Grendene v EUIPO - Hipanema (HIPANEMA) (EU trade mark - Judgment) [2018] EUECJ T-435/17 (25 September 2018)

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(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark HIPANEMA — Earlier figurative EU and national trade marks Ipanema and iPANEMA — Relative ground for refusal — No similarity between the goods — Aesthetically complementary nature — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Grendene, SA, established in Sobral (Brazil), represented by J.L. de Castro Hermida, lawyer,

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Hipanema, established in Paris (France), represented by M. Witukiewicz Sebban, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 20 January 2017 (Case R 629/2016‑2), relating to opposition proceedings between Grendene and Hipanema,

composed of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 12 October 2017,

having regard to the response of the intervener lodged at the Court Registry on 6 November 2017,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 7 January 2013, Ms D. Crech’riou and Ms J. Collinet obtained from the World Intellectual Property Organisation (WIPO) the international registration No 1154586, designating the European Union, for the following figurative mark, which was registered as having been transferred subsequently to the intervener, Hipanema, on 31 March 2016:

2 On 11 April 2013, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of the mark at issue, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which protection of that mark within the European Union was sought are in Class 14 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Jewelry; jewelry products, precious stones; timepieces and chronometric instruments; precious metals and alloys; works of art of precious metal; jewelry cases [caskets]; boxes of precious metal; watch cases, bracelets, chains, springs or glasses; key rings [trinkets or fobs]; statues or figurines (statuettes) of precious metal; cases or presentation cases for timepieces; medals.’

4 The application for protection was published in European Union Trade Marks Bulletin No 70/2013 of 15 April 2013.

5 On 15 July 2013, the applicant, Grendene, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– EU figurative trade mark No 7476609 filed on 10 December 2008 and registered on 19 August 2009 for ‘Men’s, women’s and children’s footwear, such as sandals, beach shoes, bath slippers and boots’ in Class 25, reproduced below:

– EU figurative trade mark No 8549776 filed on 15 September 2009 and registered on 17 May 2010 for ‘Store and retail trade of men’s, women’s and children’s footwear, such as sandals, beach shoes, bath slippers and boots’ in Class 35, reproduced below:

– EU figurative trade mark No 11068021 filed on 25 July 2012 and registered on 19 December 2012 for ‘Men’s, women’s and children’s footwear, namely sandals, beach shoes, slippers, bath slippers, boots and shoes in general’ in Class 25, reproduced below:

– the Spanish figurative trade mark No 2571047 filed on 5 December 2003 and registered on 19 October 2004 for ‘All types of sandals and flip-flops’ in Class 25, represented below:

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 4 February 2016, the Opposition Division rejected the opposition in its entirety on the ground that the goods and services at issue were clearly dissimilar, with the result that one of the necessary conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not satisfied.

9 On 4 April 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 20 January 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal, confirming the Opposition Division’s decision in its entirety. First, in respect of the opposition based on the earlier Spanish mark — which had not been renewed and the protection of which had expired before the end of the time period granted to the applicant for the purposes of completing an opposition — the Board of Appeal determined that it had to be rejected. Second, in respect of the opposition based on the three earlier EU trade marks, the Board of Appeal declared that the goods and services at issue were different both in terms of their nature, purpose and method of use, and in terms of their distribution channels. Further, in its view, they were neither in competition nor complementary. Consequently, it dismissed the opposition in so far as it was based on the ground in Article 8(1)(b) of Regulation No 207/2009, without examining the similarity of the signs, considering that one of the conditions required in order for that provision to apply was not fulfilled and, therefore, that there was no likelihood of confusion between the marks at issue.

– annul the contested decision and ‘deliver another decision in its place, declaring that the goods covered by the [mark applied for] and those protected by the [applicant’s earlier marks] are similar, to the extent necessary to establish similarity between the goods within the meaning of Article 8(1)(b) of [Regulation No 207/2009]’;

– ‘once such similarity between the goods has been established, compare the signs at issue on a word level, as was not done in either the opposition proceedings or the administrative appeal, conclude that the signs at issue are phonetically and semantically identical and graphically similar, declare that it is impossible for the marks at issue peacefully to coexist and, finally, dismiss the application for protection in the European Union of the [mark applied for] in Class 14; alternatively, if the General Court considers that it does not have jurisdiction to do so, refer the matter to the Board of Appeal of [EUIPO], subject to the requirement that the Board of Appeal accept that the goods covered by the marks at issue are similar.’

– order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal of EUIPO.

14 Without formally raising a plea of inadmissibility under Article 130 of the Rules of Procedure of the General Court, the intervener submits, as its principal argument, that the action is inadmissible on the ground that the applicant fails to mention, in either its pleas in law or the form of order sought, an infringement of a specific legal provision on which the action is based, contrary to the requirements of Article 76(d) of the Rules of Procedure.

