IP case law Court of Justice

Order of 13 Jan 2015, C-320/14 (Asos)



ORDER OF THE COURT (Sixth Chamber)

13 January 2015 (*)

(Appeal — Community trade mark — Word mark ASOS — Opposition by the proprietor of the Community word mark ASSOS — Partial refusal to register — Assessment of the facts and evidence by the General Court of the European Union — Challenge — Distortion of the facts or evidence — No distortion — Appeal manifestly inadmissible)

In Case C-320/14 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 3 July 2014,

Asos plc, established in London (United Kingdom), represented by P. Kavanagh, Solicitor, A. Lykiardopoulos QC, and A. Edwards-Stuart, Barrister,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

Roger Maier, residing in San Pietro di Stabio (Switzerland),

intervener at first instance,

THE COURT (Sixth Chamber),

composed of S. Rodin, President of the Chamber, A. Borg Barthet and M. Berger (Rapporteur), Judges,

Advocate General: P. Cruz Villalón,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give its decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1        By its appeal, Asos plc seeks to have set aside the judgment of the General Court of the European Union in Asos v OHIM — Maier (ASOS) (T-647/11, EU:T:2014:230; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 October 2011 (Case R 2215/2010-4), relating to opposition proceedings between Mr Maier and Asos plc (‘the contested decision’).

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the date on which the application for registration at issue was lodged, the present dispute remains governed by Regulation No 40/94.

3        Article 8(1)(b) of Regulation No 40/94 provided as follows:

‘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.’

 Background to the dispute

4        On 30 June 2005, the appellant, Asos plc, filed an application for registration of a Community trade mark at OHIM pursuant to Regulation No 40/94.

5        The trade mark for which registration was sought is the word mark ‘ASOS’.

6        The goods and services in respect of which registration of the mark was sought are in, inter alia, Classes 3, 18, 25 and 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

–        Class 3: ‘Soaps; cosmetics; perfumery; essential oils; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; hair lotions; dentifrices; cosmetics; cosmetic preparations for skin care; skin care cosmetics; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels; scented body lotions and creams; scented moisturising skin cream; moisturisers; body lotions and creams; moisturising creams; scented skin soap; body oil; face, lip and cheek make-up; face powder; face glitter; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye balms; highlighter; masks; cleansers; toners; clarifiers; exfoliators; foundation make-up; blusher; compacts; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; non-medicated beauty preparations; non-medicated skin-care beauty products; skin-care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions and serums; anti-aging treatments; foundation for the face; hair-care products, shampoo, hair conditioners, hair gel and hair spray; nail-care preparations, nail polish, nail strengtheners, and nail-polish remover; shaving cream, shaving gel, after-shave preparations, after-shave lotion; depilatory preparations; personal deodorant; antiperspirants; potpourri; sun-tanning preparations; cosmetic preparations for skin tanning; artificial tanning preparations’;

–        Class 18: ‘Articles of leather and imitations of leather; trunks and travelling bags; travel cases; luggage; suitcases; holdalls; portmanteaux; valises; bags; handbags; shoulder bags; toilet bags; carrier bags; rucksacks; backpacks; bumbags; sports bags; casual bags; briefcases; attaché cases; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit-card cases and holders; wallets; purses; umbrellas; parasols; walking sticks; shooting sticks; belts; parts and fittings for all the aforesaid goods’;

–        Class 25: ‘Articles of clothing; footwear; boots, shoes, slippers, sandals, trainers, socks and hosiery; headgear; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts, casual shirts, T-shirts, polo shirts, sports shirts, football and rugby shirts; trousers, jeans, shorts, sports shorts, football shorts, rugby shorts; swimwear; underwear; lingerie; tracksuits; football boots, rugby boots; articles of outerwear, coats, jackets, ski jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas, ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; menswear; womenswear; childrenswear’; and

–        Class 35: ‘Retail services in the fields of perfumery, toiletries and cosmetics, bathing and personal cleansing and care products, bicycles, clothing and accessories, footwear, mail-order services and on-line and Internet retail services relating to the aforesaid goods’.

