27 September 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark NC NICKOL – Earlier Community figurative mark NIKE – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(5) of Regulation No 40/94)

In Case T‑207/09,

Mustapha El Jirari Bouzekri, residing in Malaga (Spain), represented by E. Ragot, 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, intervener before the General Court, being

Nike International Ltd, established in Beaverton, Oregon (United States of America), represented by M. de Justo Bailey, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 February 2009 (Case R 554/2008‑2) relating to opposition proceedings between Nike International Ltd and Mustapha El Jirari Bouzekri,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,

Registrar: E. Coulon,

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

having regard to the response of OHIM lodged at the Court Registry on 11 September 2009,

having regard to the response of the intervener lodged at the Court Registry on 26 August 2009,

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 dispute

1        On 8 November 2005, the applicant, Mustapha El Jirari Bouzekri, 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 mark for which registration was sought is the following figurative sign:

3        The goods in respect of which registration was sought are in Class 9 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: ‘Spectacles, sunglasses, frames and spectacle cases’.

4        The application for registration was published in Community Trade Marks Bulletin No 18/2006 of 1 May 2006.

5        On 27 July 2006, the intervener, Nike International Ltd, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of all the goods referred to at paragraph 3 above.

6        The opposition was based on the following earlier Community figurative mark:

filed on 8 July 1996 and registered on 13 November 2006 under number 277889, designating, inter alia, the goods in Classes 9 and 25 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus’;

–        Class 25: ‘Clothing, footwear, headgear’.

7        The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009).

8        In its decision of 28 January 2008, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94.

9        On 28 March 2008, the applicant 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.

10      The Second Board of Appeal of OHIM, by decision of 25 February 2009 (the ‘contested decision’), dismissed the appeal. First, it ruled out a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 for the relevant public ‘since the earlier sign and the mark applied for are not similar in the case at hand’.

11      Secondly, it held that the conditions of Article 8(5) of Regulation No 40/94 were fulfilled, accepting in particular the risk that the applicant would take unfair advantage of the earlier mark, which is well known to the relevant public, to introduce its own trade mark without incurring any great risk and the costs of introducing a totally unknown trade mark to the market. As part of its examination of the signs at issue, the Board of Appeal recognised the similarity between the signs, particularly visually, but was of the opinion that if that visual similarity was insufficient to create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, it was however sufficient for the degree of similarity between the mark with reputation and the sign applied for to lead the public concerned to compare them, that is, to establish a link between them.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision, in so far as it contains an error of law in the interpretation of Article 8(5) of Regulation No 40/94;

–        order OHIM and the intervener to pay all of the costs incurred in the present proceedings.

13      OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

14      The intervener contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

 Admissibility of the head of claim seeking confirmation that there is no likelihood of confusion

15      First of all, it is necessary to reject, as inadmissible, the head of claim whereby the applicant seeks confirmation of the Board of Appeal’s decision, in that it found that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

16      Indeed, in accordance with Article 63(2) and (3) of Regulation No 40/94, an appeal against a decision of the Board of Appeal can be brought only for lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of Regulation No 40/94 itself or of any rule of law relating to their application or misuse of power, and can only result in the annulment or alteration of the contested decision.

17      That head of claim must be declared inadmissible, on the ground that the applicant is merely seeking confirmation of the plea that he raised in the appeal before the Board of Appeal and the latter accepted. Indeed, according to settled case-law, claims which seek, in reality, to obtain from the Court statements of law and a ruling on the merits of certain of the submissions put forward in support of the claims for annulment are inadmissible (see, by analogy, judgments of 25 October 2007 in Case T‑154/05 Lo Giudice v Commission, not published in the ECR, paragraph 55, and of 5 October 2009 in Cases T‑40/07 P and T‑62/07 P de Brito Sequeira Carvalho v Commission, not published in the ECR, paragraph 67).

 The alleged infringement of Article 8(5) of Regulation No 40/94

18      The applicant refers in essence to decision No B 1005620 of the Opposition Division of OHIM of 14 May 2009 (‘the decision of 14 May 2009’), relating to the Community figurative mark NC NICKOL No 4482782. He seeks to have the same reasoning as that employed by the Opposition Division in that decision applied to his pending application for registration in the case at issue.

19      Although that decision of the Opposition Division was made, also following the opposition of Nike International Ltd, in a separate case, it nevertheless concerns the same earlier mark and an application for a Community figurative mark consisting of the same sign as the sign applied for in the present case, but for different goods and services. In the decision of 14 May 2009, the Opposition Division found first of all that, because of the lack of similarity between the signs, one of the necessary conditions for the application of Article 8(1)(b) of Regulation No 40/94 was not fulfilled. It concluded from the lack of similarity that one of the conditions for the application of Article 8(5) of Regulation No 40/94 was not fulfilled either. On those grounds, the Opposition Division rejected the opposition based on Article 8(5) of Regulation No 40/94.

20      First, OHIM considers the application to be manifestly inadmissible. It submits in that regard that, since, according to settled case-law, the general reference, in the application, to submissions made in the course of the procedures before the Board of Appeal does not satisfy the requirements set out in Article 44(1)(c) of the Rules of Procedure of the General Court, the same must be true for the mere reference to a decision of the Opposition Division relating to other opposition proceedings and to judgments of the General Court.

21      Secondly, OHIM in any event considers the applicant’s single plea to be unfounded.

22      As regards the admissibility of the application, it should be recalled that the General Court is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which that head of claim is based are not indicated coherently and intelligibly in the application itself (Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 37, and judgment of 6 May 2008 in Case T‑246/06 Redcats v OHMI – Revert & Cia (REVERIE), not published in the ECR, paragraph 24).

