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

JUDGMENT OF THE GENERAL COURT (Seventh Chamber, Extended Composition)

2 July 2015 (*)

(Community trade mark — Opposition proceedings — Application for Community word mark ALEX — National word and figurative marks ALEX — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Admissibility of the appeal before the Board of Appeal — Obligation to state reasons — Article 75 of Regulation No 207/2009 — No similarity between the goods and services covered by the marks at issue — No likelihood of confusion)

In Case T‑657/13,

BH Stores BV, established in Curaçao (autonomous entity of the Netherlands), represented by T. Dolde, lawyer, and M. Hawkins, Solicitor,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Alex Toys LLC, established in Wilmington, Delaware (United States), represented by G. Macías Bonilla, P. López Ronda, G. Marín Raigal and E. Armero, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 September 2013 (Case R 1950/2012-2), relating to opposition proceedings between BH Stores BV and Alex Toys LLC,

THE GENERAL COURT (Seventh Chamber, Extended Composition),

composed of M. Jaeger, President, M. van der Woude (Rapporteur), M. Kancheva, C. Wetter and I. Ulloa Rubio, Judges,

Registrar: J. Plingers, Administrator,

having regard to the application lodged at the Registry of the General Court on 11 December 2013,

having regard to the response of OHIM lodged at the Court Registry on 2 April 2014,

having regard to the response of the intervener lodged at the Court Registry on 21 March 2014,

having regard to the fact that the matter has been assigned to the Seventh Chamber, Extended Composition, of the Court,

having regard to the fact that one of the members of the Chamber was unable to sit, and having regard to the decision of the President of the Court to designate himself, pursuant to Article 32(3) of the Rules of Procedure of the General Court of 2 May 1991, to complete the Chamber,

further to the hearing on 10 March 2015,

gives the following

Judgment

1        On 27 December 2007, Panline U.S.A. Inc. (which was replaced by the intervener, Alex Toys LLC, after the assignment of the Community trade mark application, on 21 May 2013) 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 mark for which registration was sought is the word mark ALEX.

3        The goods in respect of which registration was sought are in Classes 16, 20 and 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, and correspond, for each of those classes, to the following description:

–        Class 16: ‘Rubber stamps and stamp pads; stencil boxes; rulers; pop-up birthday cards; felt tip markers; children’s paint sets containing finger paint, poster paint, water colours, paint brushes, paint cups, and kids’ aprons; board erasers; chalk; wax and plastic crayons; glues for stationary or household use; kids’ scissors; coloured pencils; origami paper; drawing pads; colour and cut books; colouring books; and children’s activity books’;

–        Class 20: ‘Children’s furniture’;

–        Class 28: ‘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, love-beads 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 plastic numbers and letters); paper craft hobby kits; masquerade party kits; watch and watch band making kits; kids’ aprons sold as part of arts and crafts kits; children’s bath toys; and children’s educational and developmental activity toys’.

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

5        On 26 August 2008, Arcandor Akt (which, after a subsequent transfer, was replaced by the applicant, BH Stores BV) filed a notice of opposition under Article 42 of Regulation No 40/94 as amended (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier trade marks:

–        the German word mark ALEX, filed on 2 September 1982, registered on 3 June 1983, and renewed on 3 September 2002 and 1 October 2012, under No 1049274, covering ‘sporting articles’ in Class 28;

–        the German word mark ALEX, filed on 5 July 1990, registered on 15 January 1992 and renewed on 1 August 2010, under No DD 648968, covering ‘towels, namely hand towels, bath towels, washcloths, guest towels’ in Class 24 and ‘sporting articles’ in Class 28;

–        the German figurative mark, filed on 4 May 1999, registered on 2 August 1999 and renewed on 1 June 2009 under No 39925705, covering ‘bicycles’ in Class 12, ‘bags, rucksacks, travelling bags and suitcases’ in Class 18 and ‘sporting articles’ in Class 28, reproduced below:

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

8        On 7 June 2011, the applicant submitted evidence of use of the earlier trade marks.

9        On 16 May 2012, the intervener restricted the list of goods in Class 28, by adding, after the list of those goods, the following entry:

–        Class 28: ‘… children’s bath toys; and children’s educational and developmental activity toys; none of the aforementioned goods including sporting articles’.