15 In that regard, it must be noted that, pursuant to Article 76(d) and, more specifically, Article 177(d) of the Rules of Procedure, each application in an action brought against a decision of a Board of Appeal of EUIPO must contain the subject matter of the proceedings and a summary of the pleas in law relied on.

16 In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and points of law on which it is based must be apparent from the text of the application itself, at the very least as a summary, provided that it is coherent and comprehensible. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action (judgments of 23 October 2017, Galletas Gullón v EUIPO — O2 Holdings (Shape of a packet of biscuits), T‑418/16, not published, EU:T:2017:746, paragraph 16, and of 9 March 2018, Recordati Orphan Drugs v EUIPO — Laboratorios Normon (NORMOSANG), T‑103/17, not published, EU:T:2018:126, paragraph 24).

17 More specifically, whilst it should be acknowledged, first, that the statement of the pleas in law in the application need not conform with the terminology and layout of the Rules of Procedure and, second, that those pleas may be expressed in terms of their substance rather than their legal classification, the application must nonetheless set out those pleas with sufficient clarity (judgment of 28 September 2016, Pinto Eliseu Baptista Lopes Canhoto v EUIPO — University College London (CITRUS SATURDAY), T‑400/15, not published, EU:T:2016:569, paragraph 43).

18 In the present case, the applicant relies on three pleas in law worded as follows in the application:

– ‘First plea: Similarity between goods tacitly recognised by the applicant for the mark. Application of the principle of venire contra factum proprium non valet. Silence of the contested decision’;

– ‘Second plea: Rebuttal of the findings made in the contested decision concerning the comparison of the goods protected by the marks at issue’;

– ‘Third plea: The principle of interdependence or modulation between the word and application elements in the comparison between marks. Silence of the contested decision.’

19 First, with regard to the first plea, it is sufficiently apparent from the application that the applicant is relying on the existence of a ‘tacit recognition by the applicant for the contested mark [or, more accurately, the intervener] of the similarity between the goods at issue’ and alleges that the Board of Appeal failed to take into account that ‘tacit recognition’ in its global assessment of the likelihood of confusion, thereby failing to apply the judge-made principle of venire contra factum proprium non valet. Second, it should be noted, firstly, that, in its second plea, the applicant indicates that ‘the present case is based on Article 8(1)(b) of [Regulation No 207/2009]’, and, secondly, that, although the applicant does not refer to any specific legal provision in its third plea that the contested decision may have infringed, it nevertheless refers to several judgments of the Court of Justice and the General Court in order to contest the global assessment of the likelihood of confusion carried out by the Board of Appeal, in which the latter allegedly did not apply the principle of interdependence or ‘modulation between the word and application elements’. Further, by its first head of claim, the applicant requests that the Court ‘annul the contested decision ... [and] deliver another decision in its place, declaring that the goods covered by the [mark applied for] and those protected by the earlier marks are similar ... within the meaning of Article 8(1)(b) of [Regulation No 207/2009]’.

20 Consequently, it is sufficiently apparent from the application that the applicant, by its first, second and third pleas in law, is ultimately contesting the conclusion of the Board of Appeal that the goods in Class 14 differ from the goods and services in Classes 25 and 35 respectively, and that the likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 is thus excluded.

21 Moreover, those three pleas must be seen as being, in essence, one and the same plea alleging an infringement of Article 8(1)(b) of Regulation No 207/2009 and broken down into three parts corresponding to the first, second and third pleas in law relied on by the applicant.

22 Further, the applicant’s setting out of its arguments, albeit confused, is nonetheless sufficiently clear to allow EUIPO and the intervener to prepare their defences, as is evident from their respective responses, which include, inter alia, case-law relating to Article 8(1)(b) of Regulation No 207/2009, and to allow the Court to adjudicate on the present action, as is apparent from the assessments set out in paragraphs 24 to 87 hereunder.

24 In support of the action, the applicant puts forward, in essence, a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That single plea is broken down into three parts: the first concerns a failure to take into account ‘tacit recognition’ by the intervener of the similarity between the goods at issue, the second concerns an error in the comparison of those goods, and the third concerns a failure to apply the principle of interdependence or ‘modulation between the word and application elements’.

25 EUIPO and the intervener dispute the applicant’s arguments. They take the view that the Board of Appeal was fully entitled to conclude that there was no likelihood of confusion in the present case, as the goods and services at issue are different.

26 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.

27 According to established case-law, the risk that the public might believe that the goods or services in question came 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 relevant public’s perception of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (judgments of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33, and of 19 April 2018, Rintisch v EUIPO — Compagnie laitière européenne (PROTICURD), T‑25/17, not published, EU:T:2018:195, paragraph 75).

28 It is in the light of those principles that it is necessary to examine whether the Board of Appeal was right to conclude that there was no likelihood of confusion between the marks at issue.

