JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
24 March 2010 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark nollie – Earlier national and international word marks NOLI – Relative ground for refusal – No similarity between the goods – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)) – Article 74(1) of Regulation No 40/94 (now Article 76(1) of Regulation No 207/2009))
In Case T‑364/08,
2nine Ltd, established in London (United Kingdom), represented by S. Palmer, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Pacific Sunwear of California, Inc., established in Anaheim, California (United States),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 June 2008 (Case R 1591/2007-2), relating to opposition proceedings between 2nine Ltd and Pacific Sunwear of California, Inc.,
THE GENERAL COURT (Fourth Chamber),
composed of O. Czúcz (Rapporteur), President, I. Labucka and K. O’Higgins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 29 August 2008,
having regard to the response of OHIM lodged at the Registry of the Court on 19 December 2008,
having regard to the response of Pacific Sunwear of California lodged at the Registry of the Court on 23 December 2008, that company’s application to withdraw that response from the file and the decision of the President of the Fourth Chamber of the Court of 2 March 2009 to grant that application,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1 On 23 August 2005, Pacific Sunwear of California, Inc. (‘Pacific’) 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 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 3, 9, 11, 14, 18, 20, 25 and 26 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 3: ‘Perfumes, colognes, scented body sprays’;
– Class 9: ‘Sunglasses’;
– Class 11: ‘Electric light bulbs’;
– Class 14: ‘Jewellery, namely bracelets, rings, necklaces, watches, belly chains, chokers, earrings’;
– Class 18: ‘Coin purses, leather purses, tote bags, umbrellas, handbags, purses, backpacks, messenger bags, wallets’;
– Class 20: ‘Pillows’;
– Class 25: ‘Men, women and children’s apparel, namely, hats, caps, visors, gloves, mittens, wristbands, belts, socks, stockings, pantyhose, leggings, shoes, scarves, mufflers, pyjamas, robes, underpants, skirts, swimming trunks, tunics, tank tops, cotton woven shirts, knit shirts, polo shirts, t-shirts, sweatshirts, crew neck sweater, v-neck sweaters, turtleneck sweaters, cardigans, shorts, shawls, jackets, outer jackets, flannel jackets, wool jackets, polyester woven shirts, rayon woven shirts, wool woven shirts, sneakers, boots, sandals, slippers, shirts, blouses, knit tops, dresses, jeans, pants, slacks, trousers, sweat pants, denim shorts, denim jackets’;
– Class 26: ‘Belt buckles, barrettes, hair pins, hair clips, hair scrunchies’.
4 The trade mark application was published in Community Trade Marks Bulletin No 8/2006 of 20 February 2006.
5 On 17 May 2006, the applicant, 2nine Ltd, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for.
6 The opposition was based on international registration No 839740 with effect in the European Union and on United Kingdom registration No 2361525 of the word mark NOLI, which cover goods in Classes 3, 18, 24 and 25 corresponding, for each of those classes, to the following description:
– Class 3: ‘Soaps, perfumes, essential oils, cosmetics’;
– Class 18: ‘Leather and imitations of leather and goods made of these materials not included in other classes; animal skins, trunks and travel bags’;
– Class 24: ‘Textiles and textile goods, not included in other classes; bed covers’;
– Class 25: ‘Clothing, footwear, headgear’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was based on all the goods covered by the earlier marks and was directed against all the goods covered by the application for the trade mark excluding those in Class 11.
8 On 8 August 2007, the Opposition Division upheld the opposition and rejected the application for registration in respect of all the goods referred to on the basis that there was a likelihood of confusion. It found that the goods in Classes 3, 9, 14, 18, 20, 25 and 26 covered by the application for registration, on the one hand, and the goods in Classes 3, 18, 24 and 25 covered by the earlier marks, on the other hand, were identical or similar. It also found that the signs at issue were visually and aurally similar.
9 On 7 October 2007, Pacific filed a notice of appeal with OHIM, under Articles 57 and 62 of Regulation No 40/94 (now Articles 58 and 64 of Regulation No 207/2009), against the decision of the Opposition Division.
10 By decision of 16 June 2008 (‘the contested decision’), the Second Board of Appeal partially upheld the appeal and found that the goods in Classes 9 and 14 as well as ‘barrettes, hair pins, hair clips, hair scrunchies’ in Class 26 covered by the mark applied for (taken together ‘the goods in dispute’) were dissimilar to the goods covered by the earlier marks. Consequently, it annulled the Opposition Division’s decision in so far as it had rejected the application for registration in respect of the goods in dispute.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as, in respect of the goods in dispute, the Board of Appeal annulled the Opposition Division’s decision;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action the applicant relies on two pleas in law. The first plea alleges breach of Article 8(1)(b) of Regulation No 40/94. The second plea alleges breach of Article 74(1) of Regulation No 40/94 (now Article 76(1) of Regulation No 207/2009).
