JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

19 January 2011(*)

(Community trade mark – Opposition proceedings – Application for Community word mark Topcom – Earlier Community and Benelux word marks TOPCOM – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑336/09,

Häfele GmbH & Co. KG, established in Nagold (Germany), represented by J. Dönch and M. Eck, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Topcom Europe NV, established in Heverlee (Belgium), represented by P. Maeyaert, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 June 2009 (Case R 1500/2008‑2) concerning opposition proceedings between Topcom Europe NV and Häfele GmbH & Co. KG,

THE GENERAL COURT (Eighth Chamber),

composed of M.E. Martins Ribeiro, President, S. Papasavvas (Rapporteur) and A. Dittrich, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the Court on 25 August 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 7 December 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 27 November 2009,

having regard to the decision of 22 February 2010 refusing permission to file a reply,

further to the hearing on 8 September 2010,

gives the following

Judgment

 Background to the dispute

1        On 4 April 2006, the applicant, Häfele GmbH & Co. KG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark in respect of which registration was sought is the word sign Topcom.

3        The goods in respect of which registration was sought are in Classes 7, 9 and 11 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, for each of those classes, to the following description:

–        Class 7: ‘Electric [kitchen machines and utensils], in particular bread-cutting machines, mixers, dishwashers’;

–        Class 9: ‘Electric [kitchen machines and utensils], in particular scales’;

–        Class 11: ‘Electric [kitchen machines and utensils], in particular coffee machines, toasters, cooker hoods, refrigerators, cookers, microwaves, cooking rings, hobs, steamers’.

4        The trade mark application was published in Community Trade Marks Bulletin No 38/2006 of 18 September 2006.

5        On 3 October 2006, the intervener, Topcom Europe NV, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for.

6        The opposition was based on the earlier word mark TOPCOM, registered at the Benelux Trade Mark Office under No 758816, and on the earlier Community word mark TOPCOM, registered under No 3941192.

7        The earlier trade marks were registered for goods in Class 9, corresponding to the following description: ‘telephones, cordless telephones and cordless headphones, their parts and accessories included in Class 9; private mobile radio for cordless communication; answering machines (telecommunication); modems, routers, broadband routers; apparatus to make wireless communication via one or more PC and laptop (as for wireless computer network as for wireless internet); MP3 players; USB Memory, being memory stick for data files; USB HUB, being apparatus to connect more network applications directly on PC or laptop; blood pressure monitors; heartbeat monitor watches, thermometers’.

8        The opposition was based on all the goods covered by the earlier trade marks and directed against the goods in Class 9 covered by the trade mark application.

9        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

10      On 19 August 2008, the Opposition Division rejected the opposition.

11      On 17 October 2008, the intervener filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

12      By decision of 5 June 2009 (‘the contested decision’), the Second Board of Appeal of OHIM allowed the opposition and annulled the decision of the Opposition Division. It accepted, in essence, that ‘scales’ and ‘thermometers’ are not in competition or interchangeable. It found, however, that they have the same intended purpose and are complementary, so that there is a low degree of similarity between them. It went on to observe, first, that the category of ‘electric kitchen machines and utensils’ covered by the trade mark application is sufficiently wide to include ‘thermometers’ used for measuring the temperature of an oven, meat, cakes or other dishes and, second, that the words ‘in particular, scales’ indicate that ‘scales’ are an example of ‘electric kitchen machines and utensils’. It therefore considered that its comments made in the comparison between ‘thermometers’ and ‘scales’ applied mutatis mutandis to the general category of ‘electric kitchen machines and utensils’. In those circumstances, the Board of Appeal found that, notwithstanding the low degree of similarity between the goods in question, the identical nature of the signs at issue meant that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

14      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

15      The intervener contends that the Court should:

–        dismiss the action and uphold the contested decision;

–        uphold the opposition and, consequently, refuse registration of the mark applied for in respect of the goods in Class 9;

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

 Admissibility of the statement in intervention

16      At the hearing, the applicant claimed that the intervener’s response was inadmissible, on the grounds that the intervener’s representative had not initialled the first page of the response but had merely put the words ‘certified copy’ and that it was dated ‘27 November 2008’, which was before the action was brought.

