Parties
Grounds
Operative part

Parties

In Case C‑374/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 1 July 2013,

Metropolis Inmobiliarias y Restauraciones SL, established in Barcelona (Spain), represented by J. Carbonell Callicó, abogado,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant at first instance,

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate, Rechtsanwalt,

intervener at first instance,

THE COURT (Sixth Chamber),

composed of A. Borg Barthet, President of the Chamber, S. Rodin (Rapporteur) and F. Biltgen, Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give its decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

Grounds

1. By its appeal, Metropolis Inmobiliarias y Restauraciones SL (‘Metropolis’) seeks to have set aside the judgment of the General Court of the European Union in Case T‑284/11 Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METROINVEST) EU:T:2013:218 (‘the judgment under appeal’), by which that court dismissed its action for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 March 2011 (Case R 954/2010-1) relating to opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG (‘MIP’) and Metropolis concerning an application for registration of the word sign ‘METROINVEST’ as a Community trade mark (‘the contested decision’).

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 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April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, given the date on which the application for registration in question was filed, the present case remains governed by Regulation No 40/94.

3. Article 8(1)(b) of Regulation No 40/94 provided:

‘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.’

Background to the dispute

4. On 30 July 2006, Metropolis filed at OHIM an application for registration as a Community trade mark of the word sign ‘METROINVEST’.

5. The services in respect of which registration was sought are in Class 36 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 (‘the Nice Agreement’), and correspond to the following description:

‘Financial affairs relating only to real estate services; financial services relating only to real estate services; financial planning services relating only to real estate services; real estate affairs; real estate agency services and real estate services provided on the internet; rent and lease negotiations; real estate selection and acquisition; property investment services; property sales, leasing, management and acquisition services; valuation of property; valuations relating to the surveying of buildings; land and estate management; advice on real estate management; real estate operations and transactions; electronic payment services; providing and managing electronic cash systems; account crediting and debiting services’.

6. The Community trade mark registration application was published in the Community Trade Marks Bulletin No 39/2008 of 29 September 2008.

7. On 11 November 2008, MIP filed a notice of opposition under Article 42 of Regulation No 40/94 to registration of the mark applied for in respect of all the services referred to in paragraph 5 of the present order.

8. The opposition was based, first, on the earlier German figurative mark, filed on 22 September 2003 and registered on 27 April 2004 under number 30348717, for various goods and services in Classes 1 to 45 of the Nice Agreement, only the services in Class 36 of that agreement corresponding to the following description providing the basis for the opposition: ‘Insurance services; financial services; cash transactions; real estate services’. The intervener claimed the colours blue and yellow for that figurative sign, represented as follows:

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9. The opposition was based, secondly, on the application for a Community figurative mark, filed on 20 March 1998 under number 779116 for various goods and services in Classes 1 to 42 of the Nice Agreement. The intervener claimed the colour yellow for that figurative sign, represented as follows:

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10. The ground relied on in support of the opposition was the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

11. By decision of 26 March 2010, the Opposition Division of OHIM upheld the opposition, taking the view that there was a likelihood of confusion between the earlier German figurative mark, that mark alone constituting a registered mark, and the mark in respect of which registration is sought.

12. On 26 May 2010, Metropolis filed an appeal with OHIM against the decision of the Opposition Division.

13. By the contested decision, the First Board of Appeal of OHIM dismissed the appeal, confirming the existence of a likelihood of confusion between the earlier German figurative mark and the mark for which registration is sought.

Procedure before the General Court and the judgment under appeal

14. By application lodged at the General Court Registry on 7 June 2011, Metropolis brought an action for annulment of the contested decision before the General Court. Metropolis relied on two pleas in law, the first, alleging infringement of Articles 6 and 14 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (‘the ECHR’), and the second, infringement of Article 8(1)(b) of Regulation No 40/94.

15. In paragraphs 21 to 60 of the judgment under appeal, the General Court, first, after declaring admissible certain documents produced for the first time before it by Metropolis, examined the second plea in law.

