JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
29 September 2011 (*)
(Community trade mark – Opposition proceedings – Application for registration of the Community word mark FISHBONE – Earlier national figurative mark FISHBONE BEACHWEAR – Relative ground for refusal – Partial refusal of registration – Genuine use of the earlier mark – Consideration of additional evidence – Statement of reasons – Proof of genuine use – Likelihood of confusion – Article 42(2) and (3) and Article 76(2) of Regulation (EC) No 207/2009 – Second sentence of Rule 22(2) of Regulation (EC) No 2868/95 – Article 75 of Regulation No 207/2009 – First subparagraph and second subparagraph, heading (a), of Article 15(1) and Article 42(2), (3) and (5) of Regulation No 207/2009 – Article 8(1)(b) of Regulation No 207/2009)
In Case T‑415/09,
New Yorker SHK Jeans GmbH & Co. KG, formerly New Yorker SHK Jeans GmbH, established in Kiel (Germany), represented by V. Spitz, A. Gaul, T. Golda and S. Kirschstein-Freund, lawyers,
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
Vallis K. – Vallis A. & Co. OE, established in Athens (Greece), represented by M. Kilimiri, V. von Bomhard, A.W. Renck, lawyers, and H.J. O’Neill, Solicitor,
ACTION brought against the decision of the First Board of Appeal of OHIM of 30 July 2009 (Case R 1051/2008-1), concerning opposition proceedings between Vallis K. – Vallis A. & Co. OE and New Yorker SHK Jeans GmbH & Co. KG,
THE GENERAL COURT (Sixth Chamber),
composed of E. Moavero Milanesi (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the Court on 14 October 2009,
having regard to the response of the intervener lodged at the Registry of the Court on 15 January 2010,
having regard to the response of OHIM lodged at the Registry of the Court on 21 January 2010,
further to the hearing on 13 April 2011,
gives the following
Judgment
1 On 31 October 2003, the applicant, New Yorker SHK Jeans GmbH & Co. KG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word sign FISHBONE.
3 The goods in respect of which registration was sought are in, inter alia, Classes 18 and 25 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 18: ‘Leather and imitations of leather and goods made of these materials (included in Class 18); animal skins, hides; trunks, attaché cases and travelling bags; bags, sports bags, handbags, school satchels, rucksacks; travelling sets (leatherwear); leather goods; purses, pocket wallets, key wallets; belt bags and hip bags; umbrellas, parasols, canes and walking sticks; whips, harness, saddlery’;
– Class 25: ‘Clothing, footwear, headgear; men’s and women’s outer clothing; children’s fashion clothing; layettes (clothing); underclothing; lingerie; foundation garments; hosiery; belts, braces, scarves, gloves, neckties, headbands; men and women’s fashion bathing clothing; hiking, trekking, outdoor and climbing clothing; men’s and women’s city and leisure shoes, children’s shoes; hiking, trekking, outdoor and climbing footwear; clothing, footwear and headgear for football, basketball, handball and volleyball; clothing for jogging, fitness training and gymnastics; clothing, footwear and headgear for tennis, squash and badminton; clothing, footwear and headgear for in-line skating, skateboarding and roller skating, and for hockey, football, baseball and boxing; clothing, footwear and headgear for cycling; clothing, footwear and headgear for equestrian sports; clothing, footwear and headgear for golf; clothing, footwear and headgear for water sports, in particular for surfing, sailing, rowing, canoeing and diving; clothing, footwear and headgear for alpine skiing, cross-country skiing and snowboarding; clothing, footwear and headgear for ice skating and ice hockey.’
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 44/2004 of 1 November 2004.
5 On 28 January 2005, the intervener, Vallis K. – Vallis A. & Co. OE, filed, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), a notice of opposition to registration of the mark applied for with respect to the goods referred to in paragraph 3 above, based on:
– Greek figurative mark registration No 121579, filed on 24 January 1994 and registered on 17 May 1996 for the goods ‘T‑shirts, beachwear’ in Class 25, represented below:
– the earlier sign used in the course of trade in Greece since 1994 for ‘garments in general, footwear, and headgear’, which was indicated by the intervener to be ‘Fishbone (word) and Fishbone (device)’.
6 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and 8(4) of Regulation No 40/94 (now Article 8(1)(a) and (b) and 8(4) of Regulation No 207/2009).
7 By letter of 5 April 2006, and further to the applicant’s request, OHIM invited the intervener to provide proof, for the purposes of Article 43 of Regulation No 40/94 (now Article 42 of Regulation No 207/2009), of use of the earlier national figurative mark, on or before 6 June 2006. By letter of 6 June 2006, the intervener produced evidence consisting of a sworn statement dated 1 June 2006, invoices and a number of photographs.
8 By letter of 25 September 2006, the applicant claimed, in particular, that the evidence produced was insufficient to prove genuine use of the earlier right. By letter of 14 November 2006, OHIM requested the intervener to submit its observations in response before 14 January 2007.
