ORDER OF THE COURT (Fifth Chamber)
16 September 2010 (*)
(Appeal – Community trade mark – Word mark ATOZ – Opposition by the proprietor of the international word mark ARTOZ – Refusal of registration)
In Case C‑559/08 P,
APPEAL under Article 56 of the Statute of the Court of Justice, brought on 6 February 2009,
Deepak Rajani, residing in Berlin (Germany), represented by A. Kockläuner, Rechtsanwalt,
appellant,
the other parties to the proceedings being:
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant at first instance,
Artoz-Papier AG, established in Lenzburg (Switzerland),
intervener at first instance,
THE COURT (Fifth Chamber),
composed of E. Levits, President of Chamber, A. Borg Barthet (Rapporteur) and M. Safjan, Judges,
Advocate General: N. Jääskinen,
Registrar: R. Grass,
after hearing the Advocate General,
makes the following
Order
1 By his appeal, Mr Rajani, who trades under the name Dear!Net Online, seeks to have set aside the judgment of 26 November 2008 in Case T‑100/06 Rajani v OHIM – Artoz-Papier (ATOZ) (‘the judgment under appeal’), by which the Court of First Instance of the European Communities (now ‘the General Court’) dismissed his action against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 January 2006 (Case R 1126/2004-2) (‘the contested decision’) dismissing Mr Rajani’s appeal against the decision of the Opposition Division upholding the opposition filed by Artoz-Papier AG (‘Artoz-Papier’) against registration of the word sign ‘ATOZ’ as a Community trade mark.
Legal context
2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the time at which the events occurred, the present dispute is governed by Regulation No 40/94.
3 Article 8(1) of Regulation No 40/94 was worded as follows:
‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
…
(b) 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.’
4 Article 43(1) to (3) of that regulation provided:
‘1. In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set them by the Office, on communications from the other parties or issued by itself.
2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.’
5 Article 73 of that regulation provided:
‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’
6 Article 79 of Regulation No 40/94 stated:
‘In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.’
7 Article 1 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), reads as follows:
‘This Directive shall apply to every trade mark in respect of goods or services which is the subject of registration or of an application in a Member State for registration as an individual trade mark, a collective mark or a guarantee or certification mark, or which is the subject of a registration or an application for registration in the Benelux Trade Mark Office or of an international registration having effect in a Member State.’
8 Article 10 of that directive provides:
‘1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.
2. The following shall also constitute use within the meaning of paragraph 1:
(a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
(b) affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.
3. Use of the trade mark with the consent of the proprietor or by any person who has authority to use a collective mark or a guarantee or certification mark shall be deemed to constitute use by the proprietor.
4. In relation to trade marks registered before the date on which the provisions necessary to comply with this Directive enter into force in the Member State concerned:
(a) where a provision in force prior to that date attaches sanctions to non-use of a trade mark during an uninterrupted period, the relevant period of five years mentioned in paragraph 1 shall be deemed to have begun to run at the same time as any period of non-use which is already running at that date;
(b) where there is no use provision in force prior to that date, the periods of five years mentioned in paragraph 1 shall be deemed to run from that date at the earliest.’
9 Under Article 4 of the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, as revised and amended (‘the Madrid Agreement’):
‘(1) From the date of the registration so effected at the International Bureau in accordance with the provisions of Articles 3 and 3ter, the protection of the mark in each of the contracting countries concerned shall be the same as if the mark had been filed therein direct. The indication of classes of goods or services provided for in Article 3 shall not bind the contracting countries with regard to the determination of the scope of the protection of the mark.
(2) Every mark which has been the subject of an international registration shall enjoy the right of priority provided for by Article 4 of the Paris Convention for the Protection of Industrial Property, without requiring compliance with the formalities prescribed in Section D of that Article.’