10      On 3 October 2012, the Opposition Division rejected the opposition in its entirety.

11      On 22 October 2012, the applicant filed an appeal against the decision of the Opposition Division under Articles 58 to 64 of Regulation No 207/2009.

12      By decision of 16 September 2013 (‘the contested decision’), the Second Board of Appeal of OHIM confirmed the decision of the Opposition Division. The Board of Appeal stated that it was confining its review to the ground of opposition under Article 8(1)(b) of Regulation No 207/2009, as the applicant no longer argued on the basis of Article 8(5) of that regulation. It also stated that the applicant did not dispute that the earlier trade marks had only been put to use on ‘sporting articles’, and that the opposition was restricted to ‘children’s bath toys’ and to ‘children’s educational and developmental activity toys’ in Class 28. The Board of Appeal considered that the relevant public comprised members of the general public in Germany. It stated that there was no dispute that, with respect to the earlier word marks, the marks at issue were identical, and that with respect to the earlier figurative mark, the marks at issue were similar. The Board of Appeal held, by reference to the judgment of 4 June 2013 in i-content v OHIM — Decathlon (BETWIN), T‑514/11, ECR (Extracts), EU:T:2013:291, paragraphs 34 to 39, that ‘sporting articles’ and ‘children’s bath toys; and children’s educational and developmental activity toys’ were dissimilar goods and, accordingly, there could be no likelihood of confusion since an indispensable condition for the application of Article 8(1)(b) of Regulation No 207/2009, namely identity or similarity of the goods, was not met.

 Forms of order sought by the parties

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs, including those incurred in the proceedings before the Opposition Division and the Second Board of Appeal of OHIM.

14      OHIM and the intervener contend that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs incurred by OHIM and the intervener, including those incurred by the intervener in the opposition and appeal proceedings before OHIM.

15      At the hearing, following a question put by the Court, the intervener indicated that it was applying to the Court, primarily, to annul the contested decision in that it declared the applicant’s appeal before the Board of Appeal to be admissible, and in the alternative, to dismiss the action and to uphold the contested decision should the Court confirm the admissibility of the appeal before the Board of Appeal.

 Law

 Admissibility of the appeal before the Board of Appeal

16      The intervener submits that the appeal brought before the Board of Appeal was inadmissible because of the failure to observe the time-limit of four months from the date of notification of the decision for submitting the statement of the grounds of the appeal, laid down in Article 60 of Regulation No 207/2009. It asserts that the decision of the Opposition Division was notified to the applicant on 3 October 2012 and that the applicant filed the grounds of its appeal on 7 February 2013, after expiry of the prescribed period, a period which, according to the intervener, expired on 4 February 2013 (3 February 2013 being a Sunday). It also submits that that irregularity was not addressed in the contested decision.

17      First, it must be observed that the question of the admissibility of the appeal was not overlooked by the Board of Appeal given that it stated, in paragraph 17 of the contested decision, that the appeal complied with Articles 58, 59 and 60 of Regulation No 207/2009 and Rule 48(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), and that it was therefore admissible.

18      Secondly, with regard to the question whether the statement of grounds of 7 February 2013 was lodged within the period prescribed by Article 60 of Regulation No 207/2009, reference must be made in the present case to Article 7(4) of Decision No EX-11-3 of the President of [OHIM] of 18 April 2011 concerning electronic communication with and by [OHIM] which was applicable at the time the decision of the Opposition Division was given. That provision reads as follows:

‘Without prejudice to accurate establishing the date of notification, notification shall be deemed to have taken place on the fifth calendar day following the day on which the document was created by [OHIM’s] systems. The date of creation of the document shall be indicated in the document. The document will be placed in the MAILBOX as early as possible before the end of this five-day period.’

19      The applicant and OHIM submit that, in the present case, the date on which the decision of the Opposition Division was created by OHIM’s systems was 3 October 2012 and that therefore notification of the decision of the Opposition Division is deemed to have been effected five days later, that is to say 8 October 2012.

20      In that regard, it must be stated that the date of the decision of the Opposition Division is 3 October 2012, and therefore the creation of the document by OHIM’s systems under Article 7(4) of Decision No EX-11-3 could not have taken place before then.