9 By letter filed at OHIM on 15 January 2007, the intervener produced, inter alia, further evidence of use, consisting of catalogues dating from 2000, 2001 and 2003.
10 On 26 May 2008, on the basis of Article 8(1)(b) of Regulation No 207/2009, the Opposition Division upheld the opposition for a portion of the contested goods, namely ‘bags, rucksacks’ in Class 18 and all of the goods in Class 25. In order to reach the conclusion that there was a likelihood of confusion between the marks at issue, it took account, in particular, of one of the abovementioned catalogues, dating from the summer of 2001.
11 On 16 July 2008, the applicant filed an appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
12 By decision of 30 July 2009 (‘the contested decision’), the First Board of Appeal of OHIM allowed the appeal in part, rejecting the opposition for ‘bags, rucksacks’ in Class 18, and upheld the decision of the Opposition Division concerning the goods in Class 25. It took the view, first, that the Opposition Division had been right to take account of the additional evidence submitted on 15 January 2007 and, second, that there was, in the case, sufficient proof of use of the earlier Greek trade mark. It also took the view that the trade marks at issue were visually similar, that they had a high degree of phonetic similarity and that there was no need to carry out a conceptual comparison, in particular because the meaning of the term ‘fishbone’ would not be understood by the majority of the relevant public, comprising the average consumer in Greek territory. The Board of Appeal thus concluded that there was a likelihood of confusion on the part of the relevant public as regards the goods claimed in Class 25 under the trade mark applied for, which were identical or similar to those under the earlier national trade mark. However, it took the view that there was no such risk with regard to ‘bags, rucksacks’ covered by the mark applied for, in Class 18, as these were different in nature and purpose from the goods protected by the earlier national mark.
Forms of order sought by the parties
13 The applicant claims that the Court should:
– amend the contested decision and declare that the appeal is justified and that the opposition is rejected for the goods in Class 25;
– alternatively, annul the contested decision in so far as it dismisses the appeal and confirms the rejection of the application for the goods in Class 25;
– order OHIM to pay the costs, including those incurred by the applicant in the appeal before the Board of Appeal.
14 OHIM contends that the Court should:
– dismiss the application for annulment in its entirety;
– order the applicant to pay the costs incurred by OHIM.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 As a preliminary point, the arguments which the applicant advances in relation to the breach of Article 42(2) of Regulation No 207/2009 must be regarded as also referring to Article 42(3), since the earlier mark relied on by the intervener is a national mark; this has, moreover, been confirmed by the applicant in answer to a question from the Court in that regard at the hearing.
17 The applicant relies, in essence, on four pleas alleging breach, first, of Article 42(2) and (3) and Article 76(2) of Regulation No 207/2009 and of the second sentence of Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94, as amended (OJ 1995 L 303, p. 1); second, of Article 75 of Regulation No 207/2009; third, of Article 42(2), (3) and (5) and the first subparagraph and second subparagraph, heading (a), of Article 15(1) of Regulation No 207/2009; and, fourth, of Article 8(1)(b) of Regulation No 207/2009.
The first plea in law: breach of Article 42(2) and (3) and Article 76(2) of Regulation No 207/2009 and of the second sentence of Rule 22(2) of Regulation No 2868/95
Arguments of the parties
18 According to the applicant, the Board of Appeal wrongly concluded that the Opposition Division was entitled to take account of the catalogues filed on 15 January 2007, since that evidence was produced after the expiry, on 6 June 2006, of the period set by OHIM. It adds that the fact that OHIM set a deadline of 14 January 2007, which was also not complied with, cannot justify that late submission, since that letter was based only on Rule 20(4) of Regulation No 2868/95 and not on Rule 22(2) of that regulation.
19 Furthermore, the applicant submits that the Board of Appeal clearly abused the discretion conferred on it by Article 76(2) of Regulation No 207/2009 by failing to consider whether the evidence filed late was relevant and whether the stage of the proceedings at which that late submission occurred allowed it to be considered (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 44). As regards Article 42(2) and (3) of Regulation No 207/2009 and the second sentence of Rule 22(2) of Regulation No 2868/95, in order to take that evidence into account, the Board of Appeal ought to have ascertained whether that evidence was additional and whether there were new factors capable of justifying its late submission (Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 56, and Case T‑86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO livre) [2007] ECR II‑4923, paragraph 50). As is apparent from a decision of the Board of Appeal, the taking into consideration of facts and evidence submitted out of time will be in accordance with Article 76(2) of Regulation No 207/2009 only if the abovementioned conditions are met.
20 The applicant argues that the Board of Appeal was not entitled simply to state that the intervener was required to respond to the applicant’s observations concerning evidence of use. The decisions delivered to that effect by the Board of Appeal are irrelevant in that regard.