7        On 27 April 2006, the intervener, Mr Maier, filed a notice of opposition to the registration of the word sign ‘ASOS’ as a Community trade mark for all of the goods and services set out at paragraph 6 above. The opposition was based on the earlier Community word mark ASSOS, designating goods in Classes 3, 12 and 25 of the Nice Agreement, and corresponding, for each of those classes, to the following description:

–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–        Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’; and

–        Class 25: ‘Clothing, footwear, headgear’.

8        By decision of 9 November 2010, the Opposition Division of OHIM partially upheld the opposition. On 11 November 2010 the appellant filed an appeal with OHIM against that decision.

9        By the contested decision, the Fourth Board of Appeal of OHIM partially upheld that appeal. It annulled the decision of the Opposition Division in so far as the latter had allowed the opposition for ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit-card cases and holders; wallets; purses’ in Class 18 of the Nice Agreement and dismissed the appeal as to the remainder. With regard to the overall assessment of the likelihood of confusion, the Board of Appeal found that there was a likelihood of confusion in respect of the identical or similar goods. It found, in particular, that the appellant had not succeeded in proving that the marks at issue coexisted peacefully within the territory of the European Union.

  Procedure before the General Court and judgment under appeal

10      By application lodged at the Registry of the General Court on 19 December 2011, the appellant brought an action seeking annulment of the contested decision and requesting that the General Court order OHIM to register the word sign ‘ASOS’ as a Community mark. In support of that action, the appellant raised a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.

11      By the judgment under appeal, the General Court dismissed that action as unfounded for the first head of claim and inadmissible for the second.

12      In particular as regards the appellant’s complaint that the Board of Appeal had rejected evidence of the peaceful coexistence of the marks at issue as being irrelevant, the General Court, in paragraphs 32 to 37 of the judgment under appeal, first of all found, essentially, that the rejection by the Board of Appeal of the items of evidence provided by the appellant, consisting of two declarations from the head of its legal department, was well founded and that those items of evidence did not permit any conclusion to be drawn as regards the absence of a likelihood of confusion. Furthermore, the General Court made clear that those items of evidence concerned an alleged peaceful coexistence of the marks at issue on the market in only 18 Member States. Finally, the General Court stated that the intervener’s opposition to registration of the mark ASOS in the United Kingdom and the fact that the appellant had subsequently withdrawn its application for registration raised doubts as to the peaceful coexistence of the marks at issue.

 Forms of order sought on appeal

13      By its appeal, the appellant claims that the Court should:

–        set aside the judgment under appeal;

–        uphold its action at first instance;

–        reject the intervener’s opposition;

–        order OHIM and/or the intervener to pay the costs of the present proceedings; and

–        order OHIM and/or the intervener to pay the costs of the proceedings before the Opposition Division, the Board of Appeal and the General Court.

 The appeal

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

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

16      In support of its appeal, the appellant raises a single ground of appeal alleging infringement of Article 8(1)(b) of Regulation No 40/94, which is divided into six parts.

 The first part of the single ground of appeal

17      By the first part of its single ground of appeal, the appellant claims that the General Court erred in law in finding that the peaceful coexistence of the marks at issue on the market should be assessed having regard to the entire territory of the European Union. For the purposes of assessing the likelihood of confusion between those marks, it is not, the appellant submits, necessary to demonstrate that they actually coexist on the territory of each Member State. Thus, the absence of a likelihood of confusion may be inferred from the peaceful coexistence of those marks for a number of years in a significant number of Member States, if there is no reason to believe that the relevant public in the other Member States will assess the marks at issue differently.

18      The appellant takes the view that, in the present case, it has demonstrated that the marks at issue coexisted peacefully in 18 Member States for almost 10 years. Furthermore, there was no confusion during that period in more than 15 Member States. In those circumstances, it submits, the General Court ought to have concluded, on the basis of the information submitted to it, that peaceful coexistence in each Member State of the European Union could be presumed. Demanding proof of actual coexistence in each Member State, it argues, amounts to a requirement for proof which in practice would be impossible to provide and would thereby deprive Community mark applicants of the possibility of relying on peaceful coexistence.

19      It must be noted that, under 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 a point 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 thus do not, save where they distort the facts or evidence, constitute a point of law which is subject as such to review by the Court of Justice on appeal (see, inter alia, judgment in Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraph 49 and the case-law cited).

