Order of 2 Oct 2019, C-293/19 (Et Djili Soy Dzhihangir Ibryam v EUIPO), ECLI:EU:C:2019:814.

ORDER OF THE COURT (Eighth Chamber)

2 October 2019 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — EU trade mark — Opposition proceedings — Application for registration of the figurative mark containing the word element Djili — Earlier national word mark containing the word element GILLY — Relative ground for refusal)

In Case C-293/19 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 April 2019,

Et Djili Soy Dzhihangir Ibryam, established in Dulovo (Bulgaria), represented by C.-R. Romiţan, lawyer,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by D. Botis, acting as Agent,

defendant at first instance,

THE COURT (Eighth Chamber),

composed of F. Biltgen, President of the Chamber, C.G. Fernlund (Rapporteur) and L.S. Rossi, Judges,

Advocate General: E. Sharpston,

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 Court’s Rules of Procedure,

makes the following

Order

1        By its appeal, Et Djili Soy Dzhihangir Ibryam seeks to have set aside the judgment of the General Court of the European Union of 12 February 2019, Et Djili Soy Dzhihangir Ibryam v EUIPO — Lupu (Djili) (T-231/18, not published, ‘the judgment under appeal’, EU:T:2019:82), by which the General Court dismissed its action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2018 (Case R 1902/2017-5), relating to opposition proceedings between Mr Victor Lupu and Et Djili Soy Dzhihangir Ibryam (‘the contested decision’).

2        In support of its appeal, the appellant relies on a single ground of appeal alleging, in essence, infringement of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union trade mark] (OJ 2009 L 78, p. 1).

3        By its appeal, the appellant also requested, pursuant to Article 55 of the Rules of Procedure of the Court of Justice, that the proceedings in this case be stayed until a final decision has been delivered by the Romanian courts on the validity of the national mark registered by Mr Lupu.

4        On 13 May 2019, EUIPO lodged its observations on that request for a stay of proceedings.

 The appeal

5        Pursuant to Article 181 of the 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.

6        That provision must be applied in the present case and, consequently, the appellant’s request for a stay of proceedings rejected.

7        On 23 July 2019, the Advocate General took the following position:

‘1.      On 1 June 2016, the appellant filed an application for the registration of the figurative sign as an EU trade mark (“the mark at issue”) with EUIPO pursuant to Regulation No 207/2009, as amended, which was repealed and replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017, on the European Union trade mark (OJ 2017 L 154, p. 1), in respect of goods and services referred to, inter alia, in Class 29 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.

2.      On 31 August 2016, Mr Lupu filed a notice of opposition to registration of the mark at issue in respect of all goods referred to in Class 29 based on the earlier Romanian word mark GILLY, registered on 21 September 2009, covering goods in that class. The provision relied on in support of that opposition was Article 8(1)(b) of Regulation 207/2009. By its decision of 31 July 2017, the Opposition Division of EUIPO rejected Mr. Lupu’s opposition on the ground that there was no likelihood of confusion between the mark at issue and the earlier word mark. That decision of the Opposition Division was annulled on 31 January 2018 by the Fifth Board of Appeal of EUIPO (“the Board of Appeal”) on the ground that a likelihood of confusion between the marks at issue could not be ruled out. On 4 April 2018, the appellant brought an action before the General Court requesting that the decision of the Board of Appeal be annulled, Mr Lupu’s appeal be dismissed and that Mr Lupu be ordered to pay the costs. In the judgment under appeal, the General Court upheld the decision of the Board of Appeal, holding that the plea in law raised by the appellant alleging, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001 was unfounded. The General Court held, inter alia, that none of the arguments raised by the appellant was capable of calling into question the Board of Appeal’s finding that there was a likelihood of confusion between the marks at issue since there was at the same time a low degree of visual similarity between them and they were phonetically very similar if not identical, and they concerned goods which were in part identical and in part highly similar.

3.      I refer the Court to the judgment under appeal for the remainder.

4.      By its appeal, the appellant requests that the Court set aside the judgment under appeal and order Mr Lupu to pay the costs.

5.      The appeal is based, in essence, on a single ground of appeal alleging infringement of Article 8(1)(b) of Regulation 2017/1001; that ground of appeal is divided into three parts.

6.      By the first part of that single ground of appeal, the appellant challenges, in essence, the findings of the General Court concerning the visual comparison of the marks at issue. Thus, the appellant submits, inter alia, that, for the purposes of such a visual comparison, it is necessary to carry out a comparison between the whole signs, taking into account their visual appearance and stylisation. The appellant further submits that the first letters of the signs at issue differ and that the contour and shape of the letters of the signs at issue are very different.

7.      In my opinion, that argument is, in any event, manifestly inadmissible.

8.      In accordance with Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The assessment of the facts and the evidence thus does not, save where they are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraph 49, and of 6 September 2012, United States Polo Association v OHIM, C-327/11 P, not published, EU:C:2012:550, paragraph 62). Such distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence (see, inter alia, judgment of 7 May 2009, Waterford Wedgwood v Assembled Investments (Proprietary), C-398/07 P, not published, EU:C:2009:288, paragraph 41 and the case-law cited).

