Xiaomi v EUIPO - Dudingen Develops (MI) (EU trade mark - Judgment) [2019] EUECJ T-799/16 (12 March 2019)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark MI — Earlier EU figurative mark MI — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001))

Xiaomi Inc., established in Beijing (China), represented by T. Raab and C. Tenkhoff, lawyers,

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 5 September 2016 (Case R 337/2016‑4), relating to opposition proceedings between Xiaomi and Dudingen Develops,

composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 16 November 2016,

having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 6 and 10 July 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 26 November 2014, the company, Dudingen Develops, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 18 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, and correspond, for each of those classes, to the following description:

– Class 9: ‘Battery jars; helmets for use in sports; sheaths for electric cables; cable covers [conduits]; electrical cables; electrical power extension cords; enamelled electric wires; ignition cables; cable locators; adapter cables (electric -); insulated electrical cables; resistance wires; thermocouple wires; metallic cables [electric]; cable connectors; measuring cables; connection cables; starter cables for motors; ducting for electric cables; cable splices for electric cables; mounting cords [electrical]; conduit for electric cables; cable channels (electric -); cable boxes (electric -); cable junctions for electric cables; wire connectors [electricity]; heat resistant electric wires; connection blocks [electric cable]; tags for identifying electric cables; connections for electric cables; markers for electric wire; mineral insulated electric cables; male connectors for electrical cables; flexible sheaths for electric cables; electricity mains (materials for -) [wires, cables]; junction sleeves for electric cables; junction boxes for electric wires; joint boxes for housing cable joints; apparatus, instruments and cables for electricity; electrical power adaptors; plug adaptors; adapter connectors (electric -); adapters for connecting telephones to hearing aids; travel adaptors for electric plugs’;

4 The application for registration as a mark was published in Community Trade Marks Bulletin No 328/2014 on 17 December 2014.

5 On 17 March 2015, the applicant, Xiaomi Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU figurative mark filed on 7 March 2014 and registered on 4 August 2014 under the number 12672283, reproduced below:

7 That earlier mark designates goods and services in Classes 9 and 38 which correspond, for each of those classes, to the following description:

– Class 9: ‘Computer memories; recorded computer programs for use in database management, use as a spread sheet, and for word processing; computer keyboards; recorded computer operating programs; computer peripheral devices; recorded computer software for use in database management, use as a spreadsheet, and for word processing; computer monitors; computer mouse; optical blank discs; printers for use with computers; computer central processing units; data processing equipment, namely, electronic memory card readers; scanners; notebook computers; calculators; electronic publications, namely, e-zines featuring electronics recorded on computer media; downloadable computer software program for use in database management, use as a spreadsheet, and for word processing; mouse pads; wrist rests for use with computers; computer game programs; downloadable mobile phone ringtones; downloadable music files; downloadable image files containing artwork, text, audio, video, games; internet web links on a variety of topics of general interest; blank USB flash drives; portable computers; galvanic cells; photocopiers, photographic, electrostatic and thermic, battery chargers; chargers for electric batteries; telephone apparatus; video telephones; portable telephones; mobile phone straps; global positioning system (GPS); hands-free kits for phones; loudspeakers; cabinets for loudspeakers; microphones; televisions; camcorders; headphones; DVD players; portable media players; cameras; stereoscopes; telescopes; silicon wafers; integrated circuits, sunglasses; geiger counters; scales; video disks and video tapes with recorded animated cartoons’;

– Class 38: ‘Communications via fiber-optic networks; delivery of personalised greeting cards to others via electronic mail; transmission of greeting cards online; transmission of digital documents files; radio broadcasting; mobile telephone services; local and long-distance telephone services; communications by telephone; cellular telephone communication; communications by computer terminals; information about telecommunication’.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001).

9 By decision of 15 December 2015, the Opposition Division upheld the opposition in part.

10 On 15 February 2016, the applicant filed a notice of appeal before the Board of Appeal of EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. The statement setting out the grounds of appeal was filed on 12 April 2016.

11 By decision of 5 September 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division in part in so far as it had rejected the opposition for the goods in Class 9 ‘battery jars; ignition cables; starter cables for motors’. The Board of Appeal accordingly refused registration of the mark applied for in respect of those goods. In addition, the Board of Appeal found that the remaining goods designated by the mark applied for were not similar to the goods designated by the earlier mark and, consequently, dismissed the applicant’s appeal as to the remainder.