29 As a preliminary point, it is not necessary to call into question the Board of Appeal’s conclusion, in paragraph 51 of the contested decision, that the relevant public is the public at large, a conclusion which, moreover, is not contested by the parties.

First part of the single plea in law, relating to the failure to take into account the ‘tacit recognition’ by the intervener of the similarities of the goods at issue

30 In the first part, the applicant claims, in essence, that, during its assessment of the degree of similarity between the goods at issue, the Board of Appeal incorrectly failed to take into account the intervener’s ‘tacit recognition’ that such similarity exists on account of the intervener’s joint commercial offer of those goods. In that regard, the applicant relies on the intervener’s commercial practice in which it advertises and associates commercial offers on its website in respect of, on the one hand, certain goods, covered by the mark applied for, under the trade mark HIPANEMA, with, on the other hand, certain identical or similar goods, covered by the earlier marks, under the mirror-image mark AMENAPIH.

31 The applicant adduces items of evidence which, it claims, relate to the ‘reality of the market’ and allow it to conclude that the goods marketed or advertised together under identical or parallel trade marks have a high degree of similarity. To that end, it submits images showing an extract from a catalogue and a photograph of a shop for the purpose of demonstrating that ‘bracelets, necklaces and sunglasses are sold [by the intervener] together with clothing under the parallel marks HIPANEMA and AMENAPIH or directly under the single mark HIPANEMA’, as well as press clippings from fashion magazines on the intervener’s website for the purpose of establishing that goods in Class 14 bearing the mark applied for are often the subject of advertisements with goods in Class 25 in fashion magazines.

32 The applicant thus complains that the Board of Appeal failed to apply the judge-made principle of venire contra factum proprium non valet, pursuant to which the intervener’s arguments relating to the lack of similarity between the goods at issue should have been disregarded given the latter’s ‘tacit recognition’ of such similarity as evidenced by its commercial practice in the ‘reality of the market’. In a related ground for complaint, it also submits that the fact that the contested decision fails to mention the impact of the intervener’s commercial practices when assessing the degree of similarity between those goods constitutes a failure to state grounds.

33 In that regard, it should be recalled that, by virtue of the judge-made principle nemo potest venire contra factum proprium, also known as venire contra factum proprium non valet, a person may not dispute what he has previously accepted (judgments of 22 April 2016, Ireland and Aughinish Alumina v Commission, T‑50/06 RENV II and T‑69/06 RENV II, EU:T:2016:227, paragraph 192, and of 6 April 2017, Regione autonoma della Sardegna v Commission, T‑219/14, EU:T:2017:266, paragraph 63; see also, to that effect, order of 13 February 2014, Marszałkowski v OHIM, C‑177/13 P, not published, EU:C:2014:183, paragraph 73).

34 In the present case, even if the applicant were justified in relying on the principle of nemo potest venire contra factum proprium in respect of the intervener’s alleged manifestation of intent outwith the context of proceedings, which does not in any way follow from the case-law referred to in paragraph 33 above, the fact nonetheless remains that the applicant’s claims as to the ‘reality of the market’ are manifestly irrelevant in the light of the settled case-law of the Court.

35 According to that case-law, within the context of opposition proceedings initiated by the proprietor of an earlier mark on the basis of Article 8(1)(b) of Regulation No 207/2009, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (judgments of 4 April 2014, Golam v OHIM — Derby Cycle Werke (FOCUS extreme), T‑568/12, not published, EU:T:2014:180, paragraph 30, and of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 47; see also, to that effect, judgment of 19 April 2016, Novomatic v EUIPO — Granini France (HOT JOKER), T‑326/14, not published, EU:T:2016:221, paragraph 64 and the case-law cited).

36 It is also apparent from that case-law that only the ‘objective’ circumstances in which the goods covered by the marks at issue are marketed, that is to say, those which it is usual to expect for the category of goods covered by those marks, must be taken into consideration for the purposes of assessing the likelihood of confusion and, in particular, the similarity between those goods (see, to that effect, judgments of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraphs 104 and 105, and of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Cheng (B), T‑505/12, EU:T:2015:95, paragraph 76 and the case-law cited). As particular marketing strategies for the goods covered by the marks may vary over time and depend on the wishes of the proprietors of those marks, an analysis of whether there will be a likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, to that effect, judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 107 and the case-law cited).

37 It follows that the Board of Appeal had to assess the similarity of the goods by reference to the list of goods covered by the mark applied for in Class 14 and by reference to the list of goods covered by the earlier marks in Class 25. It was not obliged to take into account the alleged ‘reality of the market’, which was irrelevant, or, in particular, the intervener’s alleged commercial offer, under a mark other than the mark applied for, of goods that are identical or similar to those protected by the earlier marks in Class 25, which are not on the list of goods covered by the mark applied for.