16. After considering, in the light of the relevant case-law, the assessment by the First Board of Appeal of OHIM of the likelihood of confusion between the earlier German figurative mark and the mark in respect of which registration is sought, the General Court confirmed the contested decision on that point.

17. In that context, the General Court held, in particular, in paragraphs 40 to 48 of the judgment under appeal, that there was some degree of visual, aural and conceptual similarity between the signs at issue and concluded, within the context of a global assessment of the likelihood of confusion, in paragraphs 48 to 59 of the judgment, that there was a likelihood of confusion between those signs having regard, on the one hand, to the distinctive character of the word ‘metro’ in relation to the services concerned, and, on the other, to the descriptive character of the word ‘invest’ with reference to those same services and because the distinctive and dominant element of the two signs at issue was identical and the services concerned were also identical.

18. The General Court consequently rejected the second plea in law.

19. Secondly, in paragraphs 61 to 79 of the judgment under appeal, the General Court also rejected the first plea in law, alleging infringement of Articles 6 and 14 of the ECHR.

20. As regards, in the first place, the alleged infringement of Article 6 of the ECHR, the General Court, in paragraphs 62 to 70 of the judgment under appeal, rejected that plea in law, holding that the plea in fact concerned an infringement by the Board of Appeal of OHIM of the obligation to state reasons under Article 73 of Regulation No 40/94, which, in the circumstances of the case, had not however been established. As regards, in the second place, the alleged infringement of Article 14 of the ECHR, which plea in law, according to the General Court, relates in fact to a lack of consistency within the contested decision and thus to a breach of the principle of equal treatment, the General Court, in paragraphs 71 to 79 of the judgment under appeal, rejected that plea, holding, in particular, that Metropolis could not rely on an unlawful act committed in another procedure, or on the previous or subsequent decisions of OHIM for the purposes of casting doubt on the contested decision.

21. Having regard to the foregoing, the General Court therefore dismissed the action in its entirety.

Forms of order sought by the parties

22. Metropolis claims that the Court should:

– set aside the judgment under appeal and, consequently, grant Community trade mark registration application No 7.112.11.3 METROINVEST, for services in Class 36 of the Nice Agreement; and

– order the other parties to pay the costs.

23. OHIM contends that the Court should dismiss the appeal as being inadmissible or, in the alternative, as being unfounded, and order Metropolis to pay the costs.

24. MIP contends that the appeal should be dismissed and that Metropolis should be ordered to pay the costs incurred by the other parties to the proceedings, including those incurred by MIP.

The appeal

25. Under Article 181 of the Rules of Procedure of the Court, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order decide to dismiss that appeal in whole or in part.

26. It is appropriate to apply that provision in the present appeal.

27. In support of its appeal, Metropolis raises a single ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 40/94. That ground of appeal is made up of four parts, alleging, in essence, that the General Court erred as to, respectively:

– the comparative assessment of the signs;

– the global assessment of the likelihood of confusion;

– consistency with the case-law of OHIM and of the General Court; and

– the pacific coexistence of the trade mark METROINVEST in respect of which registration is sought with other trade marks containing the word ‘METRO’ in various classes.

28. Those parts should be examined in turn.

The first and second parts of the single ground of appeal

Arguments of the parties

29. By the first part of its single ground of appeal, Metropolis claims that the General Court assessed incorrectly the visual, aural and conceptual similarity of the signs at issue. Referring to the relevant settled case-law of the Court, it submits, first, that the similarity of the goods or services covered by the signs at issue is offset by a lesser degree of similarity of the word element of those signs. Moreover, the General Court did not take into consideration the fact that the signs at issue are not ‘METRO’ and ‘INVEST’ as independent words and ‘METRO’, but ‘METROINVEST’ and ‘METRO’, and that the global assessment of the likelihood of confusion requires the trade mark to be analysed as a whole, and not broken down in an artificial manner.

30. Secondly, Metropolis carries out a visual, aural and conceptual comparison of the signs at issue for the purposes of demonstrating the lack of similarity between those signs. As regards the conceptual comparison in particular, it draws attention to, inter alia, the connection which it is claimed exists between the word ‘METRO’ and the word ‘metropole’ and maintains that that argument was not a new plea in law relied on before the General Court.

