JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
29 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark ASOS — Earlier Community word mark ASSOS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑647/11,
Asos plc, established in London (United Kingdom), represented by P. Kavanagh, Solicitor, and A. Edwards-Stuart, Barrister,
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, intervener before the General Court, being
Roger Maier, residing in San Pietro di Stabio (Switzerland), represented by U. Lüken, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 October 2011 (Case R 2215/2010-4), relating to opposition proceedings between Roger Maier and Asos plc,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Registry of the General Court on 19 December 2011,
having regard to the response of OHIM lodged at the Court Registry on 13 April 2012,
having regard to the response of the intervener lodged at the Court Registry on 30 March 2012,
having regard to the reply lodged at the Court Registry on 30 July 2012,
having regard to the rejoinder of OHIM lodged at the Court Registry on 28 November 2012,
having regard to the decision of 5 February 2013 authorising the inclusion in the file of a decision of the High Court of Justice (England & Wales), Chancery Division, of 23 November 2012,
having regard to the decision of 19 November 2013 authorising the inclusion in the file of a decision of the High Court of Justice (England & Wales), Chancery Division, of 19 September 2013,
having regard to the decision of 15 November 2013 rejecting the applicant’s request that the proceedings be stayed,
further to the hearing on 21 November 2013,
gives the following
Judgment
Background to the dispute
1 On 30 June 2005, the applicant, Asos plc, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word mark ASOS.
3 The goods and services in respect of which registration was sought are in, inter alia, Classes 3, 18, 25 and 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Soaps; cosmetics; perfumery; essential oils; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; hair lotions; dentifrices; cosmetics; cosmetic preparations for skin care; skin care cosmetics; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels; scented body lotions and creams; scented moisturising skin cream; moisturisers; body lotions and creams; moisturising creams; scented skin soap; body oil; face, lip and cheek make-up; face powder; face glitter; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye balms; highlighter; masks; cleansers; toners; clarifiers; exfoliators; foundation make-up; blusher; compacts; make-up remover; fragrance sachets; room fragrances; beauty care preparations; beauty care products; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; non-medicated beauty preparations; non medicated skin care beauty products; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions and serums; anti-aging treatments; foundation for the face; hair care products, shampoo, hair conditioners, hair gel and hair spray; nail care preparations, nail polish, nail strengtheners, and nail polish remover; shaving cream, shaving gel, after-shave preparations, after-shave lotion; depilatory preparations; personal deodorant; antiperspirants; potpourri; sun tanning preparations; cosmetic preparations for skin tanning; artificial tanning preparations’;
– Class 18: ‘Articles of leather and imitations of leather; trunks and travelling bags; travel cases; luggage; suitcases; holdalls; portmanteaux; valises; bags; handbags; shoulder bags; toilet bags; carrier bags; rucksacks; backpacks; bumbags; sports bags; casual bags; briefcases; attaché cases; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; wallets; purses; umbrellas; parasols; walking sticks; shooting sticks; belts; parts and fittings for all the aforesaid goods’;
– Class 25: ‘Articles of clothing; footwear; boots, shoes, slippers, sandals, trainers, socks and hosiery; headgear; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts, casual shirts, T-shirts, polo shirts, sports shirts, football and rugby shirts; trousers, jeans, shorts, sports shorts, football shorts, rugby shorts; swimwear; underwear; lingerie; tracksuits; football boots, rugby boots; articles of outerwear, coats, jackets, ski jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas, ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; menswear; womenswear; childrenswear’;
– Class 35: ‘Retail services in the fields of perfumery, toiletries and cosmetics, bathing and personal cleansing and care products, bicycles, clothing and accessories, footwear, mail order services and online and Internet retail services relating to the aforesaid goods’.
4 The trade mark application was published in Community Trade Marks Bulletin No 6/2006 of 6 February 2006.
5 On 27 April 2006, the intervener, Mr Roger Maier, filed a notice of opposition to registration of the mark applied for under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) in respect of all the goods and services set out in paragraph 3 above.
6 The opposition was based on the earlier Community word mark ASSOS, the application for which had been filed on 9 September 2005, and accompanied by a priority claim in respect of a Swiss trade mark application, itself filed on 14 June 2005. The earlier mark was registered on 11 September 2006 under number 4580767 for goods in Classes 3, 12 and 25, corresponding, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
– Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;
– Class 25: ‘Clothing, footwear, headgear’.
7 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By decision of 9 November 2010, the Opposition Division partially upheld the opposition, concluding that there was a likelihood of confusion with regard to all the goods and services in Classes 3, 25 and 35 set out in paragraph 3 above, and with regard to the following goods in Class 18: ‘Articles of leather and imitations of leather; bags; handbags; shoulder bags; bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses; belts; parts and fittings for all the aforesaid goods’.
