Order of 14 Jan 2016, C-278/15 (Royal County of Berkshire Polo Club v OHIM), ECLI:EU:C:2016:20.

ORDER OF THE COURT (Sixth Chamber)

14 January 2016 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — Community trade mark — Application for the Community figurative mark including the word elements ‘Royal County of Berkshire POLO CLUB’ and the representation of a polo player on horseback — Opposition by the proprietor of the earlier Community figurative marks including the word elements ‘BEVERLY HILLS POLO CLUB’ — Regulation (EC) No 207/2009 — Article 8(1)(b) — Likelihood of confusion — Partial refusal of registration — Appeal in part manifestly inadmissible and in part manifestly unfounded)

In Case C-278/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 4 June 2015,

Royal County of Berkshire Polo Club Ltd, established in London (United Kingdom), represented by J. Maitland-Walker, Solicitor,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

Lifestyle Equities CV, established in Amsterdam (Netherlands),

intervener at first instance,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, C.G. Fernlund and E. Regan (Rapporteur), Judges,

Advocate General: N. Wahl,

Registrar: A. Calot Escobar,

having regard to the decision taken, after hearing the Advocate General, to give a decision by reasoned order in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1        By its appeal, Royal County of Berkshire Polo Club Ltd asks the Court to set aside the judgment of the General Court of the European Union of 26 March 2015 in Royal County of Berkshire Polo Club v OHIM — Lifestyle Equities (Royal County of Berkshire POLO CLUB) (T-581/13, EU:T:2015:192) (‘the judgment under appeal’), in so far as, by that judgment, that Court partially 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 25 July 2013, as corrected on 9 September 2013 (Case R 1374/2012-2), regarding opposition proceedings between Lifestyle Equities CV and itself (‘the contested decision’).

 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), entitled ‘Relative grounds for refusal’, provides:

‘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        Article 41 of that regulation, entitled ‘Opposition’, provides:

‘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 6 January 2011, the appellant filed an application for registration of a Community trade mark with OHIM pursuant to Regulation No 207/2009.

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

6        The goods in respect of which registration was sought are in, inter alia, Classes 9, 14, 18 and 25 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

–        Class 9: ‘Spectacles, spectacle cases, spectacle frames, spectacle glasses, sun glasses; and accessories therefor’;

–        Class 14: ‘Watches, jewellery, precious stones, precious metals, goods coated in precious metals’;

–        Class 18: ‘Leather goods; imitation leather goods; trunks, travel bags, umbrellas, parasols, whips, harnesses, saddlery, walking sticks’, and

–        Class 25: ‘Articles of clothing, footwear and headgear’.

7        The application for registration of the Community trade mark was published in Community Trade Marks Bulletin No 45/2011 of 7 March 2011.

8        On 30 May 2011, the intervener at first instance, Lifestyle Equities CV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark in question in respect of, inter alia, the goods referred to in paragraph 6 of the present order.

9        The opposition was based on the earlier Community figurative marks registered under the numbers 364257, 532895, 5482484 and 8456469, all of which consist of the following sign:

10      The earlier marks cover, inter alia, goods in Classes 9, 14, 18 and 25 of the Nice Agreement, corresponding, for each of those classes, to the following description:

–        Class 9: ‘Eyewear, namely, eyeglasses, eyeglass frames, eyeglass cases and eyeglass chains’ (trade mark No 5482484);

–        Class 14: ‘Watches’ (trade mark No 532895); ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’ (trade mark No 8456469);

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (trade mark No 8456469), and

–        Class 25: ‘Clothing, footwear, headgear’ (trade mark No 5482484 and trade mark No 8456469).

11      The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

12      On 15 June 2012, the Opposition Division of OHIM rejected the opposition in its entirety.

13      On 24 July 2012, the intervener at first instance filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division of OHIM.

14      By the contested decision, the Second Board of Appeal of OHIM, after finding that there was some visual similarity, a degree of phonetic similarity and significant conceptual similarity between the signs at issue and that the distinctiveness of the earlier marks was average, partially annulled the Opposition Division’s decision and upheld the opposition as regards the goods referred to in paragraph 6 of the present order, on the ground that there was a likelihood of confusion between the marks at issue in respect of all the goods referred to in paragraph 10 of the present order.

 The procedure before the General Court and the judgment under appeal

15      By application lodged at the Registry of the General Court on 4 November 2013, the appellant brought before that Court an action seeking the annulment of the contested decision.

