Order of 14 Apr 2016, C-480/15 (KS Sports v OHIM), ECLI:EU:C:2016:266.

ORDER OF THE COURT (Seventh Chamber)

14 April 2016 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Regulation (EC) No 207/2009 — Application for registration of the word mark ALEX — Opposition by the proprietor of the national word marks ALEX and the national figurative mark containing the word element ‘ALEX’ — Rejection of the opposition — Article 75 — Right to be heard — Obligation to state reasons — Article 8(1)(b) — Likelihood of confusion — Similarity between products)

In Case C-480/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 September 2015,

KS Sports IPCo GmbH, successor in law to BH Stores BV, established in Grünwald (Germany), represented by T. Dolde and P. Homann, Rechtsanwälte, and by M. Hawkins, Solicitor,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Alex Toys LLC, established in Wilmington (United States),

intervener at first instance,

THE COURT (Seventh Chamber),

composed of C. Toader, President of the Chamber, A. Prechal and E. Jaraši?nas (Rapporteur), Judges,

Advocate General: M. Campos Sánchez-Bordona,

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, KS Sports IPCo GmbH (‘KS Sports’), successor in law to BH Stores BV (‘BH Stores’), asks the Court to set aside the judgment of the General Court of the European Union of 2 July 2015 in BH Stores v OHIM — Alex Toys (ALEX) (T-657/13, EU:T:2015:449), (‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 September 2013 (Case R 1950/2012-2), given in opposition proceedings between BH Stores and Alex Toys LLC (‘the decision at issue’).

 Legal context

2        Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), which came into force on 13 April 2009, repealed and replaced Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). In accordance with Article 166, second paragraph, of Regulation No 207/2009, references to Regulation No 40/94 are to be construed as references to Regulation No 207/2009 and are to be read in accordance with the correlation table set out in Annex II to that regulation.

3        Article 8(1)(b) and (5) of Regulation No 207/2009 provides:

‘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.

...

5.      Furthermore, upon opposition by the proprietor of an earlier trade mark …, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, ... in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

4        Those provisions are identical to those of Article 8(1)(b) and (5) of Regulation No 40/94.

5        Article 75 of Regulation No 207/2009 provides:

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had [a]n opportunity to present their comments.’

 Background to the case

6        On 27 December 2007, Panline U.S.A. Inc. filed an application with EUIPO for the registration as an EU trade mark of the word sign ‘ALEX’.

7        The goods in respect of which registration was sought are in Class 28 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 (‘the Nice Agreement’), and correspond, for that class, after the restriction made in the course of the procedure before EUIPO, to the following description:

‘Children’s arts and crafts kits for making jewellery, string beads, cards, jungle dioramas, key chains, clothes accessories, … origami and kirigami, … stickers, glitter art, sand art, animal sculptures, models, collages, potions, personal fragrances, bath gels, personal diary and holiday keepsake books, photo albums, patterns on silk, fashion accessories (including lanyard, lovebeads and glow beads); children’s arts and crafts kits for use in painting, drawing, stencilling, colouring, clay modelling, dinosaur making and drawing and teaching alphabet and numbers (using flashcards, magnetic numbers and letters); paper craft hobby kits; masquerade party kits ; watch and watch band making kits; kid’s aprons sold as part of arts and crafts kits; children’s bath toys; and children’s educational and developmental activity toys; none of the previously mentioned goods including sporting articles’.

8        The EU trade mark application was published in Community Trade Marks Bulletin No 21/2008 of 26 May 2008.

9        On 26 August 2008, Arcandor Akt, which was replaced by BH Stores, filed a notice of opposition to registration of the trade mark applied for. The opposition was based on the following earlier trade marks:

–        two German word marks ALEX, registered under numbers 1049274 and DD 648968, inter alia for ‘sporting articles’ in Class 28, within the meaning of the Nice Agreement, and

–        the German figurative mark, registered under number 39925705, inter alia in respect of ‘sporting articles’ in Class 28 of the Nice Agreement, reproduced below:

10      The grounds relied on in support of that opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 40/94.

11      By decision of 3 October 2012, EUIPO’s Opposition Division rejected the opposition in its entirety. On 22 October 2012, BH Stores filed an appeal with EUIPO against that decision. On 21 May 2013, the application for registration of the EU trade mark at issue was assigned to Alex Toys LLC.