21 In addition, the fact that the applicant submitted observations to challenge the evidence of use produced by the intervener, without submitting further relevant facts, does not constitute a ‘new factor’ within the terms of the abovementioned case-law, and the mere challenge by the applicant to that evidence cannot have the effect of causing the period for the production of evidence to start to run afresh. If the contrary were true, Rule 22(2) of Regulation No 2868/95 would be superfluous since the intervener could produce additional evidence of use out of time provided that some evidence was produced within the time-limit, and the applicant’s position would be weakened since the filing of its observations on the inadequacy of such evidence would permit the submission of additional evidence.
22 OHIM and the intervener take issue with all of the applicant’s claims.
Findings of the Court
23 It can be inferred from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the periods governing such submission provided for in Regulation No 207/2009 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted late (see, to that effect, OHIM v Kaul, paragraph 42, and CORPO livre, paragraph 44).
24 Although parties to proceedings before OHIM may submit facts and evidence after expiry of the periods specified for that purpose, that facility is not without conditions, but is subject to the absence of any provision to the contrary. It is only if that condition is met that OHIM has the discretion, which the Court of Justice acknowledged that it had when it interpreted Article 76(2) of Regulation No 207/2009 (CORPO livre, paragraph 47).
25 Rule 22(2) of Regulation No 2868/95 provides that, where, pursuant to Article 42(2) or (3) of Regulation No 207/2009, the opposing party is required to furnish proof of genuine use of the earlier mark, OHIM is to invite that party to provide the proof required within such period as it specifies. The second sentence of Rule 22(2) adds that, if the opposing party does not provide such proof before that period expires, OHIM is to reject the opposition.
26 It follows from that second sentence that submission of proof of use of the earlier mark after the period fixed for that purpose has expired means, in principle, that the opposition will be rejected, without OHIM having any discretion in that regard. Genuine use of the earlier mark is a preliminary matter which must, accordingly, be settled before a decision is taken on the opposition proper (CORPO livre, paragraph 49).
27 However, the Court has held that the second sentence of Rule 22(2) of Regulation No 2868/95 cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of that period (HIPOVITON, paragraph 56, and CORPO livre, paragraph 50).
28 In the present case, the applicant alleges, in essence, that the Board of Appeal was wrong to hold that the Opposition Division was entitled to take account of the catalogues, on the ground that they had been submitted outside the time-limit set for submission of proof of genuine use of the earlier mark. That line of argument, however, cannot succeed.
29 First, it is necessary to reject, at the outset, the argument of the applicant calling into question the failure to comply with the time-limit of 14 January 2007 by reason of the submission of observations by the intervener on 15 January 2007. Under Rule 72 of Regulation No 2868/95, if a period expires on a day on which OHIM is not open for receipt of documents or on which ordinary mail is not delivered in the locality in which OHIM is located, that period is to extend until the first day thereafter on which OHIM is open for receipt of documents and on which ordinary mail is delivered. The deadline, 14 January 2007, fell on a Sunday, with the result that those observations could not be filed at OHIM on that day and the period was therefore extended to 15 January 2007, the date on which those observations were filed.
30 Second, the view must be taken that, by having filed within the time-limit, namely on 6 June 2006, relevant evidence such as an affidavit, invoices and photographs, the intervener must be regarded as having complied with the time-limit provided for in the second sentence of Rule 22(2) of Regulation No 2868/95. Furthermore, it is not in dispute that, following the applicant’s observations that that evidence was insufficient, OHIM provided the intervener with the opportunity to file its observations by 14 January 2007. In that context, the evidence filed with the intervener’s observations in compliance with that time-limit was capable of being taken into account by the Opposition Division.
31 Rule 22(2) of Regulation No 2868/95 must be understood as meaning that nothing precludes additional evidence, which merely adds to other evidence submitted within the time-limit set, from being taken into account, since the initial evidence is not irrelevant, but was challenged by the other party as being insufficient. Such a consideration, which in no way renders the above rule superfluous, is all the more valid since the intervener did not abuse the time-limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.
32 Such an interpretation does not appear to be at variance with the case-law referred to in paragraph 27 above, in which the respective facts were different. In HIPOVITON, evidence had been submitted by the opposing party within the time-limit. Subsequently, the party which sought registration of the mark had raised new facts and arguments in its statement presented to the Board of Appeal. The Court held that the Board of Appeal ought to have invited the opposing party to take a position on that statement and that the opposing party had been deprived of the possibility of assessing whether it might be useful to adduce additional evidence. It added that the Board of Appeal had therefore not been able to take all the relevant factors into account in order to assess whether the use made of the earlier mark could be classified as genuine and had thus relied on an incomplete factual basis (HIPOVITON, paragraphs 54 and 58). In the case which gave rise to the judgment in CORPO livre, in order to take the view that OHIM did not have discretion to take account of evidence submitted outside the time-limit, the Court expressly held that that evidence ‘was not additional evidence, but constituted the initial and only proof … of … use’ of the earlier marks relied on in that case (CORPO livre, paragraph 50).
