C-619/15

ORDER OF THE COURT (Eighth Chamber) 21 June 2016 (*) (Appeal — Article 181 of the Rules of Procedure of the Court — EU Trade Mark — Regulation (EC) No 207/2009 — Article 8(1)(b) — Figurative mark in green, white and grey representing the design of a crocodile containing the word element ‘KAJMAN’ — Opposition by the proprietor of the EU figurative mark in black and white representing the design of a crocodile — Partial refusal to register by a Board of Appeal of the European Union Intellectual Property Office (EUIPO)) In Case C‑619/15 P, APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 19 November 2015, Eugenia Mocek, Jadwiga Wenta, KAJMAN Firma Handlowo-Usługowo-Produkcyjna, established in Chojnice (Poland), represented by B. Szczepaniak, radca prawny, appellant, the other parties to the proceedings being: European Union Intellectual Property Office (EUIPO), defendant at first instance, Lacoste SA, established in Paris (France), intervener at first instance, THE COURT (Eighth Chamber), composed of D. Šváby, President of the Chamber, J. Malenovský (Rapporteur) and M. Safjan, Judges, Advocate General: E. Sharpston, Registrar: A. Calot Escobar, having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court, makes the following Order 1        By its appeal, Eugenia Mocek, Jadwiga Wenta, KAJMAN Firma Handlowo-Usługowo-Produkcyjna asks the Court to set aside the judgment of the General Court of the European Union of 30 September 2015 in Mocek and Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM — Lacoste (KAJMAN) (T‑364/13, not published, ‘the judgment under appeal’, EU:T:2015:738), by which that court dismissed its action seeking annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 May 2013 (Case R 2466/2010-4) concerning opposition proceedings between Lacoste SA and the appellant (‘the contested decision’). 2        The appellant also claims that the Court should: –        give final judgment as to the substance, in accordance with Article 61 of the Statute of the Court of Justice of the European Union; and –        order EUIPO to pay the costs.  On the appeal 3        Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part. 4        On 20 April 2016, the Advocate General took the following position: ‘1.      This trade mark appeal challenges the judgment under appeal in which the General Court dismissed the Appellant’s action seeking annulment of the contested decision. The General Court upheld in part the appeal of Lacoste (“the intervener”). It considered that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), in respect of leather goods in Classes 18 and 25 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, (“the Nice Classification”). The General Court ruled that there was a conceptual similarity between the intervener’s earlier mark, a black and white figurative sign representing a crocodile standing on its feet in an aggressive position, and the later mark for which the Appellant sought registration. The latter shows a coloured figurative sign of a reptile in a stylised manner in a sleeping position, with the torso made up of the letters of the word “KAJMAN”. The General Court ordered the Appellant to pay all the costs relating to the action and to bear its own costs relating to the intervener’s application for annulment and alteration. 2.      The Appellant claims in this appeal that the Court should: –        set aside the judgment under appeal in so far as the General Court dismissed the action and ordered costs against it; –        uphold its action for annulment of the contested decision and deliver final judgment on its application to register an EU trade mark for all categories of goods covered in its original application; –        order EUIPO to pay the costs, including those incurred by the Appellant in the proceedings before the Board of Appeal. 3.      The Appellant has not identified the specific ground (or grounds) of appeal. Rather, it puts forward eight pleas. Those pleas suggest that the appeal is based on a sole ground alleging an infringement of Article 8(1)(b) of Regulation No 207/2009. In pleas one to seven the Appellant claims that the General Court: –        placed unjustified weight on the conceptual similarity between the trade marks at issue; –        failed to carry out a proper analysis of visual similarity; –        erred in its assessment of the word element “KAJMAN” in the later trade mark; –        failed to assess phonetic similarity; –        deprived the Appellant of the right to use its business name in the later trade mark; –        failed to examine the similarity of the marks at issue in its global assessment as to whether a likelihood of confusion exists; –        erred in determining the level of attention of the relevant public in relation to the categories of products at issue. 4.      The Appellant claims in its eighth plea, which can be identified as “the second ground of appeal”, that the General Court breached Article 134(1) and (2) read together with Articles 173(3) and 182(1) of its Rules of Procedure in the order for costs which it imposed. 5.      I consider that the Court should apply Article 181 of the Rules of Procedure to dismiss this case by reasoned order as partly manifestly inadmissible and partly manifestly ill-founded; and should order the Appellant to pay the costs of these proceedings under Article 137 of the Rules of Procedure. 6.      The Appellant does not distinguish the points made in support of its pleas. Rather, the Appellant criticises the judgment under appeal, but has not identified with precision which points are challenged in the appeal. In what follows, I distinguish between the arguments relating to the General Court’s factual assessment and those relating to an alleged infringement of Article 8(1)(b) of Regulation No 207/2009. 7.      