JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
25 April 2013(*)
(Community trade mark – Opposition proceedings – Application for Community word mark METROINVEST – Earlier national figurative mark METRO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Principle of non-discrimination – Right to a fair hearing)
In Case T‑284/11,
Metropolis Inmobiliarias y Restauraciones, SL, established in Barcelona (Spain), represented by J. Carbonell Callicó, P. Craddock and B. Vanbrabant, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by M. Berger, R. Kaase and J.‑C. Plate, lawyers,
ACTION brought against the decision of the First Board of Appeal of OHIM of 17 March 2011 (Case R 954/2010‑1), relating to opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG and Metropolis Inmobiliarias y Restauraciones, SL,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and A. Popescu, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 7 June 2011,
having regard to the response of OHIM lodged at the Court Registry on 4 October 2011,
having regard to the response of the intervener lodged at the Court Registry on 23 September 2011,
having regard to the reply of the applicant lodged at the Court Registry on 31 January 2012,
having regard to the rejoinder of the intervener lodged at the Court Registry on 26 April 2012,
having regard to the new evidence lodged by the applicant at the Court Registry on 11 May 2012,
having regard to the response of the intervener lodged at the Court Registry on 2 July 2012,
further to the hearing on 14 December 2012,
gives the following
Judgment
Background to the dispute
1 On 30 July 2008, the applicant, Metropolis Inmobiliarias y Restauraciones, SL, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark applied for is the word sign METROINVEST.
3 The services in respect of which registration was sought are in Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Financial affairs relating only to real estate services; financial services relating only to real estate services; financial planning services relating only to real estate services; real estate affairs; real estate agency services and real estate services provided on the internet; rent and lease negotiations; real estate selection and acquisition; property investment services; property sales, leasing, management and acquisition services; valuation of property; valuations relating to the surveying of buildings; land and estate management; advice on real estate management; real estate operations and transactions; electronic payment services; providing and managing electronic cash systems; account crediting and debiting services.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 39/2008 of 29 September 2008.
5 On 11 November 2008, the intervener, MIP METRO Group Intellectual Property GmbH & Co. KG, gave notice of opposition to registration of the trade mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based, first, on the earlier German figurative mark, filed on 22 September 2003 and registered on 27 April 2004 under number 30348717, for various goods and services in Classes 1 to 45, only the services in Class 36 corresponding to the following description providing the basis for the opposition: ‘Insurance services; financial services; cash transactions; real estate services.’ The intervener claimed the colours blue and yellow for that figurative sign, represented as follows:
7 The opposition was based, secondly, on the application for a Community figurative mark, filed on 20 March 1998 under number 779116 for various goods and services in Classes 1 to 42. The intervener claimed the colour yellow for that figurative sign, represented as follows:
8 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 By decision of 26 March 2010, the Opposition Division upheld the opposition, on the ground that there was a likelihood of confusion on the part of the relevant public between the signs at issue. The Opposition Division considered, first, that the services covered by the trade mark applied for by the applicant and those covered by the earlier national figurative mark included in Class 36 were identical, and, secondly, that there was an average degree of aural and visual similarity between the signs at issue and that, conceptually, by virtue of the presence of the common element ‘metro’, those signs were similar.
10 On 26 May 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 17 March 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. First, at paragraph 11 of the contested decision, the Board of Appeal, like the Opposition Division, based its decision on the earlier German mark, because it was a registered mark. The Board of Appeal, next, at paragraph 12 of the contested decision, considered that since the earlier mark was registered in Germany, the relevant public consisted of German general consumers as well as professionals, whose level of attention was, having regard to the nature of the services concerned, higher than normal. In addition, at paragraph 14 of the contested decision, the Board of Appeal endorsed the decision of the Opposition Division, in so far as the latter had found that the services in Class 36 covered by the trade mark application and by the earlier mark were identical. Finally, having regard to the visual and aural similarities, on the basis of the presence of the common element ‘metro’ in the signs at issue, and notwithstanding the fact that no conceptual comparison between those signs could be made, the Board of Appeal concluded, at paragraph 20 of the contested decision, that there was a likelihood of confusion.
Forms of order sought by the parties
12 The applicant claims that the Court should:
– alter the contested decision and allow the application for a Community trade mark;
– in the alternative, annul the contested decision;
– order OHIM and the intervener to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Admissibility of the documents produced for the first time before the General Court
14 The applicant produced documents annexed to the application which had not been produced in the administrative procedure, namely extracts from an on-line dictionary and a translation of the word ‘metro’ included in an English/German dictionary for the purposes of disputing the Board of Appeal’s claim in the contested decision that the word ‘metro’ does not exist in German.
