JUDGMENT OF THE GENERAL COURT (Third Chamber)
3 October 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark wanda films — Earlier EU word mark WANDA — Relative ground for refusal — Restriction of the application for registration — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑542/18,
Wanda Films, SL, established in Pozuelo de Alarcón (Spain),
Wanda Visión, SA, established in Pozuelo de Alarcón,
represented by C. Planas Silva, lawyer,
applicants,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dalian Wanda Group Co. Ltd, established in Dalian (China), represented by M. Hawkins, Solicitor, and by T. Dolde and K. Lüder, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 July 2018 (affaire R 829/2017-5), relating to opposition proceedings between Dalian Wanda Group and Wanda Films,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 September 2018,
having regard to the response of EUIPO lodged at the Court Registry on 4 January 2019,
having regard to the response of the intervener lodged at the Court Registry on 14 January 2019,
having regard to the request for a stay of proceedings lodged at the Court Registry by the applicant on 8 February 2019,
having regard to the observations on the request to stay proceedings lodged at the Court Registry by EUIPO and the intervener on 20 February 2019 and 26 February 2019 respectively,
having regard to the decision of 1 March 2019 rejecting the request for a stay of proceedings lodged by the applicant,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 1 April 2015, the first applicant, Wanda Films, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9 and 41 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:
– Class 9: ‘Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment’;
– Class 41: ‘Services of a film distributor; Education; Entertainment; Sporting and cultural activities; Audio and visual entertainment services; Production, distribution and management of motion picture films, cable television programmes and television programmes; Entertainment services in the nature of live-action, comedy, drama and/or animated television programmes; Production of comedies, dramas and/or live-action television programmes; Production of live-action, comedy, drama and/or animated motion picture theatrical films; Internet services in the nature of providing information via a global computer network in the field of entertainment relating specifically to music, movies, and television series; Providing of general-interest news relating to a production company’s audiovisual goods and services via a global computer network or the internet; Studio services for the recording of cine-films; Publication of books’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2015/095 of 26 May 2015.
5 On 21 August 2015, the intervener, Dalian Wanda Group Co. Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7 The opposition was based, inter alia, on the earlier EU word mark WANDA, filed on 10 September 2012 and registered on 2 May 2013 under number 11212651 for goods and services in, inter alia, Classes 9 and 41 and corresponding to the following description:
– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; cosmographic instruments; Global Positioning System [GPS] apparatus; ionization apparatus not for the treatment of air or water; navigation apparatus for vehicles [on-board computers]; navigational instruments; protection devices for personal use against accidents; radar apparatus; railway traffic safety appliances’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts’.
8 In support of its EU trade mark application, the first applicant claimed seniority of its Spanish national trade mark WANDA FILMS, lodged in 1993 and registered in 1994, which thus preceded the earlier mark, lodged in 2012 and registered in 2013. Other Spanish national trade marks held by the first applicant and by Wanda Visión, SA, the second applicant, were also relied on during the opposition proceedings.
9 On 28 February 2017, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EC) No 207/2009.
10 On 26 April 2017, the first applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. In support of that appeal, it pointed out, inter alia, that its trade name coincided with the trade mark applied for and also stated that it has held the domain name ‘wandafilms.com’ since 2002.
11 In its statement of grounds before the Board of Appeal, the first applicant requested, with regard to the application for registration, that the services included in Class 38 be withdrawn and that Classes 9 and 41 be restricted.
12 By decision of 6 July 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the first applicant’s appeal. In particular, as regards the restriction of the goods and services requested by the first applicant, the Board of Appeal accepted the withdrawal of Class 38 and the restriction of Class 41 but rejected that of Class 9. Furthermore, it stated that it had been accepted by EUIPO that the seniority of the mark applied for dates back to 17 February 1993. On the substance, it found that the goods and services concerned were identical, that the relevant public would have a degree of attention ranging from average to higher than average, that the signs at issue were similar to at least an average degree and that, considering all of those factors, there was a likelihood of confusion between the signs at issue.
Forms of order sought
13 The applicants claim that the Court should:
– regard as admissible their arguments and documents submitted in support of the present action and before EUIPO;
– annul the contested decision;
– allow registration of the mark applied for.
14 EUIPO contends that the Court should:
– dismiss the action as manifestly unfounded;
– order the applicants to pay the costs incurred by EUIPO.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicants to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.
