CJEU Order C-479/15 Nanu-Nana Joachim Hoepp v EUIPO 14 Apr 2016

ORDER OF THE COURT (Sixth Chamber)

14 April 2016 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — Community trade mark — Regulation (EC) No 207/2009 — Article 8(1)(b) — Word mark NANU — Opposition by the proprietor of the word mark NAMMU — Partial refusal to register — Likelihood of confusion — Distortion of the facts — Inadequate statement of reasons)

In Case C-479/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 7 September 2015,

Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by A. Nordemann and M. Maier, Rechtsanwälte,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, J.-C. Bonichot and S. Rodin (Rapporteur), Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having decided, 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, Nanu-Nana Joachim Hoepp GmbH & Co. KG (‘Nanu-Nana’) seeks to have set aside the judgment of the General Court of the European Union of 9 July 2015 in Nanu-Nana Joachim Hoepp v OHIM — Vincci Hoteles (NANU) (T-89/11, EU:T:2015:479) (‘the judgment under appeal’), by which that Court dismissed the appellant’s action for partial annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 November 2010 (Case R 641/2010-1) concerning opposition proceedings between Vincci Hoteles SA and Nanu-Nana in regard to an application for registration of the word sign ‘NANU’ as a Community trade mark (‘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2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April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 Under the heading ‘Relative grounds for refusal’, Article 8 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’.

Background to the dispute

4 The background to the dispute was set out by the General Court in paragraphs 1 to 13 of the judgment under appeal:

‘1. On 22 August 2007, [Nanu-Nana] filed an application for registration of a Community trade mark with [EUIPO] pursuant to [Regulation No 40/94].

2. Registration as a mark was sought for the word sign NANU.

3. The goods and services in respect of which registration was sought are in Classes 3, 4, 6, 9, 16, 18, 20, 21, 24, 26 and 35 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, and correspond, for each of those classes, to the following description:

– Class 3: “Cosmetics, scented oils and perfume oils, hair lotions; potpourris (fragrances)”;

– Class 4: “Candles”;

– Class 6: “Metal tins; money boxes of metal; decorative articles of metal”;

– Class 9: “Sunglasses; mobile phone holders being accessories for mobile telephones; decorative magnets and magnetic walls; batteries”;

– Class 16: ‘Paper and cardboard and goods made from these materials (included in Class 16), stationery, postcards, hinged cards, papier-maché, posters, calendars, pamphlets, newspapers; periodicals; artists’ materials, in particular paint boxes, paintbrushes, crayons, pictures; decorative articles of paper and cardboard; toilet paper”;

– Class 18: “Leather and imitations of leather, and goods made of these materials (included in Class 18); bags of all kinds (included in Class 18); wallets, purses; cases of all kinds (included in Class 18); umbrellas, parasols and walking sticks; travel requisites and parts therefor (included in Class 18)”;

– Class 20: “Furniture, mirrors, picture frames; goods, included in Class 20, of cork, reed, cane, wicker, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum; in particular waste paper baskets, linen bins, bread baskets, animal transport baskets; dolls’ furniture; wooden flowers, wood boxes; household requisites, namely coatstands, newspaper display stands, curtain rods; cushions, scarecrows of straw; straw dolls; mannequins; hand mirrors (cosmetic mirrors, toilet mirrors); inflatable figurines; wind and bell chimes being decorative articles; decorative articles of wood, cork and plant braiding; dressing tables”;

– Class 21: “Candlesticks, glassware, porcelain, earthenware (included in Class 21), household items, namely storage containers, stoves, butter dishes, salt and pepper mills, trays, dustbins, kitchen utensils, namely cooking spoons, storage baskets, kitchen scales, strainers, whisks, skimmers, fish slices, corkscrews, bottle openers; dishes; stands for bowls, garden vessels, flower pots, bins; money boxes of plastic; toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, soap boxes, soap holders, dishes for soaps and soap dispensers, toilet paper holders, toothbrushes and dental floss; decorative articles of plastic, glass, porcelain, earthenware; non-metal piggy banks”;

– Class 24: “Bed and table covers; textile goods; cushion covers; bed pads; fitted toilet lid covers”;

– Class 26: “Artificial flowers”;

– Class 35: “Retail services, namely in the field of gift articles for household purposes and daily use, household articles, stationery, decorative articles, clothing, jewellery and costume jewellery, perfumery, bags, shoes, novelty articles, games and playthings, and in the field of arts and crafts, and tea; mail order services, namely in the field of gift articles for household purposes and daily use, household articles, stationery, decorative articles, clothing, jewellery and costume jewellery, perfumery, bags, shoes, novelty articles, games and playthings, and in the field of arts and crafts, and tea; services in connection with the import and export of goods; presentation of goods for advertising purposes”.