33 In the present case, since the evidence submitted by the intervener outside the time-limit set by the Opposition Division was not the initial and only proof of use, but rather evidence additional to relevant proof which was submitted within the time-limit, the fact that the applicant disputed that evidence was sufficient to justify production by the intervener of additional evidence when it filed its observations. The fact that that evidence was taken into consideration made it possible for the Opposition Division and then the Board of Appeal to decide on the genuine use of the earlier mark on the basis of all the relevant facts and evidence.
34 Third, the conclusion that the Opposition Division was entirely correct to take account of the catalogues, filed before it on 15 January 2007, also appears to comply with the more general objective underlying the opposition proceedings, in the context of which Article 76(2) of Regulation No 207/2009 has been interpreted as meaning that even evidence which had been submitted out of time must be taken into consideration provided that it appears to be relevant and that the stage of the proceedings at which it is filed and the surrounding circumstances do not preclude its submission.
35 Fourth, as regards the applicant’s argument referring to OHIM’s decision-making practice, suffice it to recall that, according to settled case-law, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union Courts, and not on the basis of a previous decision-making practice of those boards (see, to that effect, Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 68 and the case-law cited, and Case T‑438/07 Spa Monopole v OHIM – De Francesco Import (SpagO) [2009] ECR II‑4115, paragraph 33).
36 It follows that the first plea, alleging breach of Article 42(2) and (3) and Article 76(2) of Regulation No 207/2009 and of the second sentence of Rule 22(2) of Regulation No 2868/95, must therefore be rejected as unfounded.
The second plea in law: breach of Article 75 of Regulation No 207/2009
Arguments of the parties
37 The applicant submits that, by failing to state the grounds which enable it to understand why the additional evidence was taken into consideration, the Board of Appeal breached the duty to state reasons laid down in Article 75 of Regulation No 207/2009.
38 OHIM and the intervener contest all of the applicant’s claims.
Findings of the Court
39 Under Article 75 of Regulation No 207/2009, decisions of OHIM are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the European Union Courts to exercise their power to review the legality of the decision (see, to that effect, Case C‑447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 63 to 65 and the case-law cited, and judgment of 12 December 2007 in Case T-117/06 DeTeMedien v OHIM (suchen.de), not published in the ECR, paragraph 46).
40 Moreover, in stating the reasons for the decisions which they are led to take, the Boards of Appeal are not obliged to adopt a position on all the arguments relied on before them by the parties concerned. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see, by analogy, Case T‑204/03 Haladjian Frères v Commission [2006] ECR II‑3779, paragraph 199).
41 The applicant cannot claim that the Board of Appeal breached the duty to state reasons by failing to state the grounds which would have enabled the applicant to understand why the additional evidence was taken into consideration.
42 It appears that the Board of Appeal did, in paragraph 19 of the contested decision, state reasons, albeit briefly, but clearly and devoid of ambiguity, as to why the Opposition Division acted correctly in taking account of the evidence filed on 15 January 2007. In that regard, it stated that that evidence supplemented the first set of evidence filed on 6 June 2006, which the applicant had disputed as being insufficient. It added that, as a consequence, the intervener had been required to respond by submitting additional evidence.
43 Since such reasons demonstrate clearly and unequivocally the reasoning of the Board of Appeal in that regard, they must be regarded as sufficient for the purposes of Article 75 of Regulation No 207/2009. The plea alleging breach of that article must therefore be rejected as unfounded.
The third plea in law: breach of Article 42(2), (3) and (5) and the first subparagraph and second subparagraph, heading (a), of Article 15(1) of Regulation No 207/2009
Arguments of the parties
44 The applicant alleges that the evidence submitted in time was not sufficient to demonstrate genuine use of the earlier mark. It adds that, even if account had been taken of the catalogues submitted out of time, genuine use would not have been proven.
45 As regards proof of the nature of the use, the affidavit of 1 June 2006, it submits, has only minor probative value and does not show that the mark, used in connection with the goods in question, corresponded to the earlier mark. The document written in Greek attached to that affidavit cannot be taken into consideration. The photographs show no connection between the earlier mark and the goods in question. The FISHBONE sign on the invoices does not coincide with the registered form of the earlier mark. The ‘beachwear’ element is decisive for the overall impression of the earlier mark and the designations used which do not contain that element cannot be taken into account.
