JUDGMENT OF THE GENERAL COURT (First Chamber)
7 September 2016 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark VICTOR — Earlier national figurative mark victoria — Relative ground for refusal — Genuine use of the earlier mark — Nature of the use — Form differing in elements which do not alter the distinctive character — Article 15(1) and Article 42(2) and (3) of Regulation (EC) No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑204/14,
Victor International GmbH, established in Elmshorn (Germany), represented by R. Kaase and J.-C. Plate, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. García Murillo and A. Folliard-Monguiral, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, being
Gregorio Ovejero Jiménez, residing in Alicante (Spain),
and
María Luisa Cristina Becerra Guibert, residing in Alicante,
represented by M. Veiga Serrano, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 January 2014 (Case R 2208/2012-2), relating to opposition proceedings between Mr Ovejero Jiménez and Ms Becerra Guibert, and Victor International,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: A. Lamote, Administrator,
having regard to the application lodged at the Court Registry on 28 March 2014,
having regard to the response of EUIPO lodged at the Court Registry on 22 July 2014,
having regard to the response of the interveners lodged at the Court Registry on 10 July 2014,
having regard to the reply lodged at the Court Registry on 4 November 2014,
having regard to the rejoinder of the interveners lodged at the Court Registry on 22 January 2015,
further to the hearing on 26 April 2016,
gives the following
Judgment
Background to the dispute
1 On 7 July 2009, the applicant, Victor International GmbH, 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).
2 Registration as a mark was sought for the word sign VICTOR.
3 The goods and services in respect of which registration was sought are in, inter alia, Classes 25 and 35 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, inter alia, to the following description of goods and services:
– Class 25: ‘Clothing for playing sports; sports shoes for badminton, squash and/or tennis; headgear, including sports headgear; gloves, including sports gloves (included in Class 25); accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves; stockings’;
– Class 35: ‘retail services, including via the Internet and/or by means of teleshopping programmes, in relation to sports shoes for badminton, squash and/or tennis’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 36/2009 of 21 September 2009.
5 On 18 December 2009, the interveners, Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for, including in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on a number of Spanish trade marks, including the figurative mark registered on 6 February 1989 under number 1189894, duly renewed, for the following goods in Class 25: ‘Clothing, footwear (except orthopaedic), headwear, all of them included in this class and with express exclusion of tights, socks, one piece knitwear, knickers, scarves, t-shirts, hoods, skullcaps, slips, jackets, girdles, pullovers, bed jackets, trousers, nappies and, in general, all kinds of knitwear creations’, that mark, as set out below, being the only mark of relevance for the purposes of the present case:
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 Following a request by the applicant to that effect, the interveners produced various documents in order to prove genuine use within the meaning of Article 42(2) and (3) of Regulation No 207/2009 notably of the earlier mark.
9 By decision of 29 October 2012, the Opposition Division partially upheld the opposition. For reasons of procedural economy, it first examined the opposition in relation to the earlier mark, as referred to in paragraph 6 above. Having recognised that the marks at issue were visually, phonetically and conceptually similar, it concluded that there was a likelihood of confusion on the part of the public in the relevant territory, which it identified as being Spain, in regard to those goods and services covered by the mark applied for, as set out in paragraph 3 above, and regarded as being similar or identical to ‘footwear (except orthopaedic)’ in Class 25 as covered by the earlier mark, the only goods in respect of which genuine use of that mark was considered to have been established.
10 The applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 22 January 2014 (‘the contested decision’) the Second Board of Appeal of EUIPO dismissed the appeal with regard to the goods referred to in paragraph 3 above. It annulled the contested decision as regards certain other goods which are not, however, relevant in the present case.
12 First, the Board of Appeal considered, as did the Opposition Division, that genuine use of the earlier mark had been proved for ‘footwear (except orthopaedic)’ in Class 25, notably on account of its use, with the consent of the interveners, by the licensee of that mark. It also considered that the distinctive character of the earlier mark as registered was not altered by the changes made to the sign as used on the market.
13 Secondly, it found that, since the earlier trade mark was a Spanish trade mark, the relevant territory was Spain and, moreover, that the relevant public in Spain was made up partly of the public at large and partly of professionals.
14 Thirdly, the Board of Appeal found that the goods in Class 25 covered by the mark applied for were partially identical and partially similar to the ‘footwear (except orthopaedic)’ in Class 25 covered by the earlier mark and, moreover, that the latter was similar, to a low degree, to the services in Class 35 covered by the mark applied for. The Board of Appeal also noted that the signs at issue were visually, phonetically and conceptually similar. Consequently, it found that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 in relation to the goods and services covered by the mark applied for, as set out in paragraph 3 above.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision in so far as the opposition was upheld;
– order EUIPO to pay the costs;
– order the interveners to pay the costs incurred in the proceedings before EUIPO.
16 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
17 The interveners contend that the Court should:
– confirm the contested decision;
– order the applicant to pay the costs.