12      By the decision at issue, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) confirmed the Opposition Division’s decision of 3 October 2012. Confining its review to the ground of opposition under Article 8(1)(b) of Regulation No 207/2009, BH Stores no longer relying on the argument based on Article 8(5) of that regulation, and holding that the opposition was restricted to ‘children’s bath toys’ and to ‘children’s educational and developmental activity toys’ in Class 28 of the Nice Agreement (together, ‘the goods concerned’), the Board of Appeal held that those two categories of goods covered goods other than ‘sporting articles’ in the same class and that, consequently, there could be no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the condition in respect of the identity or similarity of the goods at issue, essential to the application of that provision, not being satisfied.

 The proceedings before the General Court and the judgment under appeal

13      By application lodged at the General Court Registry on 11 December 2013, BH Stores brought an action seeking the annulment of the decision at issue. In support of that action, BH Stores relied on two pleas in law, the first alleging infringement of Article 75 of Regulation No 207/2009, in so far as it requires the Boards of Appeal to give reasons for their decisions, and the second alleging infringement of Article 8(1)(b) of that regulation.

14      By the judgment under appeal, the General Court dismissed BH Stores’ action as unfounded.

 Form of order sought by the appellant

15      By its appeal, KS Sports asks the Court to set aside the judgment under appeal, to refer the case back to the General Court and to order EUIPO to pay the costs.

 The appeal

16      Under Article 181 of the Court’s 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.

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

18      In support of its appeal KS Sports relies on three grounds alleging infringement, respectively, of the right to a hearing under Article 75 of Regulation No 207/2009, the requirement to give reasons under Article 75 of Regulation No 207/2009 and Article 36 of the Statute of the Court of Justice of the European Union, and of Article 8(1)(b) of Regulation No 207/2009.

 The first ground of appeal, alleging infringement of the right to a hearing under Article 75 of Regulation No 207/2009

 Appellant’s arguments

19      By its first ground of appeal, KS Sports argues that the General Court infringed Article 75 of Regulation No 207/2009 by omitting to censure the infringement, by the Board of Appeal, of the right of BH Stores to a hearing before it, which is guaranteed by that article. In that regard, KS Sports submits that the General Court failed to address the fact that the Board of Appeal did not inform BH Stores of the filing, by Alex Toys LLC, of observations in reply to its statement setting out the grounds on which it based its action before the Board of Appeal, nor did it communicate those observations to BH Stores, whereas they should have been communicated. BH Stores did not, consequently, have the opportunity to reply to those grounds. Furthermore, those observations were filed late and therefore should not have been taken into account by the Board of Appeal, whereas they were, nonetheless, taken into account.

20      That ground, alleging infringement of Article 75 of Regulation No 207/2009, was it claims raised in the application for a hearing lodged at the General Court by BH Stores owing to the fact that BH Stores only knew about the content of those observations because Alex Toys LLC annexed them to its reply lodged with the General Court. The General Court, by omitting to rule on that ground, disregarded the infringement of BH Stores’ right to be heard by the Board of Appeal.

 Findings of the Court

21      It is clear from the judgment under appeal that the General Court did not rule on the argument presented by BH Stores in its application for a hearing alleging that the Board of Appeal had failed to communicate Alex Toys LLC’s observations presented in reply to the pleading setting out the grounds of action and that the Board had failed to take into account that those observations were lodged out of time.

22      However, it is apparent from the file relating to the proceedings before the General Court that that argument was not included in the application initiating proceedings, the plea alleging infringement of Article 75 of Regulation No 207/2009, as raised in that application, only relating to the infringement of the first sentence of that provision requiring Boards of Appeal to give reasons for their decisions.

