Pfriem v EUIPO - U-Control (UC) (EU trade mark - Judgment) [2024] EUECJ T-316/23 (15 May 2024)

Judgment By his action under Article 263 TFEU, the applicant, Mr Hanns Pfriem, seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 March 2023 (Case R 1404/2022‑4) (‘the contested decision’). Background to the dispute On 11 June 2022, the intervener, U-Control Srl, designated the European Union in its international registration for the following figurative sign: The mark applied for covered, inter alia, goods and services in Classes 9, 37 and 42 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, which correspond, for each of those classes, to the following description: – Class 9: ‘Electric control panels for industrial machines and industrial plant; electronic displays; electric control apparatus; transducers; video surveillance systems; industrial automation software; control software of electronic displays, electric control apparatus transducers, video surveillance systems’; – Class 37: ‘Installation, maintenance and repair of electric control panels, electronic displays, electric control apparatus, transducers, video surveillance systems, industrial vehicles, vehicle joysticks, armrests for vehicle seats, earth moving machines, joysticks being parts of machines, other than for game machines, armrests for earth moving machines seats’; – Class 42: ‘Design for others of electric control panels, electronic displays, electric control apparatus, transducers, video surveillance systems, industrial vehicles, vehicle joysticks, armrests for vehicle seats, earth moving machines, joysticks being parts of machines, other than for game machines, armrests for earth moving machines seats’. On 11 May 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based on the following earlier EU figurative mark: for goods in Class 9 and corresponding to the following description: ‘Testing devices for manufacturing and repair of machines and other objects, in particular in metal construction, vehicle construction and in the energy sector’. The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). On 31 May 2021, the Opposition Division rejected the opposition. On 29 July 2022, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal. More specifically, it found that the relative grounds for refusal referred to in Article 8(1)(a) and (b) of Regulation 2017/1001 had to be rejected on the ground that the goods and services covered by the marks at issue were neither similar nor, a fortiori, identical. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – uphold the opposition and reject the application for registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above; – in the alternative, refer the case back to the Board of Appeal; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in case an oral hearing is convened. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant raises three pleas in law, alleging, first, infringement of the right to be heard and of the right to have one’s case handled impartially within the meaning of Article 41 of the Charter of Fundamental Rights of the European Union (‘the Charter’), secondly, infringement of Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and, thirdly, infringement of Article 8(1)(b) of Regulation 2017/1001. The first part of the first plea in law, alleging infringement of the right to be heard The applicant claims, in essence, that his right to be heard, enshrined in Article 41(2) of the Charter, has been infringed. According to the applicant, the Board of Appeal did not in any way take into consideration the arguments he put forward in the context of his appeal against the Opposition Division’s decision. In the contested decision, the Board of Appeal merely repeated the reasons set out by the Opposition Division. EUIPO and the intervener dispute that argument. In accordance with Article 41(2)(a) of the Charter, the right to good administration includes, inter alia, the right of every person to be heard, before any individual measure which would affect him or her adversely is taken. The right to be heard guarantees every person the opportunity to make known his or her views effectively during an administrative procedure and before the adoption of any decision liable to affect his or her interests adversely. Next, it should be stated that the right to be heard pursues a dual objective. First, to enable the case to be examined and the facts to be established in as precise and correct a manner as possible, and, secondly, to ensure that the person concerned is in fact protected. The right to be heard is intended, inter alia, to guarantee that any decision adversely affecting a person is adopted in full knowledge of the facts, and its purpose is to enable the competent authority to correct an error or to enable the person concerned to submit such information relating to his or her personal circumstances as will argue in favour of the adoption or non-adoption of the decision, or in favour of its having a specific content (see judgment of 4 June 2020, EEAS v De Loecker , C‑187/19 P, EU:C:2020:444 , paragraphs 68 and 69 and the case-law cited). However, the right to be heard does not mean the right to have one’s argument