ORDER OF THE COURT (Sixth Chamber)

16 July 2015 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — Application for registration of a Community figurative mark — Word element ‘basic’ — Earlier Community figurative mark — Word element ‘BASIC’ — Opposition by the proprietor of that mark — Partial refusal of registration — Concepts of ‘distribution services’ and ‘retail and wholesale services’ — Scope)

In Case C‑400/14 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 20 August 2014,

Basic AG Lebensmittelhandel, established in Munich (Germany), represented by D. Altenburg and T. Haug, Rechtsanwälte,

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,

Repsol YPF SA, established in Madrid (Spain), represented by J.-B. Devaureix, abogado,

intervener at first instance,

THE COURT (Sixth Chamber),

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

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having decided, after hearing the Advocate General, to give a ruling by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1        By its appeal, Basic AG Lebensmittelhandel (‘Basic’) seeks to have set aside the judgment of the General Court of the European Union in Basic v OHIM — Repsol YPF (basic) (T‑372/11, EU:T:2014:585) (‘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 31 March 2011 (Case R 1440/2010-1) (‘the contested decision’), relating to opposition proceedings between Repsol YPF SA (‘Repsol’) and Basic.

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 (OJ 1994 L 349, p. 83), (‘Regulation No 40/94’), was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April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. Nevertheless, owing to the date on which the application for registration of the Community trade mark was filed, the provisions of Regulation No 40/94 remain applicable.

3        Under the heading ‘Relative grounds for refusal’, Article 8(1)(b) 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.

…’

 Background to the dispute

4        On 14 March 2008, Basic filed an application for registration of a Community trade mark with OHIM.

5        Registration as a mark was sought for the following figurative sign:

6        The services in respect of which registration was sought are in Classes 35 and 39 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, for each of those classes, to the following description:

–        Class 35: ‘Franchising, namely providing of commercial and organisational know-how, for a fee, for the marketing of goods and services; business administration, merchandising (sales promotion), dialogue marketing, business consultancy and business management with regard to the planning, arranging and conducting of customer attraction and customer loyalty systems, in particular in the field of mailing, discount, voucher and reward schemes; issuing information and data carriers, for others (included in class 35), for entering discount, voucher and reward transactions, in particular voucher books, credit cards and cheque cards containing visually readable and/or machine-readable identification data and/or information, in particular magnetic cards and chip cards (smart cards); sales promotion, conducting prize games and competitions as advertising initiatives, included in class 35; retail and wholesale services in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, medicated bath preparations, food supplements for medical and non-medical purposes, paper, cardboard and goods made from these materials, printed matter, photographs, stationery, instructional and teaching material, plastic materials for packaging, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, bags, rucksacks, umbrellas, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, clothing, footwear, headgear, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, foodstuffs, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or Internet retail services, all in relation to pharmacy goods, cosmetics, perfumery, stationery, textiles, beverages and foodstuffs’ and

–        Class 39: ‘Transport; packaging and storage of goods; travel arrangement’.

7        The Community trade mark application was published in Community Trade Marks Bulletin No 23/2008 of 9 June 2008.

8        On 8 September 2008, Repsol filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the services referred to in paragraph 6 of the present order.

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

10      The services covered by the earlier mark forming the basis of the opposition are in Classes 35, 37 and 39 of the Nice Agreement and correspond, for each of those classes, to the following description:

–        Class 35: ‘Commercial retailing of tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuel for cars; advertising; office functions’;

–        Class 37: ‘Building construction; repair; installation, service stations (petrol stations); repair of vehicles; maintenance, greasing and washing of vehicles; repair of tyres’, and

–        Class 39: ‘Distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuels and fuel for cars, transport; packaging, storage and supply of goods of all kinds, including fuels; travel arrangement’.

11      The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

12      On 28 May 2010, the Opposition Division of OHIM upheld the opposition in respect of some of the services in Class 35 of the Nice Agreement and all of the services in Class 39 of that agreement.

13      On 28 July 2010, Repsol filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision.

14      By the contested decision, the First Board of Appeal of OHIM found that there was a likelihood of confusion as regards the ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ in Class 35 of the Nice Agreement covered by the mark in respect of which registration is sought and the ‘distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals’ in Class 39 of that agreement covered by the earlier mark (‘the services at issue’). Consequently, it upheld the appeal by refusing to register the Community trade mark as regards the aforementioned services in Class 35 of the Nice Agreement covered by the mark in respect of which registration is sought. By contrast, the Board of Appeal found that the other services in Class 35 of that agreement covered by the mark applied for were different from the services covered by the earlier mark and, consequently, dismissed the appeal as regards those other services.