23      In accordance with Article 48(2) of the Rules of Procedure of the General Court, in the version in force on the date on which that application for a hearing was lodged, and in accordance with Article 84(1) of the Rules of Procedure of the General Court, in the version which came into force on 1 July 2015, that being the day before the delivery of the judgment under appeal, the introduction of new pleas in law in the course of proceedings is not permitted unless those pleas are based on matters of law or fact which came to light in the course of the procedure.

24      However, in the present case, paragraph 14 of the decision at issue refers to the date on which the observations in question were lodged with the Board of Appeal and paragraph 16 of that decision contains a summary of those observations. It follows, therefore, from those paragraphs that those observations were taken into account by the Board of Appeal as, moreover, KS Sports points out in its appeal. BH Stores was, therefore, in a position to raise those alleged irregularities in its application initiating proceedings.

25      It follows that even if in the argument presented in its application for a hearing which indeed did not contain, in the part which was the subject of the first ground of appeal, any reference to Article 75 of Regulation No 207/2009 or to the right to a hearing before the Board of Appeal BH Stores intended to raise a plea in law for the annulment of the decision at issue, that plea would, in any event, have constituted a new plea within the meaning of the Rules of Procedure of the General Court.

26      It follows that the first ground of appeal must be rejected.

 The second ground of appeal, alleging infringement of the obligation to state reasons pursuant to Article 75 of Regulation No 207/2009 and Article 36 of the Statute of the Court of Justice of the European Union

 Appellant’s arguments

27      By its second ground of appeal, KS Sports argues that the Board of Appeal and the General Court, in order to satisfy the obligation to state reasons under, respectively, Article 75 of Regulation No 207/2009 and Article 36 of the Statute of the Court of Justice of the European Union, must address, at least implicitly and in general, all the arguments put forward before them, and they have not done so.

28      In relation to the assessment of the similarity of the goods at issue in the present case, there are two conflicting General Court judgments, namely the judgment in i-content v OHIM — Decathlon (BETWIN) (T-514/11, EU:T:2013:291), in which the General Court held that ‘sporting articles’ and ‘games’ are not similar and the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448), in which the General Court held that ‘sporting articles’ and ‘games’ are similar.

29      However, the General Court held that the Board of Appeal had satisfied the obligation to give reasons when it restricted itself to reproducing, in its decision, some of the grounds for the first of those judgments without explaining the reasons why the arguments put forward before it were not capable of leading to a different conclusion and why the reasoning followed in that judgment was also applicable to the case before it. In so ruling, the General Court erred in law. Furthermore, the Board of Appeal failed to take account of the second of those judgments which led, in relation to the question of the similarity of the goods at issue, to a decision contrary to that in the present case. Contrary to what was held by the General Court in paragraph 44 of the judgment under appeal, the Board of Appeal was required to state the reasons for which it had chosen to follow one judgment of the General Court rather than another.

30      Moreover, the General Court, in paragraphs 59, 65 and 93 of the judgment under appeal, infringed its obligation to state reasons under Articles 36 and 53 of the Statute of the Court of Justice of the European Union by merely replicating the reasoning already followed in the first of those judgments without explaining, even implicitly, the reasons why the reasoning in that judgment should prevail over that in the second judgment and why the second judgment did not apply to the case before it.

 Findings of the Court

31      In the first place, in so far as by its second ground KS Sports criticises the decision under appeal as containing an insufficient statement of reasons, in particular in the light of the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448), suffice it to note that arguments in an appeal which criticise the decision whose annulment was applied for before the General Court, rather than the judgment delivered by the General Court following that application for annulment, are inadmissible (orders in Brighton Collectibles v OHIM, C-624/11 P, EU:C:2012:598, paragraph 35, and Cartoon Network v OHIM, C-670/13 P, EU:C:2014:2024, paragraph 51). That argument must, therefore, be dismissed as being manifestly inadmissible.

32      In the second place, in so far as by its second ground of appeal KS Sports claims that the General Court infringed Article 75 of Regulation No 207/2009 by considering that the Board of Appeal had complied with its obligation to state reasons, it should be noted, first, that in accordance with the Court’s settled case-law, the obligation for EUIPO to state reasons for its decisions in accordance with Article 75, first sentence, of Regulation No 207/2009 has the same scope as that which derives from Article 296, second paragraph, TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment in KWS Saat v OHIM, C-447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited).

