CJEU Order C-31/19 Seven v Shenzhen Jiayz Photo Industrial 2 Jul 2019

ORDER OF THE COURT (Seventh Chamber)

2 July 2019 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Opposition proceedings — Application for registration of the figurative mark including the word element ‘sevenoak’ — Earlier international figurative mark 7SEVEN — Regulation (EC) No 207/2009 — Article 8(1)(b))

In Case C-31/19 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 January 2019,

Seven SpA, established in Leinì (Italy), represented by L. Trevisan, avvocato,

appellant,

the other parties to the proceedings being:

Shenzhen Jiayz Photo Industrial Ltd, established in Shenzhen (China),

applicant at first instance,

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Seventh Chamber),

composed of T. von Danwitz, President of the Chamber, C. Vajda and A. Kumin (Rapporteur), Judges,

Advocate General: E. Tanchev,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1 By its appeal, Seven SpA seeks to have set aside the judgment of the General Court of the European Union of 21 November 2018, Shenzhen Jiayz Photo Industrial v EUIPO — Seven (SEVENOAK) (T-339/17, not published, ‘the judgment under appeal’, EU:T:2018:815), by which the General Court annulled the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 March 2017 (Case R 1326/2016-1) relating to opposition proceedings between Seven and Shenzhen Jiayz Photo Industrial Ltd.

2 In support of its appeal, the appellant relies on a single ground of appeal, alleging 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).

The appeal

3 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.

4 That provision must be applied in the present case.

5 On 30 April 2019, the Advocate General took the following position:

‘1. For the reasons stated hereinafter, I propose that the Court should dismiss the appeal in the present case as being manifestly inadmissible and, in any event, manifestly unfounded, and order the appellant to pay the costs, in accordance with Article 137 and Article 184(1) of the Rules of Procedure of the Court.

2. In support of its action, the appellant relies in substance on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation [No 207/2009]. That single plea in law is composed, in essence, of three parts, relating to the General Court’s assessment of, first, the dominant elements of the earlier mark, secondly, the similarity of the marks at issue, and thirdly, the likelihood of confusion between those marks.

The first part of the single plea in law, alleging incorrect assessment of the dominant elements of the earlier mark

3. In the first part of the single plea in law, the appellant contests, in paragraphs 62 and 63 of the judgment under appeal, the General Court’s assessment of the dominant elements of the earlier mark, and submits that the element “seven” should be considered as the only dominant element of the earlier mark. Relying on paragraphs 31 and 34 of the judgment of 6 October 2011, Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND) (T-176/10, not published, EU:T:2011:577), and on paragraph 36 of the judgment of 15 July 2015, The Smiley Company v OHIM — The Swatch Group Management Services (HAPPY TIME) (T-352/14, not published, EU:T:2015:491), the appellant alleges violation of the case-law principle that consumers generally pay greater attention to the beginning of a mark and that the word placed at the beginning of a mark is likely to have a greater impact than the rest of the mark. In that regard, the appellant argues that, in the earlier mark, the first clearly perceptible word is “seven” and that the elements “7” and “seven” will only be pronounced once and thus cannot be perceived as two separate elements. The appellant further asserts that the reasoning of the General Court is contradictory in that it held, on the one hand, that the figurative elements, by reason of their essentially ornamental function, were of less importance than the word element “seven” and, on the other hand, that the elements “7” and “seven” had an independent distinctive role, none of them being dominant.

4. It should be recalled that it follows from the settled case-law of the Court of Justice that, under the second subparagraph of Article 256(1) 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 has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence therefore do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (judgment of 28 February 2019, Groupe Léa Nature v EUIPO, C-505/17 P, not published, EU:C:2019:157, paragraph 62).

5. In the present appeal, under cover of an alleged error of law by the General Court in its assessment of the dominant elements of the earlier mark, the appellant is in fact seeking to call into question the General Court’s appraisal of the facts and at the same time to substitute its own appraisal for that of the General Court, without alleging any distortion by that court of the facts or evidence. Such an appraisal does not constitute a point of law and, as such, the Court of Justice does not have jurisdiction to review that appraisal on appeal (see, by analogy, order of 29 November 2012, Hrbek v OHIM, C-42/12 P, not published, EU:C:2012:765, paragraph 65). It follows that the first part of the single plea in law is manifestly inadmissible.