21      Under Article 70(1) and (2) of Regulation No 2868/95, read in conjunction with the last sentence of Article 60 of Regulation No 207/2009, in the present case the time-limit for lodging a statement of grounds of appeal accordingly expired on 8 February 2013 at the earliest.

22      Therefore the statement of grounds of 7 February 2013 was lodged within the required time-limit and the Board of Appeal was right to declare the applicant’s appeal admissible.

23      It is clear from the foregoing that the intervener’s plea alleging the inadmissibility of the appeal before the Board of Appeal must be rejected.

 Admissibility of evidence submitted for the first time before the Court

24      The intervener submits that the Court must not consider the applicant’s new evidence given that that evidence is submitted for the first time in the present proceedings, and that its content cannot alter the reasoning and conclusions stated in the contested decision.

25      Annexes 14 to 18 to the application, taken from internet sites and produced for the first time before the Court, extracts of which are included in the body of the application, may not be taken into consideration. The purpose of actions before the Court is to secure review of the legality of decisions of the OHIM Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, the role of the Court is not to re-evaluate the factual circumstances in the light of evidence which has been produced for the first time before it. The abovementioned documents must therefore be disregarded, and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited). The same applies to Annex 9 to the statement in intervention.

26      Annexes 13 and 19 to the application, although produced for the first time before the Court, are not strictly evidence but relate to OHIM’s usual practice in reaching decisions and to the case-law of the EU judicature to which a party has the right to refer, even after the procedure before OHIM is complete (see, to that effect, judgment in ARTHUR ET FELICIE, cited in paragraph 25 above, EU:T:2005:420, paragraph 20, and judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraph 16). Neither the parties nor the Court itself can be precluded from drawing on EU, national or international case-law for the purposes of interpreting EU law. That possibility of referring to EU, national or international judgments is not covered by the case-law holding that the purpose of bringing an action before the Court is to secure review of the legality of the decisions of the Boards of Appeal in the light of the evidence presented by the parties before them, since it is not alleged that the Board of Appeal failed to take into account the facts of a specific judgment handed down by the EU judicature or by a specific national or international court, but rather reliance is placed on judgments in support of a plea alleging that the Board of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, judgment of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, ECR, EU:T:2006:202, paragraphs 70 and 71).

 Substance

27      In support of its action, the applicant puts forward two pleas in law alleging, first, infringement of the obligation to state reasons, provided for in Article 75 of Regulation No 207/2009 and, second, infringement of Article 8(1)(b) of that regulation.

 The plea in law alleging infringement of Article 75 of Regulation No 207/2009

28      By its first plea in law, the applicant claims that the Board of Appeal infringed its obligation to state reasons in that, instead of examining the facts and arguments put forward by the parties in the opposition and appeal proceedings and setting out the decisive facts and legal considerations for the contested decision, it merely referred to the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), by partly copying paragraphs 36 to 38 of that judgment, and concluded that the goods at issue were dissimilar, without examining whether the facts and the reasoning underlying that judgment were also applicable to the present case.

29      The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM must state the reasons on which they are based. It is settled case-law that this obligation to state reasons has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required under that provision must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The duty to state the reasons on which decisions of OHIM are based has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision (judgments of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 64 and 65, and 28 November 2013 in Herbacin cosmetic v OHIM — Laboratoire Garnier (HERBA SHINE), T‑34/12, EU:T:2013:618, paragraph 42).

30      It is apparent from the case-law that the question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgment of 26 October 2011 in Bayerische Asphaltmischwerke v OHIM — Koninklijke BAM Groep (bam), T‑426/09, EU:T:2011:633, paragraph 74 and the case-law cited).

31      It is settled case-law that the Boards of Appeal are not required to provide an account which follows exhaustively and point by point all the arguments put forward by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 55 and the case-law cited). It is sufficient if the Boards of Appeal set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 30 June 2010 in Matratzen Concord v OHIM — Barranco Schnitzler (MATRATZEN CONCORD), T‑351/08, EU:T:2010:263, paragraph 18 and the case-law cited).