33      In the present case, the General Court noted, in paragraph 32 of the judgment under appeal that ‘it [was] clear from paragraph 25 of the decision at issue that … the Board of Appeal considered that the finding in the judgment in [i-content v OHIM — Decathlon (BETWIN) (T-514/11, EU:T:2013:291)] … was applicable “by extension” to the goods at issue in the present case’. It also held, in paragraph 33 of the judgment under appeal, that ‘the Board of Appeal drew on the reasoning in [that judgment] by stating, in paragraph 25 of the decision at issue, that it considered [it] to be relevant for conclusively rebutting the arguments put forward by [BH Stores]’. It noted, in paragraphs 34 and 35 of the judgment under appeal, the content of paragraphs 26 and 27 of the decision at issue. Furthermore, it is common ground that the content of the decision at issue has not been distorted by the General Court.

34      In the light of those factors and having regard to the Court’s settled case-law set out in paragraph 32 of the present order and, moreover, referred to by the General Court in paragraphs 29 and 30 of the judgment under appeal, the General Court clearly did not err in law in holding, in paragraph 36 of that judgment, that, ‘contrary to what [BH Stores] claims, the relevant facts and the legal considerations having decisive importance in the context of the decision at issue are clearly set out in [that decision] and that they inform [BH Stores] of the justification for [that decision] so that it can protect its rights and enable the EU judicature to exercise its power to review the legality of the decision’.

35      Furthermore, while it is true that, in paragraph 37 of the judgment under appeal, the General Court considered that ‘nothing in principle … prevent[s] the Board of Appeal from following the reasoning of a judgment of the EU judicature, if it considers that it applies to the case in question’, it must be noted that that paragraph was set out in the alternative as is shown by the use of the expression ‘moreover’ at the beginning of that paragraph and the fact that that paragraph comes after the finding in paragraph 36 of that judgment. Therefore, any criticism directed at that paragraph is, in any event, ineffective.

36      Next, it is also settled case-law of the Court that the decisions which the Boards of Appeal of EUIPO are called on to take under Regulation No 207/2009, concerning registration of a sign as an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (judgment in Alcon v OHIM, C-412/05 P, EU:C:2007:252, paragraph 65 and case-law cited).

37      Furthermore, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not. Respect for the principle of legality requires that all applications for registration must be stringent and full and take place in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraphs 73 to 77, and the order in Asa v OHIM, C-354/12 P, EU:C:2013:238, paragraph 41).

38      It follows that the General Court was fully entitled to hold, in paragraph 43 of the judgment under appeal, that ‘given that the Board of Appeal sufficiently set out the facts and the legal considerations having decisive importance in the context of the decision at issue, it was not required to give specific reasons in order to justify its decision relating to EUIPO’s earlier decisions cited in the parties’ written pleadings or relating to EU case-law’.

39      Last, as to KS Sports’ criticism of paragraph 44 of the judgment under appeal, suffice it to note that the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448), in the light of which the General Court should, according to KS Sports, have required the Board of Appeal to give reasons for the decision at issue, was given on 16 September 2013, that being the same day as that on which that decision was taken. It could not, therefore, be expected that the Board of Appeal take that judgment into account in the decision. Furthermore, as is apparent from the use of the expression ‘in addition’ and the positioning of that paragraph after the conclusion appearing in paragraph 43 of the judgment under appeal, paragraph 44 was set out by the General Court in the alternative. Any criticism directed towards the General Court’s statement in the same paragraph that ‘[a Board of Appeal] cannot be required to comment on every judgment of the EU judicature’ is, therefore, in any event, ineffective.

40      Having regard to the foregoing considerations, it is manifestly without infringing Article 75, first sentence, of Regulation No 207/2009 that the General Court rejected, in the judgment under appeal, the ground alleging infringement by the Board of Appeal of that provision.