prevail (judgment of 7 December 2018, Edison v EUIPO (EDISON) , T‑471/17, not published, EU:T:2018:887 , paragraph 72). It is common ground that the applicant was able to make his views known before the Board of Appeal before the adoption of the contested decision. As regards the applicant’s assertion that the Board of Appeal ignored his arguments, it must be held that it is not capable of calling into question the fact that he had the opportunity to put forward his point of view. Consequently, that assertion is also not capable of establishing that the Board of Appeal infringed the applicant’s right to be heard. Moreover, it must be held that that assertion has no factual basis. The Board of Appeal demonstrated on several occasions in the contested decision that it took into account the applicant’s assertions. Thus, the applicant’s arguments are summarised in paragraph 10 of that decision. Furthermore, in paragraphs 34, 35 and 36 of that decision, the Board of Appeal addresses the applicant’s claims that the goods and services at issue are similar and it expressly refutes them. It follows from paragraph 39 of that decision that the Board of Appeal refers to the applicant’s argument alleging that the goods at issue are complementary in order to reject it in the following paragraphs. Moreover, although it is apparent in particular from paragraphs 45 and 50 of the contested decision that the Board of Appeal found that the applicant’s arguments were insufficient to call into question the findings of the Opposition Division, that does not mean that he was not in a position to put forward his point of view or that the Board of Appeal ignored his arguments. Therefore, it must be concluded that the applicant’s right to be heard, as interpreted by the case-law referred to in paragraph 17 above, has not been infringed. The second part of the first plea, alleging infringement of the right to have one’s case handled impartially, and the second plea, alleging infringement of Article 27(2) of Delegated Regulation 2018/625 The applicant submits that the Opposition Division extended and supplemented, on its own initiative, the arguments put forward by the intervener and, on that basis, rejected the opposition that he had brought. The Board of Appeal erred in law in endorsing the grounds of the Opposition Division’s decision. The Board of Appeal thus infringed Article 41(1) of the Charter. The Board of Appeal should have confined itself to interpreting the lists of goods and services at issue according to a literal interpretation under Article 33(5) of Regulation 2017/1001 instead of distorting the literal meaning of the goods covered by the earlier mark. It failed to comply with Article 27(2) of Delegated Regulation 2018/625 in so far as it did not provide the reasons why it based its decision on facts other than those submitted by the parties. EUIPO and the intervener dispute those arguments. It follows from Article 41(1) of the Charter that ‘every person has the right to have his or her affairs handled impartially, fairly and within a reasonable time by the institutions, bodies, offices and agencies of the Union’. In that regard, the need for impartiality, required of institutions, bodies, offices and agencies in carrying out their missions, is intended to guarantee equality of treatment, which is at the heart of the European Union. That requirement is intended, inter alia, to avoid a situation where there could be a conflict of interest on the part of officials or agents acting on behalf of those institutions, bodies, offices and agencies. Having regard to the fundamental importance of ensuring the independence and probity of EU institutions, bodies, offices and agencies as regards both their internal functioning and external reputation, the requirement of impartiality covers all circumstances in which an official or agent who is called upon to decide on an issue must reasonably consider that issue as being of such a nature as to be viewed by third parties as a possible source of impairment of his or her independence in that matter (see judgment of 21 October 2021, Parliament v UZ , C‑894/19 P, EU:C:2021:863, paragraph 53 and the case-law cited). It is incumbent on those institutions, bodies, offices and agencies to comply with the requirement of impartiality, in its two components, which are, on the one hand, subjective impartiality, whereby no member of the institution concerned may show personal bias or prejudice, and, on the other hand, objective impartiality, according to which that institution must offer sufficient guarantees to exclude any legitimate doubt as to possible bias on the part of the institution concerned (see judgment of 25 February 2021, Dalli v Commission , C‑615/19 P, EU:C:2021:133 , paragraph 112 and the case-law cited). In that regard, the Court of Justice has made it clear that, in order to show that the organisation of an administrative procedure does not provide sufficient guarantees to exclude any legitimate doubt as to possible bias, it is not necessary to prove lack of impartiality. It is sufficient for a legitimate doubt to arise which cannot be dispelled (see, to that effect, judgment of 27 March 2019, August Wolff and