The facts of the dispute
10 Mr Rajani is the proprietor of the German trade mark ATOZ, filed on 3 August 1998 and registered on 17 June 1999 under No 398 45 189. On 9 September 1999, he filed an application for registration as a Community trade mark of the word sign ATOZ, which was assigned the number 1 319 961. That application covered a number of services, including those in Classes 35 and 41 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.
11 In that trade mark application, Mr Rajani claimed seniority of the identical German trade mark ATOZ of which he is the proprietor. This seniority claim was accepted by OHIM and the application for registration of the Community trade mark in question was published on 29 October 2001.
12 On 28 January 2002, Artoz-Papier filed an opposition with OHIM based on the earlier word mark ARTOZ, protected by international registration No 659 480, of which it is the proprietor and which covers various goods and services, including the services in Classes 35 and 41 listed in paragraph 5 of the judgment under appeal.
13 On 14 October 2002, Mr Rajani requested ‘proof of use of the international registration’, but Artoz-Papier did not adduce any evidence, on the grounds that the international registration had been admitted to protection in Germany on 11 February 1999.
14 By decision of 29 September 2004, the Opposition Division of OHIM upheld in its entirety the opposition filed by Artoz-Papier, holding that the international registration is not subject to the use requirement and that the marks at issue are so similar that they might be confused.
15 On 29 November 2004, Mr Rajani lodged an appeal with OHIM against the Opposition Division’s decision.
16 By the contested decision, the Second Board of Appeal of OHIM dismissed the appeal. In essence, that decision is based on the finding that the international registration enjoyed by Artoz-Papier is not subject to a use requirement and that the marks at issue are so similar that they might be confused.
The action before the General Court and the judgment under appeal
17 On 26 July 2007, Mr Rajani brought an action before the General Court against the contested decision, claiming that the decision constituted a misuse of powers; that it infringed Article 43(2) and (3) of Regulation No 40/94; that it was contrary to Article 8(1)(b) of Regulation No 40/94; and that it infringed Article 73 of Regulation No 40/94, as well as the right to be heard under Article 79 of Regulation No 40/94 and Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR), signed in Rome on 4 November 1950.
18 By the judgment under appeal, the General Court dismissed that action, after rejecting the pleas put forward by Mr Rajani.
19 In paragraph 28 of that judgment, the General Court noted that Mr Rajani alleged infringement of Article 43(2) and (3) of Regulation No 40/94 and not misuse of powers.
20 The General Court observed in paragraphs 35 and 36 of that judgment that Directive 89/104 ‘does not harmonise the procedural aspect of trade mark registration and it is thus for the Member State for which the registration application has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end’.
21 In paragraph 44 of the judgment under appeal, the General Court interpreted Paragraph 112 of the German trade mark law (the Markengesetz) in the light of Paragraph 117 of the Markengesetz, read in conjunction with Paragraph 115(2) thereof, and concluded that ‘if protection for an internationally registered trade mark is provisionally refused but subsequently granted, the registration is regarded as having taken place on the date of receipt by the International Bureau of [the World Intellectual Property Organisation (WIPO)] of the final notification that protection has been granted’. In consequence, the General Court found that ‘that date must be regarded as marking the starting point for the calculation to be made with regard to Article 43(2) and (3) of Regulation No 40/94’.
22 As regards the argument that the Board of Appeal’s teleological interpretation and Paragraphs 115 and 117 of the MarkenGesetz infringe Article 10 of Directive 89/104 and the principle of legal certainty, the General Court noted in paragraph 47 of the judgment under appeal that ‘that directive does not harmonise the procedural aspect of trade mark registration and it is thus for the Member State to determine the time at which the registration procedure comes to an end ([Case C‑246/05] Häupl [[2007] ECR I‑4673], paragraphs 26 to 31). Consequently, neither the Appeal Board’s teleological interpretation nor Paragraphs 115 and 117 of the Markengesetz infringe Article 10 of that directive’.