41      In the third place, in so far as by its second ground of appeal KS Sports claims that the General Court, in paragraphs 59, 65 and 93 of the judgment under appeal, infringed its obligation to give reasons by not explaining why it applied the judgment in i-content v OHIM — Decathlon (BETWIN) (T-514/11, EU:T:2013:291) and not the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448), it should be observed that the obligation on the General Court to state reasons in accordance with Articles 36 and 53, first subparagraph, of the Statute of the Court of Justice of the European Union is satisfied where, even implicitly, the reasoning given enables the persons concerned to know why the General Court has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review (see, to that effect, inter alia, judgment in Edwin v OHIM, C-263/09 P, EU:C:2011:452, paragraph 64).

42      In the present case, in paragraph 93 of the judgment under appeal, the General Court held that ‘with regard to the reasoning based on the judgment in [Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448)], it is apparent from paragraphs 59 and 65 [of the judgment under appeal] that it cannot be transposed to the present case’.

43      In paragraph 59, the General Court considered that ‘contrary to what [BH Stores] maintains’, relying, as is apparent from paragraph 57 of the judgment under appeal, on the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448), ‘the existence of a simplified form and a reduced size for “children’s educational and developmental activity toys” makes it possible precisely to distinguish them from, and not to confuse them with, “sporting articles”’, that, ‘in the present case, “children’s educational and developmental activity toys” … are aimed at relatively young children and can be distinguished from “sporting articles” (even if they imitate them) by a lower level of technicality, a different appearance (reduced size, light weight), safety appropriate for children … and a generally lower price’, and that ‘that reasoning applies a fortiori to “children’s bath toys” which have no “sporting” equivalent’.

44      In addition, as is apparent from paragraph 62 of the judgment under appeal, it is also in reply to BH Stores’ argument relating to the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448) that the General Court held, in paragraph 65 of the judgment under appeal, that ‘the existence of a “fluid transition” or an area of overlap between two categories of goods with essentially different purposes does not mean that all the goods concerned by those categories of goods are similar’.

45      Furthermore, contrary to what is pleaded by KS Sports, it is apparent from the judgment in i-content v OHMI — Decathlon (BETWIN) (T-514/11, EU:T:2013:291) that neither paragraph 59 nor paragraph 65 of the judgment under appeal simply reproduce the reasoning in that first judgment.

46      It follows from the above that, in the paragraphs of the judgment under appeal that are challenged, the General Court set out the reasons why it held, in the light of the facts and arguments before it, that the judgment in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR) (T-250/10, EU:T:2013:448) was not relevant to the present case despite the arguments to the contrary put before the Court by BH Stores and did so without merely reproducing the reasoning in the judgment in i-content v OHIM — Decathlon (BETWIN) (T-514/11, EU:T:2013:291). It must, therefore, be held that the General Court fulfilled its obligation to state reasons.

47      In that regard, the fact that KS Sports disagrees with the reasoning of the General Court in paragraphs 59, 65 and 93 cannot establish the existence of a failure to state reasons in the judgment under appeal, where such a disagreement relates to whether that reasoning is well founded. (see, to that effect, judgment in Gascogne Sack Deutschland v Commission, C-40/12 P, EU:C:2013:768, paragraph 46 and the case-law cited).

48      In those circumstances, KS Sports’ argument alleging infringement by the General Court of its obligation to state reasons must be rejected as manifestly unfounded and, consequently, the second ground of appeal must be rejected in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

 The third ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

 The appellant’s arguments

49      By its third ground of appeal, KS Sports argues that the General Court, in its assessment of the similarity of the goods at issue, infringed Article 8(1)(b) of Regulation No 207/2009 in five respects.

50      First, as the list of goods set out in the application for registration did not contain a detailed description of the goods at issue and the category ‘children’s bath toys; and children’s educational and development activity toys, none of the aforementioned goods including sporting articles’ could include numerous completely different items, the General Court, in order to properly compare the goods in question, would have had to first interpret that list in the light of the Nice Agreement and from a commercial perspective in order to determine precisely the goods to be compared. By not doing so and, in paragraph 55 of the judgment under appeal, by not requiring the Board of Appeal to do so, it infringed Article 8(1)(b) of Regulation No 207/2009.

