CJEU Order C-225/06 AVEE - Ferro 11 Sep 2007

ORDER OF THE COURT (Eighth Chamber)

11 September 2007 (*)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Similarity between two trade marks – Likelihood of confusion – Application for a Community figurative mark featuring the word element ‘FERRÓ’ – Opposition by the proprietor of the national word mark FERRERO – Partial refusal of registration)

In Case C-225/06 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged on 16 May 2006,

Athinaiki Oikogeniaki Artopoiia AVEE, established in Pikermi (Greece), represented by A. Tsavdaridis, dikigoros,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

Ferrero Deutschland GmbH, successor in title to Ferrero OHG mbH, established in Frankfurt am Main (Germany), represented by M. Schaeffer, Rechtsanwalt,

intervener at first instance,

THE COURT (Eighth Chamber),

composed of E. Juhász, President of the Chamber, G. Arestis (Rapporteur) and J. Malenovský, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 In its appeal, Athinaiki Oikogeniaki Artopoiia AVEE asks the Court to set aside the judgment of the Court of First Instance of the European Communities of 15 March 2006 in Case T-35/04 Athinaiki Oikogeniaki Artopoiia v OHIM – Ferrero (FERRÓ) [2006] ECR II-785, (‘the judgment under appeal’), by which the Court of First Instance dismissed its action seeking to have set aside the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 December 2003 (Case R 460/2002-1), partially refusing its application for registration of the figurative mark FERRÓ as a Community trade mark (‘the contested decision’).

Legal context

2 Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, 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.’

3 In that regard, the seventh recital in the preamble to Regulation No 40/94 states:

‘… the protection applies also in cases of similarity between the mark and the sign and the goods or services; … an interpretation should be given of the concept of similarity in relation to the likelihood of confusion; … the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection.’

Background to the dispute

4 The facts at the origin of the dispute were set out by the Court of First Instance at paragraphs 1 to 8 of the judgment under appeal as follows:

‘1 On 26 February 1999, the applicant filed at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under … Regulation … No 40/94 …, an application for registration as a Community trade mark of a figurative and word sign composed of a banner of indeterminate colour with a white border, on which the word “ferró” is written in capital letters, of which the first and final letters (the latter with an accent) are larger in size. The sign appears as follows:

2 Registration of the trade mark was sought for goods and services in Classes 29, 30 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 which correspond, for each of those classes, to the following description:

– Class 29: “Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, tinned foods, pickles”;

– Class 30: “Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, biscuits, pastry and confectionery, ices, honey, syrup, yeast, baking powder, salt, mustard, all kinds of bread preparations, pepper, vinegar, sauces (condiments), ice, treacle”;

– Class 42: “Providing of food and drink, temporary accommodation, medical, hygienic and beauty care, institutes of hygiene, weight loss, nutrition and health, veterinary and agricultural services, scientific and industrial research, legal services, computer programming”.

3 The trade mark application was published in the Community Trade Marks Bulletin on 27 March 2000.

4 On 26 June 2000, [Ferrero OHG mbH] filed an opposition, pursuant to Article 42(1) of Regulation No 40/94, against registration of the mark applied for. The opposition was based on the word mark FERRERO (“the earlier mark”), which is the subject of German registration No 956 671 for certain goods in Classes 5, 29, 30, 32 and 33, in particular, “chocolate, including filled chocolate products; chocolates, including those with filling made out of fruit, coffee, non-alcoholic beverages, wine and/or alcoholic beverages or with filling made out of milk and dairy products, in particular yoghurt; pastries of long durability and fine pastry, in particular ready-made cakes and wafers, sugar confectionery, spreads containing sugar, cocoa, praline, milk and/or fats; coffee and tea drinks, also with addition of alcoholic beverages; non-alcoholic beverages; all products also as dietetic food for children and/or the sick, or for medical purposes”.

5 The opposition was based on all the goods referred to above and directed against some of the goods and services specified in the contested Community trade mark application, namely those in Classes 29 and 30, as set out above, and, in respect of Class 42, the “providing of food and drink”. The ground relied on in support of the opposition was that under Article 8(1)(b) of Regulation No 40/94.

6 By decision of 25 March 2002, the Opposition Division of OHIM partly upheld the opposition for certain goods in Class 30, because of the phonetic and visual similarity between the trade mark applied for and the earlier mark, and the fact that they cover similar or identical goods. The opposition was upheld for the following goods: “Coffee, tea, cocoa, sugar, artificial coffee, flour and preparations made from cereals, bread, biscuits, pastry and confectionery, ices, syrup, yeast, baking powder, all kinds of bread preparations, honey and treacle”.