Law
18 In support of its action, the applicant raises three pleas in law alleging, first, infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation and with Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1); secondly, infringement of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation; and, thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009.
19 The Court considers it appropriate to examine the second plea in the action first of all, since, if that plea was well founded, that would affect the lawfulness of the findings of the Board of Appeal on the genuine use of the earlier mark, given that some of the evidence it took into account concerns the use of the earlier mark in forms that differ from the form in which the earlier mark was registered.
The second plea in law: infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation
20 In the first place, the applicant submits that point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 is inapplicable in the present case in so far as that provision applies only to EU trade marks and not to national marks. In the second place, even if that provision were applicable to national marks, the applicant submits that, in the present case, the addition of a figurative element and colours alters the distinctive character of the earlier mark, as it was registered, particularly in view of its weak intrinsic distinctive character and the fact that the terms ‘victoria’ and ‘victory’ are commonly used as trade marks in the clothing, footwear and accessories sector. Therefore, the evidence in which the earlier mark appears in a form which does not correspond to that in which it was registered does not, in the applicant’s view, constitute evidence of its genuine use.
21 EUIPO and the interveners dispute the applicant’s arguments.
22 It must, in the first place, be noted in that regard that, contrary to what is claimed by the applicant, although point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 refers only to the use of the EU trade mark, it must apply by analogy to the use of a national mark, in so far as Article 42(3) of that regulation provides that paragraph 2 of that article is to apply to earlier national trade marks referred to in Article 8(2)(a) of that regulation, ‘by substituting use in the Member State in which the earlier national trade mark is protected for use in the [Union]’ (judgment of 14 July 2014, Vila Vita Hotel und Touristik v OHIM — Viavita (VIAVITA), T‑204/12, not published, EU:T:2014:646, paragraph 24). The applicant’s argument in that respect must therefore be rejected.
23 In the second place, as regards the scope of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and of Article 42(2) and (3) of that regulation, under the combined application of those provisions, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; see also judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
24 The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 is to avoid imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, and to allow its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50).
25 A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements on the basis of the intrinsic qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 31 and the case-law cited).
26 In the present case, it is necessary to examine in the light of the rules set out in paragraphs 22 to 25 above whether the differences between the sign in the form in which it was registered and the sign in the forms used on the market are such as to alter the distinctive character of the earlier mark in the form in which it was registered.
27 It must be noted in that regard that the earlier mark, as registered, is a figurative mark composed of a single word element, ‘victoria’, written in a slightly stylised font, in black (see paragraph 6 above). It is apparent from the contested decision and from the file of the proceedings before EUIPO transmitted to the Court that a large part of the evidence of genuine use of the earlier mark provided by the interveners concerns the use of that mark in forms in which the word ‘victoria’ is accompanied by a figurative element, or is written in colour, or is set within a circle and accompanied by other figurative and word elements. These forms of the earlier mark, as used on the market, are reproduced below:
28 The Board of Appeal considered, in paragraph 36 of the contested decision, that the earlier mark, in the forms used on the market as shown on invoices and catalogues, reproduced the earlier mark as registered accompanied by an additional figurative element. It stated that that figurative element could be perceived as a decorative element that reinforced the word ‘victoria’, since it reproduced a letter ‘v’ that was identical to the first letter of that word. Therefore, the fact that the word ‘victoria’, which was the only distinctive element of the earlier mark, existed also in the forms of the earlier mark in which it was used on the market was sufficient, in the opinion of the Board of Appeal, for it to consider that the distinctive character of the earlier mark, as registered, had not been altered by the addition of ornamental elements.
29 The Board of Appeal’s finding must be upheld.
30 In the first place, it should be noted that, as the Board of Appeal stated, in essence, the earlier mark derives its distinctive character from its sole element, namely the word ‘victoria’, the slightly stylised nature of the letters of that word not being sufficiently distinctive in this case to be capable of being taken into account.
31 The Court cannot accept the arguments by which the applicant sought to establish the weak distinctive character of the element ‘victoria’ making up the earlier mark, as a result of which the added elements in the forms in which it was used on the market were such as to alter its distinctive character.
32 The fact that the word ‘victoria’ is identified by Spanish consumers as a female forename does not weaken its intrinsic distinctive character for the goods covered by the earlier mark. As EUIPO correctly argues, it is apparent from the case-law that, in the same way as a term used in everyday language, a common surname may serve the trade mark function of indicating origin and therefore distinguish the products or services concerned (judgment of 16 September 2004, Nichols, C‑404/02, EU:C:2004:538, paragraph 30). Similarly, a common forename may serve as a trade mark if it is capable of indicating and distinguishing the origin of the goods and services it covers.