Law
Admissibility
Locus standi
16 The intervener and EUIPO submit, in essence, that the action is inadmissible in so far as it is brought by the second applicant since it was neither an applicant for the mark applied for nor a party to the administrative proceedings before EUIPO.
17 It should be noted that, according to settled case-law, where admissibility must be established for one and the same application lodged by a number of applicants and the application is admissible in respect of one of them, there is no need to consider whether the other applicants are entitled to bring proceedings (see, to that effect, judgments of 24 March 1993, CIRFS and Others v Commission, C‑313/90, EU:C:1993:111, paragraph 31; of 9 September 2008, Bayer CropScience and Others v Commission, T‑75/06, EU:T:2008:317, paragraph 68; and of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraphs 35 and 36).
18 Taking account of the fact that the first applicant, who applied for registration of the trade mark in question and was a party to the administrative proceedings, is entitled to bring proceedings, as acknowledged by EUIPO and the intervener, it is therefore not necessary to examine whether the second applicant is entitled to bring proceedings in order to decide on the admissibility of the action.
19 It follows from all the foregoing that the action is admissible.
Documents presented for the first time before the Court
20 The applicants challenge the contested decision by claiming, inter alia, in essence, that the reputation of the trade mark applied for on the market of cinema production and distribution was not properly taken into account. In support of that argument, they submitted, as an annex to this action, documents to demonstrate their commercial activity on the market which they consider relevant.
21 The intervener submits that Annexes 5 to 8 to the application are new documents, in that they had not been produced before EUIPO. Therefore, in its view, those documents are inadmissible.
22 It must be noted that the documents referred to in paragraph 21 above were produced for the first time before the Court and cannot therefore be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Moreover, the applicants failed to provide any evidence to explain the specific reason as to why the Court should take that evidence into account, even though it was produced before it for the first time, and merely request the Court to ‘deem admissible their arguments and documents submitted in support of the present action’. Accordingly, those documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR AND FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
Head of claim seeking annulment of the contested decision
23 The applicants allege, in essence, an infringement of Article 8(1)(b) of Regulation 2017/1001 by challenging the Board of Appeal’s finding that there is a likelihood of confusion between the signs at issue.
24 However, they do not challenge the Board of Appeal’s assessment regarding the similarity of the goods and services covered by the signs at issue or the assessment regarding the similarity of those signs (see paragraphs 33 to 44 below).
25 EUIPO and the intervener dispute the applicants’ arguments concerning the allegation that there is no likelihood of confusion between the signs at issue.
26 Under Article 8(1)(b) of Regulation 2017/1001, 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.
27 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 and services in question in that territory. However, it must be borne in mind that, in order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal under 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).
– Relevant public
28 According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
29 In the present case, first of all, the Board of Appeal correctly held, in paragraph 27 of the contested decision, that, since the earlier mark is an EU trade mark, the relevant territory was that of the European Union, without that finding being challenged by the parties.
30 Next, the Board of Appeal found, in paragraph 28 of the contested decision, that the relevant public was composed not only of the general public but also of business clients with specific professional experience or knowledge. Thus, it took the view that the level of attention of the relevant public will vary from average to higher than average.
31 In this respect, while the applicants argue, in essence, that the relevant public is composed of professionals who will show a high level of attention, they nevertheless agree with the Board of Appeal’s assessment that that level of attention may be classified as ‘higher than average’.
32 In addition, in the event that the applicants seek to challenge the average level of attention of part of the relevant public, it should be noted that some of the goods and services concerned, such as, for example, the ‘audiovisual equipment’ in Class 9, and the ‘entertainment services in the nature of live-action’, in Class 41, may be intended for the general public. The applicants do not dispute that the general public will have an average level of attention in respect of them. The Board of Appeal therefore rightly found that the level of attention of the relevant public will vary from average to higher than average.
– Comparison of the goods and services
33 According to settled case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to them should be taken into account. Those factors include, in particular, 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 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).
34 In the contested decision, the Board of Appeal, first of all, as a preliminary point, considered that the restriction of Class 9 requested by the first applicant should be rejected in so far as the proposed wording of Class 9 for the purposes of the restriction, that is to say ‘audiovisual equipment for cinema production and distribution purposes’, was imprecise, since it was unclear to which kind of goods it referred (paragraphs 18 to 20 of the contested decision). It then stated that all the goods and services concerned which remained in dispute, included in Classes 9 and 41, were identical (paragraphs 32 to 51 of the contested decision).
