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Cite as: [2011] EUECJ T-74/10

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JUDGMENT OF THE GENERAL COURT (Third Chamber)

11 May 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark FLACO – Earlier national word mark FLACO – Relative ground for refusal – Identical goods – Article 8(1)(a) and (b) of Regulation (EC) No 207/2009 – Request for proof of genuine use of the earlier mark submitted for the first time before the Board of Appeal – Article 42(2) and (3) of Regulation No 207/2009 and Rule 22 of Regulation (EC) No 2868/95)

In Case T-�74/10,

Flaco-�Geräte GmbH, established in Gütersloh (Germany), represented by M. Wirtz, lawyer,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-�Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Jesús Delgado Sánchez, resident in Socuellamos (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 November 2009 (Case R 86/2009-�2) concerning opposition proceedings between Mr Jesús Delgado Sánchez and Flaco-�Geräte GmbH,

THE GENERAL COURT (Third Chamber),

composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 16 February 2010,

having regard to the response lodged at the Court Registry on 14 June 2010,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-�Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court,

gives the following

Judgment

Background to the dispute

1 On 5 November 2004, the applicant, Flaco Geräte GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was sought is the word sign FLACO.

3 The goods in respect of which registration was sought are, inter alia, in Class 7 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, inter alia, to the following description: ‘milking machines and fittings, automatic milking devices; washing machines for milking machines’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 36/2005 of 5 September 2005.

5 On 2 December 2005, Mr Jesús Delgado Sánchez (‘the opposing party’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of, inter alia, the goods referred to in paragraph 3 above.

6 The opposition was based on the Spanish word mark FLACO, registered on 5 November 1993 under number 1691943, for goods in Class 7 of the Nice Agreement corresponding to the following description: ‘Agricultural cattle machinery’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

8 On 17 November 2008, the Opposition Division allowed the opposition brought against the application for registration of a Community trade mark in respect of the goods referred to in paragraph 3 above. It held that the marks at issue were identical and that the goods they covered were identical or similar so that there was a likelihood of confusion between those marks. The Opposition Division rejected the opposition in respect of the other goods it concerned.

9 On 13 January 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.

10 On 9 March 2009, the applicant filed a written statement setting out the grounds of its appeal, in accordance with Article 59, third sentence, of Regulation No 40/94 (now Article 60, third sentence, of Regulation No 207/2009). That written statement was received by OHIM the following day, 10 March 2009, and contained, inter alia, a request for proof of genuine use of the earlier mark.

11 By decision of 23 November 2009 (‘the contested decision’), notified on 15 December 2009, the Second Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division.

12 In particular, the Board of Appeal held, first, that the request for proof of genuine use of the earlier mark was inadmissible on the ground that it had been presented for the first time before that Board. It considered, secondly, that the signs at issue were identical and that they covered goods that are identical or highly similar.

13 As regards the goods at issue, the Board held that the description in Spanish of the goods covered by the earlier mark, ‘maquinaria agrícola ganadera’, had been correctly translated into English by the opposing party as ‘agricultural cattle machinery’, which is broad enough to include the ‘milking machines and fittings, automatic milking devices; washing machines for milking machines’ covered by the trade mark application.

14 Furthermore, according to the Board of Appeal, even if ‘washing machines for milking machines’ were not, unlike ‘milking machines’, included in the ‘agricultural cattle machinery’ covered by the earlier mark, there can be no doubt that those washing machines are nevertheless similar to agricultural cattle machinery since the washing machines are complementary to ‘milking machines’, are aimed at the same consumer, follow the same lines of trade and have the same origin and point of sale. The Board of Appeal added that, in any event, the fact that the signs are identical would offset the low degree of similarity of the goods. The Board concluded that there must be a risk of confusion between the marks at issue on the part of the relevant consumers in the farming community of Spain.

Forms of order sought

15 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

16 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

17 In support of its action, the applicant relies on two grounds, alleging, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 and, second, infringement of Article 8(1) of that regulation.

The first plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009

18 The applicant submits that, before the Opposition Division, it did not request the opposing party to furnish proof of genuine use of the earlier mark because it was already involved in a dispute with the opposing party, begun in 1996, and that dispute was in the process of being settled. It was only after realising that those settlement proceedings would not come to anything that the applicant decided, before the Board of Appeal, to present its request for proof of genuine use of the earlier mark by the opposing party.

