(Markenrecht) EuGH vom 12.07.2012 Klage von Gucci gegen die Eintragung der Marke „Guddi“ wegen phonetischer Ähnlichkeit erfolgreich (T‑389/11)
In Case T‑389/11,
Guccio Gucci SpA, established in Florence (Italy), represented by F. Jacobacci, lawyer,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
the other party to the proceedings before the Board of Appeal of OHIM being
Chang Qing Qing, residing in Florence,
ACTION brought against the decision of the First Board of Appeal of OHIM of 14 April 2011 (Case R 143/2010-1), relating to opposition proceedings between Guccio Gucci SpA and Mr Chang Qing Qing,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, N. Wahl (Rapporteur) and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 18 July 2011,
having regard to the response lodged at the Registry of the General Court on 15 November 2011,
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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Background to the dispute
1 On 20 March 2008, Mr Change Qing Qing filed an application for registration of a Community trade mark with 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 Registration as a mark was sought for the word sign GUDDY.
3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 14 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 9: ‘Scientific, nautical, surveying, photographic and optical apparatus and instruments’;
– Class 14: ‘Precious metals, horological instruments, jewellery, precious stones’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 25/2008 of 23 June 2008.
5 On 22 September 2008 the applicant, Guccio Gucci SpA, 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 mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark GUCCI, which designates, inter alia, goods in Classes 9 and 14 corresponding, in respect of 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 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’.
7 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).
8 On 19 November 2009, the Opposition Division rejected the opposition on the ground that, in essence, the differences between the opposing marks were sufficient to exclude any likelihood of confusion, notwithstanding the identity of the goods and any highly distinctive character that the earlier mark might have.
9 On 19 January 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 14 April 2011 (‘the contested decision’), notified to the applicant on 17 May 2011, the First Board of Appeal of OHIM, first, annulled the Opposition Division’s decision in so far as it had rejected the opposition directed against the application for the Community trade mark in respect of the goods which were covered by the categories of horological instruments and jewellery; secondly, rejected the application for a Community trade mark in respect of those goods; thirdly, dismissed the appeal as to the remainder; and, lastly, ordered each party to bear its own costs. In particular, the Board of Appeal found that the relevant public was made up of reasonably well-informed and reasonably observant and circumspect average consumers from all the Member States; that the goods were identical; that the evidence provided by the applicant showed the highly distinctive character of the earlier mark because of the public’s recognition of it in the field of luxury goods, including watches and jewellery; that the opposing signs had a slight degree of visual similarity; that, as the earlier mark was most certainly pronounced according to the rules of the Italian language, it was to some degree phonetically similar to the mark applied for; and that a conceptual comparison was not possible. The Board of Appeal concluded from this that there was a likelihood of confusion only in respect of the goods in relation to which the highly distinctive character of the earlier mark had been proved, that is to say, those goods which were covered by the categories of horological instruments and jewellery.
Forms of order sought
11 The applicant claims that the Court should:
– annul in part the contested decision in so far as it rejected the opposition in respect of the goods in Class 9 and the goods in Class 14, other than horological instruments and jewellery;
– 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 applicant relies on two pleas in law, alleging, first, infringement of Article 75 of Regulation No 207/2009 and of Rule 50 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), in so far as the Board of Appeal did not properly examine the evidence which had been submitted to it and, secondly, infringement of Article 8(1)(b) of Regulation No 207/2009.
14 In the context of the first plea, the applicant states that it filed 21 documents before the Opposition Division and 6 further documents before the Board of Appeal in order to prove the highly distinctive character of the earlier mark, because of the public’s recognition of it, in respect of all of the goods covered by the opposition. According to the applicant, the Board of Appeal carried out an analysis of that evidence which was too brief and which, contrary to Article 75 of Regulation No 207/2009, did not even allow the applicant to understand whether the six items of evidence produced for the first time before the Board of Appeal had been taken into account. The possibility that the Board of Appeal disregarded certain of those 6 documents also constitutes, in the applicant’s view, infringement of the principle of continuity in terms of functions between OHIM departments, of Rule 50 of Regulation No 2868/95 and of the right to a fair hearing. In any event, that overly brief analysis led the Board of Appeal to the erroneous conclusion that the earlier mark had no highly distinctive character in respect of precious stones and precious metals or of the goods in Class 9.