51      Second, the General Court infringed that provision by applying incorrect criteria in its assessment of the similarity of the goods at issue. In order to conclude that two items are similar it is not necessary for the relevant consumer to confuse them. In paragraphs 59 and 66 of the judgment under appeal, the General Court, by stating that the goods at issue were not similar because the relevant consumer would not confuse them, itself confused the examination of the likelihood of confusion with that of the similarity of the goods, which should be performed according to different criteria.

52      Third, the General Court infringed that provision by holding that there was no similarity between the goods at issue as a whole, whereas it acknowledged, in paragraphs 65 and 77 of the judgment under appeal, that there was an area of overlap, and therefore of similarity, between some of the goods. According to case-law, where two categories of goods coincide partially they are considered identical if they are within the same class of the Nice Agreement and within the same general indication in the class heading and if it is impossible to clearly separate the goods concerned. The same applies concerning the question of the similarity of those goods.

53      Having found that an overlap existed in paragraphs 65 and 77, the General Court should have evaluated whether it was possible to identify subcategories of the contested goods and to assess the existence of a similarity with ‘sporting articles’ in respect of each of those subcategories. If a division into subcategories was not possible, the General Court, since it had held that some of the goods at issue were similar, would necessarily have had to conclude that they were similar as a whole.

54      Fourth, factors allowing the similarity of goods at issue to be established should be subject to a global assessment in which all the relevant factors are weighed in accordance with their respective importance in relation to the goods at issue. However, the General Court evaluated each of those relevant factors separately without mentioning any relation between them or weighing them and without assessing the impact of the combination of common characteristics on their degree of similarity, thereby infringing Article 8(1)(b) of Regulation No 207/2009. If it had conducted a proper examination and, therefore, if it had weighed the factors set out in paragraphs 58, 60, 62, 64, 65, 69, 74, 78, 82, 83 and 87 of the judgment under appeal in a global assessment, it would have inevitably reached the conclusion that the goods at issue were at least remotely similar.

55      Fifth, the General Court, in its assessment of the similarity of the goods at issue, distorted the facts in paragraphs 59, 60, 64, 69, 76, 82 and 87 of the judgment under appeal. For instance, the fact that two products are used in the same way cannot be categorised as insignificant on the sole basis that cleaning equipment is used in the same way as sporting articles, namely with physical force. Likewise, the use of sporting articles for leisure purposes and the use of activity toys for physical exercise cannot be categorised as diverted or occasional use. Furthermore, the goods in respect of which registration is applied for cover, inter alia, ‘children’s educational activity toys’ and ‘children’s developmental activity toys’ and there was no reason to consider, as did the General Court, that their purpose was ‘specifically educational’. The General Court also distorted the facts by stating that the goods at issue were for young children and not for children in general. Likewise, in its assessment of the distribution channels, the General Court distorted the facts by stating, in order to deny the relevance of certain evidence presented, that the fact that the goods at issue could be manufactured by the same undertakings and offered through the same distribution channels were marginal phenomena and that only very well-known sports brands produce activity toys.

 Findings of the Court

56      In the first place, to the extent that by its third ground of appeal KS Sports complains that the General Court failed, prior to its analysis of the similarity of the goods concerned, to identify, from the two categories of contested goods, subcategories of goods, it should be observed that the extent of the protection afforded by a trade mark is in principle determined by the nature and the number of goods and services identified in the registration application (see, to that effect, order in CFCMCEE v OHIM, C-282/09 P, EU:C:2010:153, paragraph 37 and the case-law cited, and the judgment in Chartered Institute of Patent Attorneys, C-307/10, EU:C:2012:361, paragraphs 37 and 49).

57      It follows that, for the purposes of the examination of the similarity of the goods or services at issue, it is neither for the General Court nor the Board of Appeal to first identify, from each of the categories or each of the types of goods or services in respect of which registration of a trade mark is applied for, the specific goods or services within those categories or types which could be marketed by the applicant. In particular, as the specific circumstances in which the goods or services at issue are marketed may vary over time and depending on the wishes of the applicant, those circumstances cannot be taken into account in the prospective analysis of the likelihood of confusion (see, to that effect, judgment in T.I.M.E. ART v OHIM, C-171/06 P, EU:C:2007:171, paragraph 59). That examination must therefore, as to the goods or services for which registration of a trade mark is applied for, be performed in the light of the wording of the list of goods or services for which registration is applied for as it appears in the registration application or, where appropriate, as delimited in the course of the proceedings.