The first plea: breach of Article 8(1) of Regulation No 40/94
Arguments of the parties
14 The applicant submits that the Opposition Division correctly found that the goods in dispute and the goods covered by the earlier marks were similar, with the result that there was also a likelihood of confusion in respect of the goods in dispute and, therefore, that the Board of Appeal erred in annulling the decision of the Opposition Division in that regard.
15 First of all, it refers to the case-law according to which, in assessing the similarity of the goods in question, their nature, intended purpose, method of use and whether they are complementary should be taken into account. The applicant submits that the goods in dispute are clothing accessories which must be considered, on the basis of that case-law, to be similar to clothing.
16 First, the applicant submits that it is common knowledge that certain well-known major brands and/or high street retail shops market not only their range of clothing, but also all items sold to the same end users which accompany or complement such items, such as the goods in dispute. In support of that assertion, the applicant refers to the annexes to its application. The goods in dispute generally add to the aesthetic value of fashionable clothing garments and are in some cases an essential complement to clothing.
17 The applicant adds that the extracts obtained from Pacific’s website show that the mark applied for is affixed to a wide variety of fashion goods, including clothing, handbags and perfume.
18 Secondly, the applicant refers to Case T‑115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II‑2907, paragraph 26, and concludes that the Court has already recognised the similarity between different types of clothing and between clothing and accessories. It also quotes Part 2, Chapter 2, point B III 2.6.2 of the OHIM Opposition Guidelines which reads as follows:
‘The goods handbags in class 18 are closely related to articles of clothing; footwear in class 25, in the sense that they are likely to be considered by the consumers as accessories to articles of outer clothing and even to footwear (for example women’s handbags). Even if it is not usual for clothing manufacturers to directly produce and market handbags, it is reasonable that a significant part of the public considers such goods to be “complementary accessories”, because they are closely coordinated with outer clothing and footwear and they may well be distributed by the same or linked manufacturers. Moreover, these goods can be found in the same shops.’
19 Secondly, as regards the likelihood of confusion, the applicant submits that, according to the judgment in Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks. Therefore, in light of the fact that the trade marks at issue are extremely similar, a lesser degree of similarity between the goods in dispute and the goods covered by the earlier marks is sufficient to create a likelihood of confusion.
20 Lastly, the applicant submits that there is a near identity between the goods covered by the earlier marks in Class 25 described as ‘headgear’ and the goods in dispute, since ‘sunglasses’, ‘jewellery’ and ‘earrings’ are worn on the head, ‘chokers’ and ‘necklaces’ are worn next to the head and ‘barrettes, hair pins, hair clips, hair scrunchies’ are worn in the hair.
21 OHIM disputes the applicant’s arguments.
Findings of the Court
22 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) and (iv) of Regulation No 40/94 (now Article 8(2)(a)(ii) and (iv) of Regulation No 207/2009), ‘earlier trade marks’ means inter alia trade marks registered in a Member State and trade marks registered under international arrangements which have effect in the Community 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 in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
24 In the present case, having regard to the fact that the goods at issue are everyday consumer goods and that the international trade mark NOLI has effect in the European Union, the target public is the average European Union consumer. That average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).
25 The applicant does not dispute the Board of Appeal’s finding that the signs at issue are manifestly similar. However, it complains that the Board of Appeal erred in finding that the goods in dispute were dissimilar to the goods covered by the earlier marks.
– Admissibility of certain arguments and certain documents submitted by the applicant
26 OHIM maintains that the documentary evidence concerning the individual practices of specific fashion designers and retail shops, the location of the applicant’s shops in London, the specific range of Pacific’s products to which the mark applied for is affixed and the fact that ‘headgear’ and the goods in dispute in Class 26 are all worn on the head was not submitted to the Board of Appeal, with the result that those facts and the arguments relating to them cannot be taken into account by the Court.
27 In that regard, it should be noted that the purpose of actions brought before the Court is to review the legality of the decisions of the Boards of Appeal within the meaning of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009). Therefore, facts which are relied upon before the Court without having been first brought before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion. Further, pursuant to Article 74 of that regulation, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought and is not required, of its own motion, to take into consideration facts or evidence which were not submitted in due time by the parties concerned. Such facts or evidence cannot, therefore, call into question the legality of a decision of the Board of Appeal (see, to that effect, Case T‑296/02 Lidl Stiftung v OHIM – REWE-Zentral (LINDENHOF) [2005] ECR II‑563, paragraph 31, and Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25).
28 In the present case, an examination of the file submitted to OHIM indicates that the documentary evidence concerning the individual practices of specific fashion designers and retail shops, the location of the applicant’s shops in London, the specific range of Pacific’s products and the fact that ‘headgear’ and the goods in dispute in Class 26 are worn on the head was not submitted to the Board of Appeal in the course of the proceedings before OHIM.
