JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

21 November 2012 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark ARTIS – Earlier national word mark ARTIS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑558/11,

Atlas sp. z o.o., established in Łódź (Poland), represented by R. Rumpel, lawyer,

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

Couleurs de Tollens, established in Clichy (France), represented by J.-G. Monin, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 28 July 2011 (Case R 1253/2010-1), relating to opposition proceedings between Couleurs de Tollens-Agora and Atlas sp. z o.o.,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas (Rapporteur), President, V. Vadapalas and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 31 October 2011,

having regard to the response of OHIM lodged at the Court Registry on 4 April 2012,

having regard to the response of the intervener lodged at the Court Registry on 22 March 2012,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the proceedings

1        On 1 August 2007, the applicant, Atlas sp. z o.o, filed an application for registration of a Community trade mark at 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 trade mark in respect of which registration was sought is the word mark ARTIS.

3        The goods in respect of which registration was sought, after the restriction made during the proceedings before OHIM, fall within Classes 2 and 17 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, in respect of each of those classes, to the following description:

–        Class 2: ‘Paints, lacquers and decorative and protective permanent or temporary compositions containing them, undercoatings, putty, base layers, preparations protecting against the deterioration of walls and other materials, all in the form of powder, liquid, semi-liquid and spray preparations (including in aerosol form) and thinners for the aforesaid compounds and preparations, mortars and masses for pointing and repointing;’

–        Class 17: ‘Stopping and hydroinsulating materials for joints, for making stopping and hydroinsulating layers in construction and construction joints, polyurethane foams.’

4        The Community trade mark application was published in Community Trade Marks Bulletin No 3/2009 of 26 January 2009.

5        On 24 April 2009, the intervener ‑ Couleurs de Tollens, formerly Couleurs de Tollens-Agora SAS ‑ filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 in relation to registration of the mark applied for in respect of the goods referred to at paragraph 3 above.

6        The opposition was based on the earlier national word mark ARTIS, registered in France under No 93 484 880, designating goods in Classes 1 and 19 and corresponding, for each of those classes, to the following description:

–        Class 1: ‘Chemical products used in industry, namely: adhesives (sticking materials) and glues for industrial purposes, adhesives for wall and floor coatings; unprocessed artificial resins; compositions and products for the preparation, the protection, the preservation or for hydro insulating of cement, of concrete, or of masonry works [except paints]; chemical products for smoothing and levelling walls and floors;’

–        Class 19: ‘Non metallic building materials, namely: cement, lime, plaster, concrete, mortars and coatings (building materials); building materials for smoothing and levelling walls and floors, and for the construction of screeds; non metallic coatings (building materials) for floors and walls.’

7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.

8        On 6 May 2010, the Opposition Division upheld the opposition and rejected the trade mark application.

9        On 6 July 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 28 July 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. The Board of Appeal, in essence, found that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, in the light of the identical nature of the signs at issue and the similarity of the goods in question.

 Forms of order sought

11      The applicant claims that the Court should:

–        declare the action to be well founded;

–        annul the contested decision;

–        amend the contested decision by granting registration of the trade mark applied for;

–        order OHIM to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should:

–        confirm the contested decision;

–        order the applicant to pay the costs, including those incurred during opposition and appeal proceedings before OHIM.

 Law

14      In support of its action, the applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

15      It claims that OHIM misapplied that provision, by finding that there was a similarity between the goods in question and a likelihood of confusion between the signs at issue.

16      OHIM and the intervener dispute the applicant’s arguments.

17      In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and because of 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. Furthermore, under 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.

18      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. Under that case-law, the likelihood of confusion must be assessed globally, 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 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).

19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).

20      In the present case, the parties agree that the signs at issue are identical.

 Relevant public

21      According to the case-law, 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 case-law cited).

22      In the present case, since the mark on which the opposition is based is a French mark, the territory for the purposes of assessing the likelihood of confusion is France, as the Board of Appeal essentially found. The applicant has not disputed that finding.

23      Furthermore, the Board of Appeal found that, given the nature of the goods at issue, the relevant public for the goods covered by the mark applied for is composed of DIY enthusiasts as well as professionals in the sectors of construction, maintenance and repair of buildings. The applicant does not explicitly dispute that assessment, but claims, in the context of its argument relating to the likelihood of confusion, that the relevant public for the goods covered by the earlier mark is composed of professionals, whereas the relevant public for the goods covered by the mark applied for is composed of average consumers. That claim must however be rejected. Indeed, not only is it not supported by any proof, but it must be stated that, given their nature, the goods covered by the earlier mark may also be aimed at non-professionals such as DIY enthusiasts especially in respect of the goods in Class 19, such as cement, lime and plaster, which may be used both by professionals and by DIY enthusiasts. The same applies for the goods covered by the trade mark application, in particular those in Class 2, such as paints or lacquers. It must therefore be found that the relevant public is composed, in respect of both the goods covered by the earlier mark and the goods covered by the mark applied for, not only of DIY enthusiasts, but also of professionals, and that public is thus likely to have a higher degree of attention than normal when choosing the goods at issue.

