CJEU Order C-353/09 Perfetti Van Melle - CENTER SHOCK 15 Feb 2011

ORDER OF THE COURT (Fifth Chamber)

15 February 2011 (*)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Invalidity proceedings – Community word mark CENTER SHOCK – Earlier national word mark CENTER – Examination of the likelihood of confusion)

In Case C-353/09 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 31 August 2009,

Perfetti Van Melle SpA, established in Lainate (Italy), represented by P. Perani and P. Pozzi, avvocati,

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,

Cloetta AB, legal successor to Cloetta Fazer AB, established in Ljungsbro (Sweden), represented by M. Fammler, advocate, M. Treis, R. Niebel and E.M. Strobel, Rechtsanwälte,

intervener at first instance,

THE COURT (Fifth Chamber),

composed of J.-J. Kasel, President of Chamber, A. Borg Barthet and M. Berger (Rapporteur), Judges,

Advocate General: V. Trstenjak,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Perfetti Van Melle SpA (‘Perfetti’) seeks to have set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 1 July 2009 in Case T-16/08 Perfetti van Melle v OHIM – Cloetta Fazer (CENTER SHOCK) (‘the judgment under appeal’), in which that court dismissed the action brought against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 November 2007 (Case R 149/2006-4), concerning invalidity proceedings between Cloetta Fazer AB (‘Cloetta Fazer’) and Perfetti (‘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2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, the present dispute is governed, given the date of the facts, by Regulation No 40/94.

3 Article 8(1)(b) and (2)(a) of Regulation No 40/94 provided:

‘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.

2. For the purposes of paragraph 1, “Earlier trade marks” means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

…

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;

…’

4 Article 52(1)(a) of Regulation No 40/94 provided:

‘1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that article are fulfilled’.

5 Article 56(2) and (3) of Regulation No 40/94 provided:

‘2. If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. …

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.’

Background to the dispute

6 On 15 February 2000, Perfetti obtained from OHIM registration of the Community word mark CENTER SHOCK.

7 The goods in respect of which registration was granted fall within Class 30 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 to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; chewing gum’.

8 On 2 July 2004, Cloetta Fazer filed an application for a declaration that the trade mark CENTER SHOCK was invalid on the basis of Article 8(1)(b), in conjunction with Article 52(1)(a) of Regulation No 40/94.

9 The earlier national marks relied on in support of the application for a declaration of invalidity were, inter alia:

– the word mark CENTER registered on 24 October 1938 in Sweden in respect of the goods ‘caramels, cocoa, chocolate, confectionery, marmalade and other chocolate or sugar products, in the form of cakes, tablets, pralines, powder, and in any other form, liquorice, coffee, tea, yeast, baking-powder, biscuits, bread, honey, chewing gum, marzipan, sugar, treacle, glucose, salt and honey’ falling within Class 30 of the Nice Agreement;

– the word mark CENTER registered on 27 August 1971 at the Benelux trade marks office in respect of the goods ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; chocolate, flour and preparations made from cereals, bread, biscuits, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces (except for salad dressing); spices; ice’ falling within Class 30 of the Nice Agreement.

10 The application for a declaration of invalidity was directed against all the goods covered by the CENTER SHOCK trade mark.

11 By decision of 24 November 2005, the OHIM Cancellation Division granted the application for a declaration that the CENTER SHOCK trade mark was invalid with regard to all the goods for which it had been registered.

12 On 24 January 2006, Perfetti filed a notice of appeal at OHIM against the Cancellation Division’s decision.

13 By the contested decision, the Fourth Board of Appeal of OHIM dismissed the appeal. It held in essence that, having regard, first, to the identical nature of the goods designated by the CENTER and CENTER SHOCK trade marks and, secondly, to the visual, phonetic and conceptual similarities of those marks, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, in Sweden and the Benelux countries had been established.

The proceedings before the General Court and the judgment under appeal

14 By application lodged at the Registry of the General Court on 11 January 2008, Perfetti brought an action against the contested decision.

15 Perfetti raised two pleas in law in support of its action. The first plea alleged that the evidence of the use and ownership of the earlier national word marks, relied on by the intervener in support of the application for a declaration of invalidity, was inadmissible. The second plea was that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the marks at issue.

16 The General Court rejected both pleas as unfounded.

17 As regards the second plea, the General Court first defined, in paragraph 29 of the judgment under appeal, the relevant public as consisting of ‘average consumers … who are reasonably well informed and reasonably observant and circumspect’ resident in Sweden and the Benelux countries.

18 With regard to the goods to be taken into consideration, the General Court then found, at paragraphs 32 to 34 of the judgment under appeal, that reliance must be placed, firstly, on the description of the goods covered by the earlier mark and not on the goods themselves and, secondly, on the list of goods as it appears in the registration document of the Community trade mark unless, following a request in accordance with Article 56(2) and (3) of Regulation No 40/94, proof of genuine use of the earlier mark has been furnished only in respect of some of the goods covered. At paragraph 35 of that judgment, the Court thus held that ‘for the purposes of the comparison of the goods concerned, all the goods and services for which the Community trade mark and the earlier trade marks were registered and on which the application for a declaration of invalidity is based’ had to be taken into account. At paragraph 37 of that judgment, the Court noted that ‘the goods covered by the Community trade mark CENTER SHOCK … are identical to those covered by the earlier CENTER marks’.