38 In any event, it must be held that the applicant has failed entirely to establish ‘recognition’ by the intervener, even ‘tacit’ recognition, of any form of similarity between the goods at issue on the basis of the intervener’s commercial practices. Thus, it should be observed that the documents submitted show only clothes and do not establish any commercial offer of footwear by the intervener. Among the goods in Class 25, the earlier marks do not cover clothes in any way, but solely footwear, a fact which is not contested by the applicant. With regard to the press clippings from fashion magazines featured on the intervener’s website, it must be noted that the basis of the applicant’s claims, namely that similar goods alone can be marketed or advertised together under the same mark or parallel marks, is manifestly incorrect.

39 Consequently, it was not necessary for the Board of Appeal to take into account such non-existent ‘tacit recognition’ and, subsequently, to apply the judge-made principle of venire contra factum proprium non valet with the aim of invalidating the intervener’s arguments relating to the lack of similarity between the goods at issue.

40 In addition, with regard to the related ground for complaint alleging a failure to state reasons, it should be recalled that the obligation to state reasons is an essential procedural requirement which must be distinguished from the question of whether the reasons given are correct, the latter being a matter going to the substantive legality of the contested measure (see, to that effect, judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited). In the present case, it must be held that the subject of this first part of the plea in law is not compliance with the obligation to state reasons that is incumbent on the bodies of EUIPO under Article 75 of Regulation No 207/2009 (now Article 94(1) of Regulation 2017/1001), but rather the merits of the reasons given in the contested decision relating to the lack of similarity between the goods at issue. In particular, as is set out in paragraphs 37 and 39 above, it was not necessary for the Board of Appeal to take into account an irrelevant ‘reality of the market’ or a non-existent ‘tacit recognition’.

Second part of the single plea in law, relating to an error in the comparison of the goods at issue

42 In the second part, the applicant claims that, contrary to Article 8(1) of Regulation No 207/2009, the Board of Appeal wrongly concluded that the goods and services covered and protected by the marks at issue are not similar. This second part is broken down into four grounds for complaint submitted by the applicant against the Board of Appeal’s assessment in respect of, firstly, the comparison of certain goods covered by the mark applied for (‘the specified goods’) in Class 14, namely ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’, with the goods in Class 25 protected by the earlier marks (‘the protected goods’), secondly, the comparison of the other specified goods in Class 14 with the protected goods in Class 25, thirdly, the comparison of the specified goods in Class 14 with the services in Class 25 protected by the earlier marks and, fourthly, a national decision relied on by the applicant.

43 According to settled case-law, when assessing the similarity of the goods at issue, all the relevant factors relating to the relationship between those goods 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 (judgments of 11 July 2007, El Corte Inglés v OHIM-Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37, of 1 March 2018, Altunis v EUIPO — Hotel Cipriani (CIPRIANI), T‑438/16, not published, EU:T:2018:110, paragraph 48, and of 19 April 2018, PROTICURD, T‑25/17, not published, EU:T:2018:195, paragraph 84).

44 It is in the light of those factors that the similarity of the goods and services at issue falls to be examined.

45 At the outset, it should be noted that, although the applicant acknowledges that the finding that the goods in Class 14 and those in Class 25 are different is based on settled case-law, it nonetheless requests that the Court ‘abandon, to some extent, the perspective traditionally held until now’ and ‘focus its approach on avoiding any likelihood of confusion’. It argues that such an approach was adopted in the judgments of 16 May 2007, La Perla v OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) (T‑137/05, not published, EU:T:2007:142) and of 7 December 2010, Nute Partecipazioni and La Perla v OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) (T‑59/08, EU:T:2010:500).

46 It must be pointed out that this claim of the applicant results from a misreading of the judgments referred to in paragraph 45 above. As the Board of Appeal pointed out in paragraph 65 of the contested decision, the Court did not conclude in those judgments that the goods in Classes 14 and 25 were similar within the meaning of Article 8(1)(b) of Regulation No 207/2009, but found that the degree of similarity between the signs at issue, in combination with the goods belonging to ‘adjacent markets’, was sufficient for the relevant public to be able to make a connection between the marks within the meaning of Article 8(5) of that regulation (judgments of 16 May 2007, NIMEI LA PERLA MODERN CLASSIC, T‑137/05, not published, EU:T:2007:142, paragraph 51, and of 7 December 2010, NIMEI LA PERLA MODERN CLASSIC, T‑59/08, EU:T:2010:500, paragraph 36). Moreover, the protection granted to the earlier mark by Article 8(5) of that regulation assumes that a number of conditions are satisfied, which do not include identity or similarity of the goods, contrary to what the applicant appears to claim in paragraph 60 of its application.