15 The intervener claims that those documents are inadmissible on the ground that they were submitted for the first time before the General Court, with the result that they cannot be taken into consideration.
16 In that regard, the claim that the word ‘metro’ does not exist in German appears only in the contested decision, the Opposition Division having taken the view on the other hand, that the word ‘metro’ will be understood as a reference to a subway. Accordingly, the applicant cannot be prevented from disputing that assessment, which appeared for the first time in the contested decision, before the General Court by putting before it, where necessary, extracts from dictionaries (see judgment of 7 November 2007 in Case T‑57/06 NV Marly v OHIM – Erdal (Top iX), not published in the ECR, paragraph 58).
17 It is apparent from the foregoing that the documents produced by the applicant must be declared admissible.
Substance
18 First of all, it is necessary to examine the application for annulment of the contested decision.
19 In support of its action, the application raises two pleas in law. The first alleges infringement of Articles 6 and 14 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (‘the ECHR’) and the second infringement of Article 8(1)(b) of Regulation No 207/2009.
20 It is appropriate to consider, firstly, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
21 The applicant essentially submits that, in the absence of any visual, aural and conceptual similarity between the signs at issue, there can be no likelihood of confusion between them, even in the case of identical or similar services.
22 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘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.
23 According to settled case-law, the risk that the public might believe that the goods or services concerned come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion (judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70, and judgment of 31 January 2012 in Case T‑205/10 Cervecería Modelo v OHIM – Plataforma Continental (LA VICTORIA DE MEXICO), not published in the ECR, paragraph 23; see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).
24 Furthermore, likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (CAPIO, paragraph 23 above, paragraph 71; see also, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 22; Canon, paragraph 23 above, paragraph 16; and Lloyd Schuhfabrik Meyer, paragraph 23 above, paragraph 18).
25 That global assessment entails a certain interdependence between the factors taken into account, in particular the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48; Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 25; see also, by analogy, Canon, paragraph 23 above, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous factors, in particular the recognition of the trade mark on the market, the association which may be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (see CAPIO, cited in paragraph 23 above, paragraph 72 and the case-law cited).
26 Furthermore, the global assessment of the visual, aural or conceptual similarity of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 207/2009 – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of the marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (CAPIO, paragraph 23 above, paragraph 73; see, by analogy, SABEL, paragraph 24 above, paragraph 23).
27 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, and must place his trust in the imperfect picture of them that he has kept in his mind. It should also be remembered that the average consumer’s level of attention is likely to vary according to the category of goods or services concerned (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 24 above, paragraph 26).
28 It is in the light of those considerations that the assessment made by the Board of Appeal of the likelihood of confusion between the conflicting signs must be examined.
29 In the present case, it is necessary to take the earlier German figurative mark as the basis of that examination, as did the Board of Appeal in its assessment, which, moreover, the applicant has not disputed.
30 Furthermore, it is common ground, having regard to the services concerned, namely, in essence, financial services, real estate services, insurance services and monetary services, that the relevant public is, as the Board of Appeal correctly pointed out in paragraph 12 of the contested decision, the general German consumer and professionals, whose level of attention is higher than normal.
31 In the first place, as regards the similarity of the services concerned, the Board of Appeal found, at paragraph 14 of the contested decision, that the services in Class 36 covered by both the trade mark application and the earlier mark were identical, given that the former were included in the latter.
32 However, the applicant considers that ‘there is no relevant similarity between the claimed [services] and the signs of each trade mark’.
33 It should be borne in mind that, under Article 44(1) of the Rules of Procedure of the General Court, the application must contain a summary of the pleas in law on which it is based. The summary must be sufficiently clear and precise to enable the defendant to prepare his defence and the Court to rule on the action, even without any other supporting information (see Case T‑127/02 Concept v OHIM (ECA) [2004] ECR II‑1113, paragraph 17 and the case-law cited).
34 By merely claiming that there is no similarity between the services concerned without putting forward any specific arguments on that point, the applicant has failed to satisfy the requirements of Article 44(1) of the Rules of Procedure, so that the objection of inadmissibility raised by OHIM against the applicant’s complaint alleging lack of similarity between the services concerned must be upheld.
35 In any event, it is clear, as the Board of Appeal correctly found at paragraph 14 of the contested decision, that the services covered by the trade mark applied for, listed in paragraph 3 above, are identical to the services covered by the earlier mark, listed in paragraph 6 above, in so far as the list of the services covered by the earlier mark is so wide-ranging that it includes the services covered by the trade mark applied for.