29 Therefore, those facts and evidence cannot call into question the legality of the contested decision, and thus they, and the arguments relating to them, will not be taken into account by the Court.
– The comparison of the goods
30 According to settled case-law, in assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
31 In the present case, the Board of Appeal found that the goods in dispute were dissimilar to the goods in Class 25 covered by the earlier marks. As regards the comparison of ‘sunglasses’ and ‘bracelets, rings, necklaces, watches, belly chains, chokers, earrings’ in Classes 9 and 14, on the one hand, and ‘clothing, footwear, headgear’ in Class 25, on the other hand, it found that those goods could be not categorised as similar on the basis of mere aesthetic considerations. As regards ‘barrettes, hair pins, hair clips, hair scrunchies’, the Board of Appeal found that they could not be considered to be accessories to clothing. According to the Board of Appeal, the goods in dispute were completely dissimilar to ‘clothing, footwear, headgear’ in Class 25 in terms of nature, intended purpose, origin and use. They were manufactured by different industries and sold by different distribution channels and outlets. They thus belonged to different markets and could not compete with one another; nor were they interchangeable, substitutable or complementary since one was not indispensable or important for the use of the others (paragraphs 24 and 25 of the contested decision).
32 The applicant considers the goods at issue to be similar since the goods in dispute accompany or complement ‘clothing, footwear, headgear’, are sold through the same distribution channels and there is a close connection, namely aesthetic, between them.
33 First, the Board of Appeal’s finding that the nature, intended purpose and method of use of the goods at issue are totally different must be upheld. They are manufactured from different raw materials. Furthermore, the clothing, footwear and headgear in Class 25 are manufactured to cover, conceal, protect and adorn the human body (see, to that effect, the judgment of 10 September 2008 in Case T‑96/06 Tsakiris-Mallas v OHIM – Late Editions (exé), not published in the ECR, paragraph 30). By contrast, sunglasses are primarily produced to make it easier to see and to provide users with a feeling of comfort in certain meteorological conditions, watches are primarily produced to measure and indicate the time, jewellery has a purely ornamental function, while ‘barrettes, hair pins, hair clips, hair scrunchies’ are intended to be used to maintain a desired hairstyle and to decorate the hair.
34 Secondly, it must be pointed out that as the nature, intended purpose and method of use of the goods at issue are different they are not in competition with each other.
35 As regards the complementary nature of the goods at issue, it must be borne in mind that, according to the case-law, complementary goods are goods which are closely connected in the sense that one is indispensable or important for the use of the other so that consumers may think that the same undertaking is responsible for the production of both goods (SISSI ROSSI, paragraph 27 above, paragraph 60, and PiraÑAM diseño original Juan Bolaños, paragraph 30 above, paragraph 48).
36 In that regard, the Court has already held that eyewear, jewellery and watches are not similar or complementary to items of clothing since the relationship between those goods is too indirect to be regarded as conclusive (Case T‑116/06 Oakley v OHIM – Venticinque (O STORE) [2008] ECR II‑2455, paragraph 86. The same is true of ‘barrettes, hair pins, hair clips, hair scrunchies’, which it is not indispensable or important to wear to accompany ‘clothing, footwear, headgear’. Although it is true that the selection of a specific item from among such goods for hair may be influenced by the wish to create a harmonious whole with clothing, the fact remains that, according to the case-law, the search for a certain aesthetic harmony in clothing is a common feature in the entire fashion and clothing sector and is too general a factor to justify, by itself, a finding that all the goods concerned are complementary and, thus, similar (SISSI ROSSI, paragraph 27 above, paragraph 62, and O STORE, paragraph 86).
37 It follows that the Board of Appeal was right to find that the goods at issue were not complementary. The applicant’s arguments relating to the judgment in a, paragraph 18 above, and the Opposition Guidelines cannot invalidate that finding since, in that judgment and the Guidelines, the complementary nature of clothing and footwear was examined in relation to goods which were different from those in the present case.
38 Thirdly, the applicant maintains that the goods at issue are often produced by the same manufacturer. However, the evidence which it has submitted in that regard was not brought to the notice of OHIM during the administrative phase of the proceedings, with the result that it cannot be taken into consideration by the Court (see paragraphs 27 to 29 above).
39 Furthermore, the applicant cannot reasonably claim that the distribution channels are identical. The evidence which it has submitted in that regard relates only to certain specific outlets and, in any event, cannot be taken into account by the Court, since it was not brought to OHIM’s notice during the administrative phase of the proceedings (see paragraph 28 above). By contrast, it must be pointed out that the relevant public expects sunglasses, watches and jewellery to be marketed in specialist outlets, the staff of which have specific knowledge relating to those goods. So far as concerns ‘barrettes, hair pins, hair clips, hair scrunchies’, although it is true that certain fashion brands tend to market those goods with articles of clothing, the fact remains that other manufacturers do not follow that practice. Furthermore, those goods for hair are also frequently marketed with goods other than articles of clothing, for example in cosmetic stores. The average consumer cannot therefore associate them with ‘clothing, footwear, headgear’ outlets.
