JUDGMENT OF THE GENERAL COURT (Third Chamber)
9 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for the figurative mark ZYTeL — Earlier Community word mark and well-known mark within the meaning of Article 6bis of the Paris Convention ZYTEL — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Detriment to the distinctive character or repute of the earlier mark — Article 8(5) of Regulation No 207/2009)
In Case T‑288/12,
EI du Pont de Nemours and Company, established in Wilmington, Delaware (United States), represented by E. Armijo Chávarri, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Enrique Zueco Ruiz, residing in Zaragoza (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 March 2012 (Case R 464/2011-2) relating to opposition proceedings between EI du Pont de Nemours and Company and Mr Enrique Zueco Ruiz,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas, President, N. J. Forwood and E. Bieliūnas (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 26 June 2012,
having regard to the response lodged at the Court Registry on 10 October 2012,
having regard to the decision of 17 January 2013 refusing to allow the lodging of a reply,
further to the hearing on 15 January 2014,
gives the following
Judgment
Background to the dispute
1 On 6 November 2009, Mr Enrique Zueco Ruiz filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods and services for which registration was sought are in Classes 9, 12 and 37 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Apparatus and instruments for producing, conducting, switching, transforming, accumulating, regulating or controlling electricity, used for renewable energies, and parts and fittings included therein’;
– Class 12: ‘Vehicles and apparatus for locomotion, electric vehicles and apparatus for locomotion, parts and fittings included in this class’;
– Class 37: ‘Installation, assembly and maintenance of motor vehicles and electric vehicles, and apparatus and instruments for producing, conducting and switching electricity in motor vehicles’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 2010/14 of 25 January 2010.
5 On 19 April 2010, the applicant, EI du Pont de Nemours and Company, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier trade marks:
– the Community word mark ZYTEL, registered on 9 December 1998 under number 369314;
– the well-known mark ZYTEL within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’).
7 The earlier marks designate goods in Classes 1 and 17 and correspond, for each of those classes, to the following description:
– Class 1: ‘Synthetic resin plastics in the form of powders and granules’;
– Class 17: ‘Plastics in extruded form for use in the manufacture of artificial and synthetic resins, nylon resins and glass fibre reinforced nylon resins’.
8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
9 On 20 January 2011, the Opposition Division rejected the opposition.
10 On 24 February 2011 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 29 March 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal in its entirety. In particular, it held that, as the goods and services covered by the signs at issue were dissimilar, one of the necessary conditions for the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was not satisfied. It also found that one of the conditions for the application of Article 8(5) of Regulation No 207/2009 was missing as the applicant had not been able to demonstrate that the use of the mark applied for might lead to unfair advantage being taken of the distinctive character or the repute of the earlier trade marks, or be detrimental to the distinctive character of the earlier trade marks.
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of Article 8(5) of Regulation No 207/2009.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
15 The applicant complains, in essence, that the Board of Appeal failed to compare the signs at issue, concluded that the goods and services at issue were different and, consequently, held that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
16 OHIM disputes the applicant’s arguments.
17 Article 8(1)(b) of Regulation No 207/2009 provides that, 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 because of 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)(c) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks which, on the date of application for registration of the Community trade mark, are well-known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.
18 According to settled case-law, the risk that the public might believe that the goods or services at issue come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services at issue, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
The relevant public
20 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 at issue (see Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
21 In paragraphs 20 and 21 of the contested decision, the Board of Appeal held that the goods in Classes 9 and 12 and the services in Class 37, which are covered by the mark applied for, were generally directed at the general public, the awareness of which was usually the same as that of the average consumer. As regards the goods in Class 9 and the services in Class 37, the Board of Appeal added that they were also aimed at a specialised public, such as companies or professionals working in the field of renewable energies. The Board of Appeal noted that the awareness of that specialised public would be higher than that of the average consumer. The Board of Appeal also stated that, since the earlier marks consisted of a Community trade mark and a well-known mark within the meaning of Article 6bis of the Paris Convention, the relevant territory to be considered was the territory of the European Union. The Board of Appeal concluded from this that the likelihood of confusion had to be analysed in relation to the average consumer belonging to the general public in the territory of the European Union and, as regards the goods in Class 9 and the services in Class 37, that likelihood had also to be assessed in the light of the average consumer belonging to the specialised public of the European Union.