47 In addition, it should be recalled that the mere fact that the goods covered by the mark applied for and the goods protected by the earlier marks belong to adjacent markets is insufficient to establish that those goods are similar within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 49).

48 It follows that the Board of Appeal did not err in refraining from extrapolating to the present case the conclusion reached in the judgments referred to in paragraph 45 above.

49 It is thus appropriate to examine separately each of the four grounds for complaint set out in paragraph 42 above.

– Comparison of the specified goods ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’ with the goods protected by the earlier marks

50 By the first ground for complaint, the applicant submits, in the first place, that there is an ‘aesthetic link’ between the specified goods ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’ and the goods protected by the earlier marks (together, ‘the compared goods’) which results in them being complementary, regardless of whether they are interchangeable or in competition with each other. All those goods, it argues, are to be ‘worn one of top of the other’ and the average consumer will pay attention to the harmonious character, or lack thereof, of the aesthetic effect produced when they are worn at the same time. In the second place, it claims that those goods can be sold under identical or similar marks, regardless of their manufacturer, and use the same distribution channels, such as special ‘fashion, footwear and accessory’ shops, thereby strengthening the close relationship between them.

51 In the present case, a preliminary point to note is that it is inappropriate to call into question the assessments of the Board of Appeal in paragraphs 33, 34 and 50 of the contested decision, according to which the goods at issue were neither in competition with each other nor interchangeable, and that they differed in terms of their nature, methods of use and intended purpose. More specifically, after noting that the goods at issue are made from different raw materials, the Board of Appeal concluded that the purpose of ‘footwear’, which is to cover and protect the feet, differs, first, from that of ‘watches’ and other ‘timepiece and chronometric instruments’, which are designed to measure and indicate time, and, second, from that of ‘jewelry, jewelry products, bracelets, chains and medals’, which have a purely ornamental function (see, to that effect, judgments of 30 April 2014, Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, not published, EU:T:2014:238, paragraph 40, and of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 51 and the case-law cited). Moreover, the applicant does not contest those assessments.

52 In the first place, as regards the applicant’s argument alleging that the goods at issue are aesthetically complementary, it must be recalled that, in accordance with the case-law, goods or services that are complementary are those with 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 the provision of those services lies with the same undertaking. By definition, goods intended for different publics cannot be complementary (judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58, of 15 March 2016, Nezi v OHIM — Etam (E), T‑645/13, not published, EU:T:2016:145, paragraph 83, and of 1 March 2018, CIPRIANI, T‑438/16, not published, EU:T:2018:110, paragraph 49).

53 Furthermore, according to settled case-law, an aesthetically complementary nature between goods may give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 207/2009. Such aesthetically complementary nature must involve a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use those products together (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 74 and the case-law cited). That aesthetically complementary nature is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise (judgments of 27 September 2012, Pucci International v OHIM — El Corte Inglés (Emidio Tucci), T‑357/09, not published, EU:T:2012:499, paragraph 51, of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 59, and of 15 March 2016, E, T‑645/13, not published, EU:T:2016:145, paragraph 84).

54 In the present case, the applicant has not put forward sufficient arguments to establish that the goods at issue are complementary from an aesthetic point of view. It is therefore necessary to conclude, as the Board of Appeal did in paragraph 40 of the contested decision, that the applicant has neither shown, nor is it generally accepted, that a consumer who buys, inter alia, watches or bracelets makes his choice by taking as his main criterion whether those goods are well matched with his footwear and vice versa, and not, principally, by assessing the inherent characteristics of those goods, their quality in relation to their main function, and by taking into consideration, independently, their design and their general appearance (see, to that effect, judgment of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 67; see also, by analogy, judgment of 27 September 2012, Emidio Tucci, T‑357/09, not published, EU:T:2012:499, paragraph 53).

55 In that regard, while it can be accepted that the matter of a certain unity of style between frequently worn footwear and clothing accessories, jewellery, watches and jewellery products may be important to some consumers who follow fashion, it cannot, however, be held that there is a genuine aesthetic necessity to create that harmony, that makes the use of one of those products indispensable or important for the wearing of footwear (judgment of 30 April 2014, BEYOND VINTAGE, T‑170/12, not published, EU:T:2014:238, paragraph 36).

56 As the search for a certain aesthetic harmony in clothing, including in footwear, is a common feature throughout the fashion and clothing sector, it is too general a factor to justify, by itself, a finding that all the goods concerned are complementary (judgments of 24 March 2010, 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 36, and of 30 April 2014, BEYOND VINTAGE, T‑170/12, not published, EU:T:2014:238, paragraph 34).

57 Consequently, the Board of Appeal was entitled to conclude, in paragraph 42 of the contested decision, that the aesthetic link between the compared goods is insufficient. Consequently, the applicant’s argument to the effect that those goods are complementary must be rejected.