 Goods at issue

24      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).

25      It must be noted, in that respect, that goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other so that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods and services intended for different publics cannot be complementary (see easyHotel, paragraphs 57 and 58 and the case‑law cited).

26      Finally, it should be noted that where the goods or services covered by the earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 34 and the case-law cited).

27      In the present case, the Board of Appeal took the view that the goods at issue were similar, despite the difference in their composition.

28      The applicant argues that the goods at issue are different, given not only that they are in different classes, but also that they are not complementary, they are not aimed at the same consumers and their distribution channels are different.

29      OHIM and the intervener dispute the applicant’s arguments.

30      In that regard, it must first of all be pointed out that the goods at issue are, overall, of a similar nature. They include, in general, goods used for the construction, protection, maintenance and repair of buildings.

31      It must also be stated that the goods at issue may have the same intended purpose. Thus, first, the goods in Class 2 which are covered by the trade mark application have, in general, the same intended purpose, namely as a coating in particular for walls, as some of the goods in Class 19 which are covered by the earlier mark, in particular non-metallic coatings (building materials) for floors and walls. The latter goods include goods in Class 2 which are covered by the trade mark application. Indeed, paints, lacquers and decorative and protective permanent or temporary compositions containing them, undercoatings, putty, base layers, preparations protecting against the deterioration of walls and other materials, and thinners, preparations, mortars and masses for pointing and repointing may be regarded as being included in the broad category of non-metallic coatings (building materials) for floors and walls. Second, the goods in Class 17 which are covered by the trade mark application have the same intended purpose, namely insulation and, in particular hydroinsulation, as some of the goods in Class 1 which are covered by the earlier mark, namely compositions and products for the preparation, the protection, the preservation or hydroinsulation of cement, of concrete, or of masonry works. As the intervener pointed out, all of those goods seek to prevent the entry of unwanted water into buildings.

32      Finally, it must be noted that some of the goods at issue are complementary. As the Board of Appeal found in essence, the goods covered by the earlier mark, in particular chemical products for smoothing and levelling walls and floors in Class 1, and building materials for smoothing and levelling walls and floors and for the construction of screeds in Class 19, may prove indispensable or important for the use of the goods in Class 2 which are covered by the trade mark application, in particular paints, lacquers, undercoatings, putty, base layers, preparations protecting against the deterioration of walls and other materials. In fact before applying the latter goods, it may be necessary to first apply a product or a material for smoothing and levelling walls and floor. Furthermore, some goods covered by the trade mark application, such as sealing and hydroinsulating materials for joints, for making sealing and hydroinsulating layers in construction and construction joints and polyurethane foams in Class 17, may be indispensable or important in the use of non-metallic coatings for floors and walls in Class 19 and covered by the earlier mark. The prior application of the former may be necessary before proceeding to application of the latter. Finally, as OHIM submits, unprocessed artificial resins in Class 1 and covered by the earlier mark may constitute the raw materials for paints and lacquers in Class 2 and covered by the trade mark application.

33      It follows from all of the foregoing that the Board of Appeal was correct to find that the signs at issue were similar.

34      That conclusion is not called in question by the applicants’ arguments.

35      It should be noted at the outset that, in those arguments, the applicant essentially reiterates the arguments presented before the Board of Appeal but without specifically criticising the assessments carried out by the Board of Appeal in the contested decision. Furthermore, some of those arguments lack coherence because, at several points in its application, the applicant clearly confuses the signs at issue and the goods covered by them, as the intervener in essence noted. In those circumstances the Court’s examination will be based as far as possible on the goods and classes cited by the applicant and not on the sign to which the applicant links them.

36      First, the applicant’s claim based on the fact that the goods at issue come from different classes must be set aside. It is clear from Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), that the classification of goods and services is to serve exclusively administrative purposes and that, therefore, goods and services may not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

37      Second, the applicant’s claim that the goods at issue are not complementary, are not aimed at the same consumers and have different distribution channels must also be rejected. None of the arguments put forward in support of that claim can succeed.

38      In that regard, first it should be noted that the argument relating to the relevant public must be rejected for the reasons set out in the context of the assessment of the composition of that public (see paragraph 23 above).

