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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

8 June 2022 (*)

(EU trade mark – Opposition proceedings – Application for the EU word mark HOLUX – Earlier international registration in respect of the word mark HOLUX – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(a) and (b) of Regulation (EU) 2017/1001)

In Case T‑738/20,

Deutschtec GmbH, established in Petershagen/Eggersdorf (Germany), represented by R. Arnade, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by R. Raponi and J. Ivanauskas, acting as Agents,

defendant,

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

Group A NV, established in Hasselt (Belgium),

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović (Rapporteur), President, F. Schalin and I. Nõmm, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure,

further to the hearing on 9 February 2022,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Deutschtec GmbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 October 2020 (Case R 223/2020-4) (‘the contested decision’).

 Background to the dispute

2        On 20 October 2017, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

3        Registration as a mark was sought for the word sign HOLUX.

4        The goods and services in respect of which registration was sought are in Classes 6, 7, 9, 19 and 37 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, in so far as is relevant with regard to the present action, to the following description:

–        Class 6: ‘Turnstiles, non-automatic [metal]; non-automatic metal turnstiles; metal doors; revolving doors of metal and glass, the vanes of which are in the form of swing doors; manually operated single or multi-component doors and gates, namely sliding doors, rotating doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, swing gates, folding gates, sliding gates, horizontal sliding walls of metal; door panels of metal; door handles; metal door frames; non-electric metal door locks, namely mechanical locks and keys for the aforesaid locks; hardware for buildings, namely door hinges, latchkeys, locks and countercasings, fittings for latchkeys, fittings for all-glass doors and glass panes, accessories for all-glass installations, namely locks and lock casings, strikes, handles, door knobs, grab bars, screw mountings, clamp fittings, connecting fittings, protective fittings; all the aforesaid goods being predominantly of metal; non-electric door locks of metal; rotating doors (automatic and electric); turnstiles (automatic and electric); rotating doors of metal (automatic and electric); turnstiles of metal (automatic and electric)’;

–        Class 7: ‘Electric drives (motors) for doors, in particular sliding doors, rotating doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, swing gates, folding gates, sliding gates, horizontal sliding wall doors, sliding revolving doors, swing doors; motorised drive mechanisms; automatic drives; door openers, electric; electromechanical and electrohydraulic drives included in class 7’;

–        Class 9: ‘Door locks (electric- ); electric and electronic parts for single or multi-component doors and gates; electric/electronic controllers and regulators for sliding doors, swing doors, revolving security doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, swing gates, folding gates and sliding gates; electric controllers for locks, windows and door drives; electric locks and keys for these locks’;

–        Class 19: ‘Doors, not of metal; glass doors of all kinds; automatic and manually operated glass partition walls; manually operated single or multi-component doors and gates, namely sliding doors, rotating doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, swing gates, folding gates, sliding gates, horizontal sliding walls, none of the aforesaid being of metal; door panels, not of metal; door casings, not of metal; rotating doors not of metal (automatic and electric); turnstiles not of metal (automatic and electric)’;

–        Class 37: ‘Repair and maintenance of doors, revolving doors, door frames, door locks and entrance areas’.

5        The trade mark application was published in European Union Trade Marks Bulletin No 2018/24 of 5 February 2018.

6        On 7 May 2018, Group A NV filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 4 above.

7        The opposition was based on, inter alia, the international registration designating France in respect of the word mark HOLUX, which was registered on 15 July 2013 under the number 1188827 in respect of the following goods and services:

–        Class 6: ‘Common metals and alloys thereof; metal building materials; transportable buildings of metal; window stops of metal, door bolts of metal and frames of metal; metal goods, especially metal doors and windows, aluminum doors and windows, metal shutters, guides for metal shutters, metal sun shades for outdoor use’;

–        Class 19: ‘Building materials, not of metal; non-metallic rigid pipes for building; non-metallic transportable buildings; construction materials of wood and wood derivatives; goods made of wood, in particular doors and windows, non-metal doors and windows; doors and windows made of PVC; window stops not of metal, door bolts not of metal, door frames not of metal; dome-shaped skylights (not made of metal)’;

–        Class 37: ‘Construction; repairs; general building contractor services; installation services; insulation services (building); repair and maintenance of structures; installation and repair of doors and windows; installation and assembly of goods listed in classes 6 and 19’.