– annul in part the contested decision in so far as it states that there is no likelihood of confusion concerning, on the one hand, the goods in Class 9: ‘electrical cables; sheaths for electric cables; cable covers [conduits]; electrical power extension cords; enamelled electric wires; cable locators; adapter cables (electric -); insulated electrical cables; resistance wires; thermocouple wires; metallic cables [electric]; cable connectors; measuring cables; connection cables; ducting for electric cables; cable splices for electric cables; mounting cords [electrical]; conduit for electric cables; cable channels (electric -); cable boxes (electric -); cable junctions for electric cables; wire connectors [electricity]; heat resistant electric wires; connection blocks [electric cable]; helmets for use in sports; tags for identifying electric cables; connections for electric cables; markers for electric wire; mineral insulated electric cables; male connectors for electrical cables; flexible sheaths for electric cables; electricity mains (materials for -) [wires, cables]; junction sleeves for electric cables; junction boxes for electric wires; joint boxes for housing cable joints; apparatus, instruments and cables for electricity; electrical power adaptors; plug adaptors; adapter connectors (electric -); adapters for connecting telephones to hearing aids; travel adaptors for electric plugs’, and, on the other hand, the goods in Class 18: ‘rucksacks; small backpacks; bags for climbers’;

– order EUIPO and the ‘other party to the proceedings before the Board of Appeal’ to pay the costs of the proceedings.

14 As a preliminary point, it should be noted that the present action seeks the annulment of the contested decision only in so far as that decision did not uphold the opposition for the goods designated by the mark applied for, in Classes 9 and 18, listed in paragraph 12 above, (‘the contested goods’).

15 In support of its claim for annulment of the contested decision, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It considers, in essence, that there is a likelihood of confusion between the marks at issue as regards the contested goods, which are similar to the goods designated by the earlier mark, in Class 9.

17 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, an 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 mark.

18 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, 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).

19 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. 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).

20 As a preliminary point, in paragraph 19 of the contested decision, the Board of Appeal found that the relevant public in respect of which the assessment of the likelihood of confusion between the marks at issue should be made consists of both the general public and professionals active in the technical field conducting research concerning batteries or chargers. That assessment, which is not disputed by the parties, is free from error and must be confirmed.

21 Furthermore, the assessment of the Board of Appeal in paragraph 20 of the contested decision that the marks at issue are identical must be confirmed, as that assessment has not been disputed by the parties and is free from error.

22 Next, it is necessary to examine whether the Board of Appeal was entitled to find that the contested goods and the goods designated by the earlier mark, in Class 9, are not similar and, therefore, that one of the conditions set out in Article 8(1)(b) of Regulation No 207/2009 is not satisfied.

The similarity between the contested goods in Class 9 and the goods designated by the earlier mark in the same class

23 According to settled case-law, in assessing the similarity of the goods or services at issue, 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 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 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

24 In paragraphs 11 to 13 of the contested decision, the Board of Appeal found, in essence, that the contested goods in Class 9 and the goods in the same class designated by the earlier mark are not similar. First, it found that the fact that the contested goods, such as cables, can be used with electronic devices designated by the earlier mark in Class 9, such as computers, was insufficient to make them complementary, as cables are not specifically intended to be used with computers. Secondly, it noted, in essence, that various goods are offered on the retail market for electrical equipment and that the relevant public is aware that those goods come from a large number of independent undertakings.

25 The applicant submits, in essence, that the contested goods in Class 9 and the goods in the same class designated by the earlier mark are similar in that they have the same nature and end-users, they all come within the wider category of ‘electronic devices, accessories thereto and parts thereof’ and they have the same distribution channels, the same usual commercial origin and a complementary function.

27 As regards the applicant’s argument that the contested goods in Class 9 are similar to the goods in the same class designated by the earlier mark, in that they all come within the broader category of ‘electronic devices, accessories thereto and parts thereof’, it is sufficient to note that the contested goods in Class 9 do not constitute electronic devices but rather are accessories and spare parts which have a different nature and purpose to that of electronic devices. The fact that electronic devices and their accessories or spare parts belong to the wider category of ‘electronic devices, accessories thereto and parts thereof’, even if proven, cannot call such a conclusion into question (see, to that effect and by analogy, judgment of 3 October 2012, Yilmaz v OHIM – Tequila Cuervo (TEQUILA MATADOR HECHO EN MEXICO), T‑584/10, EU:T:2012:518, paragraph 54).