35 The applicants, on the one hand, complain that the Board of Appeal rejected the proposed Class 9 restriction and, on the other hand, contest the Board of Appeal’s assertion that, even if the restriction had been allowed, it would not have affected its conclusion.
36 EUIPO and the intervener dispute those arguments.
37 First, it must be stated, in the light of the comparison of the goods and services protected by the earlier mark and those covered by the mark applied for, that the Board of Appeal did not err in finding them to be identical, moreover, that conclusion of the Board of Appeal as regards the similarity of the goods and services is not contested by the parties.
38 Second, it should be noted that the applicants’ arguments concerning the Class 9 restriction which was refused by the Board of Appeal are not relevant for the purpose of analysing the likelihood of confusion between the marks at issue since, if the requested restriction had been accepted, that fact would not have had any impact on the Board of Appeal’s comparison of the goods and services in question. Restriction of the analysis to only part of the goods and services covered by the trade mark applied for cannot change the conclusion that the goods and services covered by the marks at issue are identical.
– Comparison of the signs
39 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
40 In the contested decision, the Board of Appeal found, in essence, that the signs at issue were similar to at least an average degree. In particular from a visual standpoint it noted that even though the sign applied for contains an added word and additional figurative elements, that difference is not enough to counteract the visual similarity created by the element ‘wanda’. It also found that the signs at issue were similar to at least an average phonetic and conceptual degree (paragraphs 62 to 65 of the contested decision).
41 In the first place, with regard to visual similarity, the signs at issue are similar to the extent that they contain the common word element ‘wanda’, of which the earlier mark alone is composed and which constitutes the initial part of the word element of the mark applied for. However, those signs differ in the word element ‘films’, which is present only in the mark applied for, and in the figurative elements, also present only in the mark applied for. In this respect, it must be recalled that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 28 and the case-law cited). Moreover, the figurative element composed of a dotted line present only in the mark applied for has a weak distinctive character. In the present case, in the light of those considerations, it must be concluded, as the Board of Appeal did (paragraphs 60 to 62 of the contested decision), that the signs at issue are visually similar to an average degree.
42 In the second place, phonetically, the signs at issue contain a common word element, which is pronounced identically and, as the Board of Appeal correctly points out in paragraph 63 of the contested decision, irrespective of the rules of pronunciation in the various parts of the relevant territory. However, the earlier mark is composed of two syllables, while the mark applied for is composed of three syllables. Consequently, it must be held, as the Board of Appeal did, that the similarities between the earlier mark and the initial part of the mark applied for outweigh the differences resulting from the presence of the element ‘films’ in the mark applied for. Thus, the signs at issue are phonetically similar to an average degree.
43 In the third place, conceptually, as was correctly stated in paragraph 64 of the contested decision, the word element ‘wanda’ common to the signs at issue will be perceived, at least by part of the relevant public, as designating a female first name and is not devoid of distinctive character. As regards the word element ‘films’, present only in the sign applied for, it must be stated that it may be descriptive for a large part of the relevant goods and services and therefore has a weak distinctive character with regard to them which does not make it possible to establish a significant conceptual difference between the two signs in question. Therefore, it must be concluded that the signs at issue are conceptually similar to an average degree.
44 It follows from the foregoing considerations that the Board of Appeal correctly found that the signs at issue are, on the whole, similar to at least an average degree, a finding which is not contested by the parties.
– Likelihood of confusion
45 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services 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).
46 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).
47 In paragraph 76 of the contested decision, the Board of Appeal considered that, taking into account all relevant factors, the similarities between the signs in question were, taken overall, sufficient to take the view that there was a likelihood of confusion between the marks at issue for the relevant public, despite the fact that the level of attention of the relevant public may be higher than average.