9 On 11 November 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 17 October 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal in part. It found that the relevant public was the general public in the European Union, deemed to be reasonably well informed and reasonably observant and circumspect. With regard to the comparison of the goods and services at issue, it found, first, that all of the goods and services in Classes 3, 25 and 35 covered by the mark applied for and the goods covered by the earlier mark were identical or similar. Secondly, contrary to the Opposition Division, it found that ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 and covered by the mark applied for were not similar to the goods covered by the earlier mark. For the other goods in Class 18, that is to say ‘articles of leather and imitations of leather; bags; handbags; shoulder bags; belts; parts and fittings for all the aforesaid goods’, it confirmed that these were similar to the goods covered by the earlier mark. With regard to the comparison of the signs at issue, the Board of Appeal, taking account of the fact that those signs shared the letters ‘a’, ‘s’, ‘o’ and ‘s’ and differed only in the additional letter ‘s’ in the earlier mark, and of the fact that that additional letter ‘s’ is hardly audible in many of the languages of the European Union, held that the signs at issue were very similar both visually and phonetically. The Board of Appeal held that the conceptual comparison of the marks at issue was neutral in so far as neither of those marks had any meaning for the majority of the relevant public. With regard to the overall assessment of the likelihood of confusion, the Board of Appeal found that, having regard to the average distinctiveness of the earlier mark and the high degree of visual and phonetic similarity between the signs, there was a likelihood of confusion in respect of the identical and similar goods. The Board of Appeal also found that the applicant had not succeeded in proving that the marks at issue coexisted peacefully within the territory of the European Union. The Board of Appeal accordingly annulled the decision of the Opposition Division in so far as the latter had allowed the opposition for ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18. It dismissed the appeal as to the remainder.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it refuses registration of the mark applied for;
– allow the registration of the mark applied for;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener claims that the Court should:
– dismiss the action;
– amend the contested decision in so far as it finds no likelihood of confusion in regard to ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18;
– order the applicant to pay the costs.
Law
Admissibility of the applicant’s second head of claim
14 By its second head of claim, the applicant is requesting, essentially, that the Court order OHIM to authorise registration of the trade mark applied for in respect of the goods and services at issue.
15 It is settled case-law that, in an action brought before the Courts of the European Union against the decision of a Board of Appeal of OHIM, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgments of those Courts. Accordingly, it is not for the General Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Courts’ judgments (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 20 and the case-law cited).
16 The applicant’s second head of claim is for that reason inadmissible.
Admissibility of the items of evidence presented for the first time before the General Court
17 On 21 December 2012, the intervener provided the General Court with a copy of a decision of the High Court of Justice (England & Wales), Chancery Division, of 23 November 2012, as evidence of the existence of a likelihood of confusion. On 8 November 2013, the applicant provided the General Court with a copy of a decision of the High Court of Justice (England & Wales), Chancery Division, of 19 September 2013, as evidence of the absence of any likelihood of confusion.
18 Those decisions, although produced for the first time before the General Court, are not strictly evidence but relate to national case-law, to which, even after the procedure before OHIM is complete, a party has the right to refer (Case T‑346/04 Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 20, and Case T‑29/04 Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 16). Neither the parties nor the General Court itself can be precluded from drawing on national case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the action before the Court seeks review of the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before the latter, where the purpose is not to criticise the Boards of Appeal on the ground that they failed to take the factual aspects of a specific national decision into account, but rather to cite decisions in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, Case T‑277/04 Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraphs 70 and 71).
19 It follows that the decisions of the High Court of Justice (England & Wales), Chancery Division, provided by the intervener and the applicant are admissible.
The applicant’s application for annulment
20 In support of its application for annulment, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea essentially comprises two complaints.
21 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the 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 mark.
22 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 that 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, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and of that between the goods or services identified (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).
23 By its first complaint, the applicant submits that the Board of Appeal erred in its assessment of the conceptual meaning of the mark applied for and failed to take into account the correct conceptual meaning of the mark applied for in its global assessment of the likelihood of confusion.
24 It submits that a significant portion of the relevant public will perceive the trade mark applied for, ASOS, as the acronym for ‘as seen on screen’, on the ground that it is the largest independent online retailer of fashion articles and beauty products in the United Kingdom and achieves extremely high sales throughout the European Union.
25 It must be recalled that, according to case-law, if one trade mark has a meaning and another is devoid of meaning, the marks compared are held to be conceptually different (see, to that effect, judgment of 16 November 2006 in Case T‑278/04 Jabones Pardo v OHIM — Quimi Romar (YUKI), not published in the ECR, paragraph 64).