9.      The assessment of the visual similarity between the signs at issue is a question of a factual nature (see, to that effect, judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraphs 50 and 51, and order of 20 January 2015, Longevity Health Products v OHIM, C-311/14 P, not published, EU:C:2015:23, paragraph 34 and the case-law cited).

10.      In the present case, it therefore appears that the appellant is seeking a reappraisal of the facts, without however claiming and, a fortiori, establishing that they have been distorted.

11.      In my opinion, that argument is therefore manifestly inadmissible.

12.      Furthermore, in so far as the appellant submits that the visual appearance and stylisation of the signs are relevant for the purpose of the visual comparison of the signs, the appellant’s argument is also manifestly unfounded.

13.      Notwithstanding the fact that the General Court pointed out, in paragraph 30 of the judgment under appeal, that, since the earlier mark is a word mark, the visual appearance and stylisation of the sign applied for are irrelevant for the purpose of the visual comparison of the signs at issue (see, to that effect, judgment of 13 February 2007, Ontex v OHIM — Curon Medical (CURON), T-353/04, not published, EU:T:2007:47, paragraph 74 and the case-law cited), it cannot be disputed that the General Court, in paragraphs 29 and 31 of its judgment, carried out a visual comparison of the word elements of the signs at issue and found that there was only a low degree of visual similarity between those signs.

14.      That argument is therefore manifestly unfounded.

15.      By the second part of the single ground of appeal relied on in support of its appeal, the appellant submits that the General Court’s conclusion regarding the phonetic comparison of the signs at issue is incorrect and that the General Court ignored all the appellant’s allegations in that regard.

16.      The appellant thus submits that the reference to the pronunciation of the words “djinn” and “gimnastic” is not relevant for the purpose of the phonetic comparison of the signs at issue. It also maintains that the respective pronunciation of the words “djili” and “gilly” in Romanian differs in that, in its opinion, the combination of the letters “g” and “i” is pronounced as [gi] and not as [ʤi].

17.      As is the case for the visual similarity, the assessment of the phonetic similarity between the signs at issue is a question of a factual nature (judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraphs 50 and 51). That question cannot be the subject of an appeal, save where the facts are distorted by the General Court, which is neither claimed nor established in the present case.

18.      On that basis, the argument put forward by the appellant is manifestly inadmissible.

19.      Furthermore, as regards the claim that the General Court ignored “all” of the appellant’s allegations, it must be noted that that claim is clearly unfounded. The General Court duly examined the evidence adduced by the appellant, in particular on the relevance of the reference to the pronunciation of the words “djinn” and “gimnastic” and on the pronunciation of the letter combinations “dji” and “gi”, in paragraphs 33 to 39 of the judgment under appeal. Thus, there can be no question of a failure to state reasons by the General Court.

20.      In that regard, the second part of the single ground of appeal is therefore, in my opinion, manifestly unfounded.

21.      Lastly, as regards the third part of that ground of appeal, the appellant claims that the General Court erred in its global assessment of the likelihood of confusion between the marks at issue by failing to take into account all relevant factors in that regard. In particular, according to the appellant, the General Court failed to analyse the conduct of the opponent, Mr Lupu, who has been guilty of harmfully taking advantage of the appellant.

22.      That argument appears to me both manifestly inadmissible and manifestly unfounded.

23.      In so far as the appellant seeks, in essence, a reappraisal of the facts and the factors that the General Court considered to be relevant, it is sufficient to note that such a reappraisal does not constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraph 49 and the case-law cited).

24.      Since the appellant neither claims nor establishes any distortion of the facts, its argument is clearly inadmissible for the reasons set out above.

25.      Lastly, that argument is also manifestly unfounded, since, contrary to what is claimed by the appellant, the General Court took into consideration the appellant’s allegations relating to the strategy implemented by Mr Lupu intended to take advantage of the appellant. The General Court specified, in paragraphs 15 to 19, 47 and 49 of the judgment under appeal, the reasons why the argument based on Mr Lupu’s conduct could not succeed in opposition proceedings based on Regulation 2017/1001.

26.      Therefore, in the light of the foregoing considerations, I propose that the Court of Justice dismiss the appeal pursuant to Article 181 of the Rules of Procedure on the ground that it is, in part, manifestly inadmissible and, in part, manifestly unfounded.’

8        For the same reasons as those given by the Advocate General, the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

 Costs

9        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. Under Article 138(1) of those rules, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

10      In the present case, since the present order has been made before the appeal was served on the defendant and therefore before the defendant could have incurred costs other than those relating to the request for a stay of proceedings lodged by the appellant, and, in any event, since EUIPO has not applied for costs against the appellant, Et Djili Soy Dzhihangir Ibryam shall bear solely its own costs.

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

1.      The appeal is dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

2.      Et Djili Soy Dzhihangir Ibryam shall bear its own costs.

Luxembourg, 2 October 2019.

A. Calot Escobar

F. Biltgen

Registrar

      President of the Eighth Chamber

*      Language of the case: English.