6. It should be added, for the sake of completeness, that, even if the appellant’s arguments would be deemed admissible in so far as they concern the General Court’s failure to comply with established case-law and breach of the obligation to state reasons, those arguments must be rejected as manifestly unfounded.

7. In that regard, I note that the obligation to state reasons owed by the General Court requires it to make clear and unequivocal the reasoning it has followed, so as to enable the persons concerned to know the reasons for the decision taken and the Court of Justice to exercise its power of review (judgment of 25 July 2018, QuaMa Quality Management v EUIPO, C-139/17 P, not published, EU:C:2018:608, paragraph 59).

8. In the first place, in paragraph 63 of the judgment under appeal, the General Court recalled that, in accordance with settled case-law, it must be held that the consumer generally pays more attention to the beginning of a mark. However, the General Court held that in the present case, the number 7 was placed at the beginning of the earlier mark and was much more detached and therefore observable in the overall impression given by that mark than the number 7 in the earlier mark in question in the case which gave rise to the judgment of 6 October 2011, Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND) (T-176/10, not published, EU:T:2011:577). Consequently, the General Court provided sufficient reasons for its decision, and did not commit any error of law in assessing the position occupied by the element “7” in the earlier mark.

9. In the second place, the appellant’s claim based on the General Court’s allegedly contradictory statement of reasons is based on an incorrect reading of the judgment under appeal.

10. In paragraph 62 of the judgment under appeal, the General Court found that the word element “seven” of the earlier mark had a higher importance than its figurative elements because the number 7, placed at the beginning of the sign, contained a small black star in the upper left and was slightly hidden by the contours of the letter “s”. On that basis, the General Court held that the figurative elements of the sign were limited to a font of unoriginal character and a small decorative element, and those figurative elements, because of their essentially ornamental function, were of less importance than the word element “seven” which would attract more attention from the relevant public and be more easily remembered by it.

11. Further, in paragraph 63 of the judgment under appeal, the General Court stressed that while it must be accepted that the word “seven” occupies a significant place in the overall impression produced by the earlier mark, it cannot, however, be considered to occupy a dominant position within that mark, whereas the number 7 only contributes marginally to the overall impression produced by that mark.

12. It follows that the General Court was entitled to decide, without there being any contradiction, that, even though the word element “seven” of the earlier mark attracted more attention from the relevant public than the figurative elements of that mark, that word element did not occupy a dominant position within the earlier mark.

13. In those circumstances, the first part of the single plea in law must be rejected as manifestly inadmissible and, in any event, manifestly unfounded.

The second part of the single plea in law, alleging incorrect assessment of the similarity of the marks at issue

14. In the second part of the single plea in law, the appellant alleges that the General Court wrongly concluded that the marks at issue were not similar. That part is essentially composed of four complaints.

15. In the first complaint, the appellant submits that, with regard to the mark applied for, the General Court’s reasoning in paragraphs 70 to 78 of the judgment under appeal is contradictory and contrary to case-law principles because the General Court acknowledges that this mark would be read by the majority of the English-speaking public as “seven”, while also holding that it was not possible to detect an element which would be more distinctive and dominant than the others. According to the appellant, the General Court should have concluded that only the element “seven” was perceptible, while the elements “o”, “a” and “k” were negligible. Moreover, the appellant claims that the General Court did not give adequate reasons for its decision that the graphic representation of the mark applied for prevails over the word “seven”.

16. In fact, under the guise of a line of argument alleging contradictory and defective reasoning in the judgment under appeal, the appellant actually seeks to challenge the appraisal of the facts carried out by the General Court with regard to the assessment of the word element “seven” in the mark applied for. In accordance with the settled case-law of the Court of Justice referred to in point 4 of the present position, such a complaint is not, in the absence of an allegation that the facts or evidence have been distorted, subject to review of the Court of Justice on appeal. It follows that the first complaint is manifestly inadmissible.

17. In addition, the first complaint is based on what is clearly a misreading of the judgment under appeal. The General Court did not find that the graphic representation of the mark applied for prevailed over the word element “seven”, but rather it considered, in paragraph 70 of the judgment under appeal, that the particularities of the writing of the letters “n”, “l”, “o”, “a” and “k” offset the existence of the word element “seven” and thus no element could be considered as dominant. Consequently, the first complaint is, in any event, manifestly unfounded.