16      In support of its action, the appellant relied, in essence, on two pleas in law, alleging: (i) infringement of Article 75 of Regulation No 207/2009 and (ii) infringement of Article 8(1)(b) of that regulation.

17      In the first place, the General Court examined the plea alleging infringement of Article 75 of Regulation No 207/2009 and, in paragraphs 19 to 24 of the judgment under appeal, stated, first, that the reasoning in the contested decision was set out in a readily understandable manner and, secondly, referred to its case-law according to which the duty to state reasons for decisions is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure.

18      In the second place, the General Court examined the second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and held, in paragraph 79 of the judgment under appeal, that the Second Board of Appeal of OHIM was correct in concluding that there was a likelihood of confusion on the part of the relevant public, the level of attention of which is not particularly high, in respect of the goods not directly related to polo playing. By contrast, in paragraphs 82 to 85 of the judgment under appeal, the General Court stated that, with regard to the goods ‘whips, harness and saddlery’, it had to be held that the similarity between the signs at issue is reduced significantly by the fact that the elements which they have in common have low inherent distinctiveness in relation to those goods and that, therefore, the Second Board of Appeal of OHIM was wrong to find that there was a likelihood of confusion between the signs at issue in relation to those goods.

19      Consequently, the General Court annulled the contested decision to the extent that it refused Community trade mark application No 9642621 in respect of the goods ‘whips, harness, and saddlery’ and dismissed the action as to the remainder.

 The form of order sought by the appellant before the Court

20      By its appeal, the appellant claims that the Court should set aside the judgment under appeal in so far as, by that judgment, the General Court partially dismissed it action, and order Lifestyle Equities CV to pay the costs of the proceedings at first instance and of the present appeal.

 The appeal

21      Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court 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.

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

23      In support of its appeal, the appellant relies, in essence, on five grounds of appeal, alleging, respectively, a distortion of the contested decision and of the relevant facts, infringement of Article 8(1)(b) of Regulation No 207/2009, infringement of the duty to state reasons, and infringement of the right to a fair hearing.

 The first and second grounds of appeal, alleging a distortion of the contested decision and of the relevant facts

 The appellant’s arguments

24      The appellant submits that the General Court, in paragraph 45 of the judgment under appeal, erred in law in distorting the relevant facts and the contested decision, by stating that, ‘as the [appellant] rightly points out’, ‘the opposing party [had] proved to the requisite legal standard that the relevant public was familiar with its mark’. According to the appellant, first, it is wrong to suggest that it had made such a point, as is attributed to it by the General Court, and, secondly, Lifestyle Equities CV had not adduced any evidence to so prove such familiarity on the part of the relevant public, in particular in relation to the goods at issue.

 Findings of the Court

25      It must be pointed out, first, that the alleged error which the appellant claims paragraph 45 of the judgment under appeal is marred by is based on a misreading of that paragraph.

26      By the findings in that paragraph, the General Court did not rule on the dispute between the appellant and Lifestyle Equities CV, but cited its own case-law resulting from the judgment in Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA) (T-376/09, EU:T:2011:225, paragraph 55) confirming in that regard the appellant’s interpretation of that case-law.

27      Accordingly, in so far as the General Court stated in that paragraph that ‘the [appellant]’ had ‘rightly point[ed] out’ that ‘the opposing party had proved to the requisite legal standard that the relevant public was familiar with its mark’, it was referring to the appellant’s arguments and to the circumstances of the case which rise to that judgment.

28      Consequently, and contrary to what the appellant suggests in its appeal, the General Court, in paragraph 46 of the judgment under appeal, accepted its interpretation of the judgment in Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA) (T-376/09, EU:T:2011:225), according to which the enhanced distinctiveness in respect of the goods in Class 25 of the Nice Agreement was based on the fact that the opponent to which that judgment related had proved to the requisite legal standard that the relevant public recognised its mark. Paragraphs 45 and 46 of the judgment under appeal do not therefore adversely affect the appellant as regards that issue.

29      Secondly, the appellant does not show how the General Court’s finding in paragraph 45 of the judgment under appeal constitutes a distortion of the contested decision, but merely puts forward such a claim in a very general manner.

30      Thirdly, the appellant did not indicate precisely either the facts alleged to have been distorted by the General Court or the errors of appraisal which, in its view, led to such a distortion (see, to that effect, order in Adler Modemärkte v OHIM, C-343/14 P, EU:C:2015:310, paragraph 43 and the case-law cited, and order in Arnoldo Mondadori Editore v OHIM, C-548/14 P, EU:C:2015:624, paragraph 41).