33 Moreover, the Court must reject the applicant’s argument that the distinctive character of the word ‘victoria’ is weakened by the fact that, like the word ‘victory’, it is commonly used as a trade mark in the clothing sector and for footwear in the territory of Spain. First, even if that assertion by the applicant is true as regards the word ‘victory’, it is irrelevant to the assessment of the distinctive character of the word ‘victoria’ which constitutes the earlier mark. Secondly, the material produced to the Board of Appeal, on which the applicant relies in that respect before this Court, consists, on the one hand, of screenshots of German and United States online sales websites, notably for clothing and footwear, and, on the other, of printed extracts from a trade mark register. Such material does not prove, as regards the former, that the word ‘victoria’ is commonly used as a trade mark in the relevant territory, namely in Spain, and therefore that the relevant Spanish public of the goods and services at issue has encountered such marks, or, as regards the latter, that such marks are actually used in Spain. The applicant’s argument cannot therefore be accepted.
34 Accordingly, in the second place, it is necessary to examine whether the elements added to the earlier mark in the forms in which it was used on the market have a distinctive or dominant character that would have altered the distinctive character of that earlier mark.
35 First, as regards the addition to the registered form of the earlier mark of a figurative element representing the letter ‘v’ set within a circle (see paragraph 27 above), it should be noted, as did the Board of Appeal in the contested decision, that that figurative element has an ancillary position in the overall impression produced by that mark and will be perceived by the relevant public as a purely decorative element, with the result that it will not be regarded by the relevant public as serving to distinguish the goods and services concerned from those of other undertakings.
36 In addition, it must be borne in mind that, where a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more readily refer to the goods in question by citing the word elements than by describing the figurative elements of that mark (see judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited).
37 It follows from this that, contrary to what is argued by the applicant, the distinctive character of the figurative element added to the earlier mark, in one of the forms in which it was used on the market, is weaker than the word ‘victoria’. Consequently, its addition to the earlier mark, as registered, cannot be considered to have altered the latter’s distinctive character.
38 Secondly, as regards the colour of the letters of the word ‘victoria’ in one of the forms in which the earlier trade mark was used on the market, it must be noted that, contrary to what is argued by the applicant, that addition is not capable of having altered the distinctive character of the earlier mark as registered. It must be observed in that regard that, according to the case-law, if no particular colour is claimed, the use of various combinations of colours does not alter the distinctive character of a mark, in so far as the letters constituting the word element of that mark stand out against the background and their arrangement and orientation within the sign and the contrast remain faithful to the earlier mark (see, to that effect, judgment of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraphs 41 and 45). In that context, the colours will be perceived by the relevant public as a purely ornamental addition.
39 In the present case, in the form used on the market, the earlier mark is composed of the single word element ‘victoria’, written in the same font as that used in the earlier mark as registered, the only difference being the colour of the letters. Thus, in the form in which the earlier mark was used on the market, the presentation and configuration of the word element ‘victoria’ remain identical to those of the earlier mark as registered. Consequently, the colour of the letters of that word element in the mark in the form used on the market will be perceived by the relevant public as nothing more than a purely ornamental addition, and will not therefore be regarded by the relevant public as serving to distinguish the goods and services concerned from those of other undertakings.
40 Lastly, the applicant has not put forward any specific argument relating to the representation of the earlier mark set within a circle (see paragraph 27 above). In any event, the considerations set out in paragraphs 35 to 39 above, relating to other forms in which the earlier trade mark was used on the market, apply equally with regard to that representation. The round shape and figurative element representing the letter ‘v’ at the centre, as well as the addition of colours, do constitute a particular configuration of the earlier mark. However, those elements will be perceived by the relevant public as nothing more than purely ornamental elements, since the word ‘victoria’, written in identical font to that used in the earlier mark as registered and set within the upper part of the circle, remains the most distinctive element in that representation of the earlier mark.
41 It follows from this that the forms of the earlier mark in which it was used on the market, as reproduced in paragraph 27 above, do not alter its distinctive character.
42 Moreover, it should be noted that, as is apparent from the file of the proceedings before EUIPO transmitted to the Court, and as the interveners emphasise without being contradicted in that respect by the applicant, the earlier mark, as registered, appears on some of the evidence of genuine use produced by them. The fact that the registered mark is sometimes used with additional elements and sometimes without can be one of the criteria from which it may be inferred that there has been no alteration of distinctive character (see, to that effect, judgment of 10 June 2010, ATLAS TRANSPORT, T‑482/08, not published, EU:T:2010:229, paragraph 36 and the case-law cited).
43 That finding cannot be called into question by the other arguments put forward by the applicant.
44 First, the applicant’s argument that the figurative element of the earlier mark in certain forms in which it was used on the market would be perceived as a synonym for the word ‘love’ is merely a claim which is not supported by any evidence proving that perception of it on the part of the relevant public in Spain. The interpretation of one of the representations of the earlier mark included in the file produced by the interveners before the Board of Appeal — that in which the figurative element is preceded by the letter ‘i’ in upper case — as meaning ‘I love victoria’ is not at all obvious for the Spanish public, and it was therefore for the applicant to produce concrete evidence to support its argument in that respect. In any event, even on the assumption that that representation of the earlier mark could be perceived by the public in Spain as referring to the English expression ‘I love victoria’, the applicant has not put forward any argument as to the conclusions to be drawn from this in the context of the assessment of the distinctive character of the earlier mark.