23 The General Court held in paragraph 49 of the judgment under appeal that the Board of Appeal was right to hold that the starting point for the time-limit provided for in Article 43(2) of Regulation No 40/94 was 11 February 1999, the date on which the registration procedure at the German Patent and Trade Mark Office came to an end. Consequently, the earlier mark had not already been registered for five years on 29 October 2001, the date of publication of the application for the trade mark sought. According to the General Court, therefore, that earlier mark was not yet subject to the use requirement.
24 The General Court observed that the parties had not challenged the findings relating to the comparison of the services, and went on to hold in paragraph 59 of the judgment under appeal that ‘it is common ground that the services listed in paragraphs 3 and 5 [of that judgment] are identical’.
25 In paragraph 60 of the judgment under appeal, the General Court held that the marks are similar from the visual point of view.
26 In paragraph 61 of that judgment, the General Court noted that the earlier mark has no meaning. That is also true, according to the General Court, of the trade mark applied for, since it is ‘extremely unlikely that the average consumer will proceed to analyse the various details of the mark applied for, to break it down into the elements “A to Z” and to give it its English meaning’.
27 In paragraph 62 of that judgment, the General Court rejected as inadmissible the written evidence produced for the first time before it by Mr Rajani.
28 In paragraph 64 of the judgment under appeal, the General Court found that the trade marks at issue are phonetically similar. It rejected Mr Rajani’s argument that the relevant public will pronounce the trade mark applied for in accordance with the English rules of pronunciation since the mark ‘will not be perceived by the relevant public as a shortened form of the English expression “from A to Z”’.
29 In paragraph 66 of the judgment under appeal, the General Court held that there was a likelihood of confusion in view of ‘the identical nature of the services in question’ and ‘the high degree of similarity of the trade marks’ at issue.
30 In paragraph 75 of the judgment under appeal, the General Court held that the Board of Appeal had complied with the obligation to state reasons, since it had set out the facts and legal considerations having decisive importance in the context of its decision.
31 In paragraph 76 of the judgment under appeal, the General Court held that Mr Rajani had been able to submit his observations on all the matters of fact and of law on which the Board of Appeal had based the contested decision and that the Board of Appeal had therefore fully respected Mr Rajani’s right to be heard.
32 Accordingly, the General Court dismissed the action, ruling that Mr Rajani’s request for proof of use of the earlier mark had to be rejected and that OHIM had rightly held that there was a likelihood of confusion on the part of the relevant public. Furthermore, the General Court held that the contested decision had enabled Mr Rajani to defend his rights and the Court to exercise its power of review, and that the right to be heard had been respected.
Forms of order sought by the parties to the appeal
33 Mr Rajani claims that the Court should set aside the judgment under appeal, annul the contested decision, dismiss the opposition filed by Artoz-Papier and order OHIM to pay the costs.
34 OHIM contends that the appeal should be dismissed and that Mr Rajani should be ordered to pay the costs.
The appeal
35 Under Article 119 of the Rules of Procedure of the Court of Justice, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal by reasoned order.
36 Mr Rajani relies on eight grounds of appeal.
First ground of appeal: misinterpretation of Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement
Arguments of the parties
37 The first ground of appeal is that the General Court misinterpreted Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement. Referring in that regard to the arguments that he had put forward before the General Court, Mr Rajani submits in particular that the interpretation of Article 4(1) of the Madrid Agreement was contra legem.
38 According to Mr Rajani, the General Court infringed those provisions by finding that the Board of Appeal of OHIM had been right to hold that the starting point for the five-year time-limit was 11 February 1999 and that that time-limit had not expired at the date of publication of the Community trade mark application at issue, that is to say, 29 October 2001.
39 OHIM contends that the first ground of appeal should be rejected as clearly unfounded.
Findings of the Court
40 With regard to the first ground of appeal, it should be noted first of all that, according to settled case-law, it follows from Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, Case C‑352/98 P Bergaderm and Goupil v Commission [2000] ECR I‑5291, paragraph 34; Case C‑248/99 P France v Monsanto and Commission [2002] ECR I-1, paragraph 68; and Case C‑41/00 P Interporc v Commission [2003] ECR I‑2125, paragraph 15).