28 The applicant adds that the goods at issue have the same nature, since they are composed of identical or very similar materials. However, the fact that the goods at issue may be composed of the same materials, albeit extremely varied, is not sufficient, in itself, to establish a similarity between those goods, given the wide variety of goods which can be made of the same materials. The same material can be used to manufacture a wide range of totally different goods (see, to that effect and by analogy, judgments of 2 July 2015, BH Stores v OHIM — Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 58, and of 14 June 2016, Staatliche Porzellan-Manufaktur Meissen v EUIPO — Meissen Keramik (MEISSEN), T‑789/14, not published, EU:T:2016:349, paragraph 50).

29 In the light of the foregoing, the applicant is not justified in claiming that the goods at issue have the same nature.

30 The applicant submits that the contested goods in Class 9 use the same distribution channels as the goods in the same class designated by the earlier mark. Therefore, according to the applicant, the Board of Appeal erred in finding, in paragraph 13 of the contested decision, that the reference to the identity of the distribution channels was without merit.

31 It should be noted that the Board of Appeal did not find, in paragraph 13 of the contested decision, that the identity of the distribution channels was without merit. First, it noted that the goods at issue could be sold in the same electrical equipment retail shops. Secondly, the Board of Appeal concluded that that fact did not establish a similarity between the goods at issue.

32 That assessment, which is challenged by the applicant, is free from error. The distribution channel is only one of the factors which must be taken into account for the purposes of assessing the similarity between the goods at issue (see paragraph 23 above). The fact that the contested goods in Class 9 and the goods in the same class designated by the earlier mark share the same distribution channels does not therefore support the conclusion that there is a similarity between those goods.

33 The applicant submits that the goods at issue have the same usual commercial origin. In that regard, it argues that the finding, in paragraph 13 of the contested decision, that the relevant public is aware that goods sold in electrical equipment retail shops come from a large number of independent undertakings and, therefore, do not have the same commercial origin is not supported by any evidence in the administrative file.

35 In paragraph 13 of the contested decision, the Board of Appeal stated that electrical equipment retail shops offer a wide range of goods and that the relevant public is aware that the goods come from a large number of independent undertakings.

36 As EUIPO contends, the Board of Appeal therefore based its decision, in essence, on well-known facts, namely facts which are likely to be known by everyone or which may be learnt from generally accessible sources.

37 Consequently, it is necessary to examine whether the arguments relied on by the applicant are capable of calling into question the validity of the Board of Appeal’s assessment, referred to in paragraph 35 above.

38 In the present case, the applicant submits that the leading producers of electronic devices usually sell peripheral devices and accessories for such appliances. In that regard, it refers to the example of the company, Apple, which sells ‘laptops’, ‘monitors’ and ‘mobile phones’, but also ‘electrical cables’, ‘cable connectors’ and ‘plug adaptors’. In addition, it submits that consumers buying a ‘camcorder’ expect that that device should have the same commercial origin as the ‘connection cables’ which allow that device to be connected to a ‘television’.

39 As a preliminary point, it should be noted, first, that the applicant’s argument concerning the usual commercial origin of the goods at issue is itself based on well-known facts. Secondly, the applicant provides arguments only in respect of ‘electrical cables’, ‘cable connectors’, ‘connection cables’ and ‘plug adaptors’, designated by the mark applied for. It is therefore only with respect to the abovementioned goods that the merits of the applicant’s arguments should be assessed.

40 In that regard, it must be observed, as the applicant submits, that certain electronic devices, such as, inter alia, ‘laptops’, ‘monitors’ and ‘mobile phones’ can be marketed under the same trade mark with accessories such as ‘electrical cables’, including ‘connection cables’, ‘cable connectors’ and ‘plug adaptors’, designated by the mark applied for. That fact is, moreover, recognised by EUIPO, which, in paragraph 30 of its response, argues, in essence, that cables and other equipment normally form an integral part of electronic devices, such as smartphones, and that they are included in the sales price of those devices.

41 It cannot therefore be ruled out that at least part of the general public will form the view that the abovementioned goods, sold in the same shops and under the same trade mark, are produced by the same undertaking.