23      That is not, however, so in the instant case. In fact, while taking up and repeating the reasoning of the Opposition Division contained in the decision of 14 May 2009 which concerns a parallel case, the applicant adopts that reasoning, in so far as he alleges that the lack of similarity between the mark applied for and the earlier marks, within the meaning of Article 8(1)(b) of Regulation No 40/94, also precludes the application of Article 8(5) of Regulation No 40/94.

24      Since it is not contested that, in the present case, the degree of similarity between the signs at issue does not justify a finding of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, that taking up of the reasoning developed in the decision of 14 May 2009, is, as was also understood by the intervener, sufficiently clear and precise to allow OHIM to prepare its defence and the Court to rule on the proceedings. Thus, in accordance with the requirements formulated by the case-law, the bases of matters of fact and law relied upon in the action, are indicated, at least in summary form, coherently and intelligibly in the application itself (see, to that effect, judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraphs 34 and 35).

25      It follows from the above considerations that the plea of inadmissibility raised by OHIM must be rejected.

26      As regards the merits of the applicant’s single plea, it should be recalled, in so far as, in support of his action against the contested decision, he relies on the decision of 14 May 2009, that the two decisions at issue both find a lack of similarity between the signs at issue, so that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. In particular, in the contested decision, the Board of Appeal arrived at that conclusion, at paragraphs 22 and 23, by rejecting the existence of a likelihood of confusion because the earlier signs and the mark applied for were not similar.

27      However, the two decisions draw different conclusions from that as regards the application Article 8(5) of Regulation No 40/94. According to the decision of 14 May 2009, the consequence of the lack of similarity between the marks at issue, found in the context of the application of Article 8(1) of Regulation No 40/94, is that one of the conditions for the application of Article 8(5) of Regulation No 40/94 is not fulfilled. By contrast, in recognising, at paragraph 36, a degree of visual similarity between the earlier mark and the mark applied for, the contested decision refrains from drawing the conclusions from the lack of similarity made in the context of the assessment of Article 8(1)(b) of Regulation No 40/94.

28      The applicant claims that the Board of Appeal erred in law by ignoring, for the application of Article 8(5) of Regulation No 40/94, the lack of similarity that it found in the context of its assessment of the application of Article 8(1)(b) of No Regulation 40/94.

29      In that regard, it should be recalled that the application of Article 8(5) of Regulation No 40/94 is subject to three conditions, namely, first, the identity of or similarity between the marks at issue if the mark applied for is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition and, thirdly, the risk that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render the provision inapplicable (see, to that effect, Case T‑67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA‑FINDERS) [2005] ECR II‑1825, paragraph 30, and judgment of 27 November 2007 in Case T‑434/05 Gateway v OHIM – Fijitsu Siemens Computers (ACTIVITY Media Gateway), not published in the ECR, paragraph 57).

30      Accordingly, in order for the registration of the mark applied for to be refused for damage to the reputation of an earlier mark under Article 8(5) of Regulation No 40/94, the similarity between or identity of the two marks at issue is an essential condition. According to the case-law, when, in view of the application of Article 8(1)(b) of Regulation No 40/94, there is a lack of similarity between the mark applied for and the earlier mark, that lack of similarity also precludes the application of Article 8(5) of Regulation No 40/94 (see, to the effect, judgment of 11 December 2008 in Case C‑57/08 P Gateway v OHIM, not published in the ECR, paragraphs 62 to 64, and ACTIVITY Media Gateway, paragraphs 58 to 61). It follows that for the application of both Article 8(1)(b) of Regulation No 40/94 and for Article 8(5) of Regulation No 40/94, similarity between the earlier mark and the mark applied for is a necessary condition.

31      The concept of similarity between the marks at issue is the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation No 40/94, and of refusal because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation No 40/94. Indeed, it follows from the case-law that in these two situations allowing registration to be refused for the mark applied for, the condition of similarity between the mark and the sign requires the existence, in particular, of elements of visual, aural or conceptual similarity, so that, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see ACTIVITY Media Gateway, paragraph 35, and the case-law cited, and see, by analogy, Case C‑408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I‑12537, paragraph 28, and the case-law cited).

32      In the light of that case-law, it must be concluded that the Board of Appeal assessed the similarity of the marks in a contradictory manner, by finding, at paragraph 23 of the contested decision, a lack of similarity between the mark applied for and the earlier mark when examining the conditions for the application of Article 8(1)(b) of Regulation No 40/94, and, at paragraph 36 of the contested decision, a sufficient degree of similarity between the same signs for the application of Article 8(5) of the same regulation, that last finding necessarily implying that there is similarity between the marks at issue. It therefore committed an error of law.

33      It follows from the foregoing that the single plea must be upheld and, given that similarity must be assessed in the same way under Article 8(5) and Article 8(1)(b) of Regulation No 40/94, the contested decision must be annulled in its entirety.

 Costs

34      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. As OHIM has been unsuccessful, inasmuch as the contested decision has been annulled, it must be ordered to bear its own costs in accordance with the form of order sought by the latter.

35      Under the third subparagraph of Article 87(4) of the Rules of Procedure, the Court may order an intervener to bear its own costs. Since the intervener has been unsuccessful, it must bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), of 25 February 2009 (Case R 554/2008-2);

2.      Orders OHIM to bear its own costs and to pay those incurred by Mustapha El Jirari Bouzekri. Nike International shall pay its own costs.

Forwood

Dehousse

Schwarcz

Delivered in open court in Luxembourg on 27 September 2011.

[Signatures]