31. In the second part of its single ground of appeal, Metropolis states that, according to the settled case-law of the Court, the global assessment of the likelihood of confusion must, in relation to the similarity of the signs at issue, be based on the overall impression produced by them. It claims that it follows from that principle that the assessment concerning the similarity of the signs ought to be made, not on the b asis of the sign as broken down into two independent words, as the General Court is alleged to have done in paragraphs 53 to 56 of the judgment under appeal, but on the basis of one word, in this instance, namely, ‘METROINVEST’, which, furthermore, does not as such contain any dominant element.

32. OHIM and MIP contend that the first and second parts of the single ground of appeal must be rejected as being inadmissible or, in any event, unfounded.

Findings of the Court

33. By the first and second parts of the single ground of appeal, Metropolis alleges, in essence, that the General Court made errors in the assessment of the similarity of the signs at issue and, consequently, in the global assessment of the likelihood of confusion between them.

34. In this connection, it must be recalled, at the outset, that it is settled case-law that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment must, in relation to the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, Case C‑334/05 P OHIM v Shaker EU:C:2007:333, paragraphs 34 and 35, and Case C‑498/07 P Aceites del Sur-Coosur v Koipe EU:C:2009:503, paragraphs 59 and 60 and the case-law cited).

35. If Metropolis claims, in the first and second parts of the single ground of appeal, that, having regard to the case-law referred to above, the General Court ought to have analysed the sign ‘METROINVEST’, not on the basis of the sign broken down into two words, but as a whole, it must be stated that, although according to that case-law the global assessment of the likelihood of confusion must be based on the overall impression given by the signs at issue, this in no way means that, for the purposes of that assessment, their elements or their components, including the various elements making up a single word, cannot be taken into account (see, to that effect, order in Case C‑512/04 P Vitakraft-Werke Wührmann v OHIM EU:C:2005:736, paragraph 23).

36. In this connection, it is apparent from paragraphs 40 to 42 and 53 to 55 of the judgment under appeal, and, in particular, from paragraphs 39 and 47 of that judgment, that the General Court did carry out such a global assessment of the likelihood of confusion, taking into account the elements and components of the signs at issue, inasmuch as it compared the signs ‘METRO’ and ‘METROINVEST’, the latter taken as a whole.

37. Metropolis’ argument must, therefore, be rejected as being manifestly unfounded.

38. Furthermore, inasmuch as Metropolis disputes the findings made by the General Court in relation to the visual, aural and conceptual similarity of the signs at issue with a view to demonstrating that it ought to have concluded that there was no similarity between the signs, the fact of the matter is clearly that Metropolis merely calls in question, without pleading any distortion of the material in the file, the assessment of the facts carried out by the General Court in that context.

39. However, Metropolis cannot require the Court to substitute its own assessment for that of the General Court in that regard. As is apparent from settled case-law, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. 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 or evidence are distorted, constitute a point of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C‑104/00 P DKV v OHIM EU:C:2002:506, paragraph 22; Case C‑412/05 P Alcon v OHIM EU:C:2007:252, paragraph 71; Case C‑16/06 P Les Éditions Albert René v OHIM EU:C:2008:739, paragraph 68; and Case C‑254/09 P Calvin Klein Trademark Trust v OHIM EU:C:2010:488, paragraph 49).

40. As for Metropolis’ argument as to the connection it claims exists between the word ‘METRO’ and the word ‘metropole’, suffice it to point out that, even if the General Court was wrong to find, in paragraph 47 of the judgment under appeal, that that argument had been raised for the first time during the hearing before it, the General Court, in paragraph 48 of the judgment, examined that argument only to reject it on the merits. In accordance with the case-law cited in paragraph 39 of the present order, the assessment that the General Court carried out in that context may not, in any event, be put in question in the present appeal.