8        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation 2017/1001.

9        On 26 November 2019, the Opposition Division partially upheld the opposition in respect of the goods and services listed in paragraph 4 above, namely in respect of all the goods and services in Classes 6, 7, 19 and 37 and some goods in Class 9, namely, ‘door locks (electric- ); electric and electronic parts for single or multi-component doors and gates; electric/electronic controllers and regulators for sliding doors, swing doors, revolving security doors, revolving doors, curved sliding doors, telescopic sliding doors, folding doors, swing gates, folding gates and sliding gates; electric controllers for locks, windows and door drives; electric locks and keys for these locks’. The applicant’s application for registration was, by contrast, accepted in respect of other goods in Class 9.

10      On 27 January 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision, requesting that that decision be annulled in its entirety and alleging misapplication of Article 8(1)(a) and (b) of Regulation 2017/1001.

11      By the contested decision, the Fourth Board of Appeal of EUIPO upheld the Opposition Division’s decision, thus dismissing the appeal which the applicant had brought before it. Following the approach of the Opposition Division, the Board of Appeal examined the appeal which had been brought before it in relation to the earlier international registration. In that regard, the Board of Appeal found in essence and inter alia that the relevant public with regard to the goods and services at issue consisted both of the general public and of professionals and that the relevant territory was that of France. As regards the goods and services covered by the mark applied for, it took the view that they were, in part, identical and, in part, similar to those covered by the earlier mark. As regards the goods and services at issue in Classes 6, 19 and 37 which it had found to be identical, the Board of Appeal, in the light of the identity of the signs at issue, dismissed the appeal which had been brought before it on the basis of Article 8(1)(a) of Regulation 2017/1001. Next, as regards the goods at issue in Classes 6, 7, 9 and 19 which it had found to be similar, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision and the Opposition Division’s decision to the extent that, by that latter decision, EUIPO upheld the opposition;

–        order EUIPO to pay the costs.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      It is important to point out at the outset that, in the part of the application which deals with the grounds, the applicant does not rely on infringement of a specific provision of Regulation 2017/1001 in support of its action.

15      It is, however, apparent from the case-law that an applicant is not obliged expressly to state on which particular rule of law his or her complaint is based, provided that his or her line of argument is sufficiently clear for the defendant and the Courts of the European Union to be able to identify the rule without difficulty (judgments of 10 May 2006, Galileo International Technology and Others v Commission, T‑279/03, EU:T:2006:121, paragraph 47, and of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraph 17).

16      In the present case, the applicant is calling into question a certain number of assessments which the Board of Appeal made regarding the existence of an identity or a similarity between the goods and services at issue, but does not, however, dispute the Board of Appeal’s finding that the signs at issue are identical. Consequently, in so far as the applicant has doubts as to the merits of the Board of Appeal’s findings concerning the goods and services which the Board of Appeal found to be identical, it must be held that it seeks to put forward a complaint based on infringement of Article 8(1)(a) of Regulation 2017/1001. By contrast, in so far as it contradicts the Board of Appeal’s assessments as regards the goods and services which the Board of Appeal found to be similar, the complaints which it makes must be interpreted as relating to infringement of Article 8(1)(b) of that regulation. The applicant’s arguments must therefore be interpreted as seeking to rely on a single plea in law alleging infringement by the Board of Appeal of Article 8(1)(a) and (b) of Regulation 2017/1001, bearing in mind that that plea is subdivided into several complaints. Furthermore, it is apparent from EUIPO’s response that EUIPO has been able to identify both the legal basis and the arguments put forward by the applicant and respond to them.

17      As regards the substance, it must be borne in mind that Article 8(1)(a) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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.

18      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must 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 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.

19      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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20      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 or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

21      Lastly, it must be borne in mind that, for the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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 judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

22      It is in the light of those principles that the various complaints put forward by the applicant must be examined.

 The relevant territory and the relevant public and its level of attention

23      In paragraph 9 of the contested decision, the Board of Appeal in essence stated that, in the light of the fact that the earlier international registration designated France, it had to be found that that Member State was the relevant territory in the present case. In paragraph 10 of the contested decision, the Board of Appeal found, next, that the relevant public for the purposes of assessing whether there was a likelihood of confusion in the present case consisted of the general public and of professionals in the building sector and the area of home maintenance, improvement and renovation. It took the view that the level of attention of that public would be rather high due to the technical nature of the goods and services concerned.