Remedia v Commission , C‑680/16 P, EU:C:2019:257 , paragraph 37). According to Article 27(2) of Delegated Regulation 2018/625, in inter partes proceedings, the examination of the appeal is to be restricted to the grounds invoked in the statement of grounds. Matters of law not raised by the parties are to be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation 2017/1001 having regard to the facts, evidence and arguments presented by the parties. It has been held that, in the context of opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, the assessment of the similarity of the goods at issue and of the signs at issue constitutes an issue of law which is necessary to ensure the correct application of that regulation, so that the adjudicating bodies of EUIPO are required to examine that issue, if necessary of their own motion. As that assessment does not presuppose any matter of fact which is for the parties to establish and does not require the parties to provide facts, arguments or evidence tending to establish the existence of those similarities, EUIPO alone is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (see, to that effect and by analogy, judgment of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 43). The same is true of the assessment of the identity of the goods at issue and of the signs at issue under Article 8(1)(a) of that regulation. Furthermore, the Board of Appeal is entitled, where appropriate, to supplement the factual evidence adduced by the parties for the purposes of its examination of whether there is a likelihood of confusion. The restriction of the factual basis of the examination by the Board of Appeal laid down in Article 27(2) of Delegated Regulation 2018/625 does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM - DaimlerChrysler (PICARO) , T‑185/02, EU:T:2004:189, paragraph 29). In the present case, it must be held, as is apparent from the contested decision, that the Opposition Division carried out its own assessment of whether there was a likelihood of confusion, by examining the relevant factors, in particular the similarity of the goods and services covered by the marks at issue. That is a matter of law that must be resolved by the adjudicating bodies of EUIPO. In order to assess the similarity of the goods covered by the marks at issue, the Board of Appeal interpreted the goods covered by the earlier mark in paragraphs 23 to 27 and 32 of the contested decision (see paragraphs 36 and 37 below). The applicant disputes that interpretation and criticises the Board of Appeal for failing to take account of his arguments before it. He claims, in essence, that the Board of Appeal reproduced the Opposition Division’s description of the goods in disregard of his argument that the Opposition Division’s reasoning was ‘not rooted in objective sources or general knowledge of the market’. The applicant does not put forward any specific evidence to show that the findings made by the Board of Appeal as regards the goods covered by the earlier mark are incorrect or misleading or that they go beyond a literal interpretation of those goods. Accordingly, there is nothing to show that the Board of Appeal infringed Article 27(2) of Delegated Regulation 2018/625 or that it exhibited bias against the applicant, for the purposes of the case-law cited in paragraphs 23 and 24 above. It follows from the foregoing that the second part of the first plea and, consequently, the first plea in law in its entirety must be rejected, as must the second plea. Third plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001, read in conjunction with Article 33(5) of that regulation, in that it failed to examine whether the goods at issue were identical and in so far as it made an error of assessment in holding that the goods and services concerned were not similar. First, several goods in Class 9 covered by the mark applied for and by the earlier mark are identical or at least highly similar. In order to carry out tests with testing devices, measuring tools or data collection tools and a unit displaying the results, such as some of the goods in Class 9 covered by the mark applied for, are needed. Similarly, ‘testing devices’ covered by the earlier mark are generally equipped with ‘electric control panels for industrial machines and industrial plant’, ‘electronic displays’, ‘electric control apparatus’ and/or ‘transducers’, covered by the mark applied for. Moreover, some ‘testing devices’ fall within the same subcategory as the goods in Class 9 covered by the mark applied for, namely ‘measuring, detecting, monitoring and controlling devices’. Secondly, the applicant submits that the services in Class 37 and Class 42 covered by the mark applied for are similar to the goods in Class 9 covered by the earlier mark. The various installation, maintenance and repair services covered by the mark applied for are intrinsically linked to testing devices, but also to design services, and are aimed at the same public. EUIPO and the intervener contest the applicant’s arguments. The Board of Appeal found, in that regard, in essence, in paragraphs 23 to 28 of the contested decision, that the ‘testing devices for manufacturing and repair of