42 It is therefore necessary to reject EUIPO’s contention, which is, moreover, unsubstantiated, that, in essence, ‘laptops’, ‘monitors’, ‘telephones’ and ‘camcorders’, designated by the earlier mark, are generally manufactured by specialist undertakings, separate from those manufacturing ‘electrical cables’, ‘cable connectors’, ‘connection cables’ and ‘plug adaptors’, designated by the mark applied for.

43 In addition, it is necessary to reject EUIPO’s contention that the relevant public does not have to buy the accessories referred to in paragraph 40 above separately, since they ‘normally form an integral part’ of electrical devices and are included in their price, this being a contention which is unsubstantiated and which, in any event, does not preclude some of the manufacturers of electronic devices marketing electronic devices and compatible accessories both separately and together.

44 It is also necessary to reject EUIPO’s argument that the cases concerning well-known trade marks are of marginal relevance and cannot invalidate the finding that, as a general rule, the goods at issue are manufactured by separate, specialist undertakings. In support of that argument, EUIPO relies on the judgment of 2 July 2015, ALEX (T‑657/13, EU:T:2015:449), in which the Court found, first, that the activity toys manufactured by sport manufacturers, such as Adidas or Nike, were not akin to educational and developmental activity toys, but rather to promotional articles, and, second, that the manufacture of toys by sports manufacturers was of marginal relevance, since it concerned only very well-known sports brands.

45 In the present case, it has not been proved that ‘electrical cables’, ‘cable connectors’, ‘connection cables’ and ‘plug adaptors’ are promotional articles marketed by producers of electronic devices in the same way as activity toys marketed by sports manufacturers. Nor has it been established that the production of ‘electrical cables’, ‘cable connectors’, ‘connection cables’ and ‘plug adaptors’ by manufacturers of electronic devices is of marginal relevance. Therefore, the case-law relied on by EUIPO (see paragraph 44 above) cannot be transposed to the present case. Moreover, EUIPO itself conceded, in essence, that cables and other accessories are an integral part of electronic devices such as smartphones (see paragraph 40 above), which precludes the marketing of ‘electrical cables’, ‘cable connectors’, ‘connection cables’ and ‘plug adaptors’ by producers of electronic devices being of marginal relevance.

46 Lastly, EUIPO’s argument that the applicant has neither invoked nor proved the reputation of its earlier mark must be rejected, as that reputation is not determinative as regards the perception that the relevant public might have of the usual commercial origin of the goods at issue.

47 In the light of the foregoing, the Board of Appeal’s assessment that, in essence, the relevant public will believe that the goods at issue are manufactured by a large number of independent undertakings is flawed as regards the contested goods referred to in paragraph 39 above.

48 As regards the alleged complementarity of the goods at issue claimed by the applicant, it should be noted that, according to the case-law, complementary goods are those between which there is a close connection, 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 lies with the same undertaking. By definition, goods intended for different publics cannot be complementary (see, to that effect, judgments of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited, and of 23 November 2011, Monster Cable Products v OHIM — Live Nation (Music) UK (MONSTER ROCK), T‑216/10, not published, EU:T:2011:691, paragraph 25).

49 As a preliminary point, it was stated, in paragraph 20 above, that the goods designated by the marks at issue are directed at the same public, which consists, inter alia, of the general public. Thus, those goods are, in accordance with the case-law definition of the connection of complementarity referred to in paragraph 48 above, capable of being used together (see, to that effect, judgment of 9 April 2014, Comsa v OHIM – COMSA (COMSA), T‑144/12, not published, EU:T:2014:197, paragraph 66).

50 Furthermore, it must be held, as the applicant submits, that certain contested goods in Class 9 constitute essential accessories for the goods designated by the earlier mark, in that they are indispensable or important for the functioning of those goods.

51 First, the applicant submits correctly that certain goods designated by the earlier mark, such as ‘televisions’ and ‘DVD players’, cannot function without ‘electrical cables’, ‘insulated electrical cables’ and ‘connection cables’, designated by the mark applied for. ‘Electrical cables’ and ‘insulated electrical cables’ allow electricity to be supplied to the abovementioned electronic devices. ‘Connection cables’ enable sounds and images to be transmitted from ‘DVD players’ to the screens of ‘televisions’ (see, to that effect and by analogy, judgment of 23 November 2011, MONSTER ROCK, T‑216/10, not published, EU:T:2011:691, paragraph 26). Therefore, there is complementarity between ‘electrical cables’, ‘insulated electrical cables’ and ‘connection cables’, on the one hand, and ‘televisions’ and ‘DVD players’, on the other hand, with the result that consumers may think that the responsibility for the production of those goods lies with the same undertaking.