41. Consequently, the first and second parts of the single ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

The third part of the single ground of appeal

Arguments of the parties

42. By the third part of its single ground of appeal, Metropolis claims that there is a contradiction between the judgment under appeal and OHIM’s decision to reject the opposition filed by Metropolis, on the basis of Community trade mark No 7.111.974 GRUPOMETROPOLIS, to registration of the Community figurative mark No 7.585.045 ‘METRO’ to the benefit of MIP. Metropolis had, furthermore, contested that decision before OHIM and before the General Court. Notwithstanding the statements made by the General Court in paragraph 77 of the judgment under appeal, Metropolis claims that it is necessary, in the interests of legal certainty and consistency in registration policy, to follow the same line and to avoid inconsistency with regard to previous decisions.

43. According to OHIM and MIP, that part of the single ground of appeal is manifestly inadmissible or, in any event, manifestly unfounded.

Findings of the Court

44. As the General Court correctly pointed out in paragraph 77 of the judgment under appeal, it is apparent from settled case-law that the lawfulness of decisions of the Boards of Appeal of OHIM falls to be assessed not on the basis of their decision-making practice, but solely on the basis of Regulation No 40/94, as interpreted by the European Union judicature (see, to that effect, Case C‑37/03 P BioID v OHIM EU:C:2005:547, paragraph 47, and Alcon v OHIM EU:C:2007:252, paragraph 65).

45. Consequently, the Tribunal was entitled to hold, without erring in law, in paragraph 78 of the judgment under appeal, that Metropolis could not reasonably rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s decision concerning the opposition proceedings relating to the trade mark GRUPOMETROPOLIS and the trade mark METRO.

46. Moreover, so far as concerns the alleged contradiction between the judgment under appeal and the case-law of the General Court, Metropolis has in no way explained why the judgment under appeal is inconsistent in this regard.

47. It follows that the third part of the single ground of appeal must be rejected as being manifestly unfounded.

The fourth part of the single ground of appeal

Arguments of the parties

48. By the fourth part of its single ground of appeal, Metropolis claims that there are hundreds of other Community trade marks, a list of which is attached to the appeal, which, like the trade mark in respect of which registration is sought, contain the word ‘METRO’ and which coexist peacefully. That fact would indicate that there is no real likelihood of confusion at all.

49. OHIM and MIP submit, in essence, that the fourth part of the single ground of appeal is also manifestly inadmissible or, at least, manifestly unfounded.

Findings of the Court

50. It must be recalled that an appeal must indicate precisely the contested elements of the judgment or order 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 EU:C:2000:361, paragraph 34, and Case C‑131/03 P Reynolds Tobacco and Others v Commission EU:C:2006:541, paragraph 49).

51. Where an appeal merely reproduces the pleas in law and arguments previously submitted to the General Court, without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, it fails to satisfy that requirement. In reality, such an appeal amounts to no more than a request for re-examination of the application submitted to the General Court, which falls outside the jurisdiction of the Court of Justice (see, inter alia, Case C‑286/04 P Eurocermex v OHIM EU:C:2005:422, paragraph 50, and C‑401/09 P Evropaïki Dynamiki v ECB EU:C:2011:370, paragraph 61).

52. In the present appeal, Metropolis, in the fourth part of its single ground of appeal, merely refers generally to a list of Community trade marks containing the word ‘METRO’, attached as an annex to the appeal, which it had already produced before the General Court and which it claimed demonstrated that there was no likelihood of confusion, without explaining what error of law the General Court allegedly made in the judgment under appeal.

53. Therefore, the fourth part of the single ground of appeal must be rejected as being manifestly inadmissible.

54. In the light of the foregoing, the present appeal must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

Costs

55. In accordance with Article 138(1) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 184(1) thereof, 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 and MIP have applied for an order that Metropolis pay the costs and the latter’s single ground of appeal has been unsuccessful, Metropolis must be ordered to pay the costs.

Operative part

On those grounds, the Court (Sixth Chamber) hereby orders:

1. The appeal is dismissed.

2. Metropolis Inmobiliarias y Restauraciones SL is to pay the costs.