41 Thus, where an appeal merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the General Court, including those based on facts expressly rejected by that Court, it fails to satisfy the requirements to state reasons under the above provisions (see, inter alia, the order of 25 March 1998 in Case C‑174/97 P FFSA and Others v Commission [1998] ECR I‑1303, paragraph 24, and Interporc v Commission, paragraph 16). Such an appeal amounts in reality to no more than a request for re-examination of the application submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (see order of 26 September 1994 in Case C‑26/94 P X v Commission [1994] ECR I‑4379, paragraph 13, and Bergaderm and Goupil v Commission, paragraph 35).
42 It follows that, in so far as Mr Rajani merely refers to the arguments relied upon before the General Court, his first ground of appeal – misinterpretation of Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement – is clearly inadmissible.
43 Next, it should be noted that Mr Rajani cannot rely on the allegation that the interpretation of Article 4(1) of the Madrid Agreement was contra legem, since the General Court was right to hold that, for the purposes of Article 43(2) and (3) of Regulation No 40/94, the date on which the earlier international mark was deemed to have been ‘registered’ had to be established in accordance with the national law giving effect to the earlier right at issue and not by reference to the date of registration with the International Bureau of WIPO.
44 As the Court of Justice has held, in the case of an international registration, it is for the Member State for which the registration application has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end (Häupl, paragraph 29). Mr Rajani’s line of argument is therefore clearly unfounded.
45 The first ground of appeal must therefore be rejected as being in part clearly inadmissible and in part clearly unfounded.
Second ground of appeal: infringement of Article 6 EU, and of Article 6 ECHR, read in conjunction with Article 14 ECHR
Arguments of the parties
46 The second ground of appeal is that, owing to a misinterpretation of Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement, the General Court also infringed Article 6(1) ECHR, read in conjunction with Article 14 ECHR, and Article 6 EU.
47 According to Mr Rajani, the approach taken by the General Court amounts to giving preference to the proprietor of an earlier mark who bases his opposition on an international registration since, in such cases, it is not the date of registration that is decisive, but the date of receipt of the final notification of the granting of protection, which has to take place within one year of the date of registration.
48 According to Mr Rajani, a person who defends his application for a Community trade mark against an opposition based on an international registration is discriminated against as compared with an applicant who defends his Community trade mark application against an opposition based on a national trade mark. The ECHR prohibits such discrimination, which is ‘based on a procedural status’, since it creates an unfair imbalance between the parties and the advantage thus derived is not justified.
49 In the present case, Mr Rajani submits that that discrimination results from the fact that, under international agreements which have effect in the Member State concerned, OHIM allowed the proprietor of the earlier mark at issue one year longer than any of the other proprietors of earlier marks in that Member State.
50 OHIM contends that the second ground of appeal should be rejected as unfounded since Mr Rajani has failed to explain how the interpretation adopted by the General Court led to a difference in treatment – as between international registrations, on the one hand, and earlier national registrations, on the other – based on the national law of the Member State in which trade mark protection is sought, which would amount, pursuant to Article 14 ECHR, to discrimination based, inter alia, on the national origin, sex or race of the trade mark proprietor.
51 According to OHIM, which refers to Häupl, paragraph 27, the existence of differences in the determination of the starting point for the use requirement, depending on the national law that governs the protection of national or international trade marks, is due merely to the fact that the registration procedure is an area which has not been harmonised by Directive 89/104.
Findings of the Court
52 The second ground of appeal is that, through a misinterpretation of Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement, the General Court has created a situation in which there is discrimination. According to Mr Rajani, that discrimination arises directly as a result of the way in which those provisions have been interpreted and applied.
53 In paragraphs 35 to 37 of the judgment under appeal, the General Court examined the effects which Directive 89/104 has had as regards the harmonisation of national trade mark law, and concluded that it is for the Member State for which the registration application has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end.