58 In the second place, with regard to the applicant’s argument that, regardless of who manufactures them, the goods under comparison may be sold under identical or similar marks and use the same distribution channels, it should be recalled that, even if consumers regard those goods as complementary, that is insufficient to lead them to think that those goods have the same commercial origin. In order to conclude that there is a similarity between them, consumers must also consider it usual that those goods are marketed under the same trade mark, which normally implies that a large number of the respective producers or distributors are the same (see, to that effect, judgments of 1 March 2005, Sergio Rossi v OHIM — Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 63, of 30 April 2014, BEYOND VINTAGE, T‑170/12, not published, EU:T:2014:238, paragraph 35, and of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 60).

59 In those circumstances, even if it were to be assumed, despite it not having been established, that it has become usual for manufacturers of goods protected by earlier marks to manufacture the specified goods and thus to exploit their commercial success by placing their trade marks on a wide range of goods, the fact remains, in any event, that the applicant has not established that consumers were necessarily informed of such a practice and normally expected that the same undertaking could be responsible for the manufacture of the various goods at issue which, prima facie, are not related and also do not come within the same family of goods (see, to that effect, judgment of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 73).

60 Consequently, in paragraph 45 of the contested decision, the Board of Appeal was fully entitled to conclude that it has not been established that consumers would deduce from that alleged practice that there was any link between the goods under comparison or that those goods constitute an extended range of goods coming from the same source.

61 In addition, contrary to the applicant’s claims, it cannot be shown that the goods at issue are similar by taking into account their sale outlets and distributors.

62 In that regard, it is apparent from the case-law recalled in paragraph 36 above that only the ‘objective’ circumstances in which the goods covered by the marks at issue are marketed, that is to say, those which it is usual to expect for the category of goods covered by those marks, must be taken into consideration for the purposes of assessing the likelihood of confusion and, in particular, the similarity between those goods (see, to that effect, judgment of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 76 and the case-law cited).

63 In the present case, first, it must be noted that the applicant has not provided evidence confirming, first, that ‘in part of the relevant territory, that is, in Spain, shops dedicated to “fashion, footwear and accessories” [sell] the goods protected by the [applicant’s] marks, namely sandals, shoes, slippers, flip-flops and footwear in general, and many of the goods covered by the [mark applied for]’ and, second, that ‘the same applies in other countries of the European Union’.

64 Further, it should be pointed out, as the Board of Appeal noted in paragraph 48 of the contested decision, that, although it is true that certain shops may add articles in Class 14 to the range of goods that they sell, it cannot be denied that goods covered by the mark applied for, such as jewellery and watches, are usually purchased in specialist shops in which footwear is not sold and where the consumer can expect to receive specific advice from staff with specialist knowledge (judgment of 30 April 2014, BEYOND VINTAGE, T‑170/12, not published, EU:T:2014:238, paragraph 43; see also, by analogy, judgment of 24 March 2010, 2nine v OHIM — Pacific Sunwear of California (nollie), T‑363/08, not published, EU:T:2010:114, paragraph 39). Consequently, it is unlikely that the relevant public will associate the outlets selling those particular goods with those selling the goods in Class 25.

65 In any event, as the Board of Appeal observed in paragraph 49 of the contested decision, it cannot be held that, notwithstanding the differences in the nature, intended use and purpose of the goods under comparison, the relevant consumers will take the view that they are closely connected and that the same undertaking is responsible for manufacturing them for the sole reason that they may, in certain circumstances, be sold through the same distribution channels, such as specialist ‘fashion, footwear and accessory’ shops (see, to that effect, judgment of 12 February 2015, B, T‑505/12, EU:T:2015:95, paragraph 77).

66 Therefore, the Board of Appeal was entitled to conclude that the goods described as ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’ and covered by the mark applied for were different from the goods protected by the earlier marks.

– Comparison of the other specified goods with the goods protected by the earlier marks

67 By its second ground for complaint, the applicant claims, in the first place, that the Board of Appeal erred by applying the same argumentation to ‘precious stones; precious metals and alloys; works of art of precious metal; jewelry cases [caskets]; boxes of precious metal; watch cases, springs or glasses; key rings [trinkets or fobs]; statues or figurines (statuettes) of precious metal; cases or presentation cases for timepieces’ (‘the other specified goods’) as it did to the goods referred to in the first ground for complaint, namely ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’. In the second place, the applicant claims, in essence, that goods protected by the earlier marks can include component parts, such as precious or semi-precious metals and stones that may be necessary, indispensable or important for the final product offered to the consumer. In the third place, the applicant submits a line of argument, described by it as ‘transitive property’, according to which ‘if two products are similar to each other and one of them resembles a third product, the first product must also be deemed to resemble the third’. Consequently, if similarity has been established between, for example, a bracelet and a pair of women’s sandals, such similarity should also apply to the jewellery case, box or presentation case containing that bracelet.