48 In particular, the Board of Appeal primarily pointed out that, in so far as the signs in question were similar and the goods and services concerned were identical, when confronted with the sign applied for, a consumer who is aware of the earlier mark would be led to believe that the marks at issue have an identical commercial origin or would establish a link between them. Moreover, since the relevant public does not have the possibility of making a direct comparison between those trade marks but must place its trust in the imperfect picture of them that it has kept in its mind, the fact that the marks at issue are not the same in terms of the word elements as a whole is not sufficient to prevent the relevant public from confusing them, given that they are visually, phonetically and conceptually similar and cover identical or similar goods and services. Finally, the Board of Appeal pointed out that it was common for undertakings active on the market to use sub-brands, that is to say signs derived from a principal mark and which coincide in the same element, in order to distinguish the scope of one product from another and that that fact was likely to lead the relevant public to regard the identical goods designated by the marks at issue as originating from the same undertaking or economically linked undertakings (paragraphs 70 to 74 of the contested decision).
49 The applicants dispute the Board of Appeal’s finding by arguing, in essence, first, that the sign applied for is used on the relevant market and has a reputation among the relevant public, which prevents the latter from confusing the two signs in question. In addition, the applicants describe their activity and the use they make of the sign applied for to distinguish them from the intervener’s alleged activity and thus demonstrate that there is no likelihood of confusion between the signs at issue. They also state that the sign applied for was not filed in order to take advantage of the earlier mark. Finally, they claim to be the proprietors of several Spanish intellectual property rights, of which several trade marks include the word element ‘wanda films’.
50 Second, the applicants argue that the term ‘wanda’ cannot be reserved for the benefit of a single undertaking as it is a first name, whose use is very widespread, as a first name or as a word, particularly in the arts sector and in any part of the world. In addition, it is not possible to register common first names such as, for example, Maria or James as trade marks.
51 Third, the applicants submit that the earlier mark has little or no distinctive character and that the intervener has not established its ‘reputation’.
52 EUIPO and the intervener dispute the applicants’ arguments.
53 The Board of Appeal’s analysis that there is a likelihood of confusion must be confirmed. Taking into account all the relevant factors and in particular having regard to the high similarity of the goods and services in question and the at least average similarity of the signs at issue, it must be noted that there is a likelihood of confusion on the part of the public who may believe that the goods and services designated by the marks at issue come from the same undertaking or, at the very least, from affiliated undertakings.
54 In particular, first, in so far as the applicants seek to assert the existence of earlier rights, their use on the relevant market and their reputation, it should be noted that the possibility for the applicants to rely on a trade mark registered in a Member State, on a non-registered trade mark or on another sign used in the course of trade is covered by an application for a declaration of invalidity against the earlier trade mark pursuant to Article 63(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation.
55 Moreover, it should be noted that reputation is relevant in assessing whether there is a likelihood of confusion as regards the earlier mark, but that that is not the case in respect of the assessment of the distinctiveness of the mark applied for (see judgment of 29 March 2017, J & Joy v EUIPO — Joy-Sportswear (J&JOY), T‑389/15, not published, EU:T:2017:231, paragraph 94 and the case-law cited).
56 In this respect, it must be recalled that, admittedly, as the Opposition Division has pointed out, it cannot be entirely ruled out that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the EUIPO authorities find exists between two opposing trade marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 10 April 2013, Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, not published, EU:T:2013:160, paragraph 48 and the case-law cited). In the present case, it should be pointed out that, before the Board of Appeal, the first applicant did not attempt to demonstrate or even argue that the coexistence between the earlier trade mark and its earlier rights was based on the absence of any likelihood of confusion between those various rights, even though they share the same word element ‘wanda’, of which the earlier trade mark alone is composed.
57 In that regard, the applicants’ arguments before the Court and the evidence submitted before EUIPO are intended to establish the applicants’ presence on the market of cinema production and distribution which they consider relevant. While that evidence does in fact concern use of the Spanish trade marks held by the applicants and at issue on that market, it is not sufficient to establish that those marks coexisted peacefully on the relevant market with the earlier trade mark.
58 It should first be noted that the applicants confine themselves to describing their activity on the market of cinema production and distribution, but do not claim before the Court that their Spanish trade marks and the earlier trade mark coexist peacefully and that that coexistence is due to an absence of a likelihood of confusion between those trade marks or provide any evidence to that effect.
59 Next, as regards the geographic scope of such a coexistence, it is apparent from the case-law that, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark and the coexistence of that earlier mark with a trade mark identical to the mark applied for is relied on in support of the claim that there is no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union (see, to that effect, judgment of 13 April 2010, Esotrade v OHIM — Segura Sánchez (YoKaNa), T‑103/06, not published, EU:T:2010:137, paragraphs 47 and 48). If the likelihood of confusion exists potentially throughout the European Union owing to the scope of the earlier trade mark, the absence of any likelihood of confusion as a result of the coexistence of marks identical to the marks at issue must, in turn, be proved throughout the European Union. The evidence submitted by the applicants relates to the territories of some Member States, inter alia, Germany, Spain, France and Italy, but does not cover the whole territory of the European Union.