18. In the second complaint, the appellant submits that, in paragraphs 70 to 79 of the judgment under appeal, the General Court wrongly concluded that the marks at issue were visually dissimilar. According to the appellant, those marks are visually similar in so far as the relevant public perceives, in particular, the word element “seven” in those two signs. The appellant further submits that the fact that the earlier mark is fully included in the mark applied for militates in favour of the visual similarity between the marks at issue. In that regard, the appellant criticises the General Court for having infringed the case-law principles that, in essence, first, the average consumer normally perceives a mark as a whole and does not examine its various details, secondly, the word elements of a mark are often more distinctive than the figurative elements and, thirdly, the consumer, even if he shows a high level of attention, only rarely has the possibility of making a direct comparison of the different marks, but must rely on the imperfect recollection of them.

19. This complaint, under the guise of an argument based on alleged breach of case-law principles, actually seeks to challenge afresh the assessment of the visual similarity of the marks at issue which falls within the sovereign appraisal of the facts by the General Court, which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (see, to that effect, order of 18 January 2018, Monster Energy v EUIPO, C-678/16 P, not published, EU:C:2018:24, paragraph 49). Since no distortion of the facts or evidence has been alleged in support of the second complaint, it must be rejected as manifestly inadmissible.

20. In any event, the second complaint is manifestly unfounded. As regards the overall assessment of the similarity between the marks at issue, the General Court took into account, in particular in paragraphs 47, 48, 60, 61, 76 to 78, 91 and 96 of the judgment under appeal, the case-law principles relied on by the appellant, and following a detailed examination carried out in paragraphs 68 to 79 of the judgment under appeal, it rightly held that the marks at issue were visually dissimilar. Moreover, the General Court held in particular that although the relevant consumers will probably not be aware of all of the differences between those marks, listed in paragraphs 73 to 75 of that judgment, the overall visual impression of the marks that those consumers retain will nevertheless be very different despite the presence of the word element “seven” in those marks. Accordingly, that second complaint is based on a misreading of the judgment under appeal and the General Court did not infringe, in that judgment, the case-law principles relied on by the appellant in assessing the visual similarity of the marks at issue.

21. The appellant’s third complaint alleges a contradiction in the grounds of the judgment under appeal. It argues, in substance, that the findings of the General Court, in paragraphs 83 and 87 of the judgment under appeal, regarding the conceptual and phonetic similarity of the marks at issue confirm that the dominant element in both signs is “seven”, contrary to what the General Court held in paragraphs 62 and 63 of that judgment.

22. The third complaint is actually designed to challenge once again the assessment of the similarity of the marks at issue which falls within the sovereign appraisal of the facts by the General Court, which, save where the facts or evidence are distorted by the latter, is not subject to review by the Court of Justice on appeal, as is apparent from the case-law of the Court of Justice referred to in points 4 and 19 of this position. Since no such distortion has been alleged in support of the third complaint, that complaint must be rejected as manifestly inadmissible.

23. In the fourth complaint, the appellant criticises the judgment under appeal in so far as, in paragraphs 92 to 96 thereof, in the context of its assessment of the similarity of the marks at issue, the General Court attributed more weight to the visual aspect on account of the conditions under which the goods concerned are marketed. In that regard, the appellant submits that the General Court failed to observe the principle set out in paragraph 104 of the judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM) (T-147/03, EU:T:2006:10) that the likelihood of confusion cannot depend on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors.

24. It should be noted that, in paragraphs 95 and 101 of the judgment under appeal, the General Court held that, in so far as the visual aspect played a greater role in assessing the similarity of the marks at issue, the differences in the respective visual perception of the marks outweighed the similarities which had been found at the phonetic and conceptual levels, so that the relevant public would not have had the impression that the marks were similar.

25. Such an analysis by the General Court constitutes an assessment of a factual nature (see, by analogy, order of 13 November 2008, Cabrera Sánchez v OHIM and Industrias Cárnicas Valle, C-81/08 P, not published, EU:C:2008:626, paragraph 27). It is, therefore, a matter for the sovereign appraisal of the General Court and, as such, is not subject to review by the Court of Justice, save where facts or evidence are distorted by the General Court, as is clear from the settled case-law of the Court of Justice previously mentioned in points 4 and 19 of the present position. No such distortion has been claimed by the appellant in support of the fourth complaint. It follows that the fourth complaint is manifestly inadmissible.