17      First, it must be considered that the failure to initial the stamp on the first page of the response certifying that the copy is true to the original is a formal error that does not render the intervener’s response inadmissible, since such a penalty is not envisaged by the Rules of Procedure of the General Court. Second, the General Court finds that although the intervener’s response was dated 27 November 2008, it was lodged on 27 November 2009, which was before the expiry of the deadline for lodging on 11 January 2010. The typographical error as to the year on the response, whilst regrettable, cannot call into question that finding.

18      Accordingly, the applicant’s claims regarding the admissibility of the intervener’s response must be rejected.

 Admissibility of the documents annexed to the intervener’s response

19      It is observed that the intervener provided, in Annexes 5 and 6 to its response, documents that are not included in the file submitted to OHIM. However, according to the case-law, the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. It is thus not the General Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (Case T‑128/01 DaimlerChrysler v OHIM(Grille) [2003] ECR II‑701, paragraph 18, Case T‑10/03 Koubi v OHIMFlabesa(CONFORFLEX) [2004] ECR II‑719, paragraph 52). Consequently, the documents provided in Annexes 5 and 6 to the intervener’s response are inadmissible.

 Substance

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

21      The applicant submits that there is no likelihood of confusion between the marks at issue, either from the perspective of a skilled cook or from that of the average consumer. The Board of Appeal therefore erred in finding that there was a likelihood of confusion as regards ‘electric kitchen machines and utensils, in particular scales’, covered by the mark applied for, and ‘thermometers’, covered by the earlier marks, on the ground that those goods are complementary. According to the applicant, there is no similarity between those goods.

22      OHIM and the intervener dispute the applicant’s claims.

23      Article 8(1)(b) of Regulation No 207/2009 provides that, 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.

24      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 (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).

25      In the present case, the earlier marks are a Benelux mark and a Community mark, so that the relevant territory for the purposes of assessing the likelihood of confusion is the whole of the European Union.

26      As regards the relevant public, the applicant does not challenge the Board of Appeal’s finding that it consists of either professionals or average consumers and that those people will have an above average or average level of attention and circumspection. That finding must, in any event, be endorsed, since the goods at issue, as the Board of Appeal held, are targeted at both the professional public, for example cooks, and the public at large.

27      It is in the light of the foregoing considerations that the Board of Appeal’s assessment as to the likelihood of confusion between the signs at issue must be examined.

 Comparison of the signs

28      The parties agree that the signs at issue are identical, as the Board of Appeal correctly found.

 Comparison of the goods

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

30      The applicant submits that there is no similarity between scales and thermometers because they are different in their nature, their intended purpose and their method of use, and the goods are not in competition with each other. Furthermore, contrary to the Board of Appeal’s finding, they are not complementary.

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

32      The Board of Appeal stated that the appeal brought before it related only to the part of the Opposition Division’s decision that found that ‘scales’ and ‘thermometers’ were not similar and it considered that there was a low degree of similarity between those goods because of their complementary nature. The Board also stated that the comments made in the course of that comparison applied mutatis mutandis to the general category of ‘electric kitchen machines and utensils’ covered by the mark applied for, which was wide enough to include ‘thermometers’ used to measure the temperature of an oven, meat, cakes or other dishes.

33      In the present case, as regards, first, the goods at issue, it should be noted that, as the applicant accepted at the hearing, the goods to be compared are, on the one hand, ‘electric kitchen machines and utensils, in particular scales’, in class 9, covered by the trade mark application and, on the other hand, ‘thermometers’, in class 9, covered by the earlier marks. The applicant has not limited the goods in class 9 covered by its trade mark application to ‘scales’. Furthermore, according to the case-law, the words ‘in particular’ used in a description of goods are merely indicative of an example (Case T‑224/01 Durferrit v OHIMKolene (NU-TRIDE) [2003] ECR II‑1589, paragraph 41, and judgment of 12 November 2008 in Case T‑87/07 Scil proteins v OHIM Indena(affilene), not published in the ECR, paragraph 38). Used in a list of goods, those words serve to distinguish goods that are of particular interest to the holder of a mark, without however excluding any other goods from the list (affilene, paragraph 39). Therefore, the comparison of the goods at issue should not be limited merely to ‘scales’ and ‘thermometers’.