 The procedure before the General Court and the judgment under appeal

15      In support of its action at first instance, Basic relied on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16      After stating, in paragraph 22 of the judgment under appeal, that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar and that those conditions are cumulative, the General Court took the view, in paragraph 23 of the judgment under appeal, that it was necessary to examine whether the Board of Appeal had correctly found that there was a likelihood of confusion between the marks at issue as regards the services at issue.

17      As regards the comparison of the services, the General Court stated, first, in paragraph 32 of the judgment under appeal, that, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use, whether they are in competition with each other or are complementary and the distribution channels of the goods concerned.

18      Secondly, the General Court pointed out, in paragraph 34 of the judgment under appeal, that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law and that, although, in the light of the principles of equal treatment and of sound administration, OHIM must take into account decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Accordingly, the General Court held that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered.

19      As regards, first, the similarity between the goods concerned by the services at issue, the General Court held, in paragraph 39 of the judgment under appeal, that the Board of Appeal had correctly stated, in the contested decision, that the goods concerned by the ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ covered by the mark applied for were identical or highly similar to the ‘staple foodstuffs’ in Class 39 of the Nice Agreement to which the earlier mark related. Beverages and foodstuffs are of the same nature and have the same purpose in that they are intended for human consumption. Moreover, those goods are likely to be processed by the same undertakings, are generally sold in the same sales outlets and are also often consumed at the same time.

20      Consequently, the General Court rejected, in paragraph 40 of the judgment under appeal, Basic’s arguments, which were aimed at contesting the existence of similarity between the services in question on account of the absence of sufficient similarity between the goods concerned by those services.

21      As regards, secondly, the definition of distribution and wholesale services, the General Court rejected, in paragraph 42 of the judgment under appeal, Basic’s argument relating to the understanding of the words ‘distribution’ and ‘wholesale’ in everyday language inasmuch as the definitions of those concepts that Basic advances do not preclude the services at issue being identical.

22      In paragraph 43 of the judgment under appeal, the General Court pointed out that, with respect to the alleged decisive nature of the Nice Agreement in the definition of services, according to Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, the classification arising out of the Nice Agreement is to serve exclusively administrative purposes and thus, that classification cannot determine, in itself, the nature and characteristics of the services at issue in the present case. The General Court therefore rejected, in paragraph 44 of the judgment under appeal, the definition of the concept of ‘distribution’ advanced by Basic, which is based on the wording of Class 39 of the Nice Agreement. The General Court also stated that the explanatory note to Class 39 does not constitute an exhaustive enumeration of the services covered by that class.

23      As regards, thirdly, the alleged lack of similarity between distribution and wholesale services, the General Court held, in paragraph 47 of the judgment under appeal, that those services enable a product to be marketed and have an intermediate function between the production and final consumption of a product and that they contribute to the attainment of the same ultimate objective which is the sale to the end consumer.

24      The General Court pointed out, in paragraph 48 of the judgment under appeal, the close link between those two categories of services since a wholesaler may use distribution services and a distributor may also use wholesale services. Moreover, a wholesaler may offer distribution services and wholesale may form part of the services offered by a distributor.

25      In paragraphs 49 and 50 of the judgment under appeal, the General Court held that, even if Basic’s claim that distribution is not characteristic of the nature of wholesale services were well founded, that would not be capable, in itself, of precluding similarity between the two categories of services. As regards the other arguments put forward by Basic, the General Court pointed out that they were based on the erroneous premiss that distribution services are limited to transport and delivery services whereas those services account for only some of the activities covered by distribution services.

26      The General Court concluded from this, in paragraph 51 of the judgment under appeal, that the Board of Appeal had correctly held, in the contested decision, that the wholesale services covered by the mark in respect of which registration is sought and the distribution services covered by the earlier mark are similar as the goods concerned by those services are identical or highly similar.

27      As regards, fourthly, the alleged lack of similarity between distribution and retail services, the General Court held, in paragraph 53 of the judgment under appeal, that the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the services in question and that, inasmuch as the relevant public in the present case consisted of professionals, the Board of Appeal had not erred by not placing itself in the position of the end consumer.