19 Pursuant to Article 42(2) and (3) of Regulation No 207/2009, only when the applicant has so requested will the proprietor of an earlier trade mark who has given notice of opposition be called upon to furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier trade mark has been put to genuine use in the territory in which it is protected in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-�use.

20 According to Article 132(1) of Regulation No 207/2009, the Opposition Division is to be responsible for taking decisions on an opposition to an application to register a Community trade mark. It is consequently also responsible for adjudicating at first instance on a request for proof of genuine use submitted pursuant to Article 42(2) or (3) of Regulation No 207/2009.

21 Under Rule 22(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, such a request is to be admissible only if it is submitted within the period specified, pursuant to Rule 20(2) of Regulation No 2868/95, by OHIM to the trade mark applicant, for him to file his observations on the submission of the opposing party.

22 There is no need to consider, in the present case, whether, and in what circumstances, the Opposition Division may take into account a request for proof of use of the earlier mark relied on in opposition, presented to it after the expiry of the period referred to above, since it is apparent from the case-law that, in any event, such a request may not be made for the first time before the Board of Appeal (see, to that effect, Case T-�364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II-�757, paragraph 41, and Case T-�425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II-�4265, paragraphs 109 and 114).

23 According to that case-law, the request for proof of genuine use of the earlier mark adds to the proceedings before the Opposition Division the specific preliminary issue of genuine use of the earlier mark and in that sense changes the content of the opposition. It is for the Opposition Division to rule at first instance on the opposition, as defined by the various procedural acts and requests of the parties, including, where appropriate, a request for proof of genuine use of the earlier mark. The Board of Appeal has jurisdiction only to rule on appeals against decisions of the Opposition Divisions, not to give a ruling itself at first instance on a new opposition. To allow the contrary would mean the Board of Appeal examining a very specific request, linked to new legal and factual considerations and going outside the framework of the opposition proceedings, as submitted before and dealt with by the Opposition Division (see, to that effect, PAM PLUVIAL, paragraph 22 above, paragraphs 37 to 39, and AMS Advanced Medical Services, paragraph 22 above, paragraphs 111 to 113).

24 Since it is not disputed, in the present case, that the applicant submitted the request for proof of genuine use of the earlier mark for the first time before the Board of Appeal, the Board of Appeal was therefore justified, as OHIM argues, in holding that request to be inadmissible.

25 The grounds relied on by the applicant, based on the existence of on-going dispute settlement proceedings, do not, as the Board of Appeal correctly found, affect that conclusion.

26 Even if, by that reasoning, the applicant seeks to argue that, in spite of all due care required by the circumstances having been taken, it was unable to comply with the time-limit for submitting a request for proof of genuine use of the earlier mark before the Opposition Division, it must be observed that, in such a situation, the applicant should have applied before the Opposition Division for restitutio in integrum, in accordance with Article 81 of Regulation No 207/2009. It would not, however, be entitled to request proof of genuine use of the earlier mark for the first time before the Board of Appeal.

27 The first plea in law must therefore be rejected as unfounded.

The second plea in law, alleging infringement of Article 8(1) of Regulation No 207/2009

28 The applicant claims that the goods covered by the mark applied for and those covered by the earlier mark are neither identical nor similar and that there cannot be any likelihood of confusion. Although the goods covered by the two marks at issue may be distributed through the same channels, they are not directed at the same relevant public. The former are directed at dairy farmers and the latter at cattle breeders.

29 In that connection, the applicant submits that the Board of Appeal mistranslated the Spanish ‘maquinaria agrícola ganadera’, which describes the goods covered by the earlier mark, as ‘cattle machinery in general’ when it should have been ‘cattle breeding machinery’. According to excerpts from the interinstitutional terminology database of the European Union (IATE), submitted by the applicant before the Board of Appeal, the Spanish ‘zona ganadera’ or ‘region ganadera’ can be translated as ‘cattle breeding area’, and ‘explotación ganadera’ as ‘breeding farm’. Consequently, the earlier mark covers only the goods ‘cattle breeding agricultural machines’.

30 The opposing party, furthermore, used the same terms to refer to the goods covered by the earlier mark, in a supplementary statement dated 2 December 2005, annexed to the notice of opposition.