54 The General Court went on to examine, in paragraphs 43 to 45 of the judgment under appeal, the relevant national legislation and concluded that the date of receipt by the International Bureau of WIPO of the final notification of the granting of protection must be regarded as determining the starting point for the calculation to be made as regards Article 43(2) and (3) of Regulation No 40/94.
55 It follows that the General Court correctly applied the approach adopted by the Court of Justice in Häupl.
56 Consequently, the General Court did not misinterpret Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 4(1) of the Madrid Agreement; nor can it be alleged that the General Court infringed Article 6 ECHR, read in conjunction with Article 14 ECHR, by misinterpreting the provisions concerned.
57 It is clear from the above that the second ground of appeal must be rejected as clearly unfounded.
Third ground of appeal: infringement of Article 10 of Directive 89/104, read in conjunction with Article 1 thereof
Arguments of the parties
58 That third ground of appeal is that, by upholding the Board of Appeal’s decision that Mr Rajani’s request for the proprietor of the earlier mark to provide proof of use of the international registration should be rejected, the General Court infringed Article 10 of Directive 89/104, read in conjunction with Article 1 of that directive.
59 According to Mr Rajani, Article 43(3) of Regulation No 40/94 should be construed as meaning that an opposition falls to be rejected, not only where an earlier national or international trade mark has not been put to genuine use during the five-year period preceding the date of publication of the contested Community trade mark application, but also where that earlier mark has not been genuinely used during the five-year period preceding the date of the opposition decision.
60 OHIM maintains that this ground of appeal is clearly unfounded since there is no incompatibility between Article 43(2) and (3) of Regulation No 40/94, on the one hand, and Article 10 of Directive 89/104, on the other. OHIM states that the registration procedure – in particular as regards opposition procedures, which may be initiated before or after registration – is an area which is not harmonised by that directive.
Findings of the Court
61 In that connection, as regards the interpretation of Article 43(3) of Regulation No 40/94 proposed by Mr Rajani and set out in paragraph 59 above, it should be noted that the General Court correctly described the relationship between the areas covered by that regulation and those covered by Directive 89/104.
62 It follows from this, moreover, that the argument that Article 43(3) of Regulation No 40/94 is invalid because it infringes the provisions of that directive is manifestly irrelevant.
63 The third ground of appeal must therefore also be rejected as clearly unfounded.
Fourth ground of appeal: infringement of Article 79 of Regulation No 40/94
Arguments of the parties
64 The fourth ground of appeal is that Article 79 of Regulation No 40/94 was infringed and that, if the General Court had correctly applied that provision, it would have been obliged to find that the opposition filed by Artoz-Papier was inadmissible in so far as it was based on the German part of the international registration ‘ARTOZ’, since the proprietor of the earlier mark had lost his right to rely on that German part against the Community trade mark application at issue.
65 OHIM contends that this ground of appeal is clearly inadmissible since it was not raised as a plea before the General Court or even at the procedural stage before proceedings were brought before that Court.
Findings of the Court
66 It should be noted that, according to settled case-law, to allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the General Court would be to allow it to bring before the Court, whose appellate jurisdiction is limited, a dispute of wider ambit than that which came before the General Court. In an appeal, the Court’s jurisdiction is confined to review of the findings of law on the pleas argued before the General Court (see, inter alia, Case C‑136/92 P Commission v Brazzelli Lualdi and Others [1994] ECR I‑1981, paragraph 59; Case C‑7/95 P Deere v Commission [1998] ECR I‑3111, paragraph 62; and Joined Cases C‑24/01 P and C‑25/01 P Glencore and Compagnie Continentale v Commission [2002] ECR I‑10119, paragraph 62).
67 By his fourth ground of appeal, Mr Rajani raises a new plea, which must therefore be rejected as clearly inadmissible.
Fifth ground of appeal: infringement of Article 8(1)(b)of Regulation No 40/94
Arguments of the parties
68 By the first part of the fifth ground of appeal, Mr Rajani submits that the General Court misinterpreted Article 8(1)(b) of Regulation No 40/94, in that it held that the services at issue were identical. According to Mr Rajani, the General Court did not further specify or explain this finding.