24      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

 The comparison of the signs

25      The signs at issue consist of the word ‘holux’. Those word marks are identical, which the applicant does not, moreover, dispute.

 The comparison of the goods and services at issue

26      In its examination of the comparison of the goods and services at issue, the Board of Appeal chose to carry out a class-by-class analysis. In paragraphs 17 to 27 of the contested decision, it set out the reasons why, in its view, it had to be found, in the present case, that the goods and services in Classes 6, 7, 9, 19 and 37 covered by the mark applied for which were the subject matter of the appeal before it were similar, if not identical, to some of the goods and services in Classes 6, 19 and 37 covered by the earlier mark.

27      The applicant puts forward two types of complaint against those assessments on the part of the Board of Appeal.

28      It thus, first of all, submits in essence that some of the terms describing the goods in Class 6 covered by the earlier mark, on which a substantial proportion of the Board of Appeal’s assessments are based, are too vague and cannot be used ‘to determine a likelihood of confusion’. Secondly, the applicant disputes the merits of the conclusions drawn by the Board of Appeal as regards the similarity or identity between, on the one hand, some of the goods and services in Classes 6, 7, 9, 19 and 37 covered by the mark applied for and, on the other hand, some of the goods and services in Classes 6, 19 and 37 covered by the earlier mark.

 The allegedly vague nature of some of the terms used to describe the goods in Class 6 covered by the earlier mark

29      The applicant submits that the terms ‘metal goods’ in Class 6 covered by the earlier mark are too vague and cannot be used ‘to determine a likelihood of confusion’. It argues that that is also true of the terms ‘common metals and alloys thereof’, which also appear in the list of goods in Class 6 in respect of which the earlier mark was registered. According to the applicant, the vagueness of the terms ‘common metals and alloys thereof’ and ‘metal goods’ means that the earlier mark lacks distinctive character, which must have the consequence that that mark is subject to partial invalidity in accordance with Article 59(1)(a) of Regulation 2017/1001. It submits that the list of goods at issue includes terms which are too vague, with the result that the earlier mark lacks distinctive character with regard to them. It argues that, in interpreting Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), the Court of Justice expressly held that broad terms which could apply to a variety of different goods and services lack clarity and precision (judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 54). Likewise, it contends that the General Court has held that goods which do not appear as such in the application for registration but are mentioned only as examples of goods falling within a certain category must not be taken into account (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 45). It submits that to hold otherwise would also be contrary to the decision in the judgment of 9 April 2003, Durferrit v OHIM – Kolene (NU-TRIDE) (T‑224/01, EU:T:2003:107, paragraph 41), in which it was ruled that a list of examples does not narrow the scope of the goods registered to those examples.

30      EUIPO disputes those arguments.

31      In that regard, in the first place, it must be stated that, in its comparison of the goods and services at issue, the Board of Appeal did not in any way refer to the goods described as ‘common metals and alloys thereof’, which appear in the list of goods in Class 6 in respect of which the earlier mark was registered. The goods described as ‘common metals and alloys thereof’ are not therefore the subject matter of the Board of Appeal’s assessments relating to the similarity or identity of the goods and services at issue.

32      Consequently, in so far as the applicant claims that the terms ‘common metals and alloys thereof’, which are present in the list of goods in Class 6 covered by the earlier mark, are too vague, it puts forward an argument which is ineffective and which must therefore be rejected on that ground.

33      In the second place, in so far as the applicant submits that the terms ‘metal goods’, which are also present in the list of goods in Class 6 covered by the earlier mark, are too vague and cannot therefore be used ‘to determine a likelihood of confusion’, it must be stated that that argument must be rejected as unfounded.

34      According to the case-law of the Court of Justice, a ground of opposition may not be rejected from the outset, simply by invoking the absence of any precise statement of the goods covered by the earlier trade mark. To act in such a manner would mean that the earlier trade mark is precluded from being relied upon in opposition in order to prevent the registration of an identical or similar mark in respect of similar goods or services and would consequently mean that it is not recognised as having any distinctive character, even though that mark is still registered and it has not been declared invalid (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraphs 134 and 135). That finding does not apply solely in the case of earlier EU trade marks, but also as regards an international registration, such as that in question in the present case, since the ratio legis is the same in both cases.