45 Secondly, relying on paragraph 86 of the judgment of 13 September 2007, Il Ponte Finanziaria v OHIM (C‑234/06 P, EU:C:2007:514), the applicant submits that Regulation No 207/2009 does not make it possible to extend, by means of proof of use of a registered mark, the protection enjoyed by that mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.
46 Suffice it to note in that regard that the circumstances which gave rise to the finding in paragraph 86 of the judgment of 13 September 2007, Il Ponte Finanziaria v OHIM (C‑234/06 P, EU:C:2007:514), invoked by the applicant do not apply in the present case. It is not evident from the file, and the applicant does not claim, that the forms in which the earlier mark was used on the market were registered as trade marks. Thus, the interveners could not rely in this case on the use of registered marks corresponding to the representations of the earlier mark reproduced in paragraph 27 above.
47 Furthermore, if, by that same argument, the applicant intends to complain that the interveners used the earlier mark in forms that differed from that in which it had been registered, that argument cannot succeed, since, as is apparent from the case-law referred to in paragraph 24 above, the objective of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 is precisely to allow the proprietor of a registered trade mark, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned.
48 It follows from the foregoing that the Board of Appeal was fully entitled to consider, in the contested decision, that the distinctive character of the earlier mark, as registered, had not been altered within the meaning of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 by the use which had been made of that mark on the market, and was therefore fully entitled to take into account the evidence of genuine use in which the earlier mark appeared in one of the forms reproduced in paragraph 27 above. The second plea in law must therefore be rejected.
The first plea in law: infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95
49 The applicant takes the view that the evidence provided by the interveners does not establish genuine use of the earlier mark. First, it submits that that earlier mark is used not as a trade mark but as a trade or company name or company symbol. Secondly, it maintains, in essence, that the evidence provided does not establish the use of the earlier mark for ‘footwear (except orthopaedic)’, in so far as it does not prove that the earlier mark was affixed directly to the goods or linked to them. Thus, neither the catalogues and magazine cuttings, containing only drawings or designs of shoes but no photographs, labels or packaging material, nor the invoices, in which the earlier mark is not reproduced with the goods or alongside them, could be taken into account as proof of use of the earlier mark. Lastly, the applicant adds that the catalogues are not adequate to prove genuine use of the earlier mark in so far as the interveners have not explained where and to whom they were distributed, or what circulation they had.
50 EUIPO and the interveners dispute the applicant’s arguments.
51 It is apparent from Article 42(2) of Regulation No 207/2009 that, if the applicant so requests, the proprietor of an earlier EU trade mark, or, under paragraph 3 of that article, of an earlier national trade mark, who has given notice of opposition must furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier trade mark has been put to genuine use in the European Union or in the Member State in which it is protected, in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services.
52 According to Rule 22(3) and (4) of Regulation No 2868/95, which serves to clarify the provisions of Article 42(2) and (3) of Regulation No 207/2009, proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark. The evidence is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76 of Regulation No 2868/95.
53 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 54 and the case-law cited).
54 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 55 and the case-law cited).
55 In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case, which implies a certain interdependence of the factors taken into account (judgment of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36). Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and the most coherent meaning. In the context of that analysis, it cannot be ruled out that a range of pieces of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36; see also, to that effect, judgment of 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45).
56 Lastly, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 21 November 2013, Recaro v OHIM — Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 21 and the case-law cited).
57 The Court must examine in the light of the rules cited in paragraphs 51 to 56 above whether the Board of Appeal was right to conclude, in paragraph 40 of the contested decision, that the evidence produced by the interveners was such as to prove genuine use of the earlier mark for ‘footwear (except orthopaedic)’.
58 In the present case, as is apparent from paragraph 31 of the contested decision, the interveners were called upon to demonstrate the genuine use of the earlier mark in Spain during the period from 21 September 2004 to 20 September 2009, the application for the EU trade mark having been published on 21 September 2009.
59 It is evident from that paragraph of the contested decision that, at the applicant’s request, the interveners submitted the following documents as proof of genuine use of the earlier mark:
– invoices issued from 2004 to 2009;
– delivery notes issued from 2005 to 2009;
– catalogues for summer and winter collections from 2004 to 2009;
– a leaflet in English entitled ‘We love green’, containing information regarding products covered by the earlier mark;
– press clipping containing copies of advertisements which appeared in Spanish newspapers and magazines within the relevant period;
– decisions adopted by EUIPO in opposition proceedings brought by the interveners on the basis, inter alia, of the earlier mark;
– information on the products covered by the earlier mark, from various websites;
– an invoice for advertising services.
60 As EUIPO correctly notes, the applicant did not dispute in the application either the place (Spain) or the duration or extent of the use of the earlier mark. It merely challenged the Board of Appeal’s assessment of the nature of the use of the earlier mark.