31 The applicant adds that the ‘milking machines and fittings; automatic milking devices’ covered by the trade mark application are not identical to the goods covered by the earlier mark, which are also not similar to the ‘washing machines for milking machines’ also covered by the trade mark application.

32 According to the applicant, cattle breeding involves the controlled reproduction and rearing of cattle and cattle breeding machines are designed to assist in those areas. Cattle breeding also covers processing cattle into food or leather products and therefore involves the production and sale of livestock. That activity does not, however, require the use of milking machines, which are used for milk production. Such production involves the use of livestock that may be the product of cattle breeding, but it is unlikely that dairy farmers who produce on a large scale, who would require the goods covered by the mark applied for, are also breeding cattle, since setting up a suitable infrastructure for that activity would necessitate considerable additional expenditure. Conversely, it is unlikely, for the same reason, that cattle breeders would be interested in goods used for milk production such as those covered by the mark applied for.

33 Article 8(1)(a) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.

34 Furthermore, Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to an 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.

35 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-�linked undertakings constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T-�162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-�2821, paragraphs 30 to 33 and the case-law cited).

36 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-�316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

37 In the present case, it is not disputed that the signs at issue are identical, as the Board of Appeal correctly held.

38 With regard to comparison of the goods, it should be recalled that, according to settled case-law, when assessing the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those features include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-�2579, paragraph 37 and the case-law cited).

39 It is also apparent from the case-law that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are regarded as identical (see Case T-346/04, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-�4891, paragraph 34 and the case-law cited).

40 Furthermore, complementary goods are those which are closely connected in the sense that one is essential or significant for using the other so that consumers may think that the same company is responsible for manufacturing those goods. By definition, goods intended for different publics cannot be complementary (see, to that effect, easyHotel, paragraph 36 above, paragraphs 57 and 58 and the case-�law cited).

41 In the present case, the Board of Appeal did not err, first of all, in translating the Spanish terms referring to the earlier mark, ‘maquinaria agrícola ganadera’, as ‘agricultural cattle machinery’ rather than ‘agricultural cattle-breeding machines’; second, in holding that the meaning of those terms was broad enough to include the ‘milking machines and fittings, automatic milking devices; washing machines for milking machines’ covered by the mark applied for; and, finally, in considering, in the event that ‘washing machines for milking machines’ are not regarded as included in the goods covered by the earlier mark, that those machines and the goods covered by the earlier mark are, nevertheless, similar, since ‘washing machines for milking machines’ are complementary to ‘milking machines’, are aimed at the same consumer, follow the same lines of trade and have the same origin and point of sale.

42 In that connection, first, as regards the alleged mistranslation invoked by the applicant, it should be noted that the Board of Appeal based its finding, in paragraph 21 of the contested decision, that the Spanish ‘maquinaria agrícola ganadera’ means ‘agricultural cattle machinery’, on the definition of the Spanish adjective ‘ganadero(a)’ in the Spanish dictionary Vox Diccionario Avanzado Lengua Española. That dictionary states that the adjective in question means ‘relativo al ganado’, which, according to the Board of Appeal (paragraph 21 of the contested decision), translates as ‘relating to domesticated animals such as cattle’. The applicant does not assert that the Board of Appeal misinterpreted the definition given in that dictionary, nor has it put forward another dictionary that supports its own translation of that adjective.

43 That finding by the Board of Appeal is not affected by the excerpts from the IATE database submitted by the applicant. The applicant claims in its application that according to those excerpts the use of the word ‘ganadera’ is not ‘restricted to the meaning of “cattle” as an adjective, but moreover also can be used conceptually to depict “cattle breeding”’. It is thus apparent from that statement that the Spanish adjective in question can also have a wider meaning than that argued by the applicant.

44 The excerpts in question support that conclusion, as they show, inter alia, that the Spanish ‘explotación ganadera’ can be translated into English as ‘cattle farm’, and thus that the Spanish ‘ganadera’ does not refer only to cattle breeding.

45 Nor are the above findings affected by the mere fact that the opposing party, in a written statement in English to the Opposition Division, itself used the terms ‘cattle breeding agricultural machines’ to refer to the goods covered by the earlier mark. The Board of Appeal was entitled to base its decision on its own perception of the goods covered by the Spanish terms used in the registration of the earlier mark and hence to choose the most appropriate translation of those terms into English, and it was in no way bound by the words used by the parties themselves.