68 In the first place, it should be noted that it is apparent from the Opposition Division’s decision, which was endorsed by the Board of Appeal, that it took into consideration all the relevant factors of the relationship between the goods at issue, namely their nature, intended purpose, distribution channels and commercial origin.

69 Thus, as the Opposition Division noted, ‘works of art of precious metal; statues or figurines (statuettes) of precious metal’ are luxury decorative objects, and ‘jewelry cases [caskets]; boxes of precious metal; watch cases; cases or presentation cases for timepieces’ are objects designed to store jewellery or timepieces properly. Consumers will not expect that these goods, which are completely different from goods in Class 25 in terms of their nature, purpose and method of use, will come from the same manufacturer. Further, those goods do not have the same distribution channels, and they are neither in competition nor complementary.

70 The Board of Appeal was fully entitled, in paragraph 56 of the contested decision, expressly to ‘endorse’ and adopt the Opposition Division’s conclusion that the goods specified in this ground for complaint are different from the goods protected by the earlier marks, footwear in particular.

71 In the second place, although precious or semi-precious metals and precious stones may be used as components for shoes, that cannot suffice to justify the conclusion that those goods are similar. The mere fact that a particular product is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different (judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 61). Further, the applicant’s claim that the goods contested in this ground for complaint and the goods protected by the earlier marks are complementary as they can form part of one another must be rejected, in accordance with the settled case-law stating that goods cannot be regarded as complementary on the ground that one is manufactured with the other (judgments of 13 April 2011, Tubesca v OHIM — Tubos del Mediterráneo (T TUMESA TUBOS DEL MEDITERRANEO S.A.), T‑98/09, not published, EU:T:2011:167, paragraph 49, and of 9 April 2014, EI du Pont de Nemours v OHIM — Zueco Ruiz (ZYTeL), T‑288/12, not published, EU:T:2014:196, paragraph 39). Consequently, the applicant has failed to establish that the specified goods were necessary, indispensable or important for the use of the goods protected by the earlier marks.

72 In the third place, the applicant’s argument alleging ‘transitive property’ is based on a factual misunderstanding as, having regard to the foregoing, the specified goods covered by this ground for complaint are different from the goods protected by the earlier marks. Therefore, that line of argument relied on by the applicant cannot apply in the present case.

73 In addition, that argument is manifestly fallacious and wrong in principle, because, as EUIPO has rightly pointed out, the mere fact that there is a similarity between two products and that one of them looks like a third product is not sufficient to permit the conclusion that the first and the third must be similar. Pushed to its limits, such an approach would artificially and unduly extend the scope of Article 8(1)(b) of Regulation No 207/2009.

74 The Board of Appeal was therefore right to conclude that ‘precious stones; precious metals and alloys; works of art of precious metal; jewelry cases [caskets]; boxes of precious metal; watch cases, springs or glasses; key rings [trinkets or fobs]; statues or figurines (statuettes) of precious metal; cases or presentation cases for timepieces’ covered by the mark applied for differ from the goods protected by the earlier marks.

– Comparison of all of the specified goods with the services protected by the earlier mark iPANEMA

75 By its third ground for complaint, the applicant claims, in essence, that, if it has been established that certain goods, such as women’s bracelets and sandals, are similar, that applies equally for the retail sale services relating to such goods.

76 It is sufficient to note that this ground for complaint relating to the comparison of all of the specified goods with the services protected by the earlier mark iPANEMA is based on the incorrect assumption that the goods at issue that are the subject of such services are similar.

77 The Board of Appeal was therefore right to conclude that the nature, intended purpose and method of use of the specified goods in Class 14 are entirely different from those of the services protected by the earlier mark and that they are not in competition with each other and are not functionally or aesthetically complementary.

78 By its fourth and last ground for complaint, the applicant relies on the decision of 4 May 2015 of the Juzgado de lo Mercantil n^o 2 de Alicante (Commercial Court No 2, Alicante, Spain) (‘the national decision’) which, in infringement proceedings, concluded that goods in Classes 9 and 14 and goods in Class 25 were similar. The applicant alleges that the Board of Appeal refused to examine that decision on the sole ground that national decisions are not binding on EUIPO.

79 It should be recalled that Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) provides that ‘[EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’. That provision is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see, to that effect, judgments of 21 November 1991, Technische Universität München, C‑269/90, EU:C:1991:438, paragraph 14, of 15 July 2011, Zino Davidoff v OHIM — Kleinakis kai SIA (GOOD LIFE), T‑108/08, EU:T:2011:391, paragraph 19, and of 25 March 2015, Apple and Pear Australia and Star Fruits Diffusion v OHIM — Carolus C. (English pink), T‑378/13, EU:T:2015:186, paragraph 46).