machines and other objects, in particular in metal construction, vehicle construction and in the energy sector’ in Class 9 covered by the earlier mark were commonly used at the end of the manufacturing process or after the completion of the process of their repair, in order to verify the proper functioning, performance and quality of the machine in question and its functioning in accordance with the accepted standards. In view of their complexity, some experience is required both for the manufacture of those devices and their use, and their price is relatively high. In paragraphs 29 to 33 of the contested decision, the Board of Appeal found that the goods in Class 9 covered by the mark applied for were basically electric displaying, controlling and surveillance devices and software that ‘[were] used in the operation itself and in display technology’. Thus, the purpose and use of the goods in Class 9 covered by the mark applied for and the earlier mark respectively are different. In paragraph 38 of the contested decision, the Board of Appeal also found that the alleged fact that the goods covered by the marks at issue in Class 9 could be designed by the same manufacturers did not mean that those goods had the same purpose. According to the Board of Appeal, in paragraph 42 of the contested decision, the goods in Class 9 covered by the marks at issue are neither complementary nor in competition with each other. They could be used separately and the testing devices could be used for testing goods other than those covered by the mark applied for. More specifically, the ‘industrial automation software’ and ‘control software of electronic displays’ covered by the mark applied for are not comparable to the software necessary to operate the testing devices covered by the earlier mark (see paragraph 44 of the contested decision). As regards the services in Classes 37 and 42 covered by the mark applied for, the Board of Appeal noted, in paragraph 46 of the contested decision, that they belonged to a category of services related to goods that are dissimilar to those covered by the earlier mark. It is apparent from paragraph 49 of the contested decision that the goods and services covered by the marks at issue differ in their methods of use and are offered by different providers or manufacturers through different distribution channels. They are of interest to distinct consumer circles. Furthermore, they are neither complementary nor in competition. It should be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, 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. The risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM - easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). The comparison of the goods and services at issue must be based on the list of goods and services covered by the marks at issue and that list must be interpreted taking into account the literal meaning of the indication or term at issue (see judgment of 24 May 2023, Granini France v EUIPO - Pichler (Joro) , T‑68/22, not published, EU:T:2023:287 , paragraph 20 and the case-law cited). In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM - Marsalman (Representation of a chicken) , T‑249/11, EU:T:2013:238 , paragraph 21 and the case-law cited). Complementary goods or services are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see, to that effect, judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14 , paragraphs 57 and 58 and the case-law cited). Where the goods and services covered by the earlier mark include the goods and services covered by the trade mark application, those goods and services are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE) , T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). The applicant’s arguments must be examined in the light of those considerations. The goods in Class 9 As regards the goods in Class 9 covered by the marks at issue, it must be held that, in view of their wording, those goods are not identical. Although the applicant claims that the goods covered by the earlier mark could be composed of parts corresponding to the goods covered by the mark applied for, it should be noted that those goods are not the same. Nor does it mean that the goods covered by the earlier mark constitute a broader category of goods that includes one or more goods covered by the mark applied for, or vice versa, for the purposes of the case-law cited in paragraph 46 above. As regards the similarity between the goods covered by the marks at issue, the Board of Appeal did not make an error of assessment in finding, taking into account, inter alia, their nature, their intended purpose, their method of use and the lack of complementarity, for the purposes of the case-law cited in paragraph 44 above, that they were not similar. In the first place, as regards the nature, intended purpose and use of the goods at issue, it follows form the very wording of the description of the goods covered by the earlier mark, namely ‘testing devices for manufacturing and repair of machines and other objects, in particular in metal construction, vehicle construction and in the energy sector’, that those goods are designed to carry out tests during the manufacture