46 The Board of Appeal was therefore entitled to find that the goods covered by the earlier mark were ‘agricultural cattle machinery’.

47 Second, as OHIM submits and as the Board of Appeal held in paragraph 22 of the contested decision, the heading ‘agricultural cattle machinery’ is broad enough to include the ‘milking machines and fittings, automatic milking devices; washing machines for milking machines’ referred to in the Community trade mark application.

48 The goods covered by the mark applied for are thus included amongst those covered by the earlier mark and the Board of Appeal was therefore correct in finding that the goods are identical and in deciding, consequently, to uphold the Opposition Division’s decision, which had allowed the opposition and refused the applicant’s registration application.

49 It should be noted that the Board of Appeal’s statement, in paragraph 23 of the contested decision, that there was a risk of confusion on the part of the relevant consumers, was superfluous. It is apparent from the scheme of Article 8(1) of Regulation No 207/2009 that the circumstances envisaged in subparagraph (b) of that provision do not include the situation already covered by subparagraph (a). Therefore, since the marks at issue are identical and cover identical goods, the trade mark application had to be rejected pursuant to Article 8(1)(a) of Regulation No 207/2009, and there was no need to consider whether there was a likelihood of confusion, within the meaning of Article 8(1)(b).

50 It would have been necessary to consider whether there existed a likelihood of confusion only in the event, considered by the Board of Appeal in the alternative, that the goods covered by the mark applied for, namely ‘washing machines for milking machines’, were not included in the goods covered by the earlier mark.

51 As regards, specifically, that situation, it should be borne in mind that the applicant does not dispute that ‘washing machines for milking machines’ are complementary to ‘milking machines’ and are intended for the same consumer, namely dairy farmers.

52 The applicant concedes, moreover, (see paragraph 28 above) that the goods covered by the mark applied for, whether ‘milking machines’ or ‘washing machines for milking machines’, and those covered by the earlier mark may be distributed through the same channels. That fact is likely to facilitate the perception by the relevant consumer of the close connections between those goods and strengthen the impression that the same undertaking is responsible for the production of those goods (see, to that effect, PiraÑAM diseño original Juan Bolaños, paragraph 38 above, paragraph 50).

53 Consequently, the relevant consumers may perceive there to be a close connection between ‘washing machines for milking machines’ and ‘milking machines’, and also ‘agricultural cattle machinery’, and so may be led to believe that the same undertaking is responsible for the production of those goods.

54 Furthermore, whilst the applicant disputes the contention that the goods covered by the earlier mark and those covered by the mark applied for may be intended for the same consumers, since, according to the applicant, the former are used by cattle breeders and the latter by dairy farmers, it should be observed that the applicant does not submit any evidence to show that consumers in the relevant farming communities of Spain could not be interested in both categories of goods. The applicant simply claims, without even substantiating its arguments, that it is unlikely that dairy farmers who produce on a large scale would need the goods covered by the earlier mark, or, conversely, that cattle breeders who breed on a large scale would need the goods covered by the mark applied for, allegedly because setting up a suitable infrastructure for the supplementary activity of either cattle breeding or dairy farming, as the case may be, would necessitate considerable additional expenditure.

55 That argument does not, however, make it possible to rule out the situations in which a dairy farmer who also breeds cattle or, conversely, a cattle breeder whose cattle, or some of whose cattle, produce milk could be interested by both the goods covered by the mark applied for and those covered by the earlier mark.

56 Furthermore, it should be recalled that, as regards the likelihood of confusion, a low degree of similarity between the goods or services at issue may be offset by a high degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-�81/03, T-�82/03 and T-�103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).

57 In the present case, the Board of Appeal was therefore correct in finding, as regards the alternative situation described in paragraph 50 above, that there was a likelihood of confusion, since the fact that the marks at issue are identical will, in any event, offset the allegedly low degree of similarity between the goods.

58 It follows from all the foregoing considerations that the second plea is not well founded and must be rejected and that the action must be dismissed in its entirety.

Costs

59 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1. Dismisses the action;

2. Orders Flaco-Geräte GmbH to pay the costs.

Czúcz

Labucka

Gratsias

Delivered in open court in Luxembourg on 11 May 2011.

[Signatures]

* Language of the case: English.