35      In those circumstances, the argument that the terms ‘metal goods’, which are present in the list of goods in Class 6 covered by the earlier mark, are too vague is not capable, in opposition proceedings, of precluding those goods from being compared with the goods covered by the mark applied for the purposes of the assessment of the likelihood of confusion.

36      In any event, it is true that the words ‘metal goods’ are capable of including a large number of goods. However, the goods in Class 6 covered by the earlier mark are not referred to simply by means of those words, but have been specified to a certain extent. In that regard, it must be pointed out that the goods covered by the earlier mark – in so far as is relevant for the purposes of the applicant’s present argument with regard to the comparisons in paragraphs 17 to 22 of the contested decision – were described as ‘metal goods, especially metal doors and windows’.

37      It has been held that, in so far as it is used in a description of goods, the expression ‘in particular’ is, in the first place, merely indicative of an example (judgments of 9 April 2003, NU-TRIDE, T‑224/01, EU:T:2003:107, paragraph 41; of 12 November 2008, Scil proteins v OHIM – Indena (affilene), T‑87/07, not published, EU:T:2008:487, paragraph 38; and of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 119). Used in a list of goods, the expression ‘in particular’ serves to distinguish goods which have a specific interest for the proprietor of a mark without, however, excluding any goods from the list (judgment of 14 December 2011, VÖLKL, T‑504/09, EU:T:2011:739, paragraph 119). However, in the second place, still according to the case-law, the expression ‘in particular’ cannot be considered to be insignificant or devoid of any usefulness and may serve, above all in the case of a vague and imprecise indication, to clarify for traders and the competent authorities, the wishes of the trade mark proprietor regarding the extent of the protection which he or she intended to give to his or her mark when he or she filed the application for registration of that mark (judgment of 18 October 2018, Next design+produktion v EUIPO – Nanu-Nana Joachim Hoepp (nuuna), T‑533/17, not published, EU:T:2018:698, paragraphs 64 and 65). It follows that, if a vague term is followed by another term which expressly identifies the goods or services by way of example, it is then possible to carry out a comparison with that specific term (see, to that effect, judgment of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 52).

38      In the present case, the earlier mark was registered in respect of ‘metal goods, especially metal doors and windows’, in the knowledge that those goods are in Class 6. The word ‘especially’ which is present in the list of goods is synonymous with the expression ‘in particular’, which has been referred to in paragraph 37 above. Although the specification which follows the adverb ‘especially’ is used by way of example, it shows the intention on the part of the proprietor of the earlier mark to seek to obtain protection in respect of ‘metal doors and windows’. That specification is sufficiently clear and precise validly to enable the Board of Appeal to carry out the comparison between those goods in Class 6 covered by the earlier mark, on the one hand, and those in Classes 6, 7, and 9 covered by the mark applied for, on the other hand (see paragraphs 17 to 22 of the contested decision).

39      That finding is not called into question by the reference which the applicant makes to a series of judgments of the Courts of the European Union.

40      When it refers to paragraph 45 of the judgment of 27 February 2002, STREAMSERVE (T‑106/00, EU:T:2002:43), the applicant does not refer to the context of that paragraph. In that regard, it must be pointed out that paragraph 45 of that judgment referred to the obligation for precision in the description of certain goods, in so far as those goods were to be taken into account ‘in the appraisal of the descriptive character’ of a word sign. However, the present action does not relate to the issue of the descriptiveness of the word sign at issue, namely the term ‘holux’, in the context of the registration procedure.

41      Next, it must be stated that the applicant’s argument regarding paragraph 41 of the judgment of 9 April 2003, NU-TRIDE (T‑224/01, EU:T:2003:107), can also not succeed. It is true that that paragraph, like the one which precedes it, refers to the comparison between some of the goods covered by an earlier mark, on the one hand, and some of the goods covered by a mark applied for, on the other hand. That reasoning was given with regard to opposition proceedings, such as those which are involved in the present case. However, it is apparent from paragraphs 40 and 41 of that judgment that the General Court did not regard itself as being prevented from carrying out a comparison of goods which were described, inter alia, by means of the word combination ‘in particular’. In other words, the fact that some of the goods listed in the list of goods covered by the mark applied for were included by way of example did not preclude the comparison of the goods at issue in that case. However, in the present case, the applicant seeks to establish the contrary, namely that it is impossible to compare some of the goods which it regards as having been described in a vague manner.

