Case T‑445/12
Koscher + Würtz GmbH
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — International registration of a trade mark designating the European Community — Figurative mark KW SURGICAL INSTRUMENTS — Earlier national word mark Ka We — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Appeal procedure — Scope of the examination to be carried out by the Board of Appeal — Proof of genuine use of the earlier mark — Application submitted to the Opposition Division — Refusal to register the trade mark applied for without prior examination of the condition of genuine use of the earlier trade mark — Error of law — Power to alter decisions)
Summary — Judgment of the General Court (Second Chamber), 26 September 2014
1. Community trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits — Pleas concerning questions assessed by the Board of Appeal in the contested decision — Consequences of the dismissal of such pleas
(Council Regulation No 207/2009, Art. 65(3))
2. Community trade mark — Appeals procedure — Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal — Functional continuity between those two bodies — Examination of the appeal by the Board of Appeal — Scope
(Council Regulation No 207/2009, Art. 64(1))
3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant, before the decision on the opposition
(Council Regulation No 2007/2009, Art. 42(2))
4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Criteria
(Council Regulation No 207/2009, Art. 8(1)(b))
5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark KW SURGICAL INSTRUMENTS and word mark Ka We
(Council Regulation No 207/2009, Art. 8(1)(b))
6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
7. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment — Composite mark
(Council Regulation No 207/2009, Art. 8(1)(b))
8. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Possibility of a visual similarity between a figurative mark and a word mark
(Council Regulation No 207/2009, Art. 8(1)(b))
9. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Weak distinctive character of the earlier mark — Relevance
(Council Regulation No 207/2009, Art. 8(1)(b))
10. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Weighting of the marks concerned — Account taken by the relevant public of situations other than the purchase of the goods or services at issue
(Council Regulation No 207/2009, Art. 8(1)(b))
1. The General Court’s jurisdiction to amend decisions, conferred by Article 65(3) of Regulation No 207/2009 on the Community trade mark, does not enable it to review a question on which the Board of Appeal has not yet ruled. Exercise of the power to amend decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take.
In that regard, a plea alleging an error of law on the part of the Board of Appeal in relation to Article 42(2) of Regulation No 207/2009, by allowing the opposition without examining whether the earlier mark had been put to genuine use can lead only to annulment of the Board of Appeal’s decision and reference of the case back before the latter. The General Court cannot carry out any assessment as to genuine use of the earlier trade mark, since the Board of Appeal has not ruled on the point.
By contrast, a second plea, relating to the absence of a likelihood of confusion, could, if held to be well-founded, enable the applicant to obtain disposal of the entire case. It is thus appropriate for the General Court to examine that plea.
If examination by the General Court shows that the second plea must be dismissed and the order sought by the applicant for amendment of a decision must be refused, it will be for OHIM, after the question of serious use of the earlier mark has been examined, to make a new decision, if applicable, on the likelihood of confusion between the two marks at issue. It will thus be for OHIM, when comparing the two marks, to draw the consequences of a potential lack of genuine use of the earlier mark for some of the goods covered.
(see paras 19, 39-41, 82, 83)
2. See the text of the decision.
(see paras 28, 29)
3. A request that the opposing party furnish proof of the genuine use of the earlier mark has the effect of shifting the burden of proof to the opposing party to demonstrate genuine use of his mark or face having his opposition dismissed. Genuine use of the earlier mark is thus a matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper. The request for proof of genuine use of the earlier mark therefore adds to the opposition procedure a specific and preliminary question and in that sense changes the content thereof.
Therefore, by refusing to grant an applicant Community protection for an international registration it has obtained, without first examining the question of genuine use of the earlier mark, even though a request in relation to genuine use of the earlier mark has been made by the applicant before the Opposition Division, the Board of Appeal makes an error of law.
(see paras 30, 34)
4. See the text of the decision.
(see paras 43, 44, 49, 67)
5. For the German professional public with expertise in the medical field, and whose attention level is particularly high, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, between the figurative sign KW SURGICAL INSTRUMENTS, registration of which as a Community trade mark is applied for in respect of ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials’ within Class 10 of the Nice arrangement, and the word mark Ka We, previously registered in Germany for ‘Medical and sanitary instruments and apparatus, hearing aids, hygienic bandages, artificial limbs (with the exception of goods made out of or associated with rubber)’ falling within that same class.
Whilst it is true that the words ‘surgical’ and ‘instruments’ and the figurative elements composed of a semi-circle and the representation of a surgical instrument appear only in the mark applied for, those differences are not sufficient to prevent the relevant consumer from forming the impression that those marks, when assessed globally, have a low degree of similarity visually and are identical or highly similar orally. The presence in the mark applied for of the verbal element ‘surgical instruments’ is not, in any event, such as to counteract the visual and oral similarities between the two marks at issue. Even if an identity were not established between the goods covered by the two marks at issue, the degree of similarity which, at the very least, exists between them when the goods covered by the earlier mark are taken into account overall, is sufficient to indicate a likelihood of confusion.
(see paras 45, 71-74)
6. See the text of the decision.
(see para. 46)
7. See the text of the decision.
(see para. 50)
8. See the text of the decision.
(see para. 51)
9. See the text of the decision.
(see para. 69)
10. The fact that it is only in exceptional cases that the goods at issue, addressed to a professional public, will be offered, marketed or promoted by telephone, is not sufficient to exclude any likelihood of confusion between two signs that are identical or highly similar orally, since, from an oral perspective, use of the sign is not limited to situations where the goods at issue are being marketed, but also to other situations where the professionals in question make oral reference to those goods, for example when using them or discussing their use and, in particular, when referring to the benefits and drawbacks of those goods.
In that respect, even though the authority called upon to assess whether there is a likelihood of confusion cannot reasonably be required to establish, for each category of goods, the consumer’s average amount of attention on the basis of the level of attention which he is capable of displaying in different situations or to take into account of the lowest degree of attention which the public is capable of displaying when faced with a product and a mark, it is not possible to exclude the possibility of situations other than the purchase itself being taken into account when assessing the existence of a likelihood of confusion.
(see paras 79-81)