32      In the present case, it is clear from paragraph 25 of the contested decision that, in the first place, the Board of Appeal considered that the finding in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), that there is no similarity between ‘sporting articles’ and ‘toys, games and playthings’ was applicable ‘by extension’ to the goods at issue in the present case, that is to say ‘sporting articles’, ‘children’s bath toys’ and ‘children’s educational and developmental activity toys’.

33      In the second place, the Board of Appeal drew on the reasoning in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), by stating, in paragraph 25 of the contested decision, that it considered them to be relevant for conclusively rebutting the arguments put forward by the opponent in the present case.

34      In paragraph 26 of the contested decision, the Board of Appeal observed that, even if a link could be established between ‘sporting articles’, on the one hand, and certain toys on the other (for example, ‘children’s bath toys’ and ‘children’s educational and developmental activity toys’) in so far as certain ‘sporting articles’ can be used as toys and certain toys can also be ‘sporting articles’, such an assumption does not undermine the fact that the intended purpose of those two categories of goods is essentially different, that is to say to train the body through physical exercise for ‘sporting articles’, to amuse small children for ‘children’s bath toys’ and to amuse and educate children for ‘children’s educational and developmental activity toys’.

35      Furthermore, the Board of Appeal stated in paragraph 27 of the contested decision that, although it is possible that ‘sporting articles’ may be aimed at children in the form of toys or be produced as complementary products for games so that they can be produced by the same undertakings and offered through the same distribution channels, they are categories of goods which are generally manufactured by specialist undertakings and are sold in specialist stores, or, in the case of large retail stores, are sold in specialist departments which, even though they may be close, are none the less separate.

36      It is clear from the foregoing that, contrary to what the applicant claims, the relevant facts and the legal considerations having decisive importance in the context of the contested decision are clearly set out in the contested decision and that they inform the applicant of the justification for the contested decision so that it can protect its rights and enable the EU judicature to exercise its power to review the legality of the decision.

37      Moreover, there is nothing in principle to prevent 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. Thus, although it is true that the Board of Appeal drew heavily on paragraphs 36 to 38 of the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), it nevertheless clearly identified the facts and reasoning underlying that judgment which, in its opinion, were applicable to the present case.

38      In the third place, the applicant’s other arguments likewise do not allow the conclusion to be drawn that the contested decision infringes the first sentence of Article 75 of Regulation No 207/2009.

39      First of all, the applicant claims that in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), the Court had criticised the lack of evidence to support the reasoning of the contested decision, which is not the case here.

40      It must be pointed out that the question whether the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), is applicable in the present case falls within the examination of the second plea, that is to say the substantive examination of the lawfulness of the contested decision, and not the examination of the reasons for the contested decision.

41      Next, the applicant claims, in essence, that the Board of Appeal breached its obligation to take into consideration the parties’ arguments relating to OHIM’s earlier decisions and to set out reasons for its decision with regard to that decision-making practice. It also criticises the failure to take into account the judgment of 16 September 2013 in Knut IP Management v OHIM — Zoologischer Garten Berlin (KNUT — DER EISBÄR), T‑250/10 (‘the judgment in KNUT’), EU:T:2013:448.

42      In that regard, according to settled case-law, the decisions which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions 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 of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraphs 64 and 65, and judgment in ARTHUR ET FELICIE, cited in paragraph 25 above, EU:T:2005:420, paragraph 71).

43      In the present case, in the light of the case-law cited in paragraphs 31 and 42 above, and given that the Board of Appeal sufficiently set out the facts and the legal considerations having decisive importance in the context of the contested decision, it was not required to give specific reasons in order to justify its decision relating to OHIM’s earlier decisions cited in the parties’ written pleadings or relating to EU case-law.

44      In addition, with regard specifically to the argument relating to the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), it must be observed that, assuming that the Board of Appeal could have read that judgment in good time, it cannot be required to comment on every judgment of the EU judicature, bearing in mind, in particular, the fact that it expressed a clear view in favour of the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), which concerns the same subject-matter as the present case.

45      The applicant’s first plea in law must therefore be rejected.

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

46      According to the applicant, the Board of Appeal was wrong to conclude that there was no similarity between the goods concerned and that there was no likelihood of confusion.