46 With regard to the extent of the use, the intervener did not indicate any volume of sales or annual turnover figures and produced invoices, some of which do not refer to the relevant period, which began on 1 November 1999 and ended on 31 October 2004, while others do not refer to the earlier mark. As regards the invoices from 2000, 2001 and 2002, which list goods by using the designation ‘fishbone’, it is difficult to ascertain whether those goods bore the earlier mark and there is nothing to prove that the goods listed were actually offered and sold in the retail trade. The photographs do not show the earlier trade mark on the goods at issue but on banner advertisements and cars, and the photograph of two men dressed in T-shirts bearing the designation ‘fishbone’ is undated. The applicant is also doubtful as to the actual distribution of the 2000 and 2001 catalogues, which, it claims, appears to be merely ‘provisional arrangements’ to feign genuine use of the earlier mark. The applicant concludes that, even if it were to be assumed that the goods listed in the invoices from 2000 and 2001 refer to products marketed under the earlier mark, and as the majority of the products sold are mass products, the amount of the receipts in 2000, 2001 and 2002, as it appears from those invoices, is too low to be accepted as proof of genuine use.
47 OHIM and the intervener contest all of the applicant’s claims.
Findings of the Court
48 In accordance with the first subparagraph of Article 15(1) of Regulation No 207/2009, if, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.
49 It is clear from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, and Rule 22(3) of Regulation No 2868/95, as amended, that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from active functioning of the mark on the market. Pursuant to Rule 22(3) of Regulation No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38, and judgment of 30 November 2009 in Case T‑353/07 Esber v OHIM – Coloris Global Coloring Concept (COLORIS), not published in the ECR, paragraph 20).
50 Under Article 42(2) and (3) and Article 15(1) of Regulation No 207/2009, opposition to registration of a Community trade mark is to be rejected if the proprietor of the earlier trade mark at issue does not furnish proof that the earlier mark has been put to genuine use by its proprietor during the period of five years preceding the date of publication of the Community trade mark application. However, if the proprietor of the earlier trade mark successfully furnishes that proof, OHIM will examine the grounds for refusal advanced by the opposing party (VITAFRUIT, paragraph 19). Moreover, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions referred to in Article 15(1) of Regulation No 207/2009 (VITAFRUIT, paragraph 45).
51 There is genuine use of a trade mark in the case where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, point 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 39; see also, to that effect and by way of analogy, Ansul, paragraph 37).
52 In the assessment of whether use of the earlier mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by that mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40; see also, by analogy, Ansul, paragraph 43).
53 In order to examine whether use of an earlier mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. Genuine use of a trade mark, it is true, cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (COLORIS, paragraph 24). However, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see, to that effect, judgment of the Court of Justice of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraph 36).
54 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was entitled to take the view that the evidence produced by the intervener was such as to prove genuine use of the earlier mark for the goods covered.
55 As OHIM has rightly observed, neither the place, namely Greece, nor the duration of the use, which covers the period from 1 November 1999 to 31 October 2004 (‘the relevant period’) is disputed by the applicant. In the context of its third plea, the applicant disputes, in essence, the evidence of the nature and extent of the use.
56 In the present case, the evidence submitted by the intervener to the Opposition Division in order to prove genuine use of the earlier mark is an affidavit, some invoices, a number of photographs and some catalogues.
57 First, as regards the affidavit of 1 June 2006, it must be borne in mind that Article 78(1)(f) of Regulation No 207/2009 provides inter alia, by virtue of the reference to that provision in Rule 22 of Regulation No 2868/95, that proof of use of the mark may be established by ‘statements in writing sworn or affirmed’ (Case T‑303/03 Lidl Stiftung v OHIM – REWE Zentral (Salvita) [2005] ECR II‑1917, paragraph 40). Furthermore, it has been held that, in order to assess the evidential value of a document, regard should be had first and foremost to the credibility of the account which it contains. Regard should also be had in particular to the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears to be sound and reliable (Salvita, paragraph 42).
58 In the present case, it must be noted that no information has been provided as to the person who made the affidavit, other than the fact that she has worked in the garment industry since 1995. Furthermore, in that document, it is stated, inter alia, that items of clothing showing the mark FISHBONE have regularly been marketed throughout Greece since 1994, including in the major Greek cities. The declarant adds that the earlier mark was used and shown in various sponsorship programmes or trade fairs between 1999 and 2004. In the absence of more precise information concerning the declarant herself, and in the absence of fuller explanations in that affidavit enabling the content and veracity of the information to be confirmed, the view must be taken that that affidavit cannot, of itself, be regarded as evidence of genuine use. Nevertheless, it must be held that it has a certain probative value and constitutes an element which must be taken into account and which corroborates the other elements in the file. It is common ground that the document written in Greek annexed to that affidavit, to which the Board of Appeal does not even refer in the contested decision, could not be taken into consideration as it had not been translated into the language of the case.
59 Second, with regard to the invoices, as a preliminary point, the applicant’s allegation that the sign used on the invoices submitted before OHIM, lacking the element ‘beachwear’, does not match the earlier mark and that, in consequence, those invoices cannot be taken into account must be rejected.
60 Under the combined provisions of the second subparagraph, heading (a), of Article 15(1) of Regulation No 207/2009 and Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see, to that effect, Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 30 and the case‑law cited).