By its first plea (points 19 to 34 of the appeal) the Appellant criticises the General Court for attributing more weight to the conceptual similarities between the earlier and the later trade marks than it gave to the visual differences between the two marks. The General Court erred in its assessment by failing: (i) to take account in particular of the fact that the earlier mark is “purely” figurative and the later more complex mark is composed of both word and figurative elements; (ii) to acknowledge that the conceptual, visual and phonetic elements do not necessarily carry the same weight in the global assessment of the existence of a likelihood of confusion; (iii) to consider that visual similarity is of more importance where the goods concerned are marketed and sold to consumers, for example in self-service outlets; (iv) to be aware that for complex figurative marks, whether there is a dominant element must be assessed by a visual analysis and that the visual element is decisive. Last, the Appellant claims that by placing emphasis on the conceptual similarity the General Court creates an unjustified monopoly of the use of a sign representing a reptile of the order crocodilian. 8.      In reality the Appellant seeks a re-examination of the facts concerning the assessment of the visual similarity and the conceptual similarity of the trade marks at issue, without however claiming that the facts or the clear sense of the evidence were distorted. An appraisal on those grounds does not constitute a point of law subject to review by the Court of Justice on appeal (order of 3 March 2016 in AgriCapital v OHIM, C‑440/15 P, not published, EU:C:2016:144, paragraphs 32 and 33 and the case-law cited). Furthermore, a factual assessment of the similarities between the signs at issue is not subject to review by the Court on appeal in the context of examining the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (order of 3 June 2015 in Sunrider v OHIM, C‑142/14 P, not published, EU:C:2015:371, paragraph 50 and the case-law cited). Thus, the Appellant’s arguments must be rejected as being manifestly inadmissible. 9.      According to the Appellant the reasoning in the judgment under appeal is vague and insufficient in so far as it failed to state why the reputation of the earlier trade mark is more important than the visual differences between that mark and the contested trade mark. That submission appears to be based on a misreading of paragraphs 67 to 69 of the judgment under appeal. The General Court there correctly states that, in principle, where one element of comparison is established, there may be a likelihood of confusion in relation to identical or similar goods where the earlier mark has a particularly distinctive character. In such circumstances, the more distinctive the earlier mark the greater the likelihood of confusion will be. In the global assessment of whether that is the case, the visual comparison is only one element to be considered in any assessment. The Appellant’s first plea must therefore be dismissed as being in any event manifestly unfounded. 10.      By the second plea (points 35 to 39 of the appeal) the Appellant challenges the General Court’s assessment of the visual similarity of the marks at issue. It argues that the General Court was overly influenced by its assessment of the conceptual element and failed to give weight to the visual differences between the marks at issue. Those two aspects should be considered separately. The graphic representation of the earlier mark is different from the later mark which includes the word “KAJMAN” as an element. 11.      The second plea repeats the Appellant’s claims made in relation to the first plea in so far as it concerns the assessment of the visual elements of the marks at issue and the weight that the General Court accorded to the conceptual element in its assessment. In so doing, the Appellant again seeks a reassessment of the facts. To that extent, the plea is therefore manifestly inadmissible for the reasons set out in point 8 above. 12.      It is moreover clear from paragraphs 38 to 42 of the judgment under appeal that the General Court conducted a detailed analysis of the visual similarity of the marks at issue. The conceptual similarity was examined separately in paragraphs 47 to 53. Thus, the second plea is in any event manifestly unfounded in so far as the Appellant submits that the visual element was not considered by the General Court separately from the conceptual element. 13.      In its third plea (points 40 to 43 of the appeal) the Appellant criticises the General Court: (i) for finding that consumers would not perceive the word element “KAJMAN” separately from the figurative element; (ii) for failing to take into account that the word element means that the marks at issue are visually different; and (iii) for finding that the word element “KAJMAN” will be understood by the relevant public as referring to an animal of the order crocodilian. 14.      The third plea repeats the first plea in so far as it seeks to obtain a reassessment of the visual elements of the marks at issue. To that extent, it is therefore manifestly inadmissible for the reasons set out in point 8 above. 15.      In any event the third plea is manifestly unfounded as it is based upon a misreading of the judgment under appeal. In paragraph 38 of the judgment under appeal, the General Court considered that the average consumer places his trust in the imperfect picture of marks that he has kept in his mind. In the present case the consumer would retain the image of a crocodile with a curved tail. In its assessment the General Court took into account that the later trade mark includes the word “KAJMAN” in a stylised manner. However, of itself that was not sufficient to neutralise the existence of a certain visual similarity. 16.      By its fourth plea (points 44 to 47 of the appeal) the Appellant complains that the General Court failed to examine whether the marks at issue are phonetically similar. The Appellant seeks in effect a reappraisal of the General Court’s factual assessment. To that extent, that plea is manifestly inadmissible for the reasons set out in point 8 above. 17.      