58      Furthermore, it is not disputed in the present case that the list of the goods in respect of which registration is applied for, and in particular the list of the contested goods, does not merely reproduce the general indications included in the heading for Class 28 of the Nice Agreement. It, therefore, manifestly satisfies the requirements of clarity and precision.

59      In those circumstances, it is without erring in law that, in paragraph 55 of the judgment under appeal, the General Court held that ‘the Board of Appeal was … not required to identify the specific goods covered by the mark applied for’ and held implicitly that it was not required to do so either. The first argument is, consequently, manifestly unfounded.

60      In the second place, in so far as by its third ground of appeal KS Sports claims that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 by confusing the criteria for assessing the similarity of the goods at issue and those for assessing the likelihood of confusion, within the meaning of that provision, it suffices to note that that argument is based on a misreading of the judgment under appeal.

61      It is true that in paragraph 59 of that judgment, in its analysis of the nature of the goods at issue, the General Court noted that ‘the existence of a simplified form and a reduced size for “children’s educational and developmental activity toys” makes it possible precisely to distinguish them from, and not to confuse them with, “sporting articles”’, and in paragraph 66 of that judgment, in its assessment of the intended use of the goods at issue, it held that ‘the fact that two products may, to a certain extent, satisfy the same need does not prevent the relevant consumer from perceiving them as two distinct products’.

62      However, the use by the General Court of the words ‘confuse’ and ‘distinct’ in those paragraphs was only in respect of their usual meaning in everyday language in order to establish that the goods in question were not similar and made no reference to the concept of likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, which relates, according to the Court’s settled case-law, to the risk that the public might believe that the goods or services at issue come from the same undertaking or from economically linked undertakings (see, inter alia, judgment in Isdin v Bial-Portela, C-597/12 P, EU:C:2013:672, paragraph 17 and the case-law cited). Consequently that argument, having no factual basis, is manifestly unfounded.

63      In the third place, in so far as in the present ground of appeal KS Sports claims that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 by concluding that there was no overall similarity between the goods at issue although it had held, in paragraphs 65 and 77 of the judgment under appeal, that some of those goods were similar, it must be held that that argument is also based on a misreading of the judgment under appeal.

64      It is true that in paragraph 65 of the judgment under appeal, in its assessment of the intended use of the goods at issue, the General Court observed that ‘the existence of a “fluid transition” or an area of overlap between two categories of goods with essentially different purposes does not mean that all the goods concerned by those categories of goods are similar’. However, contrary to KS Sports’ contention, the General Court did not consider that that ‘fluid transition’ or that ‘overlap’ was to be understood as establishing a similarity, even partial, of the goods in question nor indeed did it hold that such a ‘fluid transition’ or ‘overlap’ existed in the present case.

65      The purpose of the abovementioned paragraph, which begins with the words ‘it follows’, was simply for the General Court to conclude from the finding that it made in paragraph 64 of the same judgment — which is not disputed in the present argument — that ‘the fact that one purpose … does not exclude another purpose … and that both purposes may be “interconnected” in a product … does not rule out the possibility of identifying a dominant, or in other words “primary” purpose of a product’, and that ‘“use” means the generally intended use of the product and not any diverted or occasional use’. That conclusion was, furthermore, drawn with the purpose of rejecting the argument presented by BH Stores, and set out in paragraph 62 of the judgment under appeal, that the intended use of the goods at issue was identical, particularly because of the existence of a ‘fluid transition’ between the use of sporting articles and those for games.

66      Moreover, paragraph 77 of the judgment under appeal offers no indication whatsoever that the General Court found that even a partial similarity existed between the goods at issue. In addition, to the extent that KS Sports criticises the fact that the General Court held, in that paragraph, that the goods at issue were different in character despite the similarity that it found in paragraph 65 of that judgment, it suffices to note that that contention is based on the premiss that the General Court found, in paragraph 65, that there was at least a partial similarity between the goods at issue, at least in relation to their intended use, a premiss which was held to be incorrect in paragraphs 64 and 65 of the present order.