47      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 the earlier trade mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, Article 8(2)(a)(ii) of Regulation No 207/2009 provides that ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

48      According to settled case-law, the risk that the public may 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

49      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, in order to refuse to register a Community trade mark, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM –– Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

50      In the present case, the Board of Appeal found that the relevant public comprised members of the general public in Germany, the Member State where the earlier marks are protected, a fact not contested by the parties.

51      Similarly, there is no dispute that, with respect to the earlier word marks, the marks at issue are identical and that, with respect to the earlier figurative mark, the marks at issue are similar.

52      The Court endorses those findings of the Board of Appeal.

–       Comparison of the goods

53      According to settled case-law, in order to assess the similarity of the goods or services concerned, all of the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

54      In the present case, it is necessary to compare ‘children’s bath toys’ and ‘children’s educational and developmental activity toys’, covered by the mark applied for, with ‘sporting articles’, covered by the earlier marks.

55      Before dealing with the main arguments, it must be noted that, in general, the applicant criticises the Board of Appeal for failing to identify the goods coming within the category of ‘children’s bath toys’ and ‘children’s [educational and developmental] activity toys’. It need only be noted in that regard that it is clear from the case-law that, since particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on the marketing intentions, whether given effect or not, and by their very nature subjective, of the proprietors of the marks (see judgments of 15 March 2007 in T.I.M.E. ART v OHIM, C‑171/06 P, EU:C:2007:171, paragraph 59, and 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 63). The Board of Appeal was therefore not required to identify the specific goods covered by the mark applied for, since they might vary.

56      Primarily, the applicant raises four categories of arguments to demonstrate that the goods at issue are similar: their nature, their intended purpose, their manufacture and distribution channels, and OHIM’s decision-making practice.

57      In the first place, with regard to the nature of the goods, the applicant claims that ‘sporting articles’, covered by the earlier marks, and ‘children’s bath toys’ and ‘children’s educational and developmental activity toys’, covered by the mark applied for, are of the same nature, for they often have the same composition (leather, plastic, wood or metal), their use is the same, for they require physical force, and they have the same solid physical form. Relying on the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), the applicant also claims that many ‘sporting articles’ are offered in a simplified form and a reduced size as activity toys for children, so that it is often difficult to distinguish between ‘sporting articles’ and activity toys (see, to that effect, judgment in KNUT, cited in paragraph 41 above, EU:T:2013:448, paragraph 47).

58      First, in relation to the applicant’s argument concerning the composition of the goods at issue and the evidence it presented in that regard before OHIM, it must be observed that the fact that the ‘sporting articles’ covered by the earlier marks and toys covered by the mark applied for may be composed of the same materials, which are after all extremely varied, is not in itself sufficient to establish that the goods are similar, given the wide variety of goods which can be made of leather, plastic, wood or metal. The same material can be used to manufacture a wide range of totally different goods.

59      Secondly, contrary to what the applicant claims, 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’. In the present case, ‘children’s educational and developmental activity toys’, as the title indicates, 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 in accordance with Directive 2009/48/EC of the European Parliament and of the Council of 18 June 2009 on the safety of toys (OJ 2009 L 170, p. 1) and a generally lower price. A mini golf set, to take an example of goods covered by the mark applied for and cited by the applicant, will be adapted to the size of children, and the clubs will lack the precision of real golf clubs and will be made of light plastic. That reasoning applies a fortiori to ‘children’s bath toys’ which have no ‘sporting’ equivalent.

60      Thirdly, with regard to the arguments that the goods at issue have the same method of use, using physical power, and share the same physical condition, such facts are not significant in the present case, since that is the case for many products which have a primary purpose that is entirely separate from a sport (manual tools, cleaning and construction instruments, etc.).

61      In the light of the foregoing, it must be found that the toys covered by the mark applied for have a different nature from that of the ‘sporting articles’ covered by the earlier marks.

62      In the second place, with regard to the intended purpose of the goods covered by the marks at issue, the applicant claims that it is identical in that the goods are all created for physical exercise and diversion. In particular, it claims that, as can be seen from the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), there is a ‘fluid transition’ between ‘sporting articles’, on the one hand, and games, on the other, inasmuch as it is common knowledge that some ‘sporting articles’ can be used for games and some games can also be used in the same way as ‘sporting articles’ (judgment in KNUT, cited in paragraph 41 above, EU:T:2013:448, paragraph 47).