The fourth plea is likewise manifestly unfounded in that the General Court considered phonetic similarity, but concluded that it was not relevant because the earlier trade mark has no word element to the sign that can be pronounced. The General Court stated (in paragraphs 43 to 46 of the judgment under appeal) that it cannot be concluded that there is either a phonetic similarity or a phonetic dissimilarity between the marks at issue given that the earlier mark is a figurative mark lacking word elements. 18.      The Appellant argues by its fifth plea (points 48 to 51 of the appeal) that the judgment under appeal deprives it of the right to use its business name in the later trade mark. That plea is founded upon a plain misreading of the judgment under appeal. The General Court did not rule that the Appellant is prohibited from using the word “KAJMAN” as a trade mark. It has merely stated that the use of that word depicted as a reptile of the order crocodilian in the mark presented for registration in respect of the goods in Classes 18 and 25 of the Nice Classification gives rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. The fifth plea is therefore manifestly unfounded. 19.      The Appellant claims in the sixth plea (points 52 to 55 of the appeal) that when making the global assessment as to whether a likelihood of confusion exists, the General Court failed to assess the similarity of the marks at issue and it erred in referring to the distinctive character of the earlier mark. 20.      In the judgment under appeal the General Court compared the marks at issue and found that visual similarity is low (paragraphs 42 and 66), the phonetic element is irrelevant (paragraph 46) and the conceptual similarity is at least average (paragraphs 53 and 66). It is therefore clear that the General Court examined the similarity of the marks at issue for the purposes of establishing whether there was a likelihood of confusion within Article 8(1)(b) of Regulation No 207/2009. The distinctive character of the earlier mark was not an element in the assessment of the similarity of the earlier and later trade marks. It was considered independently of that determination in the context of the global assessment (paragraphs 67 to 69 of the judgment under appeal). Thus, the sixth plea is based upon a misreading of the judgment under appeal and is therefore manifestly unfounded. 21.      By the seventh plea (points 54 to 64 of the appeal) the Appellant asserts that the General Court erred in determining the level of attention of the relevant public in relation to the goods in Classes 18 and 25 of the Nice Classification. According to the Appellant the General Court failed to take account of all the relevant circumstances of the case. There is no likelihood of confusion between the two marks at issue because the average consumer is aware that the later mark concerns products intended for animals, whereas the goods bearing the earlier mark are high quality and expensive. Consumers therefore pay special attention to the earlier trade mark with regard to the price and quality of the goods concerned. Also, the form of the earlier mark is established and the average consumer knows that mark. The General Court was wrong in its view that: (i) the more distinctive the earlier mark the greater the likelihood of confusion will be; (ii) that is not diminished because consumers pay special attention to a “known mark”; and (iii) the sign of the later mark may be perceived as a variant of the earlier mark. 22.      Findings relating to the characteristics of the relevant public and its degree of attention, perception or attitude are appraisals of fact (order of 17 February 2016 in Shoe Branding Europe v OHIM, C‑396/15 P, not published, EU:C:2016:95, paragraph 15 and the case-law cited). Likewise, the assessment of the reputation of the earlier marks and of the link which the public may make between the mark applied for and the earlier marks constitutes a matter of fact (order of 14 May 2013 in You-Q v OHIM, C‑294/12 P, not published, EU:C:2013:300, paragraphs 59 to 61). In so far as the Appellant in reality again seeks a reappraisal of the General Court’s assessment of the facts, that plea is manifestly inadmissible for the reasons set out in point 8 above. 23.      Moreover, the General Court correctly states that the existence of a likelihood of confusion on the part of the public must be appreciated globally taking account of all factors relevant to the circumstances of the case (paragraph 19 of the judgment under appeal). The General Court carried out that examination in paragraphs 21 to 57 of its judgment. It expressly rejected the Appellant’s submission that the goods covered by the earlier mark are sold mainly in “Lacoste’s retail stores” to demonstrate that the level of attention of a consumer of the goods covered by the earlier mark is high (paragraphs 27, 70 and 71 of the judgment under appeal). It is therefore clear that the General Court did not base its assessment solely on the list of goods and services for which the trade marks were protected. It follows that the seventh plea is manifestly unfounded. 24.      The eighth plea (point 65 of the appeal) concerns solely the General Court’s order for costs. Since in my view pleas one to seven cannot succeed, it follows that the last plea is ineffective. 25.      I therefore consider that the appeal should be dismissed as partly manifestly inadmissible and partly manifestly unfounded and that the Appellant should bear the costs.’ 5        On the same grounds as those adopted by the Advocate General, the appeal must be dismissed.  Costs 6        Under Article 137 of the Court’s Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the respondent and therefore before the latter could have incurred costs, the appellant must be ordered to bear its own costs. On those grounds, the Court (Eighth Chamber) hereby orders: 1.      The appeal is dismissed. 2.      Eugenia Mocek, Jadwiga Wenta, KAJMAN Firma Handlowo-Usługowo-Produkcyjna shall bear its own costs. [Signatures] * Language of the case: English.