Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

29 March 2012 (*)

(Community trade mark - Opposition proceedings - Application for Community word mark MERCATOR STUDIOS - Earlier national and international figurative marks Mercator and Mercator Slovenska košarica - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 - No injury to reputation - Article 8(5) of Regulation No 207/2009)

In Case T-417/09,

Poslovni Sistem Mercator d.d., established in Ljubljana (Slovenia), represented by J. Güell Serra and M. Curell Aguilà, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

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

Mercator Multihull, Inc., established in Vancouver (Canada),

ACTION brought against the decision of the First Board of Appeal of OHIM of 16 July 2009 (Case R 1031/2008-1), concerning opposition proceedings between Poslovni Sistem Mercator d.d. and Mercator Multihull, Inc.,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 16 October 2009,

having regard to the response lodged at the Court Registry on 28 January 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 General Court,

gives the following

Judgment

Background to the dispute

1 On 26 August 2004, Mercator Multihull, Inc. filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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 mark in respect of which registration was sought is the word sign MERCATOR STUDIOS.

3 The services in respect of which registration was sought are in Class 42 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 to 'supply of technical and mechanical research, design and development of motor vehicles, marine vessels, aeroplanes, trains, engines, machines and other industrial products in the field of transportation'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 20/2005 of 16 May 2005.

5 On 16 August 2005, the applicant, Poslovni Sistem Mercator d.d., filed a notice of opposition to registration of the mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).

6 The opposition was based on the following earlier rights:

- the Slovenian figurative mark filed on 20 January 1997, registered on 26 June 1997 under No 9 770 090 and renewed until 20 January 2017 for, inter alia, services in Class 42 including 'computer programming', reproduced below:

- the Slovenian figurative mark filed on 14 September 2000 and registered on 28 February 2001 under No 200 071 437 for goods in Classes 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, 13, 14, 16, 17, 18 and 20 to 34, reproduced below:

- the Slovenian figurative mark filed on 7 March 2003 and registered on 6 May 2004 under No 200 370 313 for goods and services in Classes 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, 13, 14, 16, 17, 18, 20 to 34, 39, 41, 43 and 44, reproduced below:

- the international figurative mark filed and registered on 28 February 2001 under No 752 846 for goods in Classes 1, 2, 3, 4, 5, 6, 8, 10, 11, 13, 14, 16, 17, 18 and 20 to 33, with effect in Italy and Austria, reproduced below:

- the international figurative mark filed and registered on 26 June 1997 under No 678 122 for, inter alia, services in Class 42 including 'computer programming', with effect in Italy and Austria, reproduced below:

7 The opposition was based on all of the goods and services covered by the earlier rights and was directed against the services covered by the mark applied for.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).

9 By decision dated 29 May 2008, the Opposition Division rejected the opposition. It held, inter alia, that, despite the similarity of the signs at issue, one of the conditions for applying Article 8(1)(b), namely the identity or similarity of the goods or services, was not met. It also held that the applicant had not proved that the use of the mark applied for in respect of the services covered would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

10 On 14 July 2008, the applicant filed an appeal with OHIM against the Opposition Division's decision.

11 By decision dated 16 July 2009 ('the contested decision'), the First Board of Appeal of OHIM dismissed the appeal. It held, inter alia, that since the service of 'computer programming' covered by the earlier Slovenian mark No 200 071 437 and the earlier international mark No 678 122 was different from the services covered by the mark applied for, one of the conditions for applying Article 8(1)(b) was not met. It also held that the applicant had not proved that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order OHIM to pay the costs.

13 OHIM contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

14 In support of its claim for annulment, the applicant relies on two pleas in law. The first plea alleges, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges, in essence, infringement of Article 8(5) of that regulation.

Plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009

15 The applicant criticises the part of the contested decision which finds that there is no similarity between the 'computer programming' covered by the earlier Slovenian mark No 9 770 090 and the earlier international mark No 678 122, on the one hand, and the 'supply of technical and mechanical research, design and development of motor vehicles, marine vessels, aeroplanes, trains, engines, machines and other industrial products in the field of transportation' covered by the mark applied for, on the other. It submits that, in view of the similarity of the signs at issue and the similarity of the services in question, there is a likelihood of confusion on the part of the relevant public.

16 OHIM disputes the applicant's arguments.

17 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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.

18 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services concerned and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and that 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).

19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two 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).

20 First, it should be stated that it is not disputed that the signs at issue are similar, as the Board of Appeal rightly found.