34      Secondly, regarding the comparison of the goods at issue, it must first of all be considered, as submitted by OHIM, that the list of the goods covered by the earlier marks does not exclude electric thermometers designed for kitchen use. It must next be noted that the relevant public may use electric thermometers in food preparation, so that they can be regarded as electric kitchen utensils. The relevant public may in fact use electric thermometers for measuring the temperature of meat, baked goods or sauces. That conclusion applies specifically to the part of the relevant public composed of professionals, for whom the precise cooking temperature of food is particularly important. Furthermore, by stating in the application, in particular, that it is ‘possible to use a thermometer for the preparation of meals …’, the applicant does not dispute that thermometers may be used in food preparation. It should be observed, lastly, that, at the hearing, OHIM stated, and was not challenged by the applicant on this point, that the majority of electric kitchen machines and utensils usually belong in class 7, with the exception of measuring instruments, namely scales, timers, thermostats or thermometers, which are in class 9.

35      Therefore, it must be considered that, as the Board of Appeal held, in essence, in paragraph 29 of the contested decision, the category of ‘electric kitchen machines and utensils, in particular scales’ covered by the trade mark application is wide enough to include ‘thermometers’ covered by the earlier marks.

36      According to the case-law, goods can be regarded as identical where the goods covered by the earlier mark are included in a more general category covered by the trade mark application (Case T‑388/00 Institut für Lernsysteme v OHIMEducationalServices(ELS) [2002] ECR II‑4301, paragraph 53, and Case T‑133/05 Meric v OHIMArbora& Ausonia(PAM-PIM’S BABY-PROP) [2006] ECR II‑2737; see also, to that effect, Case T‑172/05 Armacell v OHIMnmc(ARMAFOAM) [2006] ECR II‑4061, paragraph 53).

37      Therefore, the Court finds that the goods at issue, as defined in paragraph 33 above, can be regarded as identical. In that connection, regarding the fact that the Board of Appeal found only a low degree of similarity between the goods at issue, it must be noted that, where it is called upon to assess the legality of a decision of a Board of Appeal of OHIM, the General Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the General Court (Case C‑16/06 P Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 48, and Case T‑148/08 Beifa Group v OHIMSchwan-StabiloSchwanhäußer(Instrument for writing) [2010] ECR I‑0000, paragraph 129).

 Likelihood of confusion

38      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and the similarity 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 OHIMLicorera Zacapaneca(VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).

39      The Board of Appeal considered that, notwithstanding the low degree of similarity between the goods at issue, the identical nature of the signs created a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, at least for a significant portion of the attentive relevant public.

40      The applicant claims that, given that the goods at issue are neither identical nor similar, one of the conditions for application of Article 8(1)(b) of Regulation No 207/2009 is not met. According to the applicant, the fact that scales and thermometers are sometimes sold from the same shops over the internet is not sufficient to create a likelihood of confusion between the marks at issue.

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

42      In this case, given the identical nature of the goods at issue and the identical nature of the marks at issue, it must be considered that, notwithstanding its error regarding the degree of similarity between the goods, the Board of Appeal was correct in finding that there was a likelihood of confusion between those marks.

43      The applicant’s argument, that the fact that scales and thermometers are sometimes sold from the same shops over the internet is not sufficient to create a likelihood of confusion between the marks at issue, must be rejected since, firstly, it relates only to scales and thermometers and, secondly, the Board of Appeal took that fact into account only in its assessment of the complementary nature of those goods and did not use it as a basis for its conclusion that there was a likelihood of confusion between the marks at issue.

44      It follows from all the above that the single plea in law must be rejected, and hence the action must be dismissed. Since the contested decision, which allowed the opposition, is therefore not annulled, there is no need to adjudicate on the intervener’s second head of claim.

 Costs

45      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.

46      Furthermore, under Article 136(2) of the Rules of Procedure, costs necessarily incurred for the purposes of the proceedings before the Board of Appeal of OHIM are to be regarded as recoverable costs. Consequently, it is appropriate to order the applicant to pay the costs incurred on that occasion by the intervener, in accordance with the form of order sought by the latter.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Häfele GmbH & Co. KG to pay the costs, including the costs necessarily incurred by Topcom Europe NV for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Martins Ribeiro Papasavvas Dittrich

Delivered in open court in Luxembourg on 19 January 2011.

[Signatures]