36 In the second place, as regards the similarity of the signs at issue, it should be recalled that, as already pointed out in paragraph 26 above, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, account being taken in particular of their distinctive and dominant components.
37 In addition, it has been held, first, that the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, inter alia, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 40 and the case-law cited, and LA VICTORIA DE MEXICO, paragraph 23 above, paragraph 37).
38 Secondly, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more readily refer to the goods in question by quoting the name rather than by describing the figurative element of the trade mark (LA VICTORIA DE MEXICO, paragraph 23 above, paragraph 38).
39 The signs to be compared are the following:
Earlier mark Mark applied for
METROINVEST
40 As regards, first, the visual comparison of the signs at issue, it is clear that the most important element in the earlier mark is the word element ‘metro’ and that the figurative elements, namely the yellow letters and the blue background are negligible. Furthermore, the typeface of the earlier mark is standard, so that it is also negligible. As the Board of Appeal correctly pointed out in paragraph 16 of the contested decision, the earlier mark is entirely reproduced in the trade mark applied for. Moreover, the element ‘metro’ of the trade mark applied for is at the beginning of the mark.
41 Contrary to what the applicant claims, the signs at issue thus display some degree of visual similarity because they both contain the element ‘metro’ (see, to that effect, the judgment of 27 September 2007 in Case T‑418/03 La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 122).
42 As regards, secondly, the aural comparison of the signs at issue, the mark applied for contains four syllables and the earlier mark two. The two signs are therefore pronounced differently. However, as is apparent from paragraph 17 of the contested decision, on account of the fact that, first, the two first syllables of the earlier mark and the mark applied for are identical and are pronounced in the same way and, second, the element ‘metro’ of the mark applied for appears first, there is, contrary to the applicant’s claim, some aural similarity between the two signs, taken as a whole (see, to that effect, LA MER, paragraph 41 above, paragraph 123).
43 Thirdly, as regards the conceptual comparison of the signs at issue, it cannot validly be argued, as is apparent from paragraphs 16 to 18 of the contested decision, that the word ‘metro’ is devoid of any meaning in German, irrespective of the services concerned.
44 In that regard, suffice it to point out that the General Court has already held that it cannot be asserted that, when it sees the word ‘metro’, the German public would think of an underground railway system, unless the word was used to refer to a foreign railway system (the judgment of 10 December 2008 in Case T‑290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 53).
45 It follows that, contrary to the view expressed by the Board of Appeal in paragraph 16 of the contested decision, the German public might be able to establish a link between the word ‘metro’ and a foreign underground railway system, irrespective of the lack of any link between the word ‘metro’ and the services covered by the signs at issue.
46 It follows from the foregoing that, as the Opposition Division had already stated, there is a certain conceptual similarity between the signs at issue, albeit is very weak, since the sign METROINVEST may be broken down into two elements, each of which has a particular meaning, one of them having the same meaning as the single element comprising the earlier mark.
47 The applicant’s argument, raised for the first time during the hearing, that the element ‘metro’ in the trade mark applied for refers to the word ‘metropole’, so that there is a notable conceptual difference between the signs at issue, must be declared inadmissible, since the applicant has failed to put forward any explanation as to why it was prevented from relying on that argument in the course of the administrative procedure or even, as the case may be, in the application.
48 Moreover, even if that argument were admissible, the fact remains that it does not appear anywhere in the pleadings, and nor has the applicant put forward even prima facie evidence that the element ‘metro’ in the mark applied for will be understood by the relevant public as the abbreviation of the word ‘metropole’, unlike the word ‘metro’ in the earlier mark, which could refer to a foreign underground railway system.
49 In the third place, as regards the likelihood of confusion, it should be pointed out that in relation to the visual, aural or conceptual similarity of the marks in question, the global assessment of such a likelihood, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35, and Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 60).
50 Moreover, according to established case-law, a composite mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (MATRATZEN, paragraph 25 above, paragraph 33; Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 44; and Case T‑28/05 Ekabe International v OHIM – Ebro Puleva (OMEGA3) [2007] ECR II‑4307, paragraph 43).
51 Furthermore, it has previously been held that the public will not generally consider a descriptive or weakly distinctive element forming part of a complex mark to be the distinctive and dominant element of the overall impression conveyed by that mark (see Case T‑202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraph 54, and the case-law cited, and Case T‑80/08 CureVac v OHIM – Qiagen (RNAiFect) [2009] ECR II‑4025, paragraph 49).