4. The Community trade mark application was published in Community Trade Marks Bulletin No 28/2008 of 14 July 2008.

5. On 17 September 2008, Vincci Hoteles SA filed a notice of opposition, pursuant to Article 42 of [Regulation No 40/94], to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 of [the judgment under appeal].

6. The opposition was based on the earlier Community word mark NAMMU, registered on 5 July 2007 under No 5238704 covering goods and services in Classes 3, 32 and 44 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; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices”;

– Class 32: “Beers; mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages”;

– Class 44: “Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; beauty salons, physiotherapy, massage and manicure”.

7. The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of [Regulation No 40/94].

8. By decision of 25 February 2010, the Opposition Division upheld the opposition in respect of the following goods and services:

– Class 3: “Cosmetics, scented oils and perfume oils, hair lotions; potpourris (fragrances)”;

– Class 4: “Candles”;

– Class 16: “Goods made from these materials [paper and cardboard] (included in Class 16); toilet paper”;

– Class 21: “Toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, soap boxes, soap holders, dishes for soaps and soap dispensers, toothbrushes and dental floss”;

– Class 35: “Retail services, namely in the field of perfumery; mail order services, namely in the field of perfumery”.

9. By contrast, the Opposition Division rejected the opposition as regards the other goods and services covered by the mark applied for, referred to in paragraph 3 above.

10. On 19 April 2010, [Nanu-Nana] filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11. By the [contested decision], the First Board of Appeal of EUIPO [“the Board of Appeal”] annulled the decision of the Opposition Division and rejected the opposition in so far as the following goods were concerned:

– Class 4: “Candles”;

– Class 16: “Goods made from these materials [paper and cardboard], (included in Class 16); toilet paper”;

12. Furthermore, the Board of Appeal dismissed the appeal as to the remainder and confirmed the rejection of the Community trade mark application for the following goods and services:

– Class 3: “Cosmetics, scented oils and perfume oils, hair lotions; potpourris (fragrances)”;

– Class 21: “Toothbrushes”;

– Class 35: “Retail services, namely in the field of perfumery, mail order services, namely in the field of perfumery”.

13. In respect of the goods referred to in paragraph 11 [of the judgment under appeal], the Board of Appeal found that they differed from the goods covered by the earlier mark and that, consequently, one of the conditions laid down in Article 8(1)(b) of [Regulation No 40/94] was not satisfied. By contrast, in respect of the goods and services referred to in paragraph 12 [of the judgment under appeal], the Board of Appeal found, in essence, that, given the high degree of visual and phonetic similarity between the signs at issue and the lack of clear meaning attributed to those signs, there was a likelihood of confusion between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of that regulation, since those goods or services were identical or similar to certain goods and services covered by the earlier mark’.

Proceedings before the General Court and the judgment under appeal

5 By application lodged at the Registry of the General Court on 16 February 2011, Nanu-Nana brought an action seeking annulment of the contested decision.

6 By the judgment under appeal, the General Court rejected the single plea in law and, accordingly, dismissed the action in its entirety.

Forms of order sought by the parties

7 By its appeal, Nanu-Nana claims that the Court should:

– stay the proceedings until EUIPO gives a final ruling on the application for revocation of the Community word mark NAMMU, registered under No 5238704;

– set aside the judgment under appeal;

– if necessary, remit the case back to the General Court for judgment; and

– order EUIPO to pay the costs.

The appeal

8 Under Article 181 of its Rules of Procedure, where an 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.

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

10 In support of its appeal, Nanu-Nana raises, in essence, two grounds, both alleging an infringement of Article 8(1)(b) of Regulation No 40/94.

The first ground of appeal

Arguments of the appellant

11 By its first ground of appeal, Nanu-Nana claims, in essence, that the General Court erred in law and distorted the facts by holding that the signs at issue had a high degree of visual and phonetic similarity.

12 In that regard, concerning, in the first place, the visual similarity, it submits that the General Court should rather have noted that the length of the signs differs significantly, a fact which has a direct bearing on the overall impression created by the two signs. In particular, the fact that the letter ‘M’ appears twice in the earlier mark NAMMU gives rise to a very different visual aspect in relation to the mark registration of which is applied for. Consequently, in accordance with the principle that, as regards short marks, any visual, phonetic or conceptual difference is liable to create a different overall impression, it should be concluded that the marks at issue are visually similar only to a low degree.