22 Furthermore, in paragraph 25 of the contested decision, the Board of Appeal stated that the goods in Classes 1 and 17 covered by the earlier marks were directed at customers such as moulders or converters.
23 In the present case, it should firstly be noted, as was stated by the Board of Appeal and has not been disputed by the applicant, that, since the earlier marks were registered in the territory of the European Union, it is appropriate to refer to the relevant public in the European Union.
24 Next, as regards the composition of the relevant public, it must be stated that the applicant, while accepting that the goods in Classes 9 and 12 include finished products that can be directed at the general public or at a specialised public, considers that the ‘parts and fittings’ in Class 9 and the ‘parts and fittings’ in Class 12, as well as the services in Class 37, can be directed at OEMs and intermediaries in the automotive supply chain, such as moulders and component manufacturers.
25 In this respect, it should be remembered that the examination of the perception of the relevant public must refer to the goods and services as described in the list of goods and services covered by the marks at issue (see, to that effect, judgment of 10 November 2011 in Case T‑22/10 Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), not published in the ECR, paragraph 39, and judgment of 7 February 2012 in Case T‑305/10 Hartmann-Lamboy v OHIM — Diptyque (DYNIQUE), not published in the ECR, paragraph 26).
26 It is apparent from the description of the goods in Classes 9 and 12 and from the description of the services in Class 37 that the Board of Appeal was entitled to hold that those goods and services were directed at the average consumer belonging to the general public, who is reasonably well informed and reasonably observant and circumspect.
27 Concerning the Board of Appeal’s assessment in respect of the specialised public which the goods in Classes 9 and 12 and the services in Class 37 could target, the Court finds as follows.
28 First, as regards the goods in Class 12, the Board of Appeal considers that they are directed only at the general public. However, it should be noted that the ‘parts and fittings’ of vehicles and apparatus for locomotion, whether electric or not, which are covered by Class 12, may also be directed at the specialised public in the automotive sector.
29 Secondly, as regards the goods in Class 9 and the services in Class 37, the Board of Appeal rightly established that they could be directed at a specialised public consisting, for example, of companies and professionals working in the field of renewable energies. It must also be held that the services covered by Class 37 can also be directed at the specialised public in the automotive sector.
30 Finally, as regards the public targeted by the goods in Classes 1 and 17, which are covered by the earlier marks, it must be stated that they are directed at a specialised public composed of moulders and converters, as the Board of Appeal noted.
Comparison of the goods and services
31 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. 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).
32 In paragraph 24 of the contested decision, the Board of Appeal held that the goods and services covered by the mark applied for and the goods covered by the earlier marks were different. First, the Board of Appeal compared (i) the goods in Classes 9 and 12 and (ii) the goods in Classes 1 and 17 and concluded from this, in essence, that they had neither the same intended purpose nor the same method of use, did not usually share the same channels of distribution, were not produced by the same manufacturers and were not complementary (paragraph 25 of the contested decision). Secondly, the Board of Appeal compared the services in Class 37 and the goods in Classes 1 and 17 and concluded from this that they were of a different nature and that their distribution channels were dissimilar (paragraph 27 of the contested decision).
33 The applicant contests the Board of Appeal’s assessment and claims, in essence, that the goods in Classes 9 and 12, which are covered by the mark applied for, and the goods in Classes 1 and 17, which are covered by the earlier marks, present a certain degree of similarity.
34 OHIM disputes the applicant’s arguments.
35 In this connection, it should first of all be noted that the parties agree that the goods in Classes 1 and 17, which are covered by the earlier marks, cover plastic or synthetic products which are used as a raw material. Conversely, the goods in Classes 9 and 12, which are covered by the mark applied for, are finished products. Therefore, they are of a different nature and can be neither substitutable nor competing.
36 Next, as regards the intended purpose of the goods at issue, it should be noted, first, that the applicant confuses the concept of the intended purpose of the goods with that of the public targeted by those goods when it claims that the goods at issue may have a common intended purpose since those goods can be directed at the automotive industry and the electric or electronic industry. That argument must therefore be rejected. Secondly, the intended purposes of the goods at issue are different since the goods in Classes 1 and 17 are intended to be turned into other products, whereas the goods in Classes 9 and 12 are intended (i) to produce, conduct, distribute, transform, store, regulate and control electricity, and (ii) to transport persons or objects, respectively.