52 Finally, the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and the judgment of 27 February 2008 in Case T‑325/04 Citigroup v OHIM – Link Interchange Network (WORLDLINK), not published in the ECR, paragraph 82).
53 It must be noted that the word ‘metro’, which is common to the signs at issue, has no meaning in relation to the services concerned, so that it is distinctive as regards those services.
54 On the other hand, the word ‘invest’, in that it forms, inter alia, the root of the German verb ‘investieren’, which means to invest, is descriptive of the services concerned. That word, taken alone, without any additional element, enables the relevant public to understand immediately the nature of the services proposed by that word.
55 It follows that, within the context of an overall assessment, in the light of the services concerned, the word ‘invest’, in that it is descriptive of those services, will not be considered by the relevant public as the distinctive and dominant element of the overall impression conveyed. On the other hand, the word ‘metro’, in so far as it is devoid of any meaning in relation to the services concerned and is at the beginning of the mark, will be considered the distinctive and dominant element of the overall impression, so that more attention will be paid to that element.
56 Having regard, on the one hand, to the distinctive character of the word ‘metro’ in relation to the services concerned, and, on the other, the descriptive character of the word ‘invest’ with reference to those services, there is a likelihood of confusion between the two signs at issue because the distinctive and dominant element of those signs is identical and the services concerned are also identical.
57 As regards the applicant’s argument that the distinctive character of the mark applied for cannot be disputed by OHIM where the mark has been found to be valid for the purposes of Article 37 of Regulation No 207/2009, it is clear, as OHIM correctly noted, that the distinctive character of the earlier mark or of the trade mark applied for, viewed as a whole, is in no way called into question, only the element ‘invest’ of the mark applied for being considered descriptive in relation to the services concerned (see, to that effect, judgment of 19 September 2012 in Case T‑220/11 TeamBank v OHIM – Fercredit Servizi Finanziari (f@ir Credit), not published in the ECR, paragraph 47).
58 As regards the applicant’s argument that when applications have been submitted to OHIM for registration of trade marks composed of several elements, including an element which is not distinctive, it has granted those applications, it must be noted that, in such cases, the signs at issue both had a descriptive element or an element devoid of any distinctive character in relation to the goods or services concerned (see, in particular, RNAiFect, paragraph 51 above, paragraphs 48 to 50).
59 In the present case, since it is the distinctive and dominant element of the mark applied for, namely ‘metro’, which is identical to the single element comprising the earlier mark and the presence, in the mark applied for of an element devoid of any distinctive character in relation to the services concerned, namely ‘invest’, cannot offset the overall similarity that exists between the signs at issue, the applicant’s argument cannot be upheld.
60 It follows from all the foregoing that the contested decision must, on that point, be confirmed and that the second plea in law must therefore be rejected.
The first plea in law, alleging infringement of Articles 6 and 14 of the ECHR
61 According to the applicant, the Board of Appeal infringed the obligation to state reasons under Article 6 of the ECHR and the principle of equal treatment under Article 14 of the ECHR when it found, first, that the word ‘invest’ was descriptive and, second, that the word ‘metro’ was a fanciful word, on the ground that it does not exist in German. The applicant claims that the word ‘invest’ is not included in any German dictionary, unlike the word ‘metro’. Accordingly, it argues that the two words are devoid of distinctive character or have weak distinctive character.
62 As regards, in the first place, the alleged infringement regarding Article 6(1) of the ECHR, the Court has precluded the possibility of relying on a right to a fair ‘hearing’ before the Boards of Appeal of OHIM, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see, to that effect, Case T‑63/01 Procter & Gamble v OHIM (Soap bar shape) [2002] ECR II‑5255, paragraphs 22 and 23, and Case T‑273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II‑1271, paragraph 62).
63 Nevertheless, in so far as, by its first plea, alleging infringement of the obligation to state reasons, based on Article 6 of the ECHR, the applicant refers to the alleged failure by the Board of Appeal to have regard to Article 75 of Regulation No 207/2009, which is the expression, in the context of that regulation, of the general principle of respect for the obligation to state reasons, it must be noted that, under Article 75 of that regulation, OHIM’s decision must state the reasons on which they are based. It is settled case-law that that duty has the same scope as that laid down by the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure, so as to enable them to protect their rights, and, second, to enable the Community judicature to review the legality of the decision (see the judgment of 6 September 2012 in Case C‑96/11 P Storck v OHIM, not published in the ECR, paragraph 86, and Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 43 and the case-law cited).
64 However, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct (Case T‑349/03 Corsica Ferries France v Commission [2005] ECR II‑2197, paragraphs 58 and 59, and the judgment of 17 December 2009 in Case T‑490/07 Notartel v OHIM – SAT.1 (R.U.N.), not published in the ECR, paragraph 27).