20      In the present case, the General Court observed in paragraph 32 of the judgment under appeal that it is possible that in certain cases the peaceful coexistence of marks on the market may reduce the likelihood of confusion between them. However, it stated that such a possibility could be taken into consideration only if the applicant for the Community mark has duly demonstrated that that coexistence is based on the absence of any likelihood of confusion.

21      In paragraph 34 of that judgment, however, the General Court held, in essence, that the Board of Appeal had acted correctly in finding that no conclusion concerning the alleged lack of any likelihood of confusion could be drawn from the evidence provided by the appellant, and that that evidence concerned only the use of the mark applied for and did not concern the manner in which the relevant public had been exposed to the marks at issue on the market. Furthermore, the General Court held in paragraph 35 of that judgment that the Board of Appeal had acted correctly in finding that the fact that the intervener had opposed registration of the mark ASOS in the United Kingdom and that the appellant had then withdrawn its application for registration raised doubts as to the peaceful coexistence of the marks at issue.

22      On the basis, in particular, of those factual assessments, the General Court was able to conclude that the appellant had not demonstrated either the absence of any likelihood of confusion between the marks at issue or their peaceful coexistence, and there is no need to assess the accuracy of the General Court’s finding in paragraph 34 of the judgment under appeal, made purely for the sake of completeness, that an alleged coexistence in only part of the territory of the European Union does not have the effect of excluding a likelihood of confusion in the European Union as a whole.

23      Consequently, the appellant, which has not demonstrated or even alleged that the facts or evidence have been distorted, cannot have the Court of Justice re-examine those findings, with the result that the first part of the single ground of appeal must be rejected as being manifestly inadmissible.

 The second part of the single ground of appeal

24      By the second part of its single ground of appeal, the appellant contends that the General Court, in finding in paragraph 32 of the judgment under appeal that the likelihood of confusion could be reduced in cases where the marks had coexisted peacefully on the market and on condition that ‘the earlier marks concerned and the marks at issue are identical’, misapplied its own previous case-law on the effects of peaceful coexistence of marks on the market.

25      It must be noted in this regard that it follows from Article 256 TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice, and Articles 168(1)(d) and 169(2) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, judgments in Bergaderm and Goupil v Commission, C-352/98 P, EU:C:2000:361, paragraph 34, and in Acino v Commission, C-269/13 P, EU:C:2014:255, paragraph 35).

26      That requirement is not satisfied by a ground of appeal which, without even including an argument specifically identifying the error allegedly vitiating the judgment under appeal, confines itself to reproducing arguments previously submitted to the General Court. Such a ground of appeal amounts in reality to no more than a request for a re-examination of a plea submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (see, inter alia, judgment in Evropaïki Dynamiki v ECB, C-401/09 P, EU:C:2011:370, paragraph 55 and the case-law cited).

27      In the present case, the appellant merely reproduces the line of argument which it put forward before the General Court in paragraphs 17 and 18 of its application at first instance, to which the General Court responded in paragraph 32 of the judgment under appeal by referring to its case-law on that subject, without, moreover, that having any effect on the conclusions reached by the General Court, as the latter did not base its decision on the ground that the earlier mark and the contested mark are not identical.

28      Consequently, this part of the single ground of appeal must also be rejected as being manifestly inadmissible.

 The third part of the single ground of appeal

29      By the third part of its single ground of appeal, the appellant submits that the General Court was wrong to hold, in paragraph 33 of the judgment under appeal, that declarations originating from the appellant itself have probative value only if they are corroborated by other items of evidence, thereby confirming the finding of the Board of Appeal on that point.

30      In this regard, it must also be recalled that an appeal lies on a point 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 thus do not, save where they distort the facts or evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal, as follows from paragraph 19 of the present order.

31      Although the General Court, in paragraph 33 of the judgment under appeal, held inter alia that ‘a declaration originating from the [appellant] itself cannot be attributed probative value unless it is corroborated by other items of evidence’, it nevertheless took the view, in paragraph 34 of that judgment, that ‘the Board of Appeal … acted correctly in holding that those items of evidence did not permit any conclusion to be drawn so far as concerns the absence of a likelihood of confusion’, given that ‘the items of evidence provided by the [appellant] relate only to the use of the trade mark applied for and do not concern the manner in which the relevant public was exposed to the marks at issue on the market’. The General Court thereby ruled out the relevance of the evidence in question, with the result that, even if the declarations originating from the appellant have probative value, they are, according to the General Court, not capable of demonstrating that the marks coexisted peacefully on the market.