52 In the light of the foregoing, the Board of Appeal erred in finding, in paragraph 12 of the contested decision, that the cables and goods designated by the earlier mark, such as computers, are not complementary on the ground that those cables are not specifically intended for use with those goods, that criterion being, moreover, irrelevant for the purposes of characterising the existence of a close connection between the goods at issue, within the meaning of the case-law cited in paragraph 48 above.

53 The arguments put forward by EUIPO cannot invalidate the foregoing conclusion.

54 First of all, EUIPO maintains that the contested goods in Class 9 are basic electrical items which can be used as components in many sectors and for a wide variety of purposes without becoming different and distinct goods. It adds, relying on paragraph 46 of the judgment of 12 July 2012, Hand Held Products v OHIM — Orange Brand Services (DOLPHIN) (T‑361/11, not published, EU:T:2012:377), that the fact that goods of different origin can be assembled in a composite third product is not a sufficient ground for concluding that they are similar.

55 First, the reference to paragraph 46 of the judgment of 12 July 2012, DOLPHIN (T‑361/11, not published, EU:T:2012:377), is not relevant to the present case in so far as the arguments set out therein do not relate to the question of complementarity between the goods at issue in the case giving rise to that judgment.

56 Secondly, the fact that ‘electrical cables’, ‘insulated electrical cables’ and ‘connection cables’ are basic electrical items used as components in many electronic devices, which do not change depending on the electronic device in which they are incorporated, does not invalidate the finding that those goods are essential for the functioning of certain electronic devices, such as ‘televisions’ and ‘DVD players’, and, therefore, that there is a close link between those different goods.

58 Next, EUIPO submits, relying on the judgment of 27 October 2005, Éditions Albert René v OHIM – Orange (MOBILIX) (T‑336/03, EU:T:2005:379), that to acknowledge a similarity in all cases in which the mark applied for designates ‘electrical cables’ and in which the goods designated by the earlier mark may need electrical cables to be supplied with electricity, would go beyond the scope of the protection granted by the EU legislature to the proprietor of a trade mark and would lead to a situation in which the registration of a mark for ‘electrical cables’ would, in practice, be likely to exclude the registration of a subsequent mark designating electrical devices with cables.

59 In that regard, it should be noted that, in the case which gave rise to the judgment of 27 October 2005, MOBILIX (T‑336/03, EU:T:2005:379), the question arose as to whether there was a similarity between the computers designated by an earlier mark and the goods and services designated by a later mark which might require the use of those computers. In paragraph 69 of that judgment, the Court found, in essence, that such a similarity could not be accepted on the basis of the fact that the goods or services might use computers. However, the Court acknowledged that there was a similarity between the service of ‘leasing of computers and computer programs’, within Class 42, and ‘computers’ and ‘computer programs recorded on data carriers’, in Class 9, by reason of their complementarity (judgment of 27 October 2005, MOBILIX, T‑336/03, EU:T:2005:379, paragraph 70).

60 Similarly, in the present case, the mere fact that cables can be connected to electronic devices, such as ‘laptops’, ‘televisions’, ‘camcorders’ and ‘DVD players’, is not in itself sufficient to establish their similarity to those devices. However, such a similarity may exist if those goods are, inter alia, complementary, namely, if there was a close connection between them. In the present case, it is apparent from paragraph 51 above that the existence of such a close connection is characterised by the fact that ‘electrical cables’, including ‘insulated electrical cables’ and ‘connection cables’, are normally required for the proper functioning of ‘televisions’ and ‘DVD players’.

62 Secondly, the applicant claims correctly that ‘adapters for connecting telephones to hearing aids’, designated by the mark applied for, are complementary to the ‘telephones’ and ‘mobile phones’, designated by the earlier mark. Indeed, ‘telephones’ and ‘mobile phones’ are essential for the use of ‘adapters for connecting telephones to hearing aids’, as the specific function of those adapters is to connect telephones to hearing aids.