 The question of whether the goods and services at issue are similar, if not identical

42      In paragraphs 17 to 27 of the contested decision, the Board of Appeal found, in essence, that the goods and services at issue were, in part, similar and, in part, similar to a high degree, if not identical.

43      The applicant submits that the relevant public will not perceive the goods and services in Classes 6, 7, 9, 19 and 37 covered by the mark applied for as having the same commercial origin as the goods and services of the proprietor of the earlier mark. In fact, the applicant argues that the contested decision does not contain a diligent analysis of whether the addressees in the market in question would regard the goods as having the same origin.

44      In particular, as regards the goods in Class 6 covered by the mark applied for, the applicant submits that door handles, door locks, latchkeys, locks and countercasings, fittings for latchkeys, accessories for all-glass installations, strikes, handles, door knobs, grab bars, screw mountings and clamp fittings, which are all goods that are included in the list of goods covered by the mark applied for, can be sold even without doors. It adds that most of them, especially those relating to glass constructions, have nothing at all to do with the metal doors covered by the earlier mark. The applicant also submits that there are many sectors in which manufacturers of a main product do not offer specific parts or accessories and that the market will not expect a manufacturer of metal doors to produce mounting material for glass installations as well.

45      Next, the applicant argues, as regards the goods and services in Classes 7, 9, 19 and 37, that the Board of Appeal erred in merely relying on the fact that doors, ‘drivers’, motors and turnstiles have the same function of opening and closing an entrance space. It contends that the function is only one aspect and that it cannot stand alone. It adds that the Board of Appeal did not carry out any analysis of the techniques used in production and in the training of personnel for producing or maintaining those goods or of the market situation considering the range of competing goods on the market. According to the applicant, the techniques used and the personnel and training of that personnel are different. It argues that a different know-how and training are necessary with regard to doors made of metal or wood, on the one hand, and doors made of glass, on the other hand. Furthermore, the applicant submits that the know-how needed for mechanical doors and automatic doors driven by motors, sensors or other similar devices is even more different. In addition, the applicant argues that the personnel in undertakings which manufacture mechanical doors and that in undertakings which manufacture automatic drives belong to different trade unions and their employers are members of different employers’ associations. It contends that customers do not expect manufacturers of mechanical doors to offer or even maintain automatic doors.

46      Lastly, as regards the services in Class 37, the applicant submits that there is a difference between the service of repair and that of maintenance. According to the applicant, while the former requires the objects to be worked on to be broken, the latter is carried out on objects which function in order to prevent them from becoming broken.

47      EUIPO disputes those arguments.

48      In order to address in a useful manner the applicant’s complaints alleging infringement by the Board of Appeal of Article 8(1)(a) of Regulation 2017/1001, it must be pointed out at the outset, in addition to what has been stated in paragraph 17 above, that, according to the case-law, where the goods covered by the earlier mark include the goods covered by the mark applied for, those goods are considered to be identical (see judgment of 24 April 2018, Kabushiki Kaisha Zoom v EUIPO – Leedsworld (ZOOM), T‑831/16, not published, EU:T:2018:218, paragraph 70 and the case-law cited). The same is true as regards services. However, it has been held that, where there is only some degree of overlap between certain services, those services cannot be considered to be identical but are similar (see, to that effect, judgment of 21 March 2013, Event v OHIM – CBT Comunicación Multimedia (eventer EVENT MANAGEMENT SYSTEMS), T‑353/11, not published, EU:T:2013:147, paragraph 44).

49      In so far as the applicant seeks to allege that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001, it must be stated, in addition to what has been pointed out in paragraphs 18 to 21 above, that, according to the case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and 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 (see, to that effect, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may be taken into account such as the distribution channels of the goods concerned (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited). As regards, in particular, the complementarity of the goods and services, it must be borne in mind that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 September 2021, Sociedade da Água de Monchique v EUIPO – Ventura Vendrell (chic ÁGUA ALCALINA 9,5 PH), T‑195/20, EU:T:2021:601, paragraph 46 and the case-law cited).