32      Consequently, the third part of the single ground of appeal is, on the one hand, directed against a ground included in the judgment under appeal purely for the sake of completeness and is for that reason ineffective and, on the other, seeks in reality to have the Court of Justice reconsider factual assessments made by the General Court. The appellant has not, however, demonstrated that there was any distortion of the facts or evidence by the General Court.

33      In those circumstances, the third part of the single ground of appeal must be rejected as being manifestly inadmissible.

 The fourth and fifth parts of the single ground of appeal

34      By the fourth and fifth parts of its single ground of appeal, the appellant argues that the General Court, in its assessment of the coexistence of the marks at issue, failed to take proper account of certain items of evidence submitted to it. Contrary to what the General Court found, those items of evidence, the appellant argues, concerned the manner in which the relevant public was exposed to the marks at issue on the market and established that the mark ASOS was used extensively for almost 10 years in 18 Member States, thereby demonstrating the coexistence of the marks at issue over a long period.

35      In this regard, it must also be recalled, as has been made clear in paragraphs 19 and 30 of the present order, that an appeal lies on a point of law only.

36      Furthermore, it must be observed that, in its decisions, the General Court is not required to provide an account that follows exhaustively and one by one all of the arguments articulated by the parties to the dispute, and is also not required to comment expressly on every item of evidence submitted by those parties, on condition that the statement of reasons in the decision at issue enables the persons concerned to know the grounds on which the judgment under appeal is based and provides the Court of Justice with sufficient material for it to exercise its powers of review on appeal (see, to that effect, judgment in ICF v Commission, C-467/13 P, EU:C:2014:2274, paragraph 52 and the case-law cited).

37      By the fourth and fifth parts of its single ground of appeal, however, the appellant merely challenges the General Court’s assessment of the facts and evidence in paragraphs 32 to 37 of the judgment under appeal, without alleging any distortion of those facts and that evidence.

38      Consequently, the fourth and fifth parts must also be rejected as being manifestly inadmissible.

 The sixth part of the single ground of appeal

39      By the sixth part of its single ground of appeal, the appellant contends that the General Court, in its assessment of the coexistence of the marks at issue, was wrong to accept that the intervener had opposed registration of the sign ‘ASOS’ as a national mark in the United Kingdom and that the appellant had subsequently withdrawn its application for registration of that sign in the United Kingdom. The General Court, it submits, thus erred in concluding that the Board of Appeal ‘correctly took the view that this cast doubt upon the peaceful coexistence of the marks at issue’.

40      First, although the intervener opposed the registration of the sign ‘ASOS’ as a national mark in the United Kingdom, the appellant states that it filed a new application for registration of that sign as a national mark in the United Kingdom, which was successful. Secondly, it submits, the peaceful coexistence of marks is invoked only in opposition proceedings brought by an intervener against registration of a mark. Consequently, the General Court’s reasoning in effect fails to take account of the peaceful coexistence of the marks at issue in the global assessment of the likelihood of confusion, provided for, inter alia, in Article 8(1)(b) of Regulation No 40/94.

41      It must be recalled in this regard that, as has been stated in paragraphs 19 and 30 of the present order, an appeal lies on a point of law only.

42      The General Court, when it observed in paragraph 35 of the judgment under appeal that ‘the intervener opposed the registration of [the] trade mark ASOS in the United Kingdom and that [the appellant] subsequently withdrew its application for registration’ and found, in the same paragraph, that ‘the Board of Appeal correctly took the view that this cast doubt upon the peaceful coexistence of the marks at issue’, made a purely factual assessment in respect of which no distortion of the facts or evidence has been invoked.

43      In those circumstances, the sixth part of the single ground of appeal must also be rejected as being manifestly inadmissible.

44      Since none of the six parts of the single ground of appeal can be upheld, that ground must be rejected and the present appeal consequently dismissed.

 Costs

45      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. In the present case, it must be held that Asos plc is to bear its own costs.

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

1.      Dismisses the appeal;

2.      Orders Asos plc to bear its own costs.

[Signatures]

* Language of the case: English.



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