61 At the hearing, the applicant submitted that the proof of genuine use of the earlier mark produced by the interveners did not reveal any information about turnover in relation to the marketing of the goods under the earlier mark. However, as EUIPO correctly maintained, the applicant did not contest the extent of use of the earlier mark in the context of the first plea in the action. It is therefore not permitted to do so for the first time at the hearing. Contrary to what the applicant maintained at the hearing, it is not in any way apparent from paragraph 27 of the application that it had contested the extent of the use of the earlier mark at the application stage, that paragraph clearly stating that: ‘invoices can only give an indication on the place, time and extent but not on the nature of use of [an earlier] mark’. It follows from this that, at the application stage, the applicant merely invoked a complaint concerning the nature of use of the earlier mark.
62 In the first place, with regard to the applicant’s argument that the Board of Appeal took into account, wrongly, the evidence that the sign corresponding to the earlier mark was not used as a trade mark but as a trade or company name or company symbol, it must first of all be noted that it is apparent from paragraph 32 of the contested decision that the earlier mark is licensed by the interveners to CNM, SL. Thus, some of the pieces of evidence produced by the interveners were issued by that company during the relevant period and contain the name of that company, together with its contact details. The earlier mark, in the forms in which it was used on the market, appears in the top right-hand corner of the invoices, delivery notes and catalogues, while the company name of CNM appears in the top left-hand corner. Given that CNM’s company name does not correspond to the earlier mark, and appears on the invoices, delivery notes and in the catalogues alongside the earlier mark, it is evident, as EUIPO in essence submits, that the sign corresponding to the earlier mark is not being used there as a company name, trade name or company symbol.
63 Furthermore, that same sign, at the top of the invoices, delivery notes and in the catalogues, is not accompanied by an address or form of incorporation, which indicates instead that it was not used as a company name, trade name or company symbol.
64 Lastly, it must be noted that the proprietors of the earlier mark are natural persons, so that, as the interveners rightly note, the earlier mark appearing on the proof of use cannot correspond to the company name of the proprietors of that mark.
65 It follows from the foregoing that the earlier mark does not correspond to a company name. Thus, the use of the earlier mark on the invoices, catalogues or other evidence cannot be regarded as use of the sign as a company name but as use as a trade mark. The applicant’s complaint must therefore be rejected.
66 In the second place, the applicant maintains, in essence, that those pieces of evidence on which the earlier mark does not appear, either on the goods themselves or in association with those goods, are not capable of proving use of the earlier mark for those goods.
67 The Board of Appeal found, in paragraphs 33, 38 and 39 of the contested decision, that the products included in the catalogues were identified by codes, by descriptions and by colours that corresponded to those used in the invoices submitted by the interveners, which established a sufficient link between the earlier mark and those products; it therefore found that that evidence proved genuine use for ‘footwear (except orthopaedic)’.
68 That finding is not vitiated by an error and must be upheld. Nor, moreover, can it be called into question by the arguments put forward by the applicant.
69 First, the fact that the earlier mark is not directly affixed to all the shoes presented in the catalogues does not prove that those catalogues are entirely irrelevant for the purposes of proving genuine use of that mark. In accordance with the case-law referred to in paragraph 54 above, in assessing the genuine use of a mark, it is necessary to take account, in particular, of use viewed as being warranted in the economic sector concerned and of the nature of the goods in question. As the interveners rightly argue, without being contradicted in that regard by the applicant, it is common in the footwear sector for the trade mark to be affixed to the sole of a shoe or inside it. Consequently, it is natural that the earlier mark should not be visible on certain photographs in the catalogues, even though it is said to be affixed to the product.
70 In any event, it must be borne in mind that, according to settled case-law, a connection between the use of the mark and the goods concerned can be established without it being necessary for the mark to be affixed on the goods (see, to that effect, judgments of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23, and of 6 March 2014, ANNAPURNA, T‑71/13, not published, EU:T:2014:105, paragraphs 44 and 60). In this instance, the presence of the earlier mark on invoices, catalogues, advertisements relating to the goods concerned, and press articles in which, moreover, it appears inter alia on labels sewn onto the shoes, enables such a link to be established.
71 Secondly, as noted in paragraph 62 above, the earlier mark, in the forms in which it is used on the market, is included in the top right-hand corner of the invoices. Contrary to what is claimed by the applicant, it cannot be concluded that the invoices are entirely irrelevant on the ground that, in those invoices, the earlier mark is not shown alongside the name of each of the products concerned. The purpose of the invoices is to itemise the goods sold, so that the name of the item concerned must appear on the invoice, possibly together with a reference (judgment of 16 September 2013, Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), T‑200/10, not published, EU:T:2013:467, paragraph 43) which, as in the present case, may correspond to the code enabling that item to be identified. In the present case, it is possible to establish a link between the invoices and the catalogues produced by the interveners, since they contain the same names and the same product codes, as the Board of Appeal correctly pointed out in paragraph 39 of the contested decision.