50      It is in the light of those principles that the arguments put forward by the applicant in support of its action must be examined.

–       The goods in Class 6

51      The applicant’s argument that the goods covered by the mark applied for which are described as door handles, door locks, latchkeys, locks and countercasings, fittings for latchkeys, accessories for all-glass installations, strikes, handles, door knobs, grab bars, screw mountings and clamp fittings can be sold even without doors and that most of those goods have nothing at all to do with the metal doors covered by the earlier mark (see paragraph 44 above) must be rejected.

52      First, it must be pointed out that the metal doors covered by the earlier mark can be opened or shut by means of door handles, such as those covered by the mark applied for. Secondly, it must be stated that the argument that the goods listed by the applicant can be sold even without doors has no bearing on the fact that, generally, irrespective of whether or not they may be sold together at a certain point in time, all the goods mentioned by the applicant are closely connected with metal doors, in the sense that they are intended to be fixed to or installed on doors and that they are indispensable or, at the very least, important for the use of metal doors, with the result that consumers may think that the same undertaking which marketed metal doors is responsible for manufacturing those goods, in accordance with the case-law relating to the concept of complementarity which has been referred to in paragraph 49 above.

53      It is true that the applicant is right in pointing out that there are many sectors in which manufacturers of a main product do not offer specific parts or accessories (see paragraph 44 above). However, that argument in no way alters the fact that it cannot be ruled out that a great many manufacturers of metal doors do exactly the opposite. A great many manufacturers produce and market or are capable of producing and marketing both metal doors and specific parts or accessories for that type of door, such as door handles, door locks, locks and countercasings, grab bars, screw mountings and clamp fittings. At the very least, there are undertakings which are economically linked to such manufacturers which offer specific parts or accessories for metal doors, such as the items covered by the mark applied for.

54      The applicant’s argument that the market will not expect a manufacturer of metal doors to produce ‘mounting material for glass installations’ as well is also not convincing.

55      In paragraph 20 of the contested decision, the Board of Appeal found with regard, on the one hand, to the goods covered by the mark applied for, only some of which are goods made of glass, the others being predominantly goods which are made of metal, and, on the other hand, to the metal doors covered by the earlier mark, that their relevant public and their distribution channels overlapped. According to the Board of Appeal, it is for that reason that the average consumer will believe that the compared goods are to be attributed to the same undertaking or at least to economically linked undertakings.

56      That assessment on the part of the Board of Appeal is correct. Although it is true that not all manufacturers of metal doors produce mounting material for glass installations, the fact, however, remains that, at the very least, a great many manufacturers which are economically linked to manufacturers of metal doors produce and market or are capable of producing and marketing parts and accessories which are constructed of glass, for metal doors.

57      It follows that the applicant has not established that there are errors which vitiate the Board of Appeal’s assessments as regards the similarity between the goods in Class 6 covered by the mark applied for and the metal goods, especially metal doors, in that class covered by the earlier mark.

–       The goods in Classes 7, 9 and 19

58      In paragraph 36 of the application, the applicant states that it wishes to call into question certain assessments which the Board of Appeal made with regard to some of the goods in Classes 7, 9 and 19 (see also paragraph 45 above).

59      It is true that, when, in paragraph 36 of the application, the applicant refers to doors, ‘drivers’, in particular electric drives and automatic drives, motors and turnstiles, the fact remains that it is not referring to any of the goods in Class 9. Doors and turnstiles are goods in Class 19, whereas electric drives, automatic drives and motors are goods which are in Class 7.

60      However, in the letter of 23 May 2021 by which it requested an oral hearing, the applicant set out more specific complaints with regard to the goods in Class 9 covered by the mark applied for. In that regard, it stated that, in its submission and contrary to what the Board of Appeal had observed in the contested decision, those goods were only ‘supplementary’ to the ‘metal goods, especially doors’, but that what was involved in that regard were not, however, complementary goods. The applicant submits, in essence, that those goods cannot replace each other, because their functions are different.