37 Their methods of use are also different since the goods covered by the earlier marks are a raw material which will be used in order to manufacture another product, the final product being capable of falling within various industrial sectors, whereas the goods covered by the mark applied for are finished products to be used as such.
38 Furthermore, as regards the complementary nature of the goods at issue, it should be remembered that goods or services are complementary where they have a close connection, in the sense that one is indispensable to, or important for, the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods and services intended for different publics cannot be complementary (see easyHotel, paragraphs 57 and 58 and the case-law cited).
39 In that regard, the Court must reject the applicant’s argument that the goods at issue may be complementary in so far as the goods covered by the earlier marks may be used for manufacturing the goods covered by the mark applied for. Goods cannot be regarded as complementary on the ground that one is manufactured with the other (see, to that effect, judgment of 13 April 2011 in Case T‑98/09 Tubesca v OHIM — Tubos del Mediterráneo (T TUMESA TUBOS DEL MEDITERRANEO S.A.), not published in the ECR, paragraph 49).
40 Furthermore, the applicant has not shown how the goods covered by the earlier marks are indispensable to, or important for, the use of the goods covered by the mark applied for.
41 In any event, the publics at which the goods covered by the signs at issue are directed are different, the goods covered by the earlier marks being directed at moulders and converters, as the Board of Appeal rightly observed, whereas the goods covered by the mark applied for are directed at the general public or at the specialised public in the field of renewable energies or in the automotive sector. Therefore, the goods at issue are not complementary.
42 It should also be noted that, contrary to what is asserted by the applicant in its reply, the Board of Appeal did not hold that the manufacturers of the goods at issue are always different, but it stated that they are usually different. In addition, the fact that the goods at issue might be directed at the automotive industry is not in itself sufficient to show that they have the same distribution channels. Likewise, it cannot be inferred from the fact that the raw material and the finished products in that material are on the same production line that those products necessarily have the same distribution channels. Furthermore, there is nothing in the file to conclude that the goods at issue tend to have the same distribution channels.
43 Finally, as for the applicant’s argument that the goods in Classes 1 and 17, which are covered by the earlier marks, are similar to the goods in Classes 9 and 12, which are covered by the mark applied for, since, as a raw material, they may enter into the composition of the finished products, that argument cannot succeed. According to the case-law, the raw materials subject to a transformation process are essentially different from the finished products which incorporate, or are covered by, those raw materials, both by their nature and by their aim and intended purpose (see, to that effect, judgment of 3 May 2012 in Case T‑270/10 Conceria Kara v OHIM — Dima (KARRA), not published in the ECR, paragraph 53).
44 It follows that the Board of Appeal was right to find that the goods at issue were different.
45 As regards the comparison of the goods in Classes 1 and 17, on the one hand, and the services in Class 37, on the other, it should be noted that the principles applicable to the comparison of the goods also apply to the comparison between services and between goods and services. Although, by reason of their very nature, goods are generally different from services, goods and services can nevertheless be complementary, in the sense that, for example, the maintenance of the goods complements the goods themselves, or that services may have the same purpose or use as the goods, and thus compete with each other. It follows that, in certain circumstances, even goods and services may be found to be similar (Case T‑336/03 Éditions Albert René v OHIM — Orange (MOBILIX) [2005] ECR II‑4667, paragraph 66).
46 Nonetheless, in the present case, it must be noted that the applicant does not put forward any argument to support a finding that the services in Class 37 are complementary to the goods in Classes 1 and 17. In addition, the applicant merely states that the considerations put forward in support of its claim that the goods in Classes 9 and 12 and the goods in Classes 1 and 17 are similar also apply to the comparison between the services in Class 37 and the goods in Classes 1 and 17. However, as established above, those considerations have been rejected and no other evidence has been adduced in support of the applicant’s claims relating to the similarity of the services in Class 37 and the goods in Classes 1 and 17.
47 In the light of all the foregoing, the Board of Appeal was right to conclude that the goods and services at issue were different.
The likelihood of confusion
48 It must be borne in mind that, under Article 8(1)(b) of Regulation No 207/2009, 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.