15 Furthermore, the applicant criticises the Board of Appeal on the ground that it did not take account of the evidence which it had provided with the aim of demonstrating that the opposing marks exhibited a high degree of phonetic similarity.
16 According to settled case-law, under Article 75 of Regulation No 207/2009, decisions of OHIM are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the European Union Courts to exercise their power to review the legality of the decision (judgment of 19 May 2010 in Case T‑464/08 Zeta Europe v OHIM (Superleggera), not published in the ECR, paragraph 47; see also, to that effect, Case C‑447/02 P KWS Saat v OHIM  ECR I‑10107, paragraphs 63 to 65). The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power (Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart)  ECR II‑1927, paragraph 55, and judgment of 11 October 2011 in Case T‑87/10 Chestnut Medical Technologies v OHIM (PIPELINE), not published in the ECR, paragraph 41).
17 It must also be borne in mind that the duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see Case C‑413/06 P Bertelsmann and Sony Corporation of America v Impala  ECR I‑4951, paragraph 181 and the case-law cited).
18 In the present case, as regards the documents relating to proof of the highly distinctive character of the earlier mark, it must be pointed out that the Board of Appeal referred, in paragraph 4 of the contested decision, to the documents produced by the applicant before the Opposition Division to prove such character and referred, in point (e) of paragraph 10 of the contested decision, to the other items of evidence produced, for that same purpose, for the first time before it.
19 In paragraph 17 of the contested decision, the Board of Appeal pointed out that the evidence submitted by the applicant led to the conclusion that the earlier mark was one of the world’s leading brands in the field of luxury goods, ‘which includes watches and jewellery’. In that same paragraph, it took into account a number of documents relating to watches and jewellery and also, generally, to the highly distinctive character of the earlier mark in respect of luxury goods. In paragraph 23 of the contested decision, however, the Board of Appeal found that that character had been proved only in respect of horological instruments and jewellery, and that the earlier mark was not specifically well known for raw materials, such as precious stones and precious metals in Class 14, or for the goods in Class 9. Taking that fact into account in its assessment of the likelihood of confusion, the Board of Appeal found, in paragraph 27 of the contested decision, that such a likelihood existed only in respect of horological instruments and jewellery.
20 It must be pointed out that the statements of the Board of Appeal summarised in the preceding paragraph do not make it possible to understand the reasons why the documents provided by the applicant are not relevant or sufficient for the purpose of proving the highly distinctive character of the earlier mark in relation to the goods other than those covered by the categories of horological instruments and jewellery. The contested decision does not contain any comparison between, on the one hand, the goods referred to by those documents and, on the other hand, the goods in Class 9, precious stones and precious metals. Consequently, it must be held that the contested decision is vitiated by an infringement of the obligation to state the reasons on which the decision is based in that regard.
21 In view of the fact that, in paragraph 27 of the contested decision, the Board of Appeal based itself specifically on the mark GUCCI’s lack of highly distinctive character in relation to the goods at issue in order to discount the existence of a likelihood of confusion, the infringement of the obligation to state reasons, established in paragraph 20, above means that the Court must, for that reason alone, uphold the form of order sought by the applicant in its entirety.
22 Consequently, the contested decision must be partially annulled in so far as it dismissed the appeal brought against the Opposition Division’s decision rejecting the opposition in respect of the goods in Class 9 and in respect of the goods in Class 14 other than horological instruments and jewellery.
23 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 OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
1. annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 April 2011 (Case R 143/2010-1) so far as it concerns, first, the goods in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and, secondly, the precious stones and precious metals in Class 14 of that agreement;
2. orders OHIM to pay the costs.