69 According to Mr Rajani, it is necessary to take into account the fact that auctioneering, publicity material rental, employment agencies and personnel recruitment are not services for which the international registration ‘ARTOZ’ is registered. Moreover, Mr Rajani submits that those services differ in their industrial origin, their qualities, their marketing strategies and also, in part, as regards their target public. Accordingly, the services to be compared are dissimilar.
70 By the second part of this ground of appeal, Mr Rajani submits that, as regards the similarity of the marks at issue, the General Court did not follow the relevant case-law of the Court of Justice, as set out inter alia in Case C‑206/04 P Mülhens v OHIM [2006] ECR I‑2717, in which the Court held that the conceptual and visual differences between two marks are likely to counteract their aural similarities provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately.
71 Mr Rajani submits that for 15 years he has used the mark for which registration is sought by inserting two spaces, so that it reads ‘A TO Z’. Consequently, that mark is associated in the mind of consumers with a concept which is well established in every country, conveying the idea ‘from A to Z’, that is to say, ‘from beginning to end’. However, that factor was not considered, or was considered in a distorted manner, by the General Court, since consumers perceive the mark proposed for registration and the earlier mark as being very different from each other and therefore as not being so similar that they will be confused.
72 So far as the first part of the fifth ground of appeal is concerned, OHIM contends that the Court’s finding is not based on a distortion of the facts. Facts are distorted ‘where the findings are based on a material inexactness which leads to a substantive inaccuracy of the decision’. The inaccuracy must be obvious from the documents before the Court without it being necessary to undertake a fresh assessment of the facts. In other words, the distortion of facts must be manifest.
73 With regard to the second part of this ground of appeal, concerning the similarity of the signs at issue, OHIM contends that the assessment of that similarity is primarily an issue of fact. Save where the facts have been distorted, the Court of Justice has no jurisdiction to review purely factual findings. This is because, under Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only.
Findings of the Court
74 With regard to the first part of the fifth ground of appeal, as the General Court rightly stated in paragraph 56 of the judgment under appeal, there is a likelihood of confusion where there is a 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 (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17, and Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 32 and the case-law cited), when in fact those goods or services come from different undertakings.
75 When considering the case, the General Court pointed out in paragraph 59 of the judgment under appeal that ‘it [was] common ground that the services listed in paragraphs 3 and 5 above are identical’, hence that the identical nature of the services was not challenged by Mr Rajani. Thus, it may be stated that the General Court merely examined the pleas raised before it and that, in consequence, the first part of the fifth ground of appeal is inadmissible.
76 As regards the second part of the fifth ground of appeal, the General Court rightly observed, in paragraph 61 of the judgment under appeal, that it was ‘extremely unlikely that the average consumer will proceed to analyse the various details of the mark applied for, to break it down into the elements “A to Z” and to give it its English meaning’. Likewise, in paragraph 64 of that judgment, the General Court rejected Mr Rajani’s argument that the relevant public would pronounce the trade mark applied for in accordance with the English rules of pronunciation, ‘since the mark will not be perceived by the relevant public as a shortened form of the English expression “from A to Z”’.
77 In the light of those considerations, Mr Rajani cannot claim distortion of the facts, since he does not deny that the mark for which registration is sought comprises the word sign ATOZ, without spaces, and not the sign ‘A TO Z’. The General Court was therefore right to find, when comparing the signs at issue on the basis of the earlier sign as it was registered and the contested sign as it was proposed for registration, that they would not be perceived as being visually and conceptually different.
78 It should also be noted that under Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on points of law only. Accordingly, the General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 26, and Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, point 38).