or repair of those machines and those other objects. The goods covered by the mark applied for, by contrast, are electrical display, control and monitoring devices and software, which are used throughout the industrial process, are part of industrial machines and sites and therefore have a different application. In the second place, as regards the complementary nature of the goods covered by the marks at issue, it is not disputed that the link between those goods is not sufficiently close within the meaning of the case-law referred to in paragraph 45 above to conclude that they are complementary. Those goods may be used independently of each other and are not indispensable or important to each other in their everyday use. Furthermore, the alleged fact that the goods covered by the mark applied for may be used in the manufacture of testing devices is not decisive. The mere fact that a particular good is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different (see, to that effect, judgment of 27 October 2005, Éditions Albert René v OHMI - Orange (MOBILIX) , T‑336/03, EU:T:2005:379, paragraph 61). Nor can the other arguments put forward by the applicant invalidate the Board of Appeal’s finding referred to in paragraph 49 above. As regards the applicant’s argument that all the goods in Class 9 covered by the marks at issue belong to a category of ‘measuring, detecting, monitoring and controlling devices’, it should be noted that that fact is irrelevant. It is apparent from Article 33(7) of Regulation 2017/1001 that ‘goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification’ and that ‘goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification’. Even if it were possible to define a category of goods including all the goods in Class 9, that would not automatically mean that they are similar in the light of all the relevant factors within the meaning of the case-law cited in paragraph 44 above. As regards the applicant’s claim that the goods covered by the marks at issue may be produced by the same manufacturers, it should be noted that a likelihood of confusion can exist only if a large part of the producers or distributors of those goods are the same. It is only in such a case that the relevant public will perceive the goods or services concerned as having a common commercial source (see judgment of 23 January 2014, Sunrider v OHIM - Nannerl (SUN FRESH) , T‑221/12, not published, EU:T:2014:25, paragraph 90 and the case-law cited). However, it is not apparent from the documents before the Court that that is the case and the mere assumption put forward by the applicant that the goods covered by the marks at issue may be manufactured in the same factories is not sufficient in that regard. The goods in Class 9 covered by the earlier mark and the services in Classes 37 and 42 covered by the mark applied for The services in Class 37 covered the mark applied for concern the installation, maintenance and repair of specific goods and those covered by the same mark in Class 42 concern product design. It should be noted that the nature of the goods covered by the earlier mark is different from that of the services covered by the mark applied for, given that the goods are tangible and the services are intangible (see, to that effect, judgment of 15 December 2010, Wind v OHIM - Sanyang Industry (Wind) , T‑451/09, not published, EU:T:2010:522, paragraph 23). Moreover, their intended purposes are also different, since it is apparent from the specific designations of the services of the mark applied for, set out in paragraph 3 above, that they do not relate to the testing devices covered by the earlier mark. Furthermore, it is true that the applicant claims that device manufacturers are generally likely, or even obliged, to offer services relating to the installation, maintenance and repair of those devices. However, he does not provide any evidence to support the view that that is the case for the manufacturers of the testing devices covered by the earlier mark and that those manufacturers usually offer such services. Therefore, there is not a sufficiently close link between the goods and services at issue. Consequently, the third plea in law must be rejected. In the light of all the foregoing considerations, since none of the pleas in law raised by the applicant can be upheld, the action must be dismissed in its entirety, without it being necessary to rule on the pleas of inadmissibility raised by EUIPO and directed against the applicant’s second head of claim. Costs Under Article 134(1) 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 incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is organised, it should be held that EUIPO is to bear its own costs, given that no hearing was organised. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Hanns Pfriem, in addition to bearing his own costs, to pay those incurred by U-Control Srl; 3. Declares that the European Union Intellectual Property Office (EUIPO) shall bear its own costs. Kowalik-Bańczyk Hesse Ricziová Delivered in open court in Luxembourg on 15 May 2024. V. Di Bucci M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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