28      As regards the allegedly distinct nature of the objective of retail services and the objective of distribution services, the General Court pointed out, in paragraph 54 of the judgment under appeal, that those services share the same ultimate objective, which is the sale to the end consumer and that, as the Board of Appeal had correctly found in the contested decision, those two categories of services consist in bringing goods to end consumers.

29      The General Court added, in paragraphs 54 and 55 of the judgment under appeal, that that assessment is not contradicted by the case-law according to which the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction (judgment in Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraph 34). That definition is part of the specific context of a request for a preliminary ruling made by the Bundespatentgericht (Federal Patent Court) and the Court’s interpretation in that case cannot therefore constitute an exhaustive definition of general scope of the concept of ‘retail services’.

30      The General Court concluded from this, in paragraphs 57 and 60 of the judgment under appeal, that the Board of Appeal had correctly found, first, that distribution and retail services are similar where goods are identical or highly similar and, secondly, that there is a likelihood of confusion on the part of the relevant public.

31      In the light of all of the foregoing, the General Court rejected the single plea in law put forward by Basic in support of its action, declaring it unfounded, and, consequently, dismissed that action in its entirety, ordering Basic to pay the costs.

 Forms of order sought by the parties before the Court of Justice

32      Basic claims that the Court should set aside the judgment under appeal, refer the case back to the General Court and order OHIM to pay the costs.

33      OHIM, supported by Repsol, contends that the Court should dismiss the appeal and order Basic to pay the costs.

 The appeal

34      Pursuant to Article 181 of its Rules of Procedure, where an 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, decide by reasoned order to dismiss that appeal in whole or in part.

35      That provision must be applied in the context of the present case.

36      In support of its appeal, Basic relies on a single ground of appeal alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

 Arguments of the parties

37      In support of its single ground of appeal, Basic submits that the General Court erred in law in assessing the scope of the services at issue.

38      In the first place, Basic criticises the General Court for having, in paragraphs 41 to 44 of the judgment under appeal, rejected its argument that the term ‘distribution’ has to be interpreted restrictively, in accordance with the meaning which it has in everyday language.

39      Basic submits, in that regard, that, in a previous decision of 26 August 2008, OHIM had found, first, that the service of distribution has a very narrow scope and comprises only the activities of ‘transport; packaging and storage of goods’ and, secondly, that the term ‘distribution’ is to be understood as the ‘movement of goods, such as from places of manufacture to wholesale and/or retail locations’.

40      Basic maintains, referring to the judgment in The Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361, paragraphs 35 to 37, 42, 59 and 60), that, by not taking that decision into account and by assessing the similarity of the services at issue without even defining the term ‘distribution services’, the General Court infringed the principle of EU law that decisions have to be transparent and logically comprehensible and thus created a situation of legal uncertainty.

41      Furthermore, Basic takes the view that, in accordance with the case-law (judgments in Zino Davidoff and Levi Strauss, C‑414/99 to C‑416/99, EU:C:2001:617, paragraphs 42 and 43, and Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraph 33), it falls to the Court to supply a uniform interpretation of the concept and scope of the services at issue. It submits that as the General Court did not define the scope of ‘distribution services’, the Court must therefore do so and must do so restrictively.

42      In the second place, Basic criticises the General Court for holding that ‘distribution’ services and ‘wholesale or retail’ services seek to achieve the same objective.

43      Basic submits, in that regard, that the General Court failed to have regard to OHIM’s practice of defining distribution services registered in Class 39 of the Nice Agreement as services performed by specialist transport companies involved in the logistics of the transport of goods from one place to another. It maintains that it is apparent from OHIM’s previous decisions that OHIM always denies that there is any similarity between distribution services and wholesale or retail services.

44      Basic states that it is apparent from the judgment in Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425, paragraph 34) that the objective of retail trade is the sale of goods to consumers, an activity which consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the transaction with the trader in question rather than with a competitor.

45      It submits that consequently, retail services and wholesale services presuppose an activity directed at consumers, which is not the case in respect of ‘distribution services’.

46      In the third place, Basic criticises the General Court for holding, in paragraph 43 of the judgment under appeal, that the Nice Classification serves exclusively administrative purposes. It submits that the General Court thus deliberately did not take account, albeit implicitly, of the explanatory note to Class 39 of the Nice Agreement in order to avoid any debate on the scope of distribution services.