79 As it is, the analysis undertaken by the General Court in paragraphs 55 to 67 of the judgment under appeal – in which it held, in essence, that the signs at issue present, visually and phonetically, a high degree of similarity and that the alleged conceptual dissimilarity is not sufficient to counteract those similarities – constitutes such an appraisal of the facts. The second part of the fifth ground of appeal should therefore be rejected as clearly unfounded.
80 The fifth ground of appeal should therefore be rejected as being in part clearly unfounded and in part inadmissible.
Sixth ground of appeal: infringement of Article 135(4) of the Rules of Procedure of the General Court
Arguments of the parties
81 The sixth ground of appeal is that the General Court infringed Article 135(4) of its Rules of Procedure, in that it declared that the annexes to the application were inadmissible on the ground that they constituted new evidence which could not be taken into account, whereas they were merely intended to present further facts in a different form.
82 According to Mr Rajani, the General Court did not take account of the fact that he had been deprived of ‘an instance in proceedings’, in so far as the Board of Appeal of OHIM had cured a flaw in the Opposition Division’s decision, which had not contained an adequate statement of reasons.
83 OHIM contends that this ground of appeal should be rejected as clearly unfounded, in the light of the principle of ‘review of legality’ which delimits the scope of review by the General Court, and of Article 135(4) of its Rules of Procedure. OHIM also maintains that the question whether the documents submitted for the first time before the General Court were liable to alter the subject-matter of the dispute is a question of fact which, as such, is not open to review by the Court of Justice.
84 In any event, the evidence supplied by Mr Rajani was irrelevant to the extent that it was designed to show that the circumstances of use of the mark for which registration is sought, in the form ‘A to Z’, had an impact on the way this mark was perceived by the public. In addition, OHIM stresses that the General Court could not take into account the circumstances of the use of that mark in order to determine the manner in which the public perceived it.
Findings of the Court
85 It should be noted that, in paragraph 62 of the judgment under appeal, the General Court held that the annexes to the application were new evidence which, under Article 135(4) of its Rules of Procedure, ‘[could] not be produced for the first time before [it] and [had] therefore [to] be rejected as inadmissible (Case T‑128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II‑701, paragraph 18)’.
86 Thus, contrary to the assertions made by Mr Rajani, the General Court did examine the arguments which he had put forward against the Opposition Division’s decision and in relation to the obligation to state the reasons for that decision. In that regard, it should be noted – as the General Court pointed out in paragraph 73 of the judgment under appeal – that ‘the obligation to state reasons is an essential procedural requirement (Case C‑17/99 France v Commission [2001] ECR I‑2481, paragraph 35), infringement of which can be corrected by a decision of a board of appeal, and not a procedural right, infringement of which by the Opposition Division would unlawfully deprive [Mr Rajani], as he claims, of “an instance in proceedings”’.
87 Moreover, in paragraph 76 of that judgment, the General Court held that Mr Rajani had been able to submit his observations on all the matters of fact and of law on which the Board of Appeal had based the contested decision and that, accordingly, the Board of Appeal had fully respected his right to be heard.
88 It should be noted that, according to settled case-law, the General Court is the sole judge of any need to supplement the information available to it in respect of the cases before it. Whether or not the evidence before it is sufficient is a matter to be appraised by it alone and is not open to review by the Court of Justice on appeal, except where that evidence has been distorted or the inaccuracy of the findings of the General Court is apparent from the documents in the case-file (see, inter alia, Case C‑315/99 P Ismeri Europa v Court of Auditors [2001] ECR I‑5281, paragraph 19, and Joined Cases C‑75/05 P and C‑80/05 P Germany and Others v Kronofrance [2008] ECR I‑6619, paragraph 78).
89 The General Court was therefore right to hold in paragraph 62 of the judgment under appeal that ‘… the annexes to the application, comprising printouts of websites and databases relating to trade marks, [were] new evidence which, under Article 135(4) of the Rules of Procedure of the [General Court], [could] not be produced for the first time before [that Court] and [had] therefore [to] be rejected as inadmissible [(DaimlerChrysler v OHIM (Grille) …, paragraph 18)]’ and it is clear therefore that, having examined the circumstances of the proceedings before the Board of Appeal and having considered the probative value of the annexes in question, the General Court found that those annexes fell to be rejected.
