JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

15 December 2010 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark Wind – Earlier national figurative mark Wind – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 – Lack of similarity of the goods and of the services)

In Case T‑451/09,

Harry Wind, residing in Selfkant (Germany), represented by J. Sroka, lawyer,

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 being

Sanyang Industry Co., Ltd, established in Hsinchu (Taïwan),

ACTION against the decision of the Fourth Board of Appeal of OHIM of 3 September 2009 (Case R 1470/2008-4), relating to opposition proceedings between Harry Wind and Sanyang Industry Co., Ltd,

THE GENERAL COURT (Eighth Chamber),

composed, at the time of the deliberation, of M.E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and N. Wahl, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 9 November 2009,

having regard to the response lodged at the Court Registry on 10 March 2010,

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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 22 September 2003, Sanyang Industry Co., Ltd (‘Sanyang Industry’) 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 following figurative sign:

3        The goods and services in respect of which registration was sought are in Classes 11, 12 and 37 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 11: ‘Lighting apparatus, anti-glare apparatus, light bulb for directional signals, anti-glare devices, cooling apparatus, heating apparatus, reflectors, headlights, air conditioners, lights and courtesy lights; all the aforesaid goods being for ATV’s [(All Terrain Vehicles)], senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts’;

–        Class 12: ‘ATV’s, senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts’;

–        Class 37: ‘Maintenance and repair, washing, rustproofing, greasing, cleaning, service station services, tire retreading; installation, maintenance and repair of machines; all the aforesaid goods being for ATV’s, senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts’.

4        The application for registration of the Community trade mark was published in Community Trade Marks Bulletin No 43/2004 of 25 October 2004.

5        On 25 January 2005, the applicant – Harry Wind – filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods and services within Classes 12 and 37, claiming that there was a likelihood of confusion within the terms of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6        The opposition was based on the following national figurative mark, registered as German trade mark No 39866698.9:

7        This mark was registered on 21 June 1999 for the ‘Motor vehicle repair’ services in Class 37.

8        In the course of the opposition proceedings, Sanyang Industry, the applicant for the Community trade mark, requested Harry Wind to provide proof of the use of the earlier trade mark, in accordance with Article 43(3) of Regulation No 40/94 (now Article 42(3) of Regulation No 207/2009).

9        On 3 September 2007, Sanyang Industry withdrew its application for registration with regard to the services in Class 37. Harry Wind, on the other hand, declared that he maintained his opposition to registration of the trade mark applied for in respect of the goods in Class 12.

10      By decision of 13 August 2008, the Opposition Division rejected the opposition on the ground that Harry Wind had not provided proof of the genuine use of the earlier national trade mark.

11      On 10 October 2008, Harry Wind filed an appeal with OHIM under 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 3 September 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It held first, in contrast to the Opposition Division, that proof of genuine use of the earlier mark had been provided, but solely with regard to the motor vehicle bodywork services. The Board of Appeal then held that, despite a high degree of similarity between the signs at issue, the conditions set out in Article 8(1)(b) of the Regulation No 207/2009 were not satisfied, because of the lack of similarity between the goods and the services in question.

 Forms of order sought

13      Harry Wind 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 Harry Wind to pay the costs.

 Law

15      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’.

16      Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘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.

17      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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see the judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70 and the case-law cited; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).

18      Furthermore, it is not in dispute that the likelihood of confusion on the part of the public must be assessed globally, account being taken of all the factors relevant to the circumstances of the case (see CAPIO, paragraph 17 above, paragraph 71 and the case-law cited; see also, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 22; Canon, paragraph 17 above, paragraph 16, and Lloyd Schuhfabrik Meyer, paragraph 17 above, paragraph 18). Those factors include, in particular, the nature, intended purpose and method of use of the goods or services and whether they are in competition with each other or are complementary (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 85; Case T‑99/01 Mystery Drinks v OHIM – Karlsberg Brauerei (MYSTERY) [2003] ECR II‑43, paragraph 39 and the case-law cited; and the judgment of 15 March 2006 in Case T‑31/04 Eurodrive Services and Distribution v OHIM – Gómez Frías (euroMASTER), not published in the ECR, paragraph 31). Furthermore, the General Court has held that other factors relevant to the characterisation of the relationship which may exist between the goods or services in question may also be taken into account, such as the distribution channels for the goods concerned (see Case T‑116/06 Oakley v OHIM – Venticinque (O STORE) [2008] ECR II‑2455, paragraph 49 and the case-law cited).

19      It is in the light of those considerations that it is necessary to examine the Board of Appeal’s assessment of the similarity of the goods and of the services in question.