63      First, as is clear from the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), in principle there is no relationship of substitutability or complementarity between, on the one hand, ‘gymnastic and sports articles not included in other classes’ in Class 28 and, on the other, ‘toy dolls, games; toys; stuffed plush animals’ in the same class, in that the goods in question have a different purpose. While gymnastic and sports articles are intended specifically for physical fitness, the function of games, like toys, is in principle to entertain (judgment in KNUT, cited in paragraph 41 above, EU:T:2013:448, paragraphs 44 and 45).

64      The fact that one purpose (for example, physical exercise) does not exclude another purpose (for example, entertainment) and that both purposes may be ‘interconnected’ in a product, as the applicant submits, does not rule out the possibility of identifying a dominant, or in other words ‘primary’ purpose of a product. The intervener is thus right in submitting that the term ‘use’ means the generally intended use of the product and not any diverted or occasional use.

65      It follows 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.

66      Furthermore, it is clear from the case-law 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 (see, to that effect, judgment of 18 June 2008 in Coca-Cola v OHIM — San Polo (MEZZOPANE), T‑175/06, ECR, EU:T:2008:212, paragraph 66).

67      In the present case, in the contested decision, the Board of Appeal was right to consider that the goods in question had in essence a different purpose, by referring to paragraphs 35 and 36 of the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291).

68      It is clear from the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), that, even if it cannot be ruled out that, for certain ‘gymnastic and sporting articles’, on the one hand, and certain ‘toys, games and playthings’, on the other, a link can be made in so far as certain ‘sporting articles’ can be used for ‘games’ and certain ‘games’ can also be ‘sporting articles’, in the absence of precise information from OHIM adjudicating bodies as to the specific goods concerned and as regards the manner in which those goods might be affected, such an assumption does not call into question the fact that the intended purpose of those two categories of goods is essentially different. Even if, by their nature, those two categories of goods are meant to entertain the public, they also serve other purposes. ‘Gymnastic and sporting articles’ are intended to train the body through physical exercise, whereas ‘toys, games and playthings’ are intended first and foremost to entertain their users (judgment in BETWIN, cited in paragraph 12 above, EU:T:2013:291, paragraphs 35 and 36).

69      Even more evident than for the ‘toys, games and playthings’ concerned in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), ‘children’s educational and developmental activity toys’ are intended first and foremost to entertain their users, from the perspective of education (provision of a basic knowledge of words, letters and figures) and general development, which admittedly may include physical development, but not in a way that makes physical fitness their primary purpose. In that respect, the applicant claims that the term ‘children’s educational and developmental activity toys’ primarily entails a physical activity. However, not only can the term ‘activity’ also cover an intellectual activity, but the addition of the words ‘children’s educational and developmental’ accentuates the idea that the activity covered does not have a purely physical primary purpose, but rather a purpose that is specifically educational.

70      The Board of Appeal was therefore right in finding in paragraph 26 of the contested decision that ‘sporting articles’ are intended to train the body through physical exercise whereas ‘children’s educational and developmental activity toys’ are intended both to amuse and educate children.

71      The Board of Appeal was also right in finding in paragraph 26 of the contested decision that ‘children’s bath toys’ are ‘clearly only intended to amuse small children’. The purpose of pure amusement of ‘children’s bath toys’ is even more evident than for ‘children’s educational and developmental activity toys’.

72      Secondly, the goods covered by the marks at issue are not competing, contrary to what the applicant claims.

73      The applicant argues in particular that consumers can easily switch between goods of these kinds (it gives the example of balls or beach volleyball kits).

74      It is apparent from paragraphs 61, 70 and 71 above that, since the nature and intended purpose of the goods covered by the marks at issue are different, they are not interchangeable and are therefore not competing. In any event, although sometimes, depending on the circumstances, there may be some interchangeability between the goods at issue, this occurs only in one sense, that is to say only the consumers of some toys covered by the mark applied for are likely to resort to the corresponding ‘sporting articles’ covered by the earlier marks in the event of an increase in the price of those toys. It is clear that, even if the price of ‘sporting articles’ rose, consumers of ‘sporting articles’ would still not resort to those toys in order to replace genuine ‘sporting articles’.