90 The sixth ground of appeal must therefore be rejected as clearly unfounded.
Seventh ground of appeal: infringement of Articles 49 EC, 50 EC and 220 EC; and eighth ground of appeal: misuse of powers by OHIM
Arguments of the parties
91 In the context of his seventh ground of appeal, Mr Rajani claims that he is the proprietor of a German trade mark registration corresponding to the Community trade mark application at issue. He claims that Artoz-Papier cannot prevent him from using this national registration in Germany. As a consequence, the refusal of his Community trade mark application, which is based on the existence of likelihood of confusion in Germany, would lead to a paradoxical situation if he were to apply for the conversion of his Community trade mark application into a national trade mark application, pursuant to Article 108 of Regulation No 40/94. In such circumstances, the conversion would be refused, under Article 108(2)(b) of that regulation, as far as the Federal Republic of Germany is concerned. Thus, Mr Rajani could – he argues – be prohibited from using the Community trade mark ATOZ in Germany, but would nevertheless be able provide services under the same mark ATOZ registered as a German national trade mark. According to Mr Rajani, that illogical result would entail an infringement of Articles 49 EC and 50 EC.
92 According to OHIM, the situation described by Mr Rajani is a future and uncertain legal situation which, as such, cannot call into question the compatibility of the judgment under appeal with Articles 49 EC and 50 EC. Moreover, the situation described by Mr Rajani falls exclusively within the jurisdiction of the national courts rather than within that of OHIM or the Courts of the European Union.
93 The eighth ground of appeal is that OHIM misused its powers by rejecting Mr Rajani’s Community trade mark application, in which he claimed the seniority of the German trade mark ATOZ. According to Mr Rajani, a claim of seniority can be challenged only before the national authorities or the national courts, on the basis of national law. Thus, the seniority claim at issue would have had to be challenged under Paragraph 125c of the MarkenGesetz and not in opposition proceedings before OHIM. According to Mr Rajani, the General Court and OHIM infringed that rule.
94 OHIM contends that this new plea is clearly inadmissible because examining it would amount to altering the subject-matter of the dispute as it stood before the General Court, contrary to Articles 113(2) and 116(2) of the Rules of Procedure of the Court of Justice.
Findings of the Court
95 These two grounds of appeal, which should be examined together, constitute a set of arguments that may be categorised as new pleas in law.
96 It should be noted in that regard that the arguments put forward by Mr Rajani in the context of his seventh and eighth grounds of appeal are manifestly different from the arguments put forward in support of his second plea in law before the General Court, by which he alleged infringement of Article 8(1)(b) of Regulation No 40/94.
97 As was noted in paragraph 66 above, to allow a party to put forward for the first time before the Court of Justice a plea in law which it has not raised before the General Court would be to allow it to bring before the Court, whose appellate jurisdiction is limited, a dispute of wider ambit than that which came before the General Court. In an appeal, the Court’s jurisdiction is confined to review of the findings of law on the pleas argued before the General Court (see, inter alia, Commission v Brazzelli Lualdi and Others, paragraph 59; Deere v Commission, paragraph 62; and Glencore and Compagnie Continentale v Commission, paragraph 62).
98 The seventh and eighth grounds of appeal must therefore be rejected as clearly inadmissible.
99 It follows from all the above considerations that, pursuant to Article 119 of the Rules of Procedure of the Court of Justice, this appeal must be dismissed in its entirety.
Costs
100 Under Article 69(2) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings by virtue of Article 118 of those rules, 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 applied for costs against Mr Rajani and Mr Rajani has been unsuccessful, he must be ordered to pay the costs.
On those grounds, the Court (Fifth Chamber) hereby:
1. Dismisses the appeal;
2. Orders Mr Rajani to pay the costs.
[Signatures]
* Language of the case: English.
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