40 It must, moreover, 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 (PiraÑAM diseño original Juan Bolaños, paragraph 30 above, paragraph 44; see also, to that effect, Case T‑8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II‑4297, paragraph 43).
41 In the light of the foregoing, it must be held that the Board of Appeal was right to find that the goods at issue were dissimilar.
– The likelihood of confusion
42 It must be borne in mind that, under Article 8(1)(b) of Regulation No 40/94, 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 relevant public.
43 The Board of Appeal rightly found that one of the necessary conditions, namely the similarity of the goods at issue, was not satisfied and thus there was no likelihood of confusion in the present case.
44 Accordingly, the applicant’s first plea must be rejected in its entirety.
The second plea: breach of Article 74(1) of Regulation No 40/94
Arguments of the parties
45 The applicant complains that the Board of Appeal did not take into account certain arguments submitted by it during the appeal procedure before OHIM.
46 First, the Board of Appeal did not take into account that, in a dispute in the United States in which the roles of the applicant and Pacific were reversed as compared to the present case, Pacific stated that the use of the mark NOLI would give rise to a likelihood of confusion with the mark nollie, the earlier mark in the United States, and would mislead consumers as regards the origin of the goods marketed by the applicant.
47 Secondly, according to the applicant, the Board of Appeal failed to take into consideration its arguments that the degree of similarity between the signs at issue is particularly high, with the result that, particularly aurally, the relevant public will perceive them as a single mark which will inevitably lead to confusion between them.
48 Furthermore, during the assessment of the likelihood of confusion, the Board of Appeal failed to examine the impact of the particularly high degree of similarity of the signs at issue having regard to the principle of interdependence.
49 Thirdly, according to the applicant, the Board of Appeal did not properly take into account certain well-known facts, namely that certain fashion designers and high street retail shops market not only their clothing range of goods, but also accessories which complement those goods, including the goods in dispute.
50 OHIM disputes the applicant’s arguments.
Findings of the Court
51 Article 74 of Regulation No 40/94 provides:
‘1. In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
2. [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’
52 First, it must be borne in mind that, according to the case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47, and Case T‑207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 42). Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant legislation alone. Therefore, neither the Board of Appeal nor, as the case may be, the Courts of the European Union are bound – even if they may take them into consideration – by decisions adopted in a Member State or in a State that is not a member of the European Union (EUROPIG, paragraph 42).
53 Given that even the decisions of the competent authorities of non-member States cannot constitute the basis for OHIM’s assessment of the likelihood of confusion, Pacific’s arguments before the competent authority of a non-member State, to which the applicant refers, is a fortiori irrelevant for that assessment. Therefore, the Board of Appeal did not act unlawfully by omitting to take into account the arguments put forward by the applicant in that regard.
54 Secondly, as regards the applicant’s argument that the high degree of similarity between the signs and the principle of interdependence were not taken into account, it is sufficient to point out that an absence of similarity between the goods at issue in itself precludes any likelihood of confusion (see, to that effect, the judgment of 8 July 2009 in Case T‑71/08 Promat v OHIM – Prosima Comercial (PROSIMA PROSIMA COMERCIAL S.A.), not published in the ECR, paragraph 42), with the result that the Board of Appeal did not act unlawfully when it refrained from analysing the impact of the degree of similarity of the signs on the likelihood of confusion.
55 Thirdly, as regards the applicant’s factual claims relating to the individual practices of specific fashion designers and retail shops being supposedly well-known facts, it must be pointed out that, pursuant to the provisions of Article 74(1) of Regulation No 40/94, in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in its examination to the facts, evidence and arguments provided by the parties and, furthermore, is not required, of its own motion, to take into consideration facts which were not submitted by the parties concerned. Such facts, or factual allegations, cannot, therefore, call into question the legality of a decision of the Board of Appeal (see the case-law cited in paragraph 27 above).
56 Moreover, the only arguments which the applicant submitted before OHIM in that connection were that, in respect of the goods in question ‘the channels of trade, users, uses [were] all likely to be the same’ and that ‘consumers [were] accustomed to finding [the relevant goods] sold through the same sales channel’. The Board of Appeal duly stated its view on the question of the distribution channels (see paragraph 31 above).
57 It follows from the above that the Board of Appeal did not infringe Article 74(1) of Regulation No 40/94.
58 The second plea must therefore also be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
59 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders 2nine Ltd to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Delivered in open court in Luxembourg on 24 March 2010.
[Signatures]