61 It has also been held that, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole (see, to that effect, Case T‑135/04 GfK v OHIM – BUS (Online Bus) [2005] ECR II‑4865, paragraphs 35 to 41).
62 In the present case, the earlier mark is a composite mark, representing a ship’s wheel, that is to say, a sign with a rounded shape. In the centre of the sign there is a fish skeleton, at the top of which is written the term ‘fishbone’, and at the bottom the term ‘beachwear’.
63 As the Board of Appeal correctly found in the contested decision, although the use of the earlier mark varies in certain items of evidence and is used in a form different from that under which it was registered, in the sense that the sign does not include the term ‘beachwear’, such a fact does not affect its distinctive character. The term ‘beachwear’, which means ‘beach clothing’ in English, is descriptive of the nature of the goods covered by the earlier mark. That descriptive character is obvious in the case of the ‘beach clothing’ covered by the earlier mark, but also in the case of ‘t-shirts’, for which the term ‘beachwear’ will immediately be perceived as meaning that it refers to a t-shirt to be worn in casual situations, for example, on the beach in summer. Consumers will thus understand that term as designating the type of goods and will not perceive it as an indication of their commercial origin. The fact that the term ‘beachwear’ is written in a more fanciful font than that of the term ‘fishbone’, which is written in ordinary capital letters, cannot alter such an assessment. Furthermore, contrary to the applicant’s submissions, the font of the term ‘beachwear’ cannot be regarded as uncommon, since it comprises printed lower-case characters. As for the horizontal position of the term ‘beachwear’ in the earlier mark, which runs in a perpendicular sense across the bottom of a ship’s wheel, it is no more graphically incisive than that of the term ‘fishbone’ which, also written horizontally, follows the rounded shape of that wheel.
64 Accordingly, the view must be taken that the invoices produced to OHIM, which indicate use of the earlier sign without the word ‘beachwear’, must be taken into consideration for the purposes of showing proof of genuine use.
65 Thus, as regards the nature of the use, it must be held, first, that the Board of Appeal, which refers expressly to the evidence submitted in respect of the relevant period, remained silent as regards the invoices dated prior to 1 November 1999, that is to say, the starting point of the relevant period, with the result that the applicant’s allegation that these should not be taken into account must be rejected as irrelevant.
66 With regard, next, to the invoices relating to the relevant period, the applicant submits that a number of these, which it identifies expressly in its application, could not be used to show genuine use of the earlier mark as they do not refer either directly or indirectly to that mark. In question here are 11 invoices from 2002, 10 invoices from 2003 and 10 invoices from 2004. It is true, on reading those invoices, that none of them mentions goods under the FISHBONE mark, such that, even though the earlier mark appears at the head of those invoices, they are, of themselves, incapable of proving that the intervener actually sold t‑shirts or beach clothing under that mark, and are therefore incapable of showing genuine use of that mark (see, to that effect, judgment of 11 January 2011 in Case T‑382/08 Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE), not published in the ECR, paragraph 48). Nevertheless, although those invoices do not mention goods under the FISHBONE mark, they can, to a certain extent, be taken into account for the purpose of assessing the genuine nature of the use of the earlier mark, since they are additional elements which corroborate the other evidence in the file, examined below.
67 Furthermore, with regard to the other invoices produced by the intervener, which relate to the relevant period and on which the FISHBONE mark appears beside almost all of the goods sold, it is apparent from the file that these are 10 invoices from 2000, 20 from 2001, and 3 from 2002. Those invoices provide a clear indication of the nature of the use, namely that there was actual use of the earlier mark for the goods covered by it.
68 Third, photographs and catalogues dating from 2000 and 2001 were also produced by the intervener. In that regard, the applicant’s assertion that no relevant documents, such as advertisements and catalogues showing the mark, were submitted to prove the nature of the use must therefore be rejected.
69 As regards the photographs, the applicant’s argument that they cannot be taken into account because, first, they show the earlier mark principally on advertising banners and on cars but not on the goods at issue and, second, the photograph showing two men dressed in t-shirts bearing the FISHBONE sign is undated, cannot be upheld.
70 As OHIM submits, it is well known that advertisements or photographs can vary according to the concept and message which they seek to pass on to consumers and that often they make only indirect reference to the goods which they promote. Common sense and the practice of the advertising sector make it obvious that photographs do not, therefore, necessarily have to show the goods which they are promoting. Furthermore, the manner in which the earlier mark has been used is confirmed by certain photographs and certain pages of the abovementioned catalogues, which show the earlier mark affixed to the goods at issue, such as t‑shirts, swimming costumes, swimming shorts or caps. In addition, the fact that a photograph is not dated cannot deprive it of its relevance, and although it cannot alone support a conclusion of genuine use, the fact remains that it must be evaluated with the other evidence in the context of the assessment of the genuine nature of the use of the earlier mark (see, to that effect, VITAFRUIT, paragraph 53).