72 Furthermore, according to the case-law, even invoices on which the earlier mark is not referred to are not entirely irrelevant for the purposes of proving genuine use of that mark, notably where other evidence confirms that, at that time, the goods on those invoices were marketed with a reference to that mark (judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraphs 65 and 66). A fortiori, the invoices which included the earlier mark, albeit not alongside the name of the products concerned, cannot be dismissed as being entirely irrelevant, when joint analysis of the evidence produced by the interveners enables a link to be established between that mark and those products (see paragraph 71 above).
73 Accordingly, the applicant’s complaint cannot be upheld.
74 In the third place, the applicant submits that the interveners did not provide any explanation as to where or to whom the catalogues had been distributed or what circulation they had. It is true that the mere production of promotional material, such as catalogues, is not sufficient to establish genuine use of a trade mark. It must also be demonstrated that that publicity material, regardless of its nature, has been sufficiently distributed to the relevant public to establish the genuine nature of the use of the trade mark at issue (see, to that effect, judgment of 8 March 2012, Arrieta D. Gross v OHIM — International Biocentric Foundation and Others (BIODANZA), T‑298/10, not published, EU:T:2012:113, paragraph 68). However, as is apparent from the case-law referred to in paragraph 55 above, in the context of an assessment of the evidence of the genuine use of a mark, each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. Thus, even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of that mark is genuine. That is also the case, for example, where that evidence corroborates the other relevant factors of the present case (see, to that effect, judgment of 6 March 2014, ANNAPURNA, T‑71/13, not published, EU:T:2014:105, paragraph 45).
75 In the present case, as is apparent from paragraph 59 above, the catalogues constitute just some of the evidence provided by the interveners for the purpose of proving genuine use of the earlier mark. As stated in paragraph 71 above, they contain images of the goods, identified by codes, descriptions and colours which correspond to those used in the invoices also produced by the interveners. It follows from this that the catalogues could in this instance legitimately be taken into account by the Board of Appeal in the context of the overall assessment of the evidence of genuine use of the earlier mark produced by the interveners.
76 It follows from the foregoing that the Board of Appeal did not err in taking the view that the evidence produced by the interveners, considered globally, demonstrated the genuine use of the earlier mark for ‘footwear (except orthopaedic)’ during the relevant period in the territory of Spain. The first plea in law must accordingly be rejected.
The third plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
77 The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue. To that end, it argues that there is no similarity between the goods and services concerned, or between the signs at issue, and claims that the earlier mark has a weak distinctive character.
78 EUIPO and the interveners dispute the applicant’s arguments.
79 It should be noted that 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 must not 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 trade mark.
80 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 the 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).
81 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).
The relevant public
82 In the present case, the Board of Appeal found, in paragraph 50 of the contested decision, that the relevant territory in respect of which a likelihood of confusion had to be assessed was Spain, since the earlier trade mark was a Spanish trade mark. It also noted that, as regards the goods in Class 25 and the retail services in Class 35, the relevant public was composed of the public at large, namely average consumers who are reasonably well informed, observant and circumspect, and whose level of attention is average. That finding by the Board of Appeal, which is not, moreover, disputed by the applicant, is not vitiated by an error and must be upheld.
The comparison of the goods and services
83 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, 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).
– The goods in Class 25
84 In the first place, the applicant complains that the Board of Appeal did not, in the contested decision, compare the ‘footwear (except orthopaedic)’ covered by the earlier mark to each of the goods covered by the mark applied for.
85 It must be noted in that regard that the Board of Appeal considered, in paragraph 53 of the contested decision, that the Opposition Division had correctly concluded that the goods covered by the marks at issue, falling within Class 25, were partially identical and partially similar for the reasons set out in its decision. Thus, the Board of Appeal confirmed the findings and the reasons put forward in that respect by the Opposition Division. Having regard to the continuity in terms of functions between the Opposition Divisions and the Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 attests, the decision of the Opposition Division, together with its statement of reasons, form part of the context in which the contested decision was adopted, which is known to the applicant and enables the EU judicature to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, judgments of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64 and the case-law cited, and of 16 September 2009, JanSport Apparel v OHIM (BUILT TO RESIST), T‑80/07, not published, EU:T:2009:332, paragraph 25).
86 As is apparent from paragraph 9 of the contested decision, the Opposition Division put forward grounds concerning the comparison of the ‘footwear (except orthopaedic)’ covered by the earlier mark with, first, ‘sports shoes for badminton, squash and/or tennis’; secondly, ‘clothing for playing sports; headgear, including sports headgear; gloves, including sports gloves’ and ‘accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves’; and, thirdly, the ‘stockings’ covered by the trade mark applied for.