13 Likewise, in the second place, the appellant submits that, in application of that principle to short marks, the General Court should have held that there is a low degree of phonetic similarity between the signs at issue, in light of the facts, in particular, that the letter ‘M’ appears twice in the earlier mark and that the sound created by the double letter ‘M’ differs from that created by the single letter ‘N’, and in view of the different stressed syllables in the marks at issue.

Findings of the Court

14 It must be borne in mind 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 points of law only. The General Court has exclusive jurisdiction to find and establish 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 evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (order of 22 January 2015 in GRE v OHIM, C-496/13 P, unpublished, EU:C:2015:40, paragraph 33).

15 It must be held that, by claiming that, in the light of a number of elements, the General Court ought to have concluded that the marks at issue are visually and phonetically similar to a low degree instead of to a high degree, Nanu-Nana seeks, in reality, to call into question the General Court’s assessment of the facts and evidence in that context.

16 That ground can, therefore, validly be the subject of an appeal only if there has been a distortion of the facts and evidence, something which must, however, according to the Court’s settled case-law, be clearly apparent from the documents in the case file, without the need to carry out a new assessment of the facts and evidence (see, to that effect, judgment of 20 October 2011 in PepsiCo v Grupo Promer Mon Graphic, C-281/10 P, EU:C:2011:679, paragraph 79 and the case-law cited).

17 In the present case, although Nanu-Nana invoked a distortion of the facts in the context of its first ground of appeal, it has not put forward any specific legal arguments capable of demonstrating a distortion of those facts in the judgment under appeal, other than an allegedly mistaken assessment of certain facts by the General Court.

18 Consequently, the first ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

The second ground of appeal

Arguments of the appellant

19 In support of its second ground of appeal, which comprises three parts, Nanu-Nana claims that the General Court erred in law and infringed its obligation to state reasons with regard to the assessment of the similarity of the goods and services at issue.

20 The first part of that ground concerns the examination, in the judgment under appeal, of the similarity between toothbrushes and dentifrices, goods in respect of which, according to the appellant, the General Court wrongly held that there was a high, instead of a low, degree of similarity.

21 In that regard, it submits, the General Court, first, infringed its obligation to state reasons in so far as it failed to substantiate its finding, in paragraph 38 of the judgment under appeal, that it was a well-known fact that toothbrushes and dentifrices may be produced by the same undertaking and sold under the same mark, and in so far as it failed to adduce any evidential basis for its further findings relating to that issue. Toothbrushes and dentifrices are, in particular, not in competition with each other because dentifrices do not substitute toothbrushes.

22 Secondly, in paragraph 39 of the judgment under appeal, the General Court failed in any way to explain why the fact that the goods are different in nature does not suffice to counterbalance their complementary nature, and why only a complementary nature suffices in order to establish a high degree of similarity. In that context, the General Court failed, without providing any explanation, to take into consideration the judgment of 7 May 2009 in Waterford Wedgwood v Assembled Investments (Proprietary) (C-398/07 P, unpublished, EU:C:2009:288).

23 By the second part of its second ground of appeal, Nanu-Nana claims that the General Court erred in law in holding that there was a high degree of similarity between the services relating to retail services in the field of perfumery in Class 35 in respect of which registration was sought and the cosmetics covered by the earlier mark and coming within Class 3.

24 In that regard, it submits, in particular, that on the market for perfumery the retailer or the mail order company is regularly a different entity from the manufacturer of perfumery. Moreover, the sale of goods by the manufacturer itself cannot be considered to be a retail or mail-order service. In any event, the average consumer will not think that retail or mail-order services in the field of perfumery and the perfumery goods at issue are so closely connected that the same undertaking is responsible both for the production and for the sale of the goods concerned.

25 By the third part of the second ground of appeal, Nanu-Nana criticises the General Court on the ground that it failed to explain, in paragraph 45 of the judgment under appeal, why the methods of marketing the perfumery goods covered by the earlier trade mark do not differ fundamentally from those of the goods at issue in the judgment of 24 September 2008 in Oakley v OHIM — Venticinque (O STORE) (T-116/06, EU:T:2008:399).