80 It must be noted that the essential factual elements of the national decision relied on differ substantially from the present case in terms of the parties, the earlier mark, namely El Ganso, and the nature of the proceedings, namely infringement proceedings rather than opposition proceedings. Therefore, in the present case, that national decision cannot be a relevant factual element, the potential importance of which ought to have been assessed by the Board of Appeal in the context of the outcome in the proceedings before it. Consequently, the Board of Appeal assessed the relevant factual aspects submitted to it with the required diligence.

81 Furthermore, it is apparent from settled case-law that registrations already made in Member States are no more than factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registration of an EU trade mark. The same considerations apply to the case-law of the courts of the Member States (judgments of 19 September 2001, Henkel v OHIM (Round tablet, red and white), T‑337/99, EU:T:2001:221, paragraph 58, and of 13 December 2017, Laboratorios Ern v EUIPO — Ascendo Medienagentur (SLIMDYNAMICS), T‑700/16, not published, EU:T:2017:896, paragraph 55). The Board of Appeal was therefore fully entitled to conclude, in paragraph 63 of the contested decision, that it could not give more weight to that national decision than the considerations made in accordance with the settled case-law of the EU judicature.

82 Having regard to all of the foregoing considerations, the Board of Appeal was right to conclude that the goods covered by the mark applied for differed from the goods and services protected by the earlier marks.

Third part of the single plea in law, relating to a failure to apply the principle of interdependence or ‘modulation between the word and application elements’

84 In the third part, the applicant complains, in essence, that the Board of Appeal erroneously failed to apply the principle of interdependence or ‘modulation between the word and application elements’, according to which, when carrying out a global assessment of the likelihood of confusion, the fact that signs are strongly identical must take precedence over the comparison of the goods, by gradually relaxing the requirement that the goods be similar, but without excluding that they be similar to a certain degree. The applicant argues that the fact that the contested decision fails to address that point also constitutes a failure to state grounds.

85 In that regard, it should be noted that, while it is indeed true that, pursuant to the principle of interdependence between the factors taken into account, and, in particular, the similarity of the marks and of the goods or services covered, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 45, and of 15 February 2017, Morgeseand Others v EUIPO — All Star (2 STAR), T‑568/15, not published, EU:T:2017:78, paragraph 76), the fact nevertheless remains that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion presupposes, in terms of cumulative conditions, both that the trade mark applied for and the earlier trade mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trade mark was registered (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47, of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42, and of 15 March 2018, Marriott Worldwide v EUIPO — Graf (Representation of a winged bull), T‑151/17, not published, EU:T:2018:144, paragraph 31). Consequently, the mere fact that the goods and services covered by the marks at issue are different makes it possible to rule out any likelihood of confusion (see, to that effect, judgments of 26 September 2014, Arnoldo Mondadori Editore v OHIM — Grazia Equity (GRAZIA), T‑490/12, not published, EU:T:2014:840, paragraph 31, and of 28 October 2015, Monster Energy v OHIM — Home Focus (MoMo Monsters), T‑736/14, not published, EU:T:2015:809, paragraph 35).

86 In the present case, it has already been held, in paragraph 82 above, that the Board of Appeal did not err in concluding that the goods at issue were different and were not even slightly similar. That lack of similarity is sufficient to rule out any likelihood of confusion between the marks at issue. Therefore, the Board of Appeal cannot be criticised for refraining from applying the principle of interdependence when it carried out its global assessment of the likelihood of confusion or for having infringed its obligation to state grounds in that respect. The third part is therefore manifestly unfounded.

87 Having regard to all of the foregoing considerations, the single plea in law must be rejected and, consequently, the action dismissed in its entirety, without it being necessary to adjudicate on the admissibility of the applicant’s heads of claim other than that seeking annulment of the contested decision.

88 Under Article 134(1) 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 EUIPO and the intervener, including those incurred by the intervener before the Board of Appeal of EUIPO.

First part of the single plea in law, relating to the failure to take into account the ‘tacit recognition’ by the intervener of the similarities of the goods at issue

Second part of the single plea in law, relating to an error in the comparison of the goods at issue

– Comparison of the specified goods ‘jewelry; jewelry products; timepieces and chronometric instruments; bracelets; chains; medals’ with the goods protected by the earlier marks

– Comparison of the other specified goods with the goods protected by the earlier marks

– Comparison of all of the specified goods with the services protected by the earlier mark iPANEMA

Third part of the single plea in law, relating to a failure to apply the principle of interdependence or ‘modulation between the word and application elements’

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Grendene v EUIPO - Hipanema (HIPANEMA) (EU trade mark - Judgment) [2018] EUECJ T-435/17 (25 September 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T43517.html Cite as: EU:T:2018:596, ECLI:EU:T:2018:596, [2018] EUECJ T-435/17

Court of Justice of the European Communities (including Court of First Instance Decisions)