87 It follows from this that the statement of reasons put forward entailed a comparison of the goods in Class 25 covered by the earlier mark with the various products or product groups in Class 25 covered by the mark applied for. The applicant’s complaint is therefore unfounded. Furthermore, the applicant has not put forward any argument challenging the division into three groups, by the Opposition Division, of the goods in Class 25 covered by the mark applied for, for the purposes of their comparison with the goods in the same class covered by the earlier mark.
88 In the second place, the applicant submits that the goods covered by the marks at issue differ in their nature and in their intended purpose, and that the footwear covered by the earlier mark does not have the same distribution channels as the sports footwear, clothing and accessories covered by the mark applied for.
89 EUIPO and the interveners dispute the applicant’s arguments.
90 First, as regards the ‘sports shoes for badminton, squash and/or tennis’ covered by the mark applied for, the Board of Appeal concluded, endorsing the findings of the Opposition Division, that those goods were identical to the ‘footwear (except orthopaedic)’ covered by the earlier mark.
91 The applicant maintains that the goods are different. They do not have the same distribution channels, since ‘sports shoes for badminton, squash and/or tennis’ are sold in specialist shops or sports departments in department stores, whereas ‘footwear (except orthopaedic)’ is sold in shoe shops. Moreover, the goods also serve a different ‘purpose’, since sports shoes are designed to support the foot and reduce the risk of injury, whereas the footwear covered by the earlier mark is intended to be used outside.
92 It must be borne in mind that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
93 In the present case, the ‘sports shoes for badminton, squash and/or tennis’ in Class 25 covered by the mark applied for fall into the broader category of ‘footwear (except orthopaedic)’ in the same class covered by the earlier mark.
94 Furthermore, contrary to what is claimed by the applicant, the ‘sports shoes for badminton, squash and/or tennis’ covered by the mark applied for are not sold exclusively in specialist sports shops but can also be offered for sale in the same commercial establishments as those selling ‘footwear (except orthopaedic)’, including in shoe shops, department stores or supermarkets.
95 Consequently, the Board of Appeal correctly concluded in the contested decision, confirming the findings of the Opposition Division, that those goods were identical.
96 Secondly, with regard to ‘clothing for playing sports; headgear, including sports headgear; gloves, including sports gloves (included in Class 25); accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves’ and ‘stockings’, the Board of Appeal considered, thereby confirming the findings of the Opposition Division, that they were similar to the ‘footwear (except orthopaedic)’ covered by the earlier mark. That finding is not vitiated by an error and must, therefore, be upheld.
97 The goods covered by the marks at issue may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the relevant consumer (see, to that effect, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 49).
98 Thus, ‘footwear (except orthopaedic)’, which includes sports shoes, is a clothing product and accordingly similar to the goods included in the category of ‘clothing for playing sports; headgear, including sports headgear; gloves, including sports gloves (included in Class 25)’ and ‘stockings’. While it is true that shoes clothe the feet, whereas the goods covered by the mark applied for clothe other parts of the human body, the goods nevertheless have a similar purpose, given that they are manufactured to cover the human body, to hide it, protect it and adorn it. Moreover, the goods are marketed in the same sales outlets and are often designed and manufactured by the same undertakings (see, to that effect, judgments of 10 September 2008, Tsakiris-Mallas v OHIM — Late Editions (exē), T‑96/06, not published, EU:T:2008:330, paragraphs 29 and 30, and of 16 December 2009, Giordano Enterprises v OHIM — Dias Magalhães & Filhos (GIORDANO), T‑483/08, not published, EU:T:2009:515, paragraphs 20 and 21 and the case-law cited).
99 The same applies to the other goods covered by the mark applied for within Class 25, that is to say, ‘accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves’. Those goods must also be considered to be clothing products. Like the ‘footwear (except orthopaedic)’ covered by the earlier mark, they have an aesthetic function by contributing to the external image (‘look’) of the relevant consumer, which may involve coordination of the various components at the design stage or when they are purchased. Furthermore, they are often sold in the same sales outlets, whether specialist or not, like superstores, which helps to facilitate the perception of a connection between those goods and to strengthen the impression that the same undertaking is responsible for manufacturing those goods (see, to that effect and by analogy, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraphs 49 to 51).
100 It follows from paragraphs 97 to 99 above that the relevant public will perceive a connection between the goods in Class 25 covered by the marks at issue and will think that the same undertaking is responsible for manufacturing those goods. Accordingly, the Board of Appeal correctly concluded in the contested decision that those goods were partially identical and partially similar.
– The comparison of the goods in Class 25 and the services in Class 35
101 The applicant submits that the ‘retail services, including via the Internet and/or by means of teleshopping programmes, in relation to sports shoes for badminton, squash and/or tennis’ in Class 35 covered by the mark applied for relate to specific goods, namely sports shoes, and are therefore not similar to the ‘footwear (except orthopaedic)’ in Class 25 covered by the earlier mark. Furthermore, it argues that the goods and services are not similar as they are different in nature, the former being tangible whereas the latter are intangible.