31      It follows that the first and second grounds of appeal must be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.

 The third ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

 The appellant’s arguments

32      The appellant complains that the General Court, in the context of its examination of the similarity of the signs at issue, did not correctly evaluate the marks and the signs at issue, as required by Article 8(1)(b) of Regulation No 207/2009, in particular in erroneously dismissing arguments which urged evaluation of the marks and signs as a whole.

33      In that regard, the appellant submits that it is plain that any geographical indication is an element of a sign which is capable of distinguishing that sign from other similar signs. It maintains that the presence of place names in both of the signs at issue is therefore a matter which has to be given due regard and weight. Likewise, it submits that the place names ‘Royal County of Berkshire’ and ‘Beverly Hills’ are indications of location which should be considered to be a notable point of distinction between the signs under consideration, irrespective of whether a person is familiar with the respective locations or not.

34      The appellant maintains that the General Court thus fundamentally erred in dismissing as ‘wholly irrelevant’, in paragraph 70 of the judgment under appeal, the argument which the appellant had put forward in that regard. It also disputes, in a more general manner, the General Court’s finding as regards the visual and conceptual similarity of the signs at issue.

 Findings of the Court

35      In the present case, first, in so far as the appellant disputes in a general manner the way in which the General Court applied Article 8(1)(b) of Regulation No 207/2009, it must be stated that it does so without referring precisely to any error in the General Court’s assessment.

36      Secondly, in so far as the appellant submits that the General Court should have given more weight to the different geographical indications in the marks at issue, it confines itself to criticising the manner in which the General Court weighed up the different elements of the signs at issue, which is, according to settled case-law, factual in nature (see, to that effect, order in Marsza?kowski v OHIM, C-177/13 P, EU:C:2014:183, paragraphs 59 and 60 and the case-law cited).

37      It follows that the third ground of appeal must be rejected as manifestly inadmissible.

 The fourth ground of appeal, alleging infringement of the duty to state reasons

 The appellant’s arguments

38      The appellant claims that the General Court infringed its duty to state reasons.

39      By the first part of its fourth ground of appeal, the appellant criticises the General Court for holding, in paragraph 79 of the judgment under appeal, without explaining or providing reasons for those findings, that the finding of the Second Board of Appeal of OHIM in respect of the likelihood of confusion in the mind of the relevant public would remain valid even if the appellant had asserted that some of the goods covered by its application for registration of a Community trade mark were luxury goods, in relation to which the buyer would demonstrate a higher level of attention.

40      By the second branch of its fourth ground of appeal, the appellant complains that the General Court, after drawing, in paragraphs 82 to 85 of the judgment under appeal, a distinction between ‘whips, harness and saddlery’ in Class 18 of the Nice Agreement and the other goods in the same class, failed to explain the reason why no other distinctions should be drawn in relation to the conditions in which the goods at issue are marketed and whether or not such other goods are considered to be ‘luxury goods’.

41      By the third part of that ground of appeal, the appellant complains that the General Court, after having correctly found, in paragraphs 46 to 48 of the judgment under appeal, that the Second Board of Appeal of OHIM had erred, did not provide a proper statement of reasons for its conclusion, in paragraph 49 of that judgment, that that Board of Appeal’s finding ‘cannot be upheld in its entirety’.

 Findings of the Court

42      The first part of the fourth ground of appeal is directed against a ground which was included in the judgment under appeal purely for the sake of completeness, since the General Court stated, in paragraph 79 of that judgment, that, in the light of the degree of similarity between the signs at issue and the fact that the goods are identical, there would still be a likelihood of confusion on the part of the relevant public even if the appellant had asserted that some of the goods covered by its application for registration of a Community trade mark were luxury goods, with regard to which the buyer would demonstrate a higher level of attention, which has not been established in the present case.

43      According to settled case-law, an argument directed against a ground included purely for the sake of completeness is ineffective and cannot lead to a judgment of the General Court being set aside (see, inter alia, order in Sunrider v OHIM, C-142/14 P, EU:C:2015:371, paragraph 89 and the case-law cited).