26 In the present case, the applicant does not dispute the Board of Appeal’s assessment that the earlier mark has no meaning.
27 As regards the mark applied for, admittedly, one portion of the English-speaking public will perceive it as the acronym for ‘as seen on screen’. For that portion of the public, the marks at issue are therefore conceptually different. However, the other portion of the English-speaking public will not perceive the trade mark applied for, ASOS, as the acronym for ‘as seen on screen’. Furthermore, given that it is common ground that the relevant public is the public throughout the European Union, the relevant public does not consist solely of an English-speaking public. The word element ‘asos’ is not a known acronym and the expression ‘as seen on screen’ is not a basic English expression, likely to be understood by the non-anglophone public. It must therefore be held that, for the majority of the relevant public, neither of the signs at issue has a meaning and the conceptual comparison is neutral, as the Board of Appeal observed.
28 Moreover, the applicant does not explain how the fact that it is a retailer which is well known throughout the European Union would enable a consumer to make a connection between its mark, ASOS, and the acronym of ‘as seen on screen’.
29 It follows that the Board of Appeal did not err in its assessment of the conceptual meaning of the trade mark applied for and that, consequently, the first complaint must be rejected.
30 By its second complaint, the applicant argues that the Board of Appeal erred in disregarding evidence of the peaceful coexistence of the marks at issue on the ground that it is irrelevant.
31 The applicant claims that it has demonstrated the peaceful coexistence of the marks at issue in 18 Member States of the European Union and that the Board of Appeal ought to have taken this into account.
32 In this connection, it is apparent from settled case-law that it cannot be entirely ruled out that, in certain cases, the peaceful coexistence of marks on the market could reduce the likelihood of confusion found by the decision-making bodies of OHIM to exist. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the party applying for the Community trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion, on condition that the earlier marks concerned and the marks at issue are identical (see, to that effect, judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 60 and the case-law cited).
33 In the present case, the Board of Appeal concluded that the items of evidence provided by the applicant, consisting in two declarations from the head of its legal department, should be rejected, observing that they emanated from the applicant itself and were not supported by any additional information originating from independent sources. That finding by the Board of Appeal must be upheld. It is apparent from case-law that a declaration originating from the applicant itself cannot be attributed probative value unless it is corroborated by other items of evidence (see, to that effect, judgment of 13 June 2012 in Case T‑542/10 XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), not published in the ECR, paragraph 74 and the case-law cited).
34 Moreover, the Board of Appeal also acted correctly in holding that those items of evidence did not permit any conclusion to be drawn so far as concerns the absence of a likelihood of confusion. First, the items of evidence provided by the applicant relate only to the use of the trade mark applied for and do not concern the manner in which the relevant public was exposed to the marks at issue on the market. Second, the applicant relies on evidence of the peaceful coexistence of the marks at issue on the market in 18 Member States only. Where the earlier mark is a Community trade mark and, consequently, the relevant territory for the assessment of the likelihood of confusion comprises the European Union in its entirety, an alleged coexistence in part of the territory of the European Union does not have the effect of excluding a likelihood of confusion in the European Union as a whole (see, to that effect, judgments of 13 April 2010 in Case T‑103/06 Esotrade v OHIM — Segura Sánchez (YoKaNa), not published in the ECR, paragraphs 47 and 48; of 21 March 2011 in Case T‑372/09 Visti Beheer v OHIM — Meister (GOLD MEISTER), not published in the ECR, paragraph 39; and of 10 April 2013 in Case T‑505/10 Höganäs v OHIM — Haynes (ASTALOY), not published in the ECR, paragraph 50).
35 Lastly, it must be observed that the applicant acknowledges the fact that the intervener opposed the registration of its trade mark ASOS in the United Kingdom and that it subsequently withdrew its application for registration. Contrary to what the applicant maintains, the Board of Appeal correctly took the view that this cast doubt upon the peaceful coexistence of the marks at issue.
36 As regards the earlier decision of the Board of Appeal relied on by the applicant, suffice it to point out that, according to settled case-law, decisions concerning registration or protection of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47, and Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 36).
37 Consequently, the applicant’s argument concerning the peaceful coexistence of the marks at issue cannot succeed and the second complaint must be rejected.
38 Lastly, the parties’ arguments relating to the likelihood of confusion which are based on the decisions of the High Court of Justice (England & Wales), Chancery Division, of 23 November 2012 and 19 September 2013 must be rejected. Those two decisions are not relevant. First, those decisions are not final and they do not concern opposition proceedings. Second, it is settled case-law that the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of national case-law (GIORGIO BEVERLY HILLS, cited in paragraph 22 above, paragraph 53; Case T‑85/02 Díaz v OHIM — Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 37; and Case T‑115/02 AVEX v OHIM — Ahlers (a) [2004] ECR II‑2907, paragraph 30).