49 However, as the Board of Appeal stated, one of the necessary conditions, namely the similarity of the goods and services at issue, is not satisfied in the present case. Thus, contrary to what the applicant argues, the Board of Appeal was able to conclude that there was no likelihood of confusion, in accordance with the case-law cited in paragraph 19 above, without needing to examine the similarity of the signs at issue.
50 Therefore, the first plea must be rejected.
The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009
51 The applicant claims, in essence, that the mark applied for takes unfair advantage of the earlier marks and that those earlier marks should be granted the broader protection provided by Article 8(5) of Regulation No 207/2009 for marks with a reputation.
52 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
53 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T‑215/03 Sigla v OHIM — Elleni Holding (VIPS) [2007] ECR II‑711, paragraphs 34 and 35, and Case T‑150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraphs 54 and 55).
54 In the present case, the Board of Appeal examined only the fourth condition for the application of Article 8(5) of Regulation No 207/2009 and held that that condition was not satisfied, given that the applicant had not demonstrated that the use of the sign applied for would lead to the risk that unfair advantage would be taken of the distinctive character or the reputation of the earlier mark, or that it would be detrimental to the distinctive character or the reputation of the earlier marks (paragraph 32 of the contested decision).
55 In that regard, first of all, it should be noted that, contrary to the applicant’s claim, the fact that the Board of Appeal examined only the fourth condition does not mean that it considered that the other conditions for the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case. The Board of Appeal was not obliged to examine all the conditions of application since, as they are cumulative, failure to satisfy one of them was sufficient for the application of Article 8(5) of that regulation to be rejected (see, to that effect, Case T‑438/07 Spa Monopole v OHIM — De Francesco Import (SpagO) [2009] ECR II‑4115, paragraph 14 and the case-law cited).
56 Next, the applicant challenges only the conclusion of the Board of Appeal that it had not demonstrated the existence of a risk that the mark applied for would take unfair advantage of the distinctive character or the reputation of the earlier marks.
57 In this respect, it must be recalled that the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (see VIPS, paragraph 40 and the case-law cited).
58 The risk that the use without due cause of the mark applied for will take unfair advantage of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a reputation (VIPS, paragraph 42).
59 Finally, it should be remembered that the objective of Article 8(5) of Regulation No 207/2009 is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark, or to take advantage of that repute or distinctive character. In that connection, it should be made clear that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (see VIPS, paragraph 46 and the case-law cited). Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 25 March 2009 in Case T‑21/07 L’Oréal v OHIM — Spa Monopole (SPALINE), not published in the ECR, paragraph 38).
60 The correctness of the Board of Appeal’s assessment with regard to the existence of that risk in the present case must be examined in the light of that case-law.
61 In that regard, it should be observed that, first of all, the Board of Appeal held that the applicant had not explained how the relevant public would be able to establish a mental link between the goods and services bearing the mark applied for and the goods of the earlier marks, to the point of linking a possible reputation of the earlier marks with the goods or services branded under the mark applied for. The Board of Appeal then stated that it did not see why the relevant public would perceive the mark applied for in such a positive way as to be influenced in its purchase of the goods and services covered by that mark and also wondered whether such a positive perception of the mark applied for could result from the good image of the earlier marks. In this respect, the Board of Appeal held that the fact that some of the goods covered by the earlier marks may be used in the manufacturing of environmentally-friendly goods was not sufficient to produce the aforementioned mental link or to determine an influenced purchasing behaviour in the relevant public. The Board of Appeal also held that the applicant had not explained the reasons why it believed that the relevant public could be attracted by the mark applied for, for reasons other than its own merits, in particular because of the reputation of the earlier marks (paragraph 39 of the contested decision).
62 Finally, the Board of Appeal held that the applicant had not put forward any example which would allow it to understand satisfactorily that there was a risk of such an unfair advantage taking place. In this respect, the Board of Appeal took the view that the applicant cannot merely contend that unfair advantage would be a necessary consequence flowing automatically from the use of the mark applied for in view of the reputation of the earlier marks (paragraph 40 of the contested decision).
63 The applicant contends, in this respect, that it adduced various elements in the proceedings before OHIM in order to demonstrate the existence of a risk that the mark applied for would take unfair advantage of the distinctive character or the reputation of its earlier marks.