67      Therefore, the third argument raised in support of the third ground of appeal must be rejected as manifestly unfounded.

68      In the fourth place, to the extent that KS Sports complains that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 by not conducting a global assessment of all the relevant factors allowing the similarity of the goods at issue to be established and, in particular, by not taking into account the various elements of similarity allegedly noted in paragraphs 58, 60, 62, 64, 65, 69, 74, 78, 82, 83 and 87 of the judgment under appeal, it must be pointed out that that argument is also based on an misreading of the judgment under appeal.

69      In order to assess whether the goods or services at issue are similar or identical, all the relevant factors relating to the link between those goods or those services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see judgment in Les Éditions Albert René v OHIM, C-16/06 P, EU:C:2008:739, paragraph 65 and the case-law cited).

70      However, it is apparent in the present case from reading the judgment under appeal as a whole that the General Court did indeed carry out that global assessment to establish whether or not the goods at issue were similar.

71      Accordingly, first, in paragraphs 57 to 61 of the judgment under appeal, the General Court considered the nature of those goods, focusing on their composition, their form, their size and their use and, after its examination of those different factors, held that the toys, in respect of which registration was applied for, were different in nature to the sporting articles covered by the earlier marks. Second, in paragraphs 62 to 79 of that judgment, after having considered the interchangeability, complementarity, purpose, whether they are in competition or not and the customers for the goods at issue, the General Court held that those goods had a different purpose. Third, in paragraphs 80 to 87 of that judgment, the General Court dealt with the question of the undertakings usually manufacturing those goods and the establishments selling them and the evidence provided by BH Stores in that respect and held that the goods at issue had different distribution and manufacturing channels.

72      Therefore, it was clearly without failing to carry out the global assessment required by the case-law referred to in paragraph 69 of the present order that the General Court held, in paragraph 91 of the judgment under appeal, that ‘for the reasons set out above, the Board of Appeal did not err in its assessment in finding that the goods at issue were different’.

73      Furthermore, to the extent that by its fourth argument KS Sport seeks to call into question the conclusions which the General Court reached at each of the stages in its assessment and to maintain that a proper weighting of the relevant factors should have led the General Court to conclude that there was a similarity which was ‘at least remote’ between the goods at issue, suffice it to note that such an argument seeks to call into question assessments of a factual nature without in any way claiming that the General Court distorted the facts before it and that consequently it is manifestly inadmissible (see, to that effect, order in The Sunrider Corporation v OHIM, C-142/14 P, EU:C:2015:371, paragraphs 47 to 51, and judgment in Hesse v OHIM, C-50/15 P, EU:C:2016:34, paragraphs 26 and 27).

74      The fourth argument raised in support of the third ground of appeal must, therefore, be rejected as being in part manifestly unfounded and in part manifestly inadmissible.

75      In the fifth place, in so far as KS Sports in its argument set out in paragraph 55 of the present order relies on a distortion of the facts and evidence, it must be held that the alleged distortion does not satisfy the criteria required in the case-law that such a distortion must be obvious from the documents on the Court’s file without any need to carry out a new assessment of the facts and the evidence (see, to that effect, judgment in Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraphs 49 and 50 and the case-law cited). That argument, therefore, just calls into question factual assessments carried out by the General Court and, as a result, in accordance with the case-law referred to in paragraph 73 of the present order, is manifestly inadmissible.

76      In the light of all the foregoing considerations, the third ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded and, therefore, the appeal must be dismissed in its entirety.

 Costs

77      Under Article 137 of the Rules of Procedure of the Court, 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.

78      As the present order has been adopted prior to notification of the appeal to the defendant at first instance and, therefore, before the latter has incurred costs, it is appropriate to decide that KS Sports must bear its own costs.

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

1.      The appeal is dismissed.

2.      KS Sports IPCo GmbH shall pay its own costs.

[Signatures]

* Language of the case: English.