19 Finally, with regard to the assessment of the likelihood of confusion, the General Court approved, at paragraphs 41 and 42 of the judgment under appeal, the conclusion of the Board of Appeal according to which ‘the common element “center” gave the signs an overall phonetic, visual and conceptual similarity which is such that the relevant public, when faced with those trade marks in respect of identical goods, might believe that the trade marks have a common commercial origin’. In that regard, the Court held in paragraphs 43 and 44 of that judgment:

‘43 Although, visually and phonetically, the trade marks at issue are of a different length and consist of a different number of words, the overall impression produced by those trade marks leads to the finding that there is a certain visual and phonetic similarity between them owing to their common component.

44 Conceptually, the trade marks at issue, which refer, on account of their common component “center”, to the same idea, must be regarded as similar. …’

20 The General Court added, in paragraph 44, that ‘[t]he fact that the CENTER SHOCK trade mark is also composed of the word “shock” does not affect that finding’. Referring to Case C-120/04 Medion [2005] ECR I-8551, paragraphs 30 and 37, it pointed out that, where a composite mark is composed by juxtaposing one component and another trade mark, that latter mark, even if it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and that other mark may be considered to be similar.

21 In response to the various arguments raised by Perfetti, the General Court held, in paragraph 46 of the judgment under appeal, that the word ‘center’ has ‘its own distinctive character’, whereas it found, at paragraph 48 of that judgment, that ‘the word “shock” in the CENTER SHOCK trade mark does not have a strong semantic value which, combined with that of the word “center”, produces a whole that is conceptually different from the CENTER mark’.

22 By the judgment under appeal, the General Court dismissed the action in its entirety.

Forms of order sought by the parties

23 Perfetti requests the Court to set aside in its entirety the judgment under appeal, to annul the contested decision and to order OHIM and Cloetta Fazer to pay the costs of the proceedings before the Court of Justice and the General Court as well as those of the OHIM invalidity proceedings.

24 OHIM and Cloetta Fazer contend that the appeal should be dismissed and that Perfetti should be ordered to pay the costs.

The appeal

25 Under Article 119 of its 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, by reasoned order dismiss that appeal in whole or in part, without opening the oral procedure.

26 In support of its appeal, Perfetti relies on a single plea in law, alleging that the General Court infringed Article 8(1)(b) of Regulation No 40/94, which is divided into two parts.

The first part of the single plea

Arguments of the parties

27 In support of this part, alleging the absence of a global assessment and failure to take into account the overall impression in the examination of the marks at issue, Perfetti claims that the General Court failed to have regard to established case-law according to which the assessment of the likelihood of confusion between two marks must be carried out in a comprehensive manner and be based on the overall impression created by them (see, inter alia, Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 19). The General Court, it is argued, based its finding of the existence of a similarity of the marks examined solely on the fact that they both include the element ‘center’. In so doing, the General Court failed to take into consideration the element ‘shock’ and to explain why the presence of that element was not sufficient to establish an overall impression of dissimilarity between the marks at issue.

28 OHIM and Cloetta Fazer submit that the General Court did carry out a full comparison of the trade marks in their entirety from the visual, phonetic and conceptual perspective. By criticising the General Court for having found that those marks were to be considered similar on those levels, in spite of the presence of the word ‘shock’, Perfetti is seeking to call into question the General Court’s findings of fact and its arguments are, accordingly, inadmissible.

Findings of the Court

29 According to a line of settled case-law, referred to at paragraphs 27 and 28 of the judgment under appeal, the risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see, inter alia, Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 33, and Case C-51/09 P Becker v Harman International Industries [2010] ECR I-0000, paragraph 31 and case-law cited).

30 The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, inter alia, OHIM v Shaker, paragraph 34, and Becker v Harman International Industries, paragraph 32 and the case-law cited).

31 According to that case-law, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (OHIM v Shaker, paragraph 35, and Becker v Harman International Industries, paragraph 33 and the case-law cited).

32 It is in the light of those principles that the first part of the plea put forward by Perfetti in support of its appeal should be examined.

33 In the present case, the General Court first of all observed, at paragraph 37 of the judgment under appeal, that the goods covered by the marks at issue are identical.

34 It is apparent from paragraphs 43 and 44 of the judgment under appeal that the General Court then found that, both visually and phonetically, and at the conceptual level, the marks at issue have a certain similarity on account of their common component ‘center’.

35 Finally, the General Court added that the presence of the word ‘shock’ did not affect that assessment.

36 In that regard, the General Court recalled, rightly, that an earlier mark used by a third party in a composite sign can still have an independent distinctive role in the composite sign, even if it is not the dominant element of it (see Medion, paragraph 30).