64 In this connection, the applicant claims that it adduced proof that its earlier marks enjoyed a leading position and an outstanding awareness in the automotive and electric industries, that the two signs at issue are practically identical and that the goods and services at issue have clear points of connection. According to the applicant, the Board of Appeal carried out only a superficial analysis of the arguments and documents put forward by the applicant in support of its claims and the contested decision is vitiated by wrong, insufficient and inadequate reasoning.
65 OHIM disputes the applicant’s arguments.
66 In this respect, as regards, first, the statement of reasons for the contested decision, it should be remembered that the statement of reasons required by Article 296 TFEU must be appropriate to the measure at issue and must disclose in a clear and unequivocal fashion the reasoning followed by the institution which adopted it in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. The requirements to be satisfied by the statement of reasons depend on the circumstances of each case, in particular the content of the measure in question, the nature of the reasons given and the interest which the addressees of the measure, or other parties to whom it is of direct and individual concern, may have in obtaining explanations. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see Case C‑367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 63 and the case-law cited).
67 In the present case, after having noted the relevant case-law in paragraphs 31, 33, 34 and 38 of the contested decision, the Board of Appeal examined, in paragraphs 39 and 40 of that decision, whether the applicant had demonstrated that there was a risk the mark applied for would take unfair advantage of the distinctive character or the reputation of its earlier marks. As is apparent from paragraphs 61 and 62 above, the Board of Appeal explained how the arguments put forward by the applicant were not sufficient.
68 Thus, it must be held that the contested decision contains a sufficient statement of reasons so far as concerns the application of the relative ground for refusal laid down in Article 8(5) of Regulation No 207/2009.
69 As regards, secondly, the assessment made by the Board of Appeal in paragraphs 39 and 40 of the contested decision, it should be observed that, in essence, the Board of Appeal concluded that there was no risk that the mark applied for might take unfair advantage of the distinctive character or the reputation of the earlier marks because the applicant had not shown how the relevant public would make the link between the goods and services at issue and because the applicant had not put forward any argument other than that of the reputation of its earlier marks in order to prove the risk of unfair advantage.
70 In that regard, it should be borne in mind that, according to the case-law, it is conceivable that the relevant public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks. Furthermore, even if the relevant public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks (Case C‑252/07 Intel Corporation [2008] ECR I‑8823, paragraphs 48 to 50).
71 In the present case, as observed in paragraph 41 above, the public for the goods covered by the earlier marks and the public for the goods and services designated by the mark applied for are different.
72 In that regard, first, it cannot be disputed that the general public targeted by the goods and services in Classes 9, 12 and 37, which are covered by the mark applied for, will not be led to purchase products in Classes 1 and 17 which are designated by the earlier marks.
73 Second, the specialised public in the field of renewable energies or in the automotive sector, which is targeted by the goods and services in Classes 9, 12 and 37, is a specialised public different from that made up of moulders and converters. In particular, the relevant public targeted by the mark applied for is a specialised public which uses the goods as finished products and is not therefore led to purchase and use the raw material constituted by the goods in Classes 1 and 17, unlike moulders and converters.
74 Furthermore, even if the specialised public targeted by the mark applied for might interact with the moulders and converters targeted by the earlier marks, the fact remains that the goods and services at issue have different distribution channels, as established in paragraph 42 above, and that, in any event, the goods and services at issue are very different. Finally, it should be remembered that the specialised public displays a high level of attention.
75 Therefore, in accordance with the case-law cited in paragraph 70 above, it is unlikely not only that the public targeted by each of the two marks will be confronted with the other mark, but also that a link can be established between the goods and services covered by the mark applied for and the goods covered by the earlier marks. Therefore, it is difficult to accept that a link is established between the signs at issue and that the mark applied for may take unfair advantage of any reputation of the earlier marks.
76 The Board of Appeal was therefore fully entitled to conclude that the opposition had to be rejected as unfounded in so far as it also relied on Article 8(5) of Regulation No 207/2009.
77 In the light of all of the foregoing, the second plea is unfounded and the action must therefore be dismissed in its entirety.
Costs
78 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders EI du Pont de Nemours and Company to pay the costs.
Papasavvas | Forwood | Bieliūnas |
Delivered in open court in Luxembourg on 9 April 2014.
[Signatures]