71 Moreover, contrary to what the applicant argues, the catalogues from 2000 and 2001 do not appear to be ‘temporary arrangements’ to feign genuine use of the mark. The fact that those catalogues contain hand-written numbers beside the printed code numbers, that they are missing some pages or even that some pages feature stickers representing designs of all kinds on which the term ‘fishbone’ appears cannot call into question the reality of the distribution of those catalogues. In particular, the stickers appear to make it clear that it is possible to request that designs of different styles with the term ‘fishbone’ be affixed to the goods in question in addition to the earlier mark.
72 In addition, the applicant’s allegations concerning the lack of correspondence between the codes for products under the FISHBONE mark appearing on the invoices from 2000 and those appearing in the catalogue from 2000 are in large measure misplaced. Although there is no such correspondence in the case of the two invoices expressly cited by the applicant in paragraph 40 of its application, those product codes, by contrast, correspond to those in the 2000 catalogue in the case of the other invoices from 2000 submitted as evidence. With regard to the comparison between the invoices from 2001 and the catalogue from 2001, it appears that, on the 20 invoices from 2001, the product codes correspond to those in the catalogue in the case of 19 invoices. Questioned on this matter at the hearing, the applicant was unable to challenge those observations. In that regard, also at the hearing, the applicant submitted that the difficulty arose from the fact that it was not clear from the catalogues to which of the intervener’s marks the product codes in the catalogues and those relating to the invoices corresponded. It is clear from a combined reading of the elements submitted that the FISHBONE sign appears on the pages of the catalogues where the product designs appear and the product codes corresponding to those found in the invoices, for the goods bearing the term ‘fishbone’, with the result that such an argument cannot be upheld.
73 In the light of the foregoing, and if account is taken of all those elements, there can be no doubt that they provide an indication as to the nature of the use of the earlier mark. They therefore appear to be relevant and sufficient, in the context of the overall assessment, to prove that the use of the earlier mark was genuine in nature.
74 As regards the extent of the use, account must in particular be taken of the commercial volume of all acts of use, on the one hand, and the duration of the period in which those acts of use occurred and the frequency of those acts, on the other (VITAFRUIT, paragraph 41, and HIPOVITON, paragraph 35). That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be offset by a high intensity or a certain constancy over time in the use of that trade mark or vice versa. In addition, the turnover and the volume of goods sold under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. Accordingly, use of the earlier mark need not always be quantitatively significant in order for it to be deemed genuine (see HIPOVITON, paragraph 36 and the case-law cited).
75 The applicant submits that, if account is taken only of the invoices which relate to the relevant period and show the earlier mark next to the goods, the volume of goods sold under that mark, which it calculates as 1 604 articles sold during the relevant period, is ‘relatively insignificant’. It continues its argument by calculating the notional turnover which would result from the sale of those goods.
76 The fact none the less remains, first, that, in order to show the extent of the genuine use of the earlier mark, it is not a question of separating the different elements and examining them one by one, but of carrying out an overall assessment, taking account of all the relevant factors. Second, and although the use of the earlier mark does not appear to be quantitatively very extensive, the fact that the invoices are addressed to retailers in different cities in Greece proves that the use is sufficiently extensive to represent an effective and genuine commercial effort. Finally, those invoices show a certain constancy over time in the use of the earlier mark.
77 Thus, and since there is no ‘de minimis’ rule for establishing proof of genuine use and small-scale use may be compatible with actual market presence (see Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 65), and having regard for the catalogues, photographs and invoices covering the relevant period, on which the FISHBONE mark appears next to the goods, it is appropriate to hold that the intervener has provided sufficient proof of the extent of use of the earlier mark.
78 Those considerations are further strengthened if account is also taken of the other invoices, referred to in paragraph 67 above, which must also be taken into consideration, to a certain extent, as relevant indications of which account has to be taken in the overall assessment. Furthermore, the applicant cannot argue that, as is apparent from some invoices, the fact that a limited number of goods consisting of different types of clothing were sold to retailers creates the impression that those goods were ordered purely for trial purposes and not to be sold in the retail trade. It cannot be ruled out that the retailers were small- or medium-sized businesses, and for that reason stocked certain goods in small quantities. The mark must therefore be regarded as having been used publicly and outwardly.
79 It follows from the foregoing that the scope and extent of the use of the earlier mark have been sufficiently shown by the evidence provided by the intervener to OHIM and that the arguments advanced by the applicant are not capable of calling that conclusion into question. Since the place and duration of the use are not in dispute, it follows that the Board of Appeal acted correctly in taking the view that genuine use of the earlier mark had been proven.
80 As regards breach of Article 42(5) of the regulation, it must be held that the applicant has not put forward any arguments capable of supporting the assertion that such a breach occurred.