60 Consequently, in the present case, proof that the coexistence of the marks in question on the relevant market is based on the claim that there was no likelihood of confusion on the part of the relevant public is not apparent from the applicants’ substantiation, as the Board of Appeal correctly found in paragraph 77 of the contested decision.
61 Second, as regards the distinctive character of the earlier mark, the Court takes the view that it must be classified as normal. In this respect, it should be noted that the term ‘wanda’ is not, inter alia, descriptive of the goods and services concerned or their characteristics, or is related to them, commonly used in trade to describe them, or laudatory.
62 In addition, it should be concluded that the applicants’ arguments relating to the widespread use of the term ‘wanda’ must be understood as challenging its distinctive character and are thus in line with the arguments directly calling into question the distinctive character of the earlier mark, since it consists solely of that term. That finding on the distinctive character of the earlier mark is not affected by the applicants’ arguments concerning the character of the term ‘wanda’ commonly used as a first name or in the arts sector.
63 Next, even if, in the present case, the distinctive character of the earlier mark were to be regarded as weak, the Court has repeatedly pointed out that the finding of a weak distinctive character of the earlier mark does not preclude the finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). In the present case, the Board of Appeal correctly found that, in so far as the goods and services concerned were identical, the similarities between the signs at issue were, on the whole, sufficient to conclude that there was a likelihood of confusion for the relevant public.
64 Moreover, it should be noted that, if the arguments relating to the lack of distinctive character of the earlier mark, based on the commonly used character of the term ‘wanda’, should be understood as disputing the registrability of the earlier mark, they are not relevant in the present opposition proceedings. It follows from the provisions of Articles 59 and 62 of Regulation 2017/1001 that an EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the review carried out by EUIPO in the examination of an application for registration. In the present case, since the earlier trade mark thus enjoys a presumption of validity, arguments such as those put forward by the applicants to challenge its registrability are covered by an application for a declaration of invalidity against the earlier trade mark pursuant to Article 63(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation.
65 Finally, in so far as the applicants submit that their activity differs from that carried out by the intervener, the Board of Appeal correctly pointed out that the comparison of goods and services must be based on the wording indicated in the respective lists of goods and services covered by the marks at issue. The actual or intended use of goods not indicated in the list of goods covered by the trade marks concerned is not relevant for the purpose of assessing the similarity of the goods in question. In order to assess the similarity of those goods, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the group of goods protected by the marks at issue must be taken into consideration, and not the goods actually marketed under those marks.
66 In view of all the above considerations, the Board of Appeal correctly found that there was a likelihood of confusion between the marks at issue for the relevant public. Consequently, the single plea in law and, therefore, the applicants’ head of claim seeking annulment of the contested decision must be rejected.
Head of claim seeking alteration of the contested decision
67 The applicants request the Court to allow registration of the trade mark applied for and thus, in essence, alteration of the contested decision.
68 It should be noted that the review carried out by the Court under Article 72(3) of Regulation 2017/1001 is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 72(2) of Regulation 2017/1001 (see judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited).
69 As the single plea in law relied on by the applicants in support of the application for annulment must be rejected, as established above, the contested decision is not vitiated by any of the grounds of unlawfulness referred to in Article 72(3) of Regulation 2017/1001. It is therefore not appropriate to grant the applicants’ application to alter the contested decision, and their head of claim for that purpose must be rejected.
70 In the light of the above findings, the present action must be dismissed in its entirety.
Costs
71 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 applicants have been unsuccessful, they must be ordered to pay the costs incurred for the purposes of the proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener.
72 The intervener further claimed that the applicants should be ordered to repay to it the costs which it incurred for the purposes of the proceedings before the Opposition Division and the Fifth Board of Appeal of EUIPO. Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicants should be ordered to repay the costs necessarily incurred by it for the purposes of the proceedings before EUIPO can be allowed only as regards the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Wanda Films, SL and Wanda Visión, SA to pay the costs, including those incurred by Dalian Wanda Group Co. Ltd for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 3 October 2019.