26. In any event, the fourth complaint is based on a misreading of the judgment under appeal and, as such, is manifestly unfounded.

27. In paragraphs 92, 93 and 95 of the judgment under appeal, the General Court held that the goods covered by the signs at issue were in fact available over the counter in specialised shops, in supermarkets and on the internet, and that when making the purchase, customers could be assisted by qualified sales personnel. The General Court further held that even if the purchase of the goods concerned could take place on the basis of an oral recommendation or following oral advice, the visual perception of the marks at issue would generally occur prior to purchase, and therefore, in the present case, the visual aspect played a more important role in assessing the similarity of the marks at issue.

28. It follows from this analysis that, for the overall assessment of the similarity between the marks at issue, the General Court took into account the objective conditions under which those marks may appear on the market and not the commercial intentions of the trade mark proprietors (see judgments of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T-147/03, EU:T:2006:10, paragraphs 104 to 106, and of 15 March 2007, T.I.M.E. ART v OHIM, C-171/06 P, not published, EU:C:2007:171, paragraphs 55 to 59).

29. In the light of the foregoing, the second part of the single plea in law must be rejected as manifestly inadmissible and, in any event, manifestly unfounded.

The third part of the single plea in law, alleging incorrect assessment of the likelihood of confusion between the marks at issue

30. In the third part of the single plea in law, the appellant alleges that the General Court wrongly concluded, in paragraph 103 of the judgment under appeal, that there was no likelihood of confusion between the marks at issue. The appellant claims that, by ruling out the similarity of the marks, the General Court erred in applying several principles drawn from the case-law. According to the appellant, the relevant public, even if it has a high level of attention, may believe that the mark applied for is a variant of the earlier mark. The appellant also submits that, in paragraph 105 of the judgment under appeal, the General Court wrongly applied the principle of interdependence of relevant factors in the context of the assessment of the existence of confusion, by taking account of only one factor based on the degree of attention of the relevant public, without considering the other relevant elements and that, under settled case-law, even a low degree of similarity between the signs, which in this case is at a higher degree, can be offset by the identity of the goods in question.

31. In so far as the appellant’s arguments seek to obtain a new assessment of the similarities between the marks at issue, these arguments actually call into question the appraisal of the facts made by the General Court in the judgment under appeal without the latter being criticised for having engaged on that occasion in any distortion of the facts or evidence. Pursuant to the settled case-law of the Court of Justice, recalled in points 4 and 19 of this position, the third part of the single plea in law is therefore manifestly inadmissible.

32. It also suffices to point out that, in paragraphs 100 to 102 of the judgment under appeal, the General Court rightly held that, on the basis of the Court’s case-law, since the marks at issue did not have a minimum degree of similarity, the principle of interdependence did not apply in the present case. Moreover, in so far as, in the context of the this part of the single plea, the appellant complains that the General Court infringed the same case-law principles as those referred to in the second part of the single plea in law, it must be considered that, in the light of the analysis presented in that second part in points 15 to 29 of this position, the General Court has not infringed those principles. It follows that these arguments are, in any event, manifestly unfounded.

33. In those circumstances, the third part of the single plea in law must be rejected as manifestly inadmissible and, in any event, manifestly unfounded.

34. Having regard to the foregoing, I take the view that the appeal in the present case should be dismissed, in accordance with Article 181 of the Rules of Procedure, as being manifestly inadmissible and, in any event, manifestly unfounded, and that the appellant should be ordered to bear its own costs.’

6 For the same reasons as those given by the Advocate General, the appeal must be dismissed as manifestly inadmissible and, in any event, manifestly unfounded.

Costs

7 Under Article 137 of the Rules of Procedure, applicable to appeal proceedings by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since in this case the present order has been adopted before the appeal was served on the other parties and, consequently, before those parties could have incurred costs, the appellant must be ordered to bear its own costs.

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

1. The appeal is dismissed.

2. Seven SpA shall bear its own costs.

Luxembourg, 2 July 2019.

A. Calot Escobar

T. von Danwitz

Registrar

President of the Seventh Chamber

* Language of the case: English.

Order of 2 Jul 2019, C-31/19 (Seven v Shenzhen Jiayz Photo Industrial), ECLI:EU:C:2019:554.