81 The third plea, alleging breach of Article 42(2), (3) and (5) and of the first subparagraph and second subparagraph, heading (a), of Article 15(1) of Regulation No 207/2009 must be rejected as unfounded.
The fourth plea in law: breach of Article 8(1)(b) of Regulation No 207/2009
Arguments of the parties
82 The applicant claims that there is no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. According to the applicant, in visual terms the figurative element of the earlier mark constituted by the fish skeleton, the term ‘beachwear’ and the additional graphical elements are not negligible and play a significant role in the overall impression of the earlier mark, which make it different from the mark applied for. The argument concerning the descriptive character of the term ‘beachwear’ is not sufficient to remove all relevance from it, having regard to the font used and its position in the earlier mark, which makes it more incisive than the word element ‘fishbone’.
83 Since Greek consumers would not understand the meaning of the word ‘fishbone’ and conceptual similarity can therefore be excluded, and notwithstanding the existence of a certain phonetic similarity, the marks at issue are not similar and there is no likelihood of confusion.
84 OHIM and the intervener contest all of the applicant’s claims.
Findings of the Court
85 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 is not to 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 trade mark. Moreover, under Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), the term ‘earlier trade marks’ means trade marks registered in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
86 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited). 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 in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
87 As a preliminary point, it should be noted that the applicant does not dispute the assessment of the Board of Appeal concerning the definition of the relevant public and the comparison of the goods in question. The Board of Appeal took the view that the goods in question were intended for the general public, that the relevant territory was Greece and that the goods in question, which come within Class 25, were identical or similar.
– The comparison of the signs
88 Two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43).
89 In the present case, it must be borne in mind that the marks at issue are, on the one hand, the word mark FISHBONE and, on the other, the figurative mark FISHBONE Beachwear, as described in paragraph 62 above.
90 Visually, in the view of the applicant, the figurative element of the earlier mark constituted by the fishbone, the term ‘beachwear’ and the additional graphical elements are not negligible and play a significant role in the overall impression of the earlier mark, which make it different from the mark applied for. In the contested decision, it appears that the Board of Appeal analysed, as regards the earlier mark, both the figurative element representing a fishbone and the word elements ‘fishbone’ and ‘beachwear’. In that regard, it correctly took the view that the figurative element representing a fishbone draws the attention of the relevant public because of its size and that the word element ‘fishbone’ is also important in the context of the visual assessment. Having regard to what is set out in paragraph 63 above, the term ‘beachwear’ being descriptive of the goods in question, the term ‘fishbone’ constitutes the only distinctive word element of the earlier mark and will more strongly draw the attention of the relevant public, who will identify it more easily than the first term. As for the ship’s wheel, although the Board of Appeal merely mentioned it without giving other details, the fact remains that, in essence, it forms part of the overall impression of the figurative mark.
91 It follows from the considerations set out in the previous paragraph that the Board of Appeal was wrong to find that there was a visual similarity between the signs at issue. If account is taken of all those elements, and in particular of the term ‘fishbone’, in the overall impression of the earlier mark, which element is the same as the mark applied for, the conclusion must be that there is only a certain degree of visual similarity between those signs.
92 Phonetically, since the term ‘fishbone’ is the distinctive word element of the mark in question which the relevant public will identify as an indication of the commercial origin of the goods, and since it is the same as the mark applied for, the view must be taken that there is aural similarity between the marks at issue.
93 Finally, as the Board of Appeal correctly held, without being challenged by the applicant, there is no need to assess the conceptual similarity between the signs, given that the meaning of the word ‘fishbone’ will not be understood by the majority of the relevant public.
94 It follows from the foregoing that there is a certain degree of visual similarity and a high degree of phonetic similarity between the marks at issue.
– The likelihood of confusion
95 The assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Joined Cases T‑81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74). A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 45).
96 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited).
97 In the present case, having regard to the considerations set out in paragraphs 90 to 94 above, which allow the conclusion to be drawn that there is a certain degree of visual similarity and a high degree of phonetic similarity between the marks at issue, which are strengthened by the fact that the goods in question, in Class 25, are identical or similar, the view must be taken that there is a likelihood of confusion between the marks at issue. Even if the relevant public distinguishes the signs at issue, it may nevertheless believe that the goods in question come from the same undertaking or from economically-linked undertakings.
98 Consequently, the Board of Appeal was correct in law in its conclusion that there is a likelihood of confusion between the marks at issue, and the plea raised by the applicant, alleging breach of Article 8(1)(b) of Regulation No 207/2009, must for that reason be rejected and the action therefore dismissed in its entirety, without its being necessary to rule on the admissibility of the first head of claim.
Costs
99 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 the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders New Yorker SHK Jeans GmbH & Co. KG to pay the costs.
Moavero Milanesi | Wahl | Soldevila Fragoso |
Delivered in open court in Luxembourg on 29 September 2011.
[Signatures]