21 It must therefore be examined whether the Board of Appeal was right to find that there was no similarity between the services in question as mentioned in paragraph 15 above, with the result that one of the conditions for applying Article 8(1)(b) of Regulation No 207/2009 was not met. In that regard, it should be noted that, as is apparent from paragraph 11 above, the Board of Appeal mistakenly cites the earlier Slovenian mark No 200 071 437 instead of the earlier Slovenian mark No 9 770 090 in the contested decision.

22 According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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).

23 In the present case, as the Board of Appeal observed without being contradicted on that point by the applicant, the services in question are aimed only at professionals.

24 The Board of Appeal held that the service of 'computer programming' was different from the services covered by the mark applied for. According to the Board of Appeal, the service of 'computer programming' 'is the process of ... writing, testing, debugging/troubleshooting, and maintaining the source code of computer programs', whereas the services covered by the mark applied for did not involve the process of writing computer programs but dealt with the technical development of vehicles in the field of transportation. The Board of Appeal added that the mere fact that computers used to offer the services covered by the mark applied for needed to be programmed did not render the services in question similar, given that nearly all services involved the use of computers which needed to be programmed.

25 The applicant disputes that assessment by the Board of Appeal and claims, in essence, that the service of 'computer programming' covers the field of research, design and development of motor vehicles in the field of transportation. Next, it states that engines and industrial products in the field of transportation are all controlled by computer programs. That would therefore include aeroplanes, trains, vessels and cars. In that regard, the applicant states that the cars which it produces have on-board computers that manage the fuel injection and control the speed and all the other aspects of the vehicle (brakes, steering, tyre pressure ...), with the result that the design and development of engines and industrial products in the field of transportation involves the design and development of computer programs. According to the applicant, the services in question are therefore not only complementary but also similar.

26 First, it must be stated that the applicant is not challenging the Board of Appeal's finding that the service of 'computer programming' consists, inter alia, of the process of writing a source code, which is not involved in the services covered by the mark applied for.

27 Nor does the applicant refute the Opposition Division's finding - of which the analysis was appropriated by the Board of Appeal - that the services in question require entirely different expertise and are not, therefore, in competition with each other or complementary. The applicant merely states that, since it 'was never required to prove use of its earlier marks, it must be assumed that [the service of "computer programming" is being used] to the widest extent possible' and that, accordingly, 'it may well [cover] computer programming in the field of research, development and design of motor vehicles and transportation'. However, in doing so, the applicant does not challenge the Opposition Division's finding that the services covered by the mark applied for involve highly skilled professionals, specialised in the design and development of means of transport, whereas the goods and services covered by the earlier marks have no connection with vehicles in general, their design or their development.

28 It must also be stated that the applicant does not put forward the slightest argument seeking to dispute the Board of Appeal's assertion that the providers and users of the services in question are different. The applicant merely claims, in the written statement setting out the grounds of appeal before the Board of Appeal, that 'computer programming' and 'technical and mechanical research' services are often supplied by the same providers and intended for the same target public. However, first, the applicant has not produced any hard factual evidence to substantiate its claim. Second, it must be stated that the mark applied for does not cover 'technical and mechanical research', but 'technical and mechanical research, design and development of motor vehicles, marine vessels, aeroplanes, trains, engines, machines and other industrial products in the field of transportation' which, as the Opposition Division points out, is a sophisticated technical service, distinct from computer programming which relates to all areas of life and business activity.

29 It follows from the foregoing that the services covered by the mark applied for and the service of 'computer programming' covered by the earlier Slovenian mark No 9 770 090 and the earlier international mark No 678 122 cannot be considered similar.

30 That conclusion may not be called in question by the applicant's argument that the design and development of engines and industrial products are closely connected with computer programming, given that aeroplanes, trains, vessels and cars are mainly managed through computer programs.

31 It is true, as the Opposition Division itself acknowledges without being contradicted by the Board of Appeal, that computer programming may be used as a tool for the purposes of research, design and development of means of transport. However, that fact is not in itself sufficient to conclude that the services in question are similar. Since computer programming relates to all areas of life and business activity, as has already been mentioned in paragraph 28 above, it is very common, as the Board of Appeal rightly observes, for numerous services to involve the use of computers which must be programmed.

32 Accordingly, since one of the essential conditions for applying Article 8(1)(b) of Regulation No 207/2009, namely the identity or similarity of the services in question, has not been met, the Board of Appeal was right to conclude that there was no likelihood of confusion between the marks at issue.