7 On 24 May 2002, the applicant filed a notice of appeal against the decision of the Opposition Division.

8 By … the contested decision … , the First Board of Appeal [of OHIM] dismissed the appeal and confirmed the Opposition Division’s decision, holding that there was a likelihood of confusion, including the likelihood of association, between the marks in question. In essence, the Board of Appeal observed that it was common ground that the goods covered by the marks in question were partly identical and partly similar. In addition, it considered that the signs in question were phonetically and visually similar.’

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

5 By application lodged at the Registry of the Court of First Instance on 30 January 2004, the present appellant brought an action for the annulment of the contested decision.

6 In support of that action, the present applicant relied on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94, the provision relating to the likelihood of confusion between similar marks.

7 By the judgment under appeal, the Court of First Instance rejected that plea in law and dismissed the action as a whole.

8 In particular, after defining the relevant public and proceeding to the visual, phonetic and conceptual comparison of the marks at issue, the Court of First Instance, at paragraphs 64 and 65 of the judgment under appeal, held as follows:

‘64 Consequently, considered globally, the degree of similarity between the goods covered by the marks in question and the degree of visual and aural similarity between them are sufficiently high to conclude that there is a likelihood of confusion for the average German consumer.

65 Accordingly, the Board of Appeal correctly upheld [Ferrero OHG mbH]’s opposition and rejected, in part, the application for registration of the mark applied for, because of the likelihood of confusion between it and the earlier trade mark.’

9 At paragraphs 69 and 70 of the judgment under appeal, the Court of First Instance also held the following:

‘69 … the applicant’s assertion that where there is a low degree of similarity between the marks only the highly distinctive character of the earlier trade mark could justify it being accorded a high degree of protection cannot be accepted. In the first place, even in the case of a trade mark of little distinctive character, there can be a likelihood of confusion, particularly because of the similarity of the signs and of the goods or services covered. In the second place, furthermore, the degree of similarity between the goods covered by the marks in question in this case and the degree of similarity between the marks themselves, considered cumulatively, are sufficiently high to justify the conclusion that there is a likelihood of confusion, whatever the degree of distinctiveness of the earlier mark.

70 In addition, although the earlier trade mark’s high distinctiveness could be taken into account to assess whether, in the first place, the similarity between the goods or services in question and, in the second place, the similarity between the signs are sufficient to give rise to a likelihood of confusion, its existence is not a prerequisite for protection of the earlier right (see, to that effect, Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II-715, paragraph 60).’

Forms of order sought by the parties before the Court

10 The appellant claims that the Court should:

– annul the judgment under appeal;

– reject definitely and in its entirety the opposition to registration of the figurative mark FERRÓ as a Community trade mark;

– order OHIM and Ferrero Deutschland GmbH (‘Ferrero Deutschland’) to pay the costs, including those incurred in the opposition proceedings and before the Board of Appeal of OHIM and the Court of First Instance.

11 OHIM contends that the Court should dismiss the appeal and order the appellant to pay the costs.

12 Ferrero Deutschland claims that the Court should dismiss the appeal and order the appellant to pay the costs.

The appeal

13 Under Article 119 of the Rules of Procedure, where an 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.

14 In support of its appeal, the appellant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. That plea in law is made up of three parts.

The first part of the plea in law

15 By the first part of its plea in law, the appellant submits that the Court of First Instance ignored the fact that the appreciation of the likelihood of confusion depends on numerous elements, such as those mentioned in the seventh recital in the preamble to Regulation No 40/94 and, in particular, on the recognition of the trade mark on the market and not only on the degree of similarity between the trade mark and the sign and between the goods or services identified by the two marks at issue, as provided for by Article 8(1)(b) of the regulation. It states that the same conclusion has been reached in the settled case-law of the Court of Justice which states clearly that highly distinctive marks enjoy broader protection than less distinctive marks.

16 In that respect, it is necessary to state that, according to the seventh recital in the preamble to Regulation No 40/94, the appreciation of the likelihood of confusion depends on numerous elements including, in particular, the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified.

17 In accordance with Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, registration of a mark is to be refused 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. That likelihood of confusion includes the likelihood of association with the earlier trade mark.

18 The existence of a likelihood of confusion on the part of the public must accordingly be assessed globally, taking into account all the factors relevant to the circumstances of the case. That global assessment of the likelihood of confusion as regards 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 components (see, to that effect, in particular, Case C-251/95 SABEL [1997] ECR I-6191, paragraphs 22 and 23, and the order in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraphs 28 and 29).

19 A global assessment of the likelihood of confusion implies, moreover, some interdependence between the relevant factors, and in particular a similarity between the trade marks and between those goods or services. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Accordingly, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see, to that effect, inter alia, Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and the judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 35).