75      Thirdly, the applicant is wrong to claim that, in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), the Court did not categorically rule out the possibility that the goods in question have a similar purpose, but merely declared that such a similarity could not be presumed ‘in the absence of precise information … as to the specific goods concerned and as regards the manner in which those goods might be affected’. In that regard, it must be observed that that clarification in paragraph 36 of the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), does not affect the scope of the assertion made in the same paragraph that ‘sporting articles’ and ‘toys, games and playthings’ essentially have a different intended purpose. In that way, the Court stated only that OHIM had not adduced evidence to the contrary. Furthermore, it is clear from paragraph 55 above that the prospective analysis of the likelihood of confusion between two marks must be carried out having regard to the description of the goods covered by the trade mark applications.

76      In any event, in the present case, the applicant adduced evidence before OHIM relating to the specific goods covered by the mark applied for (mini golf sets, ‘wow rackets’, ‘jungle croquet’, trampolines, frisbees, etc.). That evidence, contrary to what the applicant states, does not show that the goods covered by the marks at issue have the same purpose or are interchangeable, since it is clear that the children’s educational and developmental activity games of the intervener are aimed at young children which accentuates their purpose of educating and entertaining.

77      Fourthly, as regards the applicant’s argument that certain ‘sporting articles’ are first and foremost intended for ‘entertainment’ rather than ‘training the body through physical exercise’ (such as golf clubs, bowling, billiards, darts, frisbees), it must be held that it is in any event clear from paragraphs 57 to 61 above that their nature is different from that of the goods covered by the mark applied for. Moreover, it is not for OHIM to give a ruling for the entire general category of ‘sporting articles’ in relation to certain specified goods included in that category (see paragraphs 64 and 65 above).

78      Fifthly, the applicant claims that there is an obvious overlap in the consumers of the goods at issue, namely children, and that in addition, with respect to adults purchasing those goods for their children, the consumers who will ultimately be confused are identical.

79      That argument must be rejected as it is not sufficient in itself to establish a similarity between goods, since all goods which are aimed at the same consumers are not necessarily identical or similar.

80      In the third place, with regard to the manufacture and distribution channels of the goods covered by the marks at issue, it must be observed that, contrary to what the applicant claims, these are different.

81      The Board of Appeal was right in stating that the present case concerns categories of goods which are generally manufactured by specialist undertakings and are sold in specialist shops.

82      First, it must be observed, as in the judgment in BETWIN, cited in paragraph 12 above (EU:T:2013:291), that although it is possible that ‘sporting articles’, on the one hand, and ‘children’s bath toys’ and ‘children’s educational and developmental activity toys’, on the other, are produced by the same undertakings and offered through the same distribution channels, such phenomena are marginal and cannot, without other evidence in support, lead the Court to take the view that those two categories of goods share the same distribution channels (see, to that effect, judgment in BETWIN, cited in paragraph 12 above, EU:T:2013:291, paragraph 38).

83      Secondly, it must be pointed out that the fact that the goods in question may be sold in the same commercial establishments, such as department stores or supermarkets, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see judgment of 24 March 2010 in 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, EU:T:2010:115, paragraph 40 and the case-law cited).

84      Thirdly, the evidence provided by the applicant is not such as to reverse the conclusion of the contested decision. The applicant adduces the evidence put forward in Annex 4 to its statement of grounds of 7 February 2013 before the Board of Appeal to show that department stores in the United Kingdom and in Spain sell sporting articles and activity toys side by side.

85      First of all, with regard to general department stores like ‘Jarrold’ or ‘El Corte Ingles’, it is clear from the evidence that sporting articles are sold in the ‘fitness’ category while outdoor toys are sold in the ‘toys’ or ‘outdoor toys’ category, which, even though they may be close, are none the less two separate departments, as the Board of Appeal stated in paragraph 27 of the contested decision.