63 Thirdly, the view must be taken, as the applicant submits, that ‘plug adaptors’, ‘electrical power adaptors’ and ‘travel adaptors for electric plugs’, designated by the mark applied for are important accessories for the use of ‘laptops’ and computer peripheral devices, designated by the earlier mark. In particular, without ‘plug adaptors’, certain electronic devices, such as ‘laptops’, cannot operate in countries where the electrical current and sockets differ from those of the country where those devices were purchased. Therefore, there is complementarity between the abovementioned goods.

64 Fourthly, the applicant maintains that ‘electrical power extension cords’ and ‘sheaths for electric cables’, designated by the mark applied for, are important for the use of ‘televisions’ or ‘DVD players’ and, therefore, that there is complementarity between those goods. In that regard, it should be noted, as the applicant submits, that, in order to install ‘televisions’ and ‘DVD players’, consumers often require ‘electrical power extension cords’ to connect those electronic devices to each other or to connect them to a power socket. Therefore, it must be held that there is a close connection between ‘electrical power extension cords’, designated by the mark applied for, and the goods designated by the earlier mark, such as ‘televisions’ and ‘DVD players’ and, therefore, that there is complementarity between those goods.

65 By contrast, the connection between ‘sheaths for electric cables’ and ‘televisions’ or ‘DVD players’ does not seem sufficiently close for complementarity between those goods to be accepted.

66 Fifthly, as regards the contested goods other than ‘electrical cables’, ‘insulated electrical cables’, ‘connection cables’, ‘electrical power extension cords’ and ‘plug adaptors’, including ‘adapters for connecting telephones to hearing aids’, ‘electrical power adaptors’ and ‘travel adaptors for electric plugs’, the arguments put forward by the applicant before the Court, even if they were admissible, do not provide sufficient grounds to show that there is complementarity between those goods and the goods designated by the earlier mark in Class 9.

67 First of all, the applicant claims that the ‘computer central processing units’, designated by the earlier mark, cannot exist without ‘wire connectors [electricity]’, designated by the mark applied for, which connect those units to the motherboard. However, the applicant has neither demonstrated nor even claimed that ‘computer central processing units’ require ‘wire connectors’ in order to be connected to the motherboard of a computer. Therefore, it has not proved that there is complementarity between the ‘computer central processing units’ designated by the earlier mark and the ‘wire connectors [electricity]’ designated by the mark applied for.

68 Next, the applicant maintains that consumers need ‘cable junctions for electric cables; joint boxes for housing cable joints; heat resistant electric wires’ when they install ‘computer central processing units (processors); silicon wafers; integrated circuits’, designated by the earlier mark. However, that claim is wholly unsubstantiated and, therefore, must be rejected.

69 Finally, as regards the contested goods in Class 9 other than those referred to in paragraphs 66 to 68 above, the applicant confined itself to a general reference to the arguments which it had raised with regard to the category ‘electrical cables’ and to arguing that the generic terms of the mark applied for include products intended to be used with the goods designated by the earlier mark in Class 9.

70 That argument must be rejected, as it is too vague and general to enable the Court to identify a possible error of assessment in the findings concerning the comparison of the goods at issue in paragraphs 11 to 13 of the contested decision.

71 The conclusion in paragraph 66 above cannot be called into question by the fact that, in response to a written question from the Court, the applicant and EUIPO confirmed, first, that ‘electrical power adaptors’, ‘adapter connectors (electric-)’, ‘adapters for connecting telephones to hearing aids’ and ‘travel adaptors for electrical plugs’, designated by the mark applied for, are included in the broader category of ‘plug adaptors’, also designated by that mark, and, secondly, that ‘electrical power extension cords’, ‘enamelled electrical wires’, ‘adapter cables (electric-)’, ‘insulated electrical cables’, ‘resistance wires’, ‘thermocouple wires’, ‘metallic cables [electric]’, ‘measuring cables’, ‘heat resistant electric wires’ and ‘mineral insulated electric cables’, designated by the mark applied for, are included in the broader category of ‘electrical cables’, which is itself included in the category of ‘electricity mains (materials for -) [wires, cables]’, also designated by the mark applied for.