61      Those arguments cannot be regarded as being new and inadmissible, pursuant to Article 84(1) of the Rules of Procedure of the General Court, but must be regarded as being – as a whole – an amplification of a complaint set out previously in the application.

62      Those arguments are, however, unfounded. Indeed, it is true that, where certain goods or services serve only to support or supplement other goods or services, they are not considered to be complementary within the meaning of the case-law which has been referred to in paragraph 49 above. Accordingly, goods used as packaging (bottles, boxes, tins and so forth) cannot, for example, be considered to be complementary to the goods packaged. Likewise, goods used for advertising or promotion (brochures, posters, price lists and so forth) cannot be considered to be complementary to the goods which are the subject matter of the advertising or promotion. It must be stated in that regard that they are goods which can be described as being accessories.

63      In the present case, it must be held that the goods in Class 9 covered by the mark applied for, which have been referred to in paragraph 4 above, are similar to an average degree to the ‘metal goods, especially metal doors and windows’ in Class 6 covered by the earlier mark. Those goods in Class 9 may be an integral part of the metal doors and windows in Class 6 covered by the earlier mark. They are therefore closely linked, in the sense that the goods in question are indispensable and important for the use of the doors covered by the earlier mark, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods. They have the same relevant public and are offered through the same distribution channels.

64      As regards the goods in Class 7, as EUIPO correctly submits, if the criteria listed in paragraph 23 of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442) (see paragraph 49 above), are applied, the goods described as electric drives, automatic drives and motors, covered by the mark applied for, have relevant features in common with the metal goods, especially metal doors, in Class 6 covered by the earlier mark. They are closely linked in the sense that the goods covered by the mark applied for are indispensable or important for the use of the goods covered by the earlier mark, which makes them complementary. They can also be aimed at the same relevant public and be offered through the same distribution channels. On account of the coincidence of those factors, the goods compared are similar to an average degree.

65      That is also the case as regards the goods in Class 19 covered by the mark applied for, such as the ‘glass doors of all kinds; manually operated single or multi-component doors and gates, namely sliding doors, rotating doors, [etc.] … none of the aforesaid being of metal; turnstiles not of metal (automatic and electric)’. As EUIPO points out, those goods have relevant points of contact with the ‘goods made of wood, in particular doors and windows, non-metal doors and windows; doors and windows made of PVC’ in the same class covered by the earlier mark. They have the same purpose, namely to open and close the entrance to a building, room or other closed space. They also have the same nature since most of the goods in question are referred to as being non-metallic, which implies that they could be made of wood or PVC, like the goods covered by the earlier mark. Lastly, they target the same relevant public, may share the same distribution channels and could be produced by the same undertakings. The goods at issue are therefore similar to a high or an average degree.

66      The findings set out in paragraph 64 and 65 above as regards the goods in Classes 7 and 19 cannot be altered by the applicant’s other arguments.

67      First, it is true that the function of a product is only one of the aspects which militates for or against the similarity of the goods. However, the Board of Appeal did not base its decision solely on considerations connected with the function of the goods at issue. On the contrary, it took into account the complementarity of the goods at issue, the relevant public and the distribution channels.

68      Secondly, the argument that the economic sectors targeted are different and that, in those sectors, there are different trade unions and different employers’ associations or that the techniques used and the training of the personnel involved are different in no way alters the finding that the goods at issue are closely connected in the sense that the goods covered by the mark applied for are indispensable or important for the use of the goods covered by the earlier mark, which makes them complementary.

69      Thirdly, the applicant’s claim that customers do not expect manufacturers of mechanical doors to offer or even maintain automatic doors is vague, general and unsubstantiated. In any event, in the light of the finding that the goods covered by the mark applied for are indispensable or important for the use of the goods covered by the earlier mark, which makes them complementary, that claim must be rejected.

70      Fourthly, in so far as the applicant claims that the Board of Appeal did not carry out a ‘diligent analysis’ of certain aspects (see paragraph 43 above), it must be stated that it misconstrues the scope of the requirements which EUIPO has to satisfy in the context of the comparison of the goods. The Board of Appeal reasoned on the basis of criteria which have been developed in the case-law of the Courts of the European Union, whilst operating on the basis of the material in the file which had been submitted to it. In that regard, it must be borne in mind that the first sentence of Article 95(1) of Regulation 2017/1001 provides that, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. However, the applicant did not submit to the Board of Appeal any information which would have enabled it to be even more diligent than it was.

