trade mark, which would have led it to conclude that there was a likelihood of confusion between the two conflicting trade marks. According to Alecansan, that high degree of distinctiveness – which stems from the fact that the earlier national trade mark has no conceptual meaning within Spain and does not include any element or generic and/or descriptive term that distinguishes the services rendered – entails a correlatively greater likelihood of confusion when that earlier national trade mark is compared with CompUSA’s subsequent identical mark.

36      OHIM is of the view that the second part of the plea is unfounded. It argues that, where the goods and services covered by the conflicting marks are, as in the present case, clearly dissimilar, there is no need to make an overall evaluation of other factors in order to assess whether there is a likelihood of confusion.

 Findings of the Court

37      The likelihood of confusion presupposes that the goods or services covered are identical or similar. Accordingly, even where a trade mark is identical to a mark the highly distinctive character of which is particularly marked, it is still necessary to adduce evidence of similarity between the goods or services covered.

38      Since the Court of First Instance held – without making any error of law, as the examination of the first part of the plea shows – that there was no similarity at all between the goods and services covered by the conflicting marks, it was entitled to conclude that there was no likelihood of confusion, notwithstanding the distinctive character of the earlier national trade mark.

39      The second part of the plea in law must therefore be dismissed as clearly unfounded.

 On the third part of the plea in law, concerning the significance that should be attributed, in the assessment of the likelihood of confusion, to the fact that the conflicting trade marks are also identical from a conceptual point of view

 Arguments of the parties

40      Alecansan claims that, although the Court of First Instance determined that the conflicting trade marks were identical from a visual and phonetic point of view, it neglected an important point in its analysis of the likelihood of confusion, that is to say, the fact that the trade marks in question are identical from a conceptual point of view. In that connection, Alecansan declares that the conflicting trade marks lack any semantic load in the relevant market and that, consequently, they will be considered as ‘fantasy issues’.

41      OHIM considers that Alecansan’s arguments in this connection are both inaccurate and irrelevant: given that – as Alecansan has confirmed – the term used by the two conflicting trade marks (‘CompUSA’) is a meaningless fantasy term, it is difficult to see how two meaningless terms could have the same meaning.

 Findings of the Court

42      The Court of First Instance recognised in paragraph 36 of the judgment under appeal that the conflicting trade marks are identical from a phonetic point of view and almost identical from a visual point of view. In paragraph 51 of that judgment, it found that there is a high degree of similarity between the marks at issue, the two marks being almost identical.

43      Even if Alecansan had raised before the Court of First Instance a line of argument specifically concerning the conceptually identical nature of the marks at issue, thus rendering the third part of the plea in law admissible, that plea could not in any event, in the circumstances of the present case, lead to annulment of the judgment under appeal, and must therefore be declared ineffective.

44      As is clear from paragraphs 26 and 29 of this order, since the goods and services covered by the trade mark which CompUSA seeks to register and the services covered by Alecansan’s earlier national trade mark are manifestly dissimilar, Alecansan cannot on any view rely on the likelihood of confusion between those two trade marks, because even if those marks were phonetically, visually and conceptually identical, that could not offset such a dissimilarity.

45      Consequently, the third part of the plea in law cannot be upheld.

46      It follows from all of the foregoing considerations that the appeal must, pursuant to Article 119 of the Rules of Procedure, be dismissed in its entirety.

 Costs

47      Under Article 69(2) of the Rules of Procedure of the Court, applicable to appeal proceedings by virtue of Article 118 of those rules, the unsuccessful party is to be ordered to pay the costs if they have been asked for in the successful party’s pleadings. Since OHIM sought such an order and Alecansan has failed in its pleadings, it must be ordered to pay the costs.

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

1.      The appeal is dismissed.

2.      Alecansan SL shall bear the costs.

[Signatures]

* Language of the case: English.