33 The applicant's argument relating to the reputation of the earlier mark Mercator is not capable of undermining that conclusion.

34 Although it is settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24, and Case C-39/97 Canon [1998] ECR I-5507, paragraph 18), it should be emphasised that a likelihood of confusion presupposes that the goods and services at issue are identical or similar.

35 Accordingly, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be dismissed as unfounded.

Second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

36 The applicant submits, in essence, that it has produced evidence of the existence of a future risk, which is not hypothetical, that the applicant for the mark MERCATOR STUDIOS would take unfair advantage of, or cause detriment to, the distinctive character or the repute of the earlier marks.

37 OHIM disputes the applicant's arguments.

38 Under Article 8(5) of Regulation No 207/2009, '[f]urthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, 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 Community trade mark, the trade mark has a reputation in the Community and, 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.'

39 Therefore, in order for an earlier trade mark to be afforded the broader protection of Article 8(5) of Regulation No 207/2009, a number of conditions must be met. First, the earlier mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, the earlier mark must have a reputation. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, a failure to satisfy one of them will be sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM - Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35, and Case T-150/04 Mülhens v OHIM - Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraphs 54 and 55).

40 In addition, Article 8(5) of Regulation No 207/2009 must be interpreted as meaning that it may be relied on in support of an opposition lodged against an application for a Community trade mark covering goods and services which are not identical and not similar to those designated by the earlier mark as well as against an application for a Community trade mark designating goods which are identical or similar to those of the earlier mark (VIPS, paragraph 39 above, paragraph 33).

41 In the present case, it should be stated, first, that it is not disputed before the General Court that the earlier marks have gained a reputation in Slovenia in connection with the service in Class 35 of 'commercialisation of consumer goods'.

42 The Board of Appeal held, however, that the manner in which the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks had not been established. Since the Board of Appeal based its reasoning in the contested decision on the failure to satisfy the fourth of the conditions listed in paragraph 39 above, it is sufficient to examine whether that condition has been met in the present case.

43 It should be noted that that condition for applying Article 8(5) of Regulation No 207/2009 refers to three separate and alternate types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark or, thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark. The first type of risk referred to by that provision occurs where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. It refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk referred to is made out where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark's power of attraction is diminished. The third type of risk referred to is the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods may be made easier by that association with the earlier mark with a reputation. None the less, it should be emphasised that in none of those situations is the existence of a likelihood of confusion between the marks at issue required, since the relevant public simply has to be able to establish a link between them and does not necessarily have to confuse them (see VIPS, paragraph 39 above, paragraphs 36 to 42 and the case-law cited).

44 In the present case, the applicant submits, in essence, that there is sufficient evidence to conclude that the mark applied for will enable its proprietor to take unfair advantage of the distinctive character or the repute of the earlier marks, since there will be clear freeloading and exploitation of the famous mark Mercator. According to the applicant, it is clear from all the evidence filed that Mercator is a household name in Slovenia and that everyone associates it with the famous Mercator consumer goods retail stores. In addition, there is no doubt that, due to the large advertising and charity campaigns, together with the appearance of Mercator in the Slovenian media, everyone in Slovenia will mistakenly believe that the mark MERCATOR STUDIOS is linked with the owner of the famous Mercator retail stores.

45 It should be borne in mind that, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, he must, however, prove that there is a serious risk that such an injury will occur in the future (see, by analogy, Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraph 38).

46 In the present case, it must be stated that the applicant has not filed any evidence to establish that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

47 The applicant merely invokes the reputation of the earlier marks in Slovenia and infers therefrom that the Slovenian public is likely to associate the marks at issue. Even assuming that the public were to establish a direct link between the mark applied for and the earlier marks, the existence of such a link is not sufficient to establish that the registration of the mark applied for would be likely to enable its proprietor to take unfair advantage of, or cause detriment to, the distinctive character and the repute of the earlier marks (see, to that effect, the order of 30 April 2009 in Case C-136/08 P Japan Tobacco v OHIM, not published in the ECR, paragraph 38).

48 It follows that the Board of Appeal was right to hold that the conditions for applying Article 8(5) of Regulation No 207/2009 were not all met in the present case.

49 Accordingly, the second plea must be rejected as unfounded, and, consequently, the action must be dismissed in its entirety.

Costs

50 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to 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 (Sixth Chamber)

hereby:

1. Dismisses the action;

2. Orders Poslovni Sistem Mercator d.d. to pay the costs.

Delivered in open court in Luxembourg on 29 March 2012.

[Signatures]

* Language of the case: English.

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