37 In that context, the General Court held, at paragraphs 46 and 48 of the judgment under appeal, that the word ‘center’ has its own distinctive character, whereas the word ‘shock’ does not have a strong semantic value which, combined with that of the word ‘center’, produces a whole that is conceptually different from the CENTER mark.

38 It follows that, contrary to Perfetti’s assertions, the General Court did indeed carry out a global assessment, in accordance with the criteria defined by the case-law referred to in paragraphs 29 to 31 of this order, in the context of verifying the existence of a likelihood of confusion between the marks at issue.

39 In so far as Perfetti is seeking to call into question the manner in which the relevant criteria were weighed up by the General Court, it should be noted that the analysis carried out by the General Court in that regard is factual in nature.

40 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 thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and evidence does not, therefore, save where they have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-498/07 P Aceites del Sur-Coosur v Koipe and OHIM [2009] ECR I-7371, paragraph 78, and Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-0000, paragraph 49 and the case-law cited).

41 The first part of the single plea must therefore be rejected as clearly unfounded and, where appropriate, as clearly inadmissible.

The second part of the single plea

Arguments of the parties

42 In support of this part, alleging that certain relevant factors were not taken into account, Perfetti claims that, in the assessment of the existence of a likelihood of confusion between the marks at issue, the General Court failed to take two relevant factors into consideration. The first factor concerns the goods covered by the marks at issue. In that regard, the General Court ignored the fact, which Perfetti claims to have proven, that the CENTER mark was only used by its proprietor for chocolate products, while the CENTER SHOCK sign was used by Perfetti only to designate chewing gums, that is, for different goods. The second factor relates to the degree of attention of the relevant public. By holding that an average consumer would fail to observe the visual, aural and conceptual differences between the marks at issue, the General Court applied the standard of a negligent consumer and not, as required by the case-law correctly cited moreover by the General Court, a reasonably well-informed and reasonably observant consumer.

43 In relation to the goods covered by the marks at issue, OHIM and Cloetta Fazer contend that, unless there are special circumstances, which have not been proven in this case, the marks must be compared on the basis of the goods for which they were registered, and not their alleged actual use. With regard to the degree of attention of the relevant public, they point out that the question is not whether that public will note or overlook the presence of the word ‘shock’ in the mark at issue, but whether it will be led to believe that the goods in question come from the same undertaking or from economically-linked undertakings.

Findings of the Court

– The goods to be taken into account in assessing the likelihood of confusion

44 As indicated by the wording of Article 8(1)(b) of Regulation No 40/94, the comparison of the earlier mark with the trade mark applied for, laid down in that provision, must relate to the goods that the two marks cover. However, in invalidity proceedings, Article 56(2) and (3) of Regulation No 40/94 enables the proprietor of the Community trade mark which is the subject of those proceedings to request that proof be furnished of the genuine use of the earlier mark in connection with the goods in respect of which that mark is registered and which are cited as justification for the application for a declaration of invalidity.

45 At paragraph 33 of the judgment under appeal, the General Court found that Perfetti had not submitted in due time a request for proof of genuine use of the earlier marks.

46 In those circumstances, the General Court did not err in law by holding, in paragraph 35 of the judgment under appeal, that, for the purposes of the comparison of the goods concerned, all the goods and services for which the Community trade mark and the earlier trade marks had been registered, and on which the application for a declaration of invalidity was based, should be taken into account.

47 Perfetti’s first argument must therefore be rejected as clearly unfounded.

– The degree of attention of the relevant public

48 According to settled case-law, for the purposes of the global assessment of the likelihood of confusion, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, regarding First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26).

49 As Perfetti acknowledges, that was the criterion applied by the General Court in paragraph 29 of the judgment under appeal.

50 Moreover, it should be recalled that, as indicated in paragraph 40 of this order, the General Court has exclusive jurisdiction to find and appraise the relevant facts and that appraisal does not, save where the facts have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal.

51 With regard to the perception by the relevant public of the goods concerned, called into question by Perfetti, it must be stated that the analysis undertaken by the General Court in this regard is an assessment of a factual nature (see, to that effect, the order of 6 February 2009 in Case C-17/08 P MPDV Mikrolab v OHIM, paragraph 28 and case-law cited).

52 By claiming that, contrary to the finding of the General Court, a consumer who is reasonably well-informed and reasonably observant and circumspect should have observed the differences between the two marks at issue, Perfetti has not demonstrated any distortion of the facts and evidence by the General Court and does no more than request a re-evaluation of the factual assessment made by that court.

53 Accordingly, Perfetti’s second argument must be rejected as clearly inadmissible.

54 It follows that the second part of the single plea must be rejected as being in part clearly unfounded and in part clearly inadmissible.

55 In those circumstances the appeal must be dismissed in its entirety as being in part clearly unfounded and in part clearly inadmissible.

Costs

56 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 Cloetta Fazer have applied for costs and Perfetti has been unsuccessful, it must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Perfetti Van Melle SpA shall pay the costs.

[Signatures]

* Language of the case: English.

Order of 15 Feb 2011, C-353/09 (Perfetti Van Melle - CENTER SHOCK), ECLI:EU:C:2011:73.