72 Even if the goods referred to in paragraph 71 above form part of the categories ‘electricity mains (materials for -) [wires, cables]’, ‘electrical cables’ and ‘plug adaptors’, designated by the mark applied for, that circumstance is not sufficient to demonstrate the existence of complementarity between each of the abovementioned goods and the electronic devices designated by the earlier mark.

73 In the light of the foregoing, it must be held, first of all, that the ‘electrical cables’, ‘connection cables’ and ‘plug adaptors’, designated by the mark applied for, are similar to the goods designated by the earlier mark, in Class 9, to the extent that they are aimed at the same public, share the same distribution channels, have a common usual commercial origin and are complementary (see paragraphs 20, 32, 41, 51 and 63 above). Next, ‘insulated electrical cables’, ‘plug adaptors’, ‘travel adaptors for electric plugs’, ‘adapters for connecting telephones to hearing aids’ and ‘electrical power extension cords’, designated by the mark applied for, are similar to the goods designated by the earlier mark, in Class 9, as they are intended for the same public, share the same distribution channels and are complementary (see paragraphs 20, 32, 51 and 62 to 64 above). Furthermore, ‘connection cables’ are similar to the goods designated by the earlier mark, in Class 9, in that they are intended for the same public, share the same distribution channels and may have a common usual commercial origin (see paragraphs 20, 32, and 41 above). Finally, given, first, the similarity between ‘electrical cables’, designated by the mark applied for, and electronic devices, designated by the earlier mark, in Class 9, and, secondly, the fact that ‘electrical cables’ are included in the more general category of ‘electricity mains (materials for -) [wires, cables]’, also designated by the mark applied for, it must be held that that similarity also extends to the category ‘electricity mains (materials for -) [cables]’.

74 Consequently, the Board of Appeal erred in finding, in paragraph 11 of the contested decision, that ‘electrical cables’, ‘insulated electrical cables’, ‘connection cables’, ‘cable connectors’, ‘plug adaptors’, ‘electrical power adaptors’, ‘travel adaptors for electric plugs’, ‘adapters for connecting telephones to hearing aids’, ‘electrical power extension cords’ and ‘electricity mains (materials for -) [cables]’, designated by the mark applied for, are not similar to the goods designated by the earlier mark, in Class 9.

The similarity between the contested goods in Class 18 and the goods designated by the earlier mark in Class 9

75 In paragraph 14 of the contested decision, the Board of Appeal concluded that the contested goods in Class 18, namely ‘rucksacks; small rucksacks; bags for climbers’, and ‘mobile phone straps’, designated by the earlier mark, in Class 9, were not similar.

76 That finding is not called into question by the applicant. On the other hand, the applicant disputes the rejection of its opposition relating to the contested goods in Class 18, on the ground that, according to it, those goods are similar to electronic devices, designated by the earlier mark, in Class 9. Furthermore, in reply to a written question from the Court, the applicant argued, in essence, that the contested decision is vitiated by a failure to state reasons, as the Board of Appeal did not rule on the similarity between ‘rucksacks; small rucksacks; bags for climbers’, designated by the mark applied for, and electronic devices, designated by the earlier mark, in Class 9.

77 EUIPO contends that the applicant’s arguments should be rejected. In particular, as regards the lack of reasoning for the contested decision relied on by the applicant, EUIPO submits that, before the Opposition Division and the Board of Appeal, the applicant did not seek to establish the similarity between, on the one hand, electronic devices, designated by the earlier mark, in Class 9, and, on the other hand, ‘rucksacks; small rucksacks; bags for climbers’, designated by the mark applied for, in Class 18.

78 It should be borne in mind that, pursuant to the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94(1) of Regulation 2017/1001), decisions of EUIPO must state the reasons on which they are based. Moreover, it should be added that the duty to state the reasons on which EUIPO’s decisions are based has the same meaning as that resulting from Article 296 TFEU. It is settled case-law that the statement of reasons required under Article 296 TFEU must set out clearly and unequivocally the reasoning of the body which adopted the act in question. That duty has two purposes: to allow persons concerned to ascertain the reasons for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited).

79 In the present case, first, it must be observed that, in the statement of grounds for the opposition of 29 July 2015, the applicant submitted that the goods designated by the mark applied for, in Class 18, were, to a large extent, similar to the goods designated by the earlier mark, in Class 9, as they were accessories.