20      First of all, it should be noted that Harry Wind does not contest paragraph 21 of the contested decision, inasmuch as the Board of Appeal found that the earlier trade mark should be deemed to be registered only in respect of motor vehicle bodywork services. The Board of Appeal stated in that regard that it follows from the evidence provided in the context of the opposition proceedings that, as a professional in the field of repairing car bodywork, Harry Wind did not execute work of a different nature and is not expected to possess the skills necessary to fix mechanical, technical or electronic damage that a motor vehicle might suffer. On the contrary, it is apparent from the invoices provided that Harry Wind carried out his services solely for authorised car dealers.

21      With regard to the relevant public, it should be noted that, in the light of the goods and services in question, that public consists of average consumers who are reasonably well informed and reasonably observant and circumspect. Moreover, since the earlier mark is registered in Germany, it is with regard to the public of that country that the likelihood of confusion must be examined.

22      Harry Wind alleges in essence that, by considering only the question whether dent removal experts are normally car manufacturers, the Board of Appeal failed to consider the question whether car manufacturers also provide motor vehicle bodywork services. However, it is normal that car manufacturers, such as Mercedes-Benz, Volkswagen or Peugeot, not only repair mechanical, electronic or other parts apart from car body parts, but also carry out dent removal. Thus, in so far as ATVs are motor vehicles, there is a high degree of similarity between dent removal for ATVs and their manufacture, to the extent that car manufacturers do not only repair mechanical parts other than car body parts, but in reality also carry out dent removal.

23      In that regard, first, it should be noted that the nature of the goods is different from that of the services in question, given that the goods are tangible and the services are intangible. Their intended uses are also different, since motor vehicle bodywork services are intended to restore a motor vehicle to its original condition, while such a vehicle is intended to carry people. The same is true with regard to their uses, since a motor vehicle is used for driving, whereas the use of a motor vehicle bodywork service involves the repair of the bodywork of a damaged vehicle.

24      Secondly, it cannot be disputed that there is a certain complementarity between the goods and services respectively covered by the trade marks in question, in so far as, where damage has been caused to their bodywork, the vehicles within Class 12 – in particular, ATVs – have to be restored.

25      However, it should be pointed out that, according to settled case-law, complementary goods are those which are closely connected in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (see O STORE, paragraph 18 above, paragraph 52 and the case-law cited).

26      In that regard, it is common ground that no consumers will assume that undertakings which provide exclusively motor vehicle bodywork services manufacture and sell vehicles under the same brand name as that identifying those services.

27      Moreover, Harry Wind’s argument that consumers expect car manufacturers to provide motor vehicle bodywork services, since they operate garages, cannot be accepted.

28      As OHIM correctly pointed out in its observations, first, there is no evidence in the case-file that the manufacturers of ‘ATV’s, senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts’ operate garages for the dent removal of vehicles under the same brand name as that identifying the vehicle itself. The majority of manufacturers, with the exception of certain very established undertakings, do not operate such garages, whether directly or under exclusive franchise agreements.

29      Secondly, the main purpose of the authorisation granted by car manufacturers to authorised dealers to use the manufacturers’ own brand names when repairing the vehicles that they manufacture is to enable those dealers to advertise the sale of vehicles of the same make. It cannot be considered that the fact that certain garages carry out their own advertising by stating that they are specialists in the repair of certain makes means that they are used as trade marks for repair and maintenance services. Those trade marks are intended to identify the vehicles which are repaired or serviced.

30      Accordingly, the consumers would not be led to think that the provider of dent removal services is responsible for the manufacture of the vehicles, or vice-versa, in the sense of the case-law mentioned in paragraph 25 above.

31      Thirdly, with regard to the distribution channels for the goods and services in question, it should be noted that, in the present case, the latter cover exclusively motor vehicle bodywork services, so that they in no way apply to their mechanical, technical or electronic parts. It must be noted that the manufacture or even the sale, in particular, of ATVs or senior people carts, is not part of the activity of an undertaking which specialises in motor vehicle bodywork. Likewise, there is no evidence in the case-file that the dealers of the goods in question also carry out a dent removal activity. In that regard, it should be noted that it is apparent from the invoices produced by Harry Wind before OHIM that the customers of the dent removal undertakings are, precisely, motor vehicle dealers.

32      In view of the foregoing considerations, the Board of Appeal was correct to hold, in the light of the facts of the case, that the goods and the services in question were different.

33      Since there is no similarity between the goods and the services in question, there is no need to examine the similarity between the signs or the likelihood of confusion, as the conditions set out in Article 8(1)(b) of Regulation No 207/2009 are cumulative (Case C‑106/03 P Vedial v OHIM [2004] ECR I‑9573, paragraph 51, and Case T‑396/04 Soffass v OHIM – Sodipan (NICKY) [2005] ECR II‑4789, paragraph 26).

34      Harry Wind’s single plea in law must therefore be rejected and, in consequence, the action must be dismissed in its entirety.

 Costs

35      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, he must be ordered to pay the costs in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Mr Harry Wind to pay the costs.

Martins Ribeiro

Papasavvas

Wahl

Delivered in open court in Luxembourg on 15 December 2010.

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