47      Basic states that, in accordance with the case-law of the Court, the parties to the Nice Agreement are obliged to use the Nice Classification (see judgment in The Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraphs 50 to 56). It submits that it is apparent from the explanatory note to Class 39 that the kind of services in that class is clearly focused on the commercial level between traders. It maintains that, consequently, ‘distribution’ has a different scope and is aimed at different recipients to ‘wholesale’ and ‘retail’.

48      Repsol and OHIM submit that the single ground of appeal must be rejected as unfounded inasmuch as it is based on a misreading of the judgment under appeal and that, in any event, neither the General Court nor the Court are bound by previous decisions of the Opposition Division of OHIM.

 Findings of the Court

49      As regards, first, Basic’s argument that the General Court assessed the similarity of the services at issue without defining the scope of ‘distribution services’, it must be pointed out that the General Court, first, stated, in paragraph 47 of the judgment under appeal, that distribution and wholesale services have an intermediate function and contribute to the attainment of the same ultimate objective which is the sale to the end consumer. Next, the General Court pointed out, in paragraph 48 of the judgment under appeal, the close link between the distribution services covered by the earlier mark and the wholesale services covered by the mark in respect of which registration is sought. Lastly, the General Court, in paragraph 49 of the judgment under appeal, rejected Basic’s claim that distribution is not characteristic of the nature of wholesale services inasmuch as that claim was not capable, in itself, of precluding similarity between those categories of services.

50      It follows from this that the General Court defined, to the requisite legal standard, the scope of the services at issue and, in particular, that of distribution services. That argument is thus based on a manifestly incorrect reading of the judgment under appeal and must therefore be rejected as manifestly unfounded.

51      In those circumstances, there is no longer any need to adjudicate on Basic’s argument that it is for the Court to define the scope of distribution services restrictively.

52      Next, in so far as Basic refers, in the context of its argument to the effect that, first, the term ‘distribution’ must be interpreted restrictively, to the previous decisions of OHIM, it is important to bear in mind that, in accordance with the case-law of the Court, the legality of the decisions of the Boards of Appeal must be assessed not on the basis of a previous decision-making practice of those Boards of Appeal, but solely on the basis of Regulation No 40/94 (see, inter alia, judgments in BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and American Clothing Associates v OHIM and OHIM v American Clothing Associates, C‑202/08 P and C‑208/08 P, EU:C:2009:477, paragraph 57 and the case-law cited).

53      It cannot therefore reasonably be complained that the General Court did not take those decisions into account in analysing the merits of the contested decision.

54      As regards, secondly, Basic’s reference to the definition of retail services given by the Court in the judgment in Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425, paragraph 34) in support of its argument that such services and wholesale services presuppose an activity directed at consumers and can thus be distinguished from ‘distribution’ services, it must be pointed out that, in paragraph 55 of the judgment under appeal, the General Court held that that definition was part of the limited context of a request for a preliminary ruling and that the Court’s interpretation in that case could not therefore constitute an exhaustive definition of general scope of the concept of ‘retail services’.

55      Given that, by that reference, Basic confines itself, in actual fact, to repeating arguments which had already been submitted before the General Court without, however, adopting a position on the reasoning which that Court applied in rejecting them, the arguments put forward by Basic in that regard must be rejected as manifestly inadmissible.

56      Lastly, as regards the argument that the General Court did not take into account the explanatory note to Class 39 of the Nice Agreement, it is sufficient to point out that, as is apparent from paragraphs 43 to 46 of the judgment under appeal, the General Court held that inasmuch as, first, the Nice Classification cannot determine, in itself, the nature and characteristics of the services at issue in the present case and, secondly, the explanatory note to Class 39 of the Nice Agreement does not constitute an exhaustive enumeration of the services in Class 39, that note is not capable of confirming Basic’s claim that distribution services are confined to the activities of loading, delivery, storage and transport of goods.

57      It follows that that argument is also based on a manifestly incorrect reading of the judgment under appeal and must therefore be rejected as manifestly unfounded.

58      It follows from the foregoing that none of the arguments put forward by Basic in support of its single ground of appeal can succeed.

59      The appeal must therefore be dismissed in its entirety.

 Costs

60      Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings pursuant to 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 has applied for costs to be awarded against Basic and the latter has been unsuccessful, it must be ordered to pay the costs.

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

1.      The appeal is dismissed.

2.      Basic AG Lebensmittelhandel shall pay the costs.

[Signatures]

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* Language of the case: English.