39 It follows from the foregoing that the single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, consequently, the applicant’s application for annulment must be dismissed in its entirety.
The intervener’s second head of claim
40 It is clear from the response of the intervener that, by his second head of claim, he intended to seek the partial annulment of the contested decision in so far as the Board of Appeal rules out the existence of a likelihood of confusion concerning ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18.
41 The intervener, relying on the judgment in PiraÑAM diseño original Juan Bolaños, cited in paragraph 15 above (paragraph 45), submits that the Board of Appeal incorrectly held that those goods, coming within Class 18 and covered by the application for the mark applied for, and the goods covered by the earlier mark are not similar. The Board of Appeal, he submits, did not take into account the facts that those products and the ‘clothing, footwear, headgear’, coming within Class 25 and covered by the earlier mark, share the same distribution channels, have the same end user and are usually produced by the same manufacturer.
42 The applicant disputed the intervener’s arguments in the reply and OHIM challenged them at the hearing.
43 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features relating to the relationship between 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 PiraÑAM diseño original Juan Bolaños, cited in paragraph 15 above, paragraph 37 and the case-law cited).
44 Goods or services are complementary where there is a close connection between them, in the sense that one is indispensable 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 (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 57 and the case-law cited).
45 It is apparent from the case-law that goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned. The perception of the connections between them must therefore be assessed by taking account of any attempt at coordinating presentation of that look, that is to say, coordination of its various components at the design stage or when they are purchased. That coordination may exist in particular between clothing, footwear and headgear in Class 25 and the various clothing accessories which complement them, such as handbags in Class 18 (PiraÑAM diseño original Juan Bolaños, cited in paragraph 15 above, paragraphs 49 and 50).
46 In the present case, in the contested decision, the Board of Appeal held that the ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 — contrary to the ‘clothing, footwear, headgear’ in Class 25, which had an aesthetic function — essentially had a practical function, namely that of containing sports equipment, documents, banknotes and coins, are not perceived as part of the external image, have no aesthetic function and are not included in the marketing strategy for fashion accessories. The Board of Appeal consequently held that the abovementioned goods, coming within Class 18, were not complementary to ‘clothing, footwear, headgear’ in Class 25. It added that it was unlikely that, when buying a briefcase or a wallet, the purchaser would be asked about the colour of the suits or shoes normally worn or, when buying a sports bag, the colour of his tracksuit.
47 That appraisal by the Board of Appeal must be upheld.
48 Firstly, the ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18, unlike the ‘clothing, footwear, headgear’ in Class 25, have an essentially utilitarian function and not an essentially aesthetic function. There is therefore no reason for the consumer to coordinate them with the ‘clothing, footwear, headgear’ in Class 25. In contrast to handbags, coming within Class 18, the goods at issue in Class 18 do not contribute to the external image of consumers.
49 Secondly, the purchase of the goods at issue in Class 18 is viewed independently from the purchase of ‘clothing, footwear, headgear’ in Class 25. The average consumer will purchase ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ without worrying about the concomitant possession or purchase of ‘clothing, footwear, headgear’ in Class 25. Conversely, for the average consumer, the decision to buy ‘clothing, footwear, headgear’ in Class 25 is generally not influenced by, or subject to, the purchase or possession of the goods at issue in Class 18.
50 It follows that the ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 cannot be considered to be clothing accessories.
51 In addition, even if the goods at issue in Class 18 were to share with the goods at issue in Class 25 the same distribution channels and have the same end users, that would not suffice for the conclusion that there is a similarity between those goods. Lastly, the intervener’s argument that those goods in Class 18 and the ‘clothing, footwear, headgear’ in Class 25 are generally produced by the same manufacturer has not been substantiated.
52 It follows that the Board of Appeal acted correctly in holding that the ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 and referred to in the application for the mark sought and the goods in Class 25, covered by the earlier mark, were not similar.
53 It follows from all of the foregoing that the applicant’s action must be dismissed in its entirety and that the intervener’s second head of claim, seeking partial annulment of the contested decision, must be rejected.
Costs
54 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 OHIM’s costs, in accordance with the form of order sought by OHIM. The intervener, who has been unsuccessful in his application for annulment, must bear his own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Dismisses Mr Roger Maier’s application;
3. Orders Asos plc to bear its own costs and to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);
4. Orders Mr Maier to bear his own costs.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 29 April 2014.
[Signatures]