65 The applicant claims that the reasoning of the contested decision is contradictory in that the word ‘metro’ was considered to be a fanciful word, since it does not exist in German, unlike to the word ‘invest’, which was considered to be descriptive, even though it does not exist in German either. Given that the two words are English and only the word ‘metro’ is used in German, without any change to its original spelling, it follows that neither of those words is distinctive or that they are, at best, words with weak distinctive character.
66 By that complaint, the applicant calls into question the Board of Appeal’s analysis to the effect that, first that the word ‘metro’ was distinctive and, second, that the word ‘invest’ was descriptive.
67 According to case-law, the distinctive character of a sign must be determined by reference to the service to which it relates (see Case T‑316/03 Münchener Rückversicherungs‑Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II‑1951, paragraph 26; and the judgment of 13 December 2007 in Case T‑242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 51; see also Lloyd Schuhfabrik Meyer, paragraph 23 above, paragraphs 22 and 23).
68 It follows that the challenge to the Board of Appeal’s finding that the word ‘metro’ is distinctive and the word ‘invest’ is descriptive does not concern infringement of the obligation to state reasons, but a potential error of law under Article 8(1)(b) of Regulation No 207/2009.
69 In that regard, it has already been pointed out, in the context of the examination of the second plea in law, that the Board of Appeal did not err in law in finding that the word ‘metro’ was distinctive in relation to the services concerned and that the word ‘invest’ was descriptive of those services.
70 It follows from the foregoing that the complaint alleging infringement of the obligation to state reasons must be rejected.
71 In the second place, as regards the alleged infringement of Article 14 of the ECHR, the applicant may be regarded, as is apparent from the application, as relying in actual fact on a lack of consistency within the contested decision, giving rise to an infringement of the principle of equal treatment, which is a general principle of EU law.
72 In that regard, suffice it to note that the descriptive character or lack of distinctive character of the signs at issue depends on the nature of the services covered by those signs.
73 Therefore, as is apparent from paragraphs 53 to 55 above, the Board of Appeal did not display inconsistency when it found that the word ‘metro’ was distinctive in relation to the services concerned, whereas the word ‘invest’ was descriptive of those services.
74 Finally, as regards the applicant’s arguments that OHIM ought to have registered the trade mark application, since, in other cases, OHIM has rejected the opposition against the registration of marks which included the word ‘metro’, suffice it to point out that observance of the principle of equal treatment must be reconciled, with observance, specifically, of the principle of legality. According to that principle, no person may rely, in support of his claim, on a unlawful act committed in another procedure (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 75 and 76, and Mozart, paragraph 63 above, paragraph 65).
75 It follows that the applicant cannot reasonably rely, for the purpose of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on previous decisions of OHIM (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraph 74 above, paragraphs 78 and 79).
76 The same is true of OHIM decision R 2440/2010-1, delivered on 1 March 2012 and therefore after the action was lodged by the applicant in the present case, an action which relates to the applicant’s opposition, on the basis of the earlier figurative Community mark GRUPOMETROPOLIS, to the registration of the figurative mark METRO for services in Class 36.
77 In addition to the fact that the applicant, proprietor of the earlier mark GRUPOMETROPOLIS, has brought an action before the General Court against the decision rejecting the opposition to the registration of the mark METRO, to the benefit of the intervener, it must be pointed out that the lawfulness of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Community judicature, and not on the basis of the previous decision-making practice of the Boards of Appeal (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 71 and the case-law cited).
78 In the present case, it is apparent that the application for registration was caught by the ground for refusal set out in Article 8(1)(b) of Regulation No 207/2009. It follows that the applicant cannot reasonably rely, for the purpose of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on a decision by OHIM, including a subsequent decision (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraph 74 above, paragraphs 78 and 79).
79 It follows from all the foregoing that the first plea in law must also be rejected as well as the action in its entirety, without there being any need to rule on the heads of claim relating to the request to alter the contested decision and to the registration of the mark applied for (see, to that effect, the judgment of 8 December 2011 in Case T‑586/10 Aktieselskabet af 21. november 2001 v OHIM – Parfums Givenchy (only givenchy), not published in the ECR, paragraph 67 and the case-law cited).
Costs
80 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. dismisses the action,
2. orders Metropolis Inmobiliarias y Restauraciones, SL, to pay the costs.
Truchot | Martins Ribeiro | Popescu |
Delivered in open court in Luxembourg on 25 April 2013.
[Signatures]