Findings of the Court

26 In so far as, by the first part of its second ground of appeal, Nanu-Nana claims that the General Court, in the assessment of the similarity between toothbrushes and dentifrices, infringed its obligation to state reasons, it should be noted, at the outset, that it is apparent from the Court’s settled case-law that the General Court cannot, subject to the obligation to observe general principles and the rules of procedure relating to the burden of proof and the adducing of evidence and not to distort the evidence, be required to give express reasons for its assessment of the value of each piece of evidence presented to it, in particular where it considers that that evidence is unimportant or irrelevant to the outcome of the dispute (judgment of 21 January 2016 in Hesse v OHIM, C-50/15 P, EU:C:2016:34, paragraph 24).

27 In that regard, concerning, in the first place, the alleged failure to state reasons in relation to paragraph 38 of the judgment under appeal, it should be noted that the General Court, in the exercise of its exclusive power to assess and find the relevant facts (see the judgment of 10 July 2014 in Greece v Commission, C-391/13 P, unpublished, EU:C:2014:2061, paragraph 28), undertakes a determination of a number of elements, some of which are correctly considered to be well known, precisely in order to state reasons for its assertion that the Board of Appeal was entitled to take the view that consumers could expect toothbrushes and dentifrices to come from the same undertakings. In regard to that point, the General Court therefore did not in any way fail to fulfil its obligation to state reasons.

28 Nanu-Nana also claims, first, that toothbrushes and dentifrices are not in competition with one another and that it would have been necessary to hold, notwithstanding the complementary nature of those goods, that there is a low degree of similarity between them and, secondly, that the General Court erred in failing to take account of the judgment of 7 May 2009 in Waterford Wedgwood v Assembled Investments (Proprietary) (C-398/07 P, unpublished, EU:C:2009:288) in so far as it was there held that the assessment of the facts carried out by the General Court had been based on arguments that were sufficient and undistorted. Suffice it to note that, under cover of such arguments, Nanu-Nana seeks, in reality, to call into question an assessment of facts, something which the Court cannot do in the context of an appeal.

29 Concerning, in the second place, the alleged failure to state reasons in relation to paragraph 39 of the judgment under appeal, it should be noted that the General Court, in so far as it referred, first, to its own findings in paragraph 38 of that judgment and, secondly, to the complementarity of toothbrushes and dentifrices and to the fact that those goods have the same purpose, indicated to the required legal standard why it took the view that the different nature of those goods could not suffice to establish a low degree of similarity between them.

30 The arguments put forward in support of the first part of the second ground of appeal must, therefore, be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

31 As regards the second part of that ground, in so far as it seeks to show that, in the light of certain factual circumstances, the General Court wrongly concluded that there was a high degree of similarity between the retail services in the field of perfumery in Class 35 in relation to which registration of the contested mark was sought and the cosmetics covered by the earlier mark and coming within Class 3, Nanu-Nana seeks in that regard, in reality, to call into question the General Court’s analysis relating to the appraisal of facts.

32 That part must, therefore, also be rejected as being manifestly inadmissible.

33 To the extent that, by the third part of its second ground of appeal, Nanu-Nana raises a lack of explanations in paragraph 45 of the judgment under appeal, suffice it to note that the finding that the methods of marketing the perfumery goods covered by the earlier mark do not differ fundamentally from those of the goods in question in the judgment of 24 September 2008 in Oakley v OHIM — Venticinque (O STORE) (T-116/06, EU:T:2008:399) is part of a broader and exhaustive line of reasoning, in particular in paragraphs 41 to 46 of the judgment under appeal, by which the General Court confirmed that the Board of Appeal was entitled to take the view, in accordance with the judgment of 24 September 2008 in Oakley v OHIM — Venticinque (O STORE) (T-116/06, EU:T:2008:399), that there was a similarity between the goods and services at issue in the present case and that, in view of that fact, the General Court could make that finding without being required expressly to substantiate it further.

34 That part is, therefore, manifestly unfounded.

35 Consequently, the second ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

36 In view of the foregoing, the present appeal must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly unfounded, without the need to rule on a stay of the present proceedings.

Costs

37 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.

38 As the present order has been adopted prior to notification of the appeal to the defendant at first instance and, consequently, before the latter could have incurred costs, Nanu-Nana is to be ordered to bear its own costs.

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

1. The appeal is dismissed.

2. Nanu-Nana Joachim Hoepp GmbH & Co. KG shall bear the costs.

[Signatures]

* Language of the case: English.

Order of 14 Apr 2016, C-479/15 (Nanu-Nana Joachim Hoepp v EUIPO), ECLI:EU:C:2016:276.