44      So far as concerns the second part of the fourth ground of appeal, it must be borne in mind that, according to settled case-law, the examination of the descriptiveness of the mark in respect of which registration is sought must be carried out in relation to each of the goods and services for which that registration is sought and the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. However, where the same ground for refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods and services concerned (see, to that effect, judgment in BVBA Management, Training en Consultancy, C-239/05, EU:C:2007:99, paragraphs 34 and 37; order in MPDV Mikrolab v OHIM, C-17/08 P, EU:C:2009:64, paragraph 34; order in Prana Haus v OHIM, C-494/08 P, EU:C:2009:759, paragraph 46, and order in Fidelio v OHIM, C-87/11 P, EU:C:2012:154, paragraph 43).

45      In the present case, the General Court set out, in paragraphs 82 to 85 of the judgment under appeal, the reasons why it took the view that the goods ‘whips, harness and saddlery’ merited different treatment, as regards the assessment of the likelihood of confusion, from that of the other goods covered by the signs at issue. In so doing, the General Court stated, to the requisite legal standard, the reasons for its conclusion that the Second Board of Appeal of OHIM had erred only in finding that there was a likelihood of confusion between the signs at issue in relation to the goods ‘whips, harness, and saddlery’.

46      Likewise, as is apparent from paragraph 42 of the present order, and contrary to what the appellant claims, it must be stated that the General Court did not at all find that the goods at issue were luxury goods.

47      As regards the third part of the fourth ground of appeal, it is sufficient to state that the argument which the appellant puts forward regarding paragraphs 46 to 49 of the judgment under appeal seeks, in actual fact, to call into question factual assessments which the General Court made in those paragraphs. As has already been pointed out in paragraph 36 of the present order, such an argument must be rejected as manifestly inadmissible.

48      The fourth ground of appeal must therefore be rejected as being, in part, manifestly unfounded and, in part, manifestly inadmissible.

 The fifth ground of appeal, alleging infringement of the right to a fair hearing

 The appellant’s arguments

49      The appellant claims that the General Court infringed its right to be heard on the facts on which that Court based its reasoning and, as a result, infringed its right to a fair hearing. It submits that, accordingly, by raising arguments and conclusions of its own motion, without prior warning or notice to the parties, the General Court failed to follow the guiding principles resulting from the judgment in OHIM v National Lottery Commission (C-530/12 P, EU:C:2014:186).

50      According to the appellant, the General Court infringed that right by holding, in paragraph 69 of the judgment under appeal, that, first, the degree of similarity between the signs at issue would be only marginally reduced if, notwithstanding the arrangement of the word elements of the signs at issue, the relevant public were to associate those word elements with two different polo clubs and, secondly, that there was nothing to suggest that the non-English speaking public would understand the meaning of the word element ‘Royal County of Berkshire’ in the mark in respect of which registration is sought.

 Findings of the Court

51      It must be borne in mind that the right to a fair hearing is a fundamental principle of EU law, laid down in Article 47 of the Charter of Fundamental Rights of the European Union (judgment in OHIM v National Lottery Commission, C-530/12 P, EU:C:2014:186, paragraph 52).

52      In order to satisfy the requirements relating to the right to a fair hearing, it is important for the parties to be apprised of, and to be able to debate and be heard on, the matters of fact and of law which will determine the outcome of the proceedings (judgment in Commission v Ireland and Others, C-89/08 P, EU:C:2009:742, paragraphs 55 and 56; judgment in Banif Plus Bank, C-472/11, EU:C:2013:88, paragraph 30, and judgment in OHIM v National Lottery Commission, C-530/12 P, EU:C:2014:186, paragraph 54).

53      In the present case, first, it is apparent from paragraph 66 of the judgment under appeal that the appellant was able to submit before the General Court its arguments concerning the significance to be attributed to the word elements of the signs at issue and concerning the fact that those signs refer to two different locations where polo can be played.

54      Secondly, it must be pointed out that the appellant’s argument relating to the non-English-speaking public’s understanding of the word element ‘Royal County of Berkshire’ is directed against a ground of the General Court which was included in paragraph 69 of the judgment under appeal purely for the sake of completeness. Consequently, as has been pointed out in paragraph 43 of the present order, such an argument cannot lead to that judgment being set aside.

55      The fifth ground of appeal must therefore be rejected as manifestly unfounded.

56      In the light of all of the foregoing considerations, the appeal must be dismissed in its entirety.

 Costs

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

58      As the present order has been adopted prior to notification of the appeal to the defendant at first instance and, therefore, before the latter has incurred costs, it is appropriate to decide that the appellant must bear its own costs.

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

1.      The appeal is dismissed.

2.      Royal County of Berkshire Polo Club Ltd shall bear its own costs.

[Signatures]

* Language of the case: English.