39      Furthermore, the Court rejects the claim that the distribution channels of the goods at issue are different, because it is not substantiated by any proof but is merely asserted by the applicant. In any event, in view of the nature of the goods and the fact that they are aimed at the same public, it must be considered that the Board of Appeal was correct to find that they could avail of the same distribution channels.

40      Next, the Court also rejects the applicant’s claim that the goods in Class 1 cannot be compared with those in Class 2, because the former are raw materials intended for further processing whereas the latter are finished and fully processed goods. It is not necessary to decide whether or not that contention, disputed by the intervener, is established as a fact because it cannot call in question the similarity between those goods, which arises from the fact that they have a similar nature and intended purpose and that they have a link of complementarity, as was pointed out at paragraphs 30 to 32 above. For the same reasons, the Court rejects the argument that the goods in Class 2 covered by the trade mark application may be used independently by the buyer, unlike goods covered by the earlier mark, which can only be used under industrial conditions or with industrial installations. In that respect it is necessary to add that all the goods covered by the earlier mark are not intended for industrial use. A reference to that effect relates to only one category of goods in Class 1, namely chemical products used in industry, and there is no evidence that the other goods could not be used outside industrial conditions, or without the use of industrial installations. Moreover, it must be remembered that the contemplated use in a particular sector or on a particular market of a trade mark for which registration is sought cannot be taken into account because the registration cannot be restricted to that effect (Case T‑317/01 M+M v OHIM ‑ Mediametrie (M+M EUROdATA) [2004] ECR II‑1817, paragraph 58).

41      Furthermore, the applicant’s assertion that no goods covered by the earlier mark in Class 1 can be used for levelling or smoothing surfaces, it is incorrect, because chemical products for smoothing and levelling walls and floors are, in particular, included among the goods in that class. In any event, even if established, it would not be able to call in question the foregoing considerations as to the nature, purpose and complementarity of the goods at issue, because, as has already been pointed out, the fact that they can only be applied on an industrial scale is not relevant.

42      Furthermore, the applicant’s argument that paints, lacquers, putty and other substances covered by the trade mark application cannot for technical reasons be used as a coating for walls and floors, and do not offer permanent protection against humidity, whereas the goods in Class 1 of the earlier mark protect all the material against humidity, is irrelevant. As already noted, paints, lacquers, putty and other substances covered by the trade mark application may be regarded as included in the category of non-metallic coatings (building materials) for floors and walls. The fact that a seal made by using those goods is temporary or does not meet requirements as to resistance is irrelevant in that regard, because it cannot call in question the coating nature of those goods. That also applies to the fact that they do not permanently protect against humidity. Moreover, that argument cannot demonstrate a lack of similarity between the goods at issue and in particular to call in question the fact that those goods have a similar purpose and are complementary with those in Class 19 covered by the earlier mark, as has been pointed out at paragraphs 31 and 32 above.

43      Finally, the argument that the goods in Class 19 cannot be contrasted with those in Class 17 must also be rejected. Even if, as the applicant claims, insulation materials in Class 17 cannot be used alone to construct a building or cannot smooth or finish off walls, the fact remains that, as has been noted at paragraph 32 above, those goods may be indispensable or important for the use of coatings in Class 19 and that, as has been pointed out at paragraph 31 above, they may have the same purpose as some of those in Class 1 covered by the earlier mark.

 Likelihood of confusion

44      A global 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 that of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and 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).

45      In the present case, in the light of the identical nature of the signs at issue, the similarity of the goods in question and the fact that those goods are aimed at the same public, composed of DIY enthusiasts and professionals, it must be held that, contrary to what the applicant claims, the Board of Appeal did not err in finding that there was a likelihood of confusion between those signs within the meaning of Article 8(1)(b) of Regulation No 207/2009. Since the applicant’s arguments concerning, inter alia, the relevant public and the goods covered by the signs at issue and, in particular, their intended purpose and their method of use have been rejected, they cannot call in question that finding.

46      It follows from the foregoing that the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

47      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 relating to the proceedings before the Court, in accordance with the forms of order sought by OHIM and the intervener.

48      Furthermore, under Article 136(2) of the Rules of Procedure costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal of OHIM are regarded as recoverable costs. That does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, the applicant must be ordered to pay the costs incurred by the intervener relating to the proceedings before the Board of Appeal of OHIM, in accordance with the form of order sought by the intervener, and the intervener’s request that the applicant be ordered to pay the costs relating to the proceedings before the Opposition Division must be rejected (see, to that effect, Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraphs 77 and 78, and Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 115).

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Atlas sp. z o.o. to pay the costs, including those incurred by Couleurs de Tollens during the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Papasavvas

Vadapalas

O’Higgins

Delivered in open court in Luxembourg on 21 November 2012.

[Signatures]