71      Fifthly, the argument alleging that a different know-how and training are necessary with regard to doors made of metal or wood, on the one hand, and doors made of glass, on the other hand, and that the know-how needed for mechanical doors and automatic doors driven by motors, sensors or other similar devices is even more different (see paragraph 45 above) must also be rejected. It in no way alters the conclusions which have been drawn concerning the complementarity of the goods at issue, as referred to above.

72      In those circumstances, the Board of Appeal’s assessments as regards the similarity of the goods in Classes 7, 9 and 19 covered by the mark applied for, on the one hand, and some of the goods in Classes 6 and 19 covered by the earlier mark, on the other hand, must be upheld. The applicant’s arguments relating to the comparison of those goods must, by contrast, be rejected as unfounded.

–       The services in Class 37

73      As regards the services in Class 37, the applicant submits that there is a difference between the service of repair and the service of maintenance. It submits that, while the former requires the objects to be worked on to be broken, the latter is carried out on objects which function in order to prevent them from becoming broken (see paragraph 46 above). It argues that mechanical doors do not need sophisticated maintenance by the manufacturer whereas automatic doors do.

74      The Board of Appeal found that the services in Class 37, which are referred to in the trade mark application and are described as ‘repair and maintenance of doors, revolving doors, door frames, door locks and entrance areas’, overlapped with the services in Class 37 covered by the earlier mark which are described as ‘installation and repair of doors and windows’ and were, for the reasons stated above, identical.

75      In its arguments, the applicant targets only the comparison between the services described as ‘maintenance of doors, revolving doors, door frames, door locks and entrance areas’, on the one hand, and the services of ‘repair of doors’ covered by the earlier mark, on the other hand.

76      The Board of Appeal’s finding that those services are identical must be corrected.

77      Contrary to what is apparent, in essence, from paragraph 27 of the contested decision, the maintenance of doors does not necessarily and in all cases include the repair thereof. The services described as ‘maintenance of doors, revolving doors, door frames, door locks and entrance areas’ covered by the mark applied for include the services of ‘repair of doors’ only in so far as the objects to be worked on are already defective. If they are not defective, maintenance remains a service which does not give rise to a repair. If a repair becomes necessary, it must be held that the service of maintenance has turned into purely a service of repair.

78      Consequently, in spite of the fact that they have as a common purpose the process of maintaining objects in good order and in spite of the coincidence between them as regards the relevant public, the providers and the distribution channels, it cannot be held that the services described as ‘maintenance of doors, revolving doors, door frames, door locks and entrance areas’ covered by the mark applied for, on the one hand, and the services of ‘repair of doors’ covered by the earlier mark, on the other hand, are actually identical.

79      However, it must be held that the services of maintenance and the services of repair are similar to a high degree.

80      The applicant’s arguments as to the lack of identity between the services in Class 37 which are at issue in the present case must therefore be upheld.

 The global assessment of the likelihood of confusion

81      The applicant calls into question the Board of Appeal’s findings relating to the global assessment of the likelihood of confusion solely with regard to the comparison of the goods and services.

82      However, it follows from the foregoing that the assessments relating to that comparison are correct, except as regards the services in Class 37. As regards those services, it must be stated that, even if there is no identity and Article 8(1)(a) of Regulation 2017/1001 cannot therefore be applicable, the high degree of similarity which exists between the services of maintenance and the services of repair is likely to give rise to a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, at least with regard to the general public.

83      In those conditions, the finding set out by the Board of Appeal in paragraph 38 of the contested decision – according to which the opposition had to succeed with regard to all of the relevant goods and services – must be upheld.

84      It follows from all of the foregoing that the single plea, alleging infringement of Article 8(1)(a) and (b) of Regulation 2017/1001, must be rejected and that the action must be dismissed in its entirety, without it being necessary to rule on whether the applicant’s claim seeking the annulment of the Opposition Division’s decision is admissible.

 Costs

85      Under Article 134(1) 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 EUIPO.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Deutschtec GmbH to pay the costs.

Delivered in open court in Luxembourg on 8 June 2022.

*      Language of the case: English.

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