20 In the present case, as the goods identified by the conflicting marks are partly identical and partly similar, the Court of First Instance, at paragraphs 47 to 63 of the judgment under appeal, undertook a comparative visual, phonetic and conceptual analysis of the two marks at issue. It reached the conclusion, set out at paragraphs 64 and 69 of that judgment, that the degree of similarity between the products identified by the marks and the degree of visual and phonetic similarity between them, considered globally, were sufficiently high for it to conclude that a likelihood of confusion existed.

21 Concerning the plea in law alleging that the Court of First Instance ignored the distinctive character of the earlier trade mark when it assessed the likelihood of confusion, suffice it to state that it is clear from paragraphs 69 and 70 of the judgment under appeal that the Court of First Instance did indeed take into account the appellant’s argument concerning the allegedly weak distinctive character of the mark. The Court of First Instance, effectively, dismissed that plea in law, finding that, in the present case, whether the mark was of little or great distinctive character would not invalidate the conclusion that a likelihood of confusion exists between the marks at issue.

22 Consequently, the first part of the single plea in law relied on by the appellant in support of its appeal must be rejected as clearly unfounded.

The second part of the plea in law

23 By the second part of its plea in law, the appellant submits that the earlier trade mark is not used to identify goods marketed by Ferrero Deutschland on the German market and, consequently, no likelihood of confusion exists for the average German consumer, who does not associate that mark with that company’s goods, whatever the degree of similarity between the sign of that mark and that of the mark for which registration is sought.

24 In that regard, it is necessary to point out that, according to settled case-law, to allow a party to put forward for the first time before the Court of Justice, in an appeal, a plea in law which it has not raised before the Court of First Instance would be to allow it to bring before the Court, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance. In an appeal the Court’s jurisdiction is thus confined to review of the findings of law on the pleas argued before the Court of First Instance (see, to that effect, in particular, Case C-136/92 P Commission v Brazzelli Lualdi and Others [1994] ECR I-1981, paragraph 59, and Case C-24/05 P Storck v OHIM [2006] ECR I-5677, paragraph 45).

25 In the present case, it must be stated that the argument on the non-use on the German market of the earlier trade mark relied on by the appellant in that second part of its plea in law was never raised before the Court of First Instance.

26 In any event, were that argument to be examined, it would lead the Court to an assessment of a factual nature. In accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The appraisal of the relevant facts and the assessment of the evidence relied on do not, save where the facts or evidence are distorted, which is not suggested to have arisen in the present case, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, to that effect, inter alia, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22, and T.I.M.E. ART v OHIM, paragraph 51).

27 Consequently, the second part of the single plea in law relied on by the appellant in support of its appeal must be rejected as clearly inadmissible.

The third part of the plea in law

28 By the third part of its plea in law, the appellant submits that the Court of First Instance ignored the fact that, according to the settled case-law of the Court of Justice, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case. Furthermore, a global assessment of the likelihood of confusion implies some interdependence between the relevant factors. Had the Court of First Instance taken into account that interdependence it would have concluded that there was no likelihood of confusion. In fact, the lack of distinctiveness of the earlier mark should be related to the low degree of similarity of the two signs of the trade marks at issue, which is reinforced by the fact that the mark FERRÓ has been only partially rejected for the products corresponding to Classes 29 and 30 of the Nice Agreement and part of Class 42 thereof and accepted for the rest of the products corresponding to Class 42.

29 In that regard, it is important to point out that, according to the settled case-law of the Court of Justice and, in particular, that cited at paragraphs 18 and 19 of the present order, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all the factors relevant to the circumstances of the case and that appreciation implies some interdependence between the relevant factors.

30 In the present case, it must be stated that the Court of First Instance, in accordance with that case-law and without erring in law, carried out an analysis which was fully part of the process intended to determine the overall impressions produced by the conflicting marks and to bring about a global assessment of the likelihood of confusion between them, taking into consideration all relevant factors in the present case. In that regard, contrary to the appellant’s submissions, the Court of First Instance also considered the distinctive character of the earlier trade mark, as already follows from paragraph 21 of the present order.

31 Consequently, the third part of the single plea in law relied on by the appellant in support of its appeal must be rejected as clearly unfounded.

32 It results from all of the foregoing that the appeal must be dismissed as being in part clearly inadmissible and in part clearly unfounded.

Costs

33 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and Ferrero Deutschland have applied for costs to be awarded against the appellant and the latter has been unsuccessful, the appellant must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Athinaiki Oikogeniaki Artopoiia AVEE is ordered to pay the costs.

[Signatures]

* Language of the case: English.

Order of 11 Sep 2007, C-225/06 (AVEE - Ferro), ECLI:EU:C:2007:499.