86      Next, it must be noted that, in any event, the relevant public is made up of members of the general public in Germany, and that consequently evidence relating to distributors located in other countries is only of very limited value, if at all, in the assessment of the similarity of the goods.

87      Finally, with regard to the applicant’s evidence submitted before OHIM to demonstrate that sports manufacturers, such as ‘Nike’ or ‘Adidas’, also manufacture activity toys, it must be held that those toys are not akin to educational and developmental activity toys, but rather to promotional articles, and that, in any event, those cases are marginal, since they concern only very well-known sports brands and cannot invalidate the finding that, as a general rule, the goods covered by the marks at issue are produced by separate, specialist undertakings.

88      In the fourth place, the applicant claims that the Board of Appeal failed to take into account OHIM’s consistent practice confirming that there is a similarity, at least tenuous, between ‘sporting articles’ and ‘toys, games and playthings’, or a decision of the German Federal Court referred to in the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), or indeed the judgment in KNUT itself and OHIM’s subsequent decisions.

89      As regards the argument concerning OHIM’s decision-making practice and the case-law of the European Union, it is clear from the case-law cited in paragraph 42 above that the legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice.

90      None the less, OHIM is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The principles of equal treatment and sound administration must however be reconciled with the principle of legality. Consequently, no party to proceedings before OHIM may rely, to his advantage and in order to secure an identical decision, on an unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case (see judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited).

91      In the present case, 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. It must be held that the decisions put forward by the applicant and those put forward by the intervener reveal only the existence of a not entirely consistent decision-making practice on the part of OHIM, contrary to what the applicant claims.

92      Furthermore, as regards the applicant’s argument that the national trade mark offices within the EU, and more specifically the German Federal Patents Court in ‘Case 32 W (pat) 6/01’, relied on in the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), regard those goods as similar, it must be pointed out that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and it applies independently of any national system (see judgment of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, ECR, EU:T:2000:283, paragraph 47). It is apparent from settled case-law that registrations already made in Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark (judgments of 16 February 2000 in Procter & Gamble v OHIM (Soap bar shape), T‑122/99, ECR, EU:T:2000:39, paragraph 61, and 19 September 2001 in Henkel v OHIM (Round tablet, red and white), T‑337/99, ECR, EU:T:2001:221, paragraph 58).

93      In addition, with regard to the reasoning based on the judgment in KNUT, cited in paragraph 41 above (EU:T:2013:448), it is apparent from paragraphs 59 and 65 above that it cannot be transposed to the present case.

94      Moreover, the applicant’s arguments relating to the restriction of the application for registration (see paragraph 9 above) must be rejected, given that it is no longer necessary, in view of the preceding analysis, to rule on the effect of that limitation on the similarity of the goods.

–       The likelihood of confusion

95      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 judgment of 22 January 2009 in Commercy v OHIM –– easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

96      The applicant claims that it is only when the goods are clearly and unambiguously dissimilar that one of the necessary conditions of Article 8(1)(b) of Regulation No 207/2009 is not met and the opposition is rejected without the similarity of the signs and the likelihood of confusion being evaluated. However, that is not the case here.

97      It must be held that in the contested decision it was rightly found that the goods at issue were different, thereby stating clearly that there was no similarity between them. Therefore, the Board of Appeal was fully entitled to find that there could be no likelihood of confusion, even taking into account the identity of the signs, since an essential condition for the application of Article 8(1)(b) of Regulation No 207/2009, that is to say the identity or similarity of the goods, was not met.

98      In view of all of those considerations, the second plea put forward by the applicant must be rejected as unfounded.

99      Since none of the pleas raised by the applicant in support of its claims is well founded, the action must be dismissed in its entirety.

 Costs

100    Under Article 134(1) of the Rules of Procedure of the General Court, 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 and the intervener.

101    The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before OHIM. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. That does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgment of 12 January 2006 in Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, ECR, EU:T:2006:10, paragraph 115).

On those grounds,

THE GENERAL COURT (Seventh Chamber, Extended Composition)

hereby:

1.      Dismisses the action;

2.      Orders BH Stores BV to pay the costs, including the costs necessarily incurred by Alex Toys LLC for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Delivered in open court in Luxembourg on 2 July 2015.

[Signatures]

* Language of the case: English.

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