80 Secondly, in the statement of grounds of appeal before the Board of Appeal of 12 April 2016, the applicant argued that companies which produce and sell electronic devices, such as mobile phones or tablets, also sell devices for carrying, bags, rucksacks and bags for climbers which can carry any type of goods. The applicant also argued that the evidence adduced proved that the contested goods and those designated by the earlier mark were similar on account of their nature, their intended purpose and their use and, were, to a certain extent, complementary or interchangeable.

81 In support of its argument, the applicant produced, as Annex 1 to the statement of grounds of appeal before the Board of Appeal of 12 April 2016, screenshots of websites which, it is argued, prove that producers of electronic devices also sell bags, rucksacks and small rucksacks designed to contain all kinds of goods.

82 Thirdly, in paragraph 5 of the contested decision, reference is made to the arguments relied on by the applicant in support of its appeal before the Board of Appeal, including the argument alleging the similarity of the contested goods, in Class 18, and those designated by the earlier mark, in Class 9. In that regard, in paragraph 5 of the contested decision, it is stated that, for the applicant, ‘the contested “rucksacks; small rucksacks; bags for climbers” are similar to the earlier “mobile phone straps”[;] they have the same purpose of carrying[;] manufacturers of phones and tablets also sell bags to protect and carry those devices[; those goods] are therefore offered by the same manufacturers’.

83 It follows from the foregoing that, contrary to what is claimed by EUIPO (see paragraph 77 above), the applicant sought to establish the similarity between, first, electronic devices, designated by the earlier mark, in Class 9, and, secondly, ‘rucksacks; small rucksacks; bags for climbers’, designated by the mark applied for, in Class 18, both before the Opposition Division and before the Board of Appeal.

84 In addition, EUIPO does not dispute the fact that the contested decision contains no finding on the possible lack of similarity between ‘rucksacks; small rucksacks; bags for climbers’ designated by the mark applied for, in Class 18, and the goods designated by the earlier mark, in Class 9, other than ‘mobile phones straps’.

86 In the light of all the foregoing considerations, it is necessary to allow the applicant’s claim and to annul the contested decision in so far as the Board of Appeal dismissed the applicant’s appeal against the decision of the Opposition Division in regard to the following contested goods: ‘electricity mains (materials for -) [cables]’, ‘electric cables’, ‘insulated electrical cables’, ‘connection cables’, ‘cable connectors’, ‘plug adaptors’, ‘electrical power adaptors’, ‘travel adaptors for electric plugs’, ‘adapters for connecting telephones to hearing aids’ and ‘electrical power extension cords’, in Class 9, and ‘rucksacks’, ‘small rucksacks’ and ‘bags for climbers’, in Class 18. The action is dismissed as to the remainder.

87 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. Pursuant to Article 134(3) of those rules, where each party succeeds on some and fails on other heads, and if it appears justified in the circumstances of the case, the Court may order that the costs be shared.

88 In the present case, as the action has been successful in part, the Court will make an equitable assessment of the circumstances of the case and hold that EUIPO should bear one third of its own costs and pay one third of the costs incurred by the applicant, and that the applicant should bear two thirds of its own costs and pay two thirds of those incurred by EUIPO.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 September 2016 (Case R 337/2016-4) in so far as it dismissed the appeal against the decision of the Opposition Division to reject the opposition to registration of the figurative sign MI as a European Union trade mark for ‘electricity mains (materials for -) [cables]’, ‘electric cables’, ‘insulated electrical cables’, ‘connection cables’, ‘cable connectors’, ‘plug adaptors’, ‘electrical power adaptors’, ‘travel adaptors for electric plugs’, ‘adapters for connecting telephones to hearing aids’ and ‘electrical power extension cords’, in Class 9, and ‘rucksacks’, ‘small rucksacks’ and ‘bags for climbers’, in Class 18;

3. Orders Xiaomi Inc. to bear two thirds of its costs and to pay two thirds of the costs incurred by EUIPO;

4. Orders EUIPO to bear one third of its costs and to pay one third of the costs incurred by Xiaomi.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Xiaomi v EUIPO - Dudingen Develops (MI) (EU trade mark - Judgment) [2019] EUECJ T-799/16 (12 March 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T79916.html Cite as: EU:T:2019:158, ECLI:EU:T:2019:158, [2019] EUECJ T-799/16

Court of Justice of the European Communities (including Court of First Instance Decisions)