102 EUIPO and the interveners dispute the applicant’s arguments.
103 In the present case, the Board of Appeal concluded, in paragraph 56 of the contested decision, that the services and goods at issue were similar. In accordance with the case-law referred to in paragraph 85 above, it must also be found that, by confirming the decision of the Opposition Division on that point, the Board of Appeal endorsed the grounds put forward by the Opposition Division, according to which, notwithstanding the fact that the nature, purpose and method of use of those goods and services are not the same, they do have some similarities as they are complementary, the services being generally offered in the same places as those in which the goods are offered for sale and targeting the same public.
104 That finding is not vitiated by an error and must, therefore, be upheld.
105 First, it should be noted in that regard that the principles applicable to the comparison of the goods also apply to the comparison between the goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that the services may have the same purpose or use as the goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (judgment of 27 October 2005, Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 66). Consequently, the applicant’s argument that the goods covered by the earlier mark cannot be similar to the services covered by the mark applied for, owing to their difference in nature, must be rejected.
106 Secondly, it is apparent from the case-law that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). In addition, according to the case-law, there is a similarity between goods and the retail services which relate to those goods (see judgment of 5 July 2012, Comercial Losan v OHIM — McDonald’s International Property (Mc. Baby), T‑466/09, not published, EU:T:2012:346, paragraph 24 and the case-law cited).
107 In the present case, as EUIPO correctly argues, the ‘retail services, including via the Internet and/or by means of teleshopping programmes’ covered by the mark applied for are intended inter alia to offer on the market, as goods, ‘sports shoes for badminton, squash and/or tennis’, which are identical to the ‘footwear (except orthopaedic)’ covered by the earlier mark, as is evident from paragraph 95 above.
108 It must therefore be stated that the relationship between the retail services and the goods covered by the earlier trade mark is close in the sense that the goods are indispensable to, or, at the very least, important for the development of those services, which are specifically provided when those goods are sold. The objective of retail trade is the sale of goods to consumers. That trade 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. That activity 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 abovementioned transaction with the trader in question rather than with a competitor (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraph 34). Thus, retail services provided with the aim of selling certain goods would make no sense without those goods (judgment of 24 September 2008, Oakley v OHIM — Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 54).
109 Moreover, the relationship between the goods covered by the earlier trade mark and the services provided in connection with retail trade in respect of goods identical to those covered by the earlier trade mark is also characterised by the fact that those services play an important role in the consumer’s choice when he comes to buy the goods covered by the earlier mark (see, to that effect, judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraph 55).
110 Lastly, retail services are generally offered in the same places as those in which the goods to which they relate are offered for sale (see, to that effect, judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraph 48).
111 Thus, it is indisputable that the services provided in connection with retail trade in respect of goods identical to the goods covered by the earlier trade mark and the latter goods display similarities, having regard to the fact that they are complementary and generally have the same distribution channels.
112 Consequently, the Court cannot accept the applicant’s argument, based as it is, moreover, on the false premiss that the goods to which the services covered by the mark applied for relate are not similar to the goods in Class 25 covered by the earlier mark.
113 It follows from the foregoing that the goods and services at issue are partially identical and partially similar, and therefore the findings of the Board of Appeal set out in paragraphs 53 and 56 of the contested decision must be upheld.
The comparison of the signs
114 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
115 It must be noted, in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46). It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
116 In the present case, the marks to be compared are the word sign applied for, VICTOR, and the earlier figurative sign, consisting of a single word element, ‘victoria’, written in slightly stylised lettering.
– The visual similarity
117 The applicant submits that, by disregarding the principle that an assessment of the visual similarity of the marks at issue should be based on the overall impression given by them, the Board of Appeal essentially based its conclusion on the fact that the signs at issue had the first six letters in common, whereas, according to the applicant, the presence of the letters ‘i’ and ‘a’ in the final part of the earlier mark produces a different visual impression from that produced by the mark applied for.
118 EUIPO and the interveners dispute the applicant’s arguments.
119 The Board of Appeal found, in paragraph 63 of the contested decision, that the signs at issue were highly similar visually, taking into account the fact that the single word of which the mark applied for consists was fully included in the earlier mark, so that they had six letters in common, and that the figurative nature of the earlier mark was exclusively due to a slight stylisation of the letters of the word element making up that mark.
120 That finding by the Board of Appeal must be upheld. The six letters which the sign applied for comprises — ‘v’, ‘i’, ‘c’, ‘t’, ‘o’ and ‘r’ — are the same as the first six letters of the earlier mark. Contrary to what is argued by the applicant, the presence of the letters ‘i’ and ‘a’ in the final part of the earlier mark is not sufficient to rule out that visual similarity, since the six letters common to both marks are at the beginning of the earlier mark and are thus liable to have a greater impact on the relevant public, with the result that it will pay less attention to the letters ‘i’ and ‘a’ at the end. As is apparent from the case-law, the public generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited).
121 In addition, it is evident from the case-law that the fact that one of the signs at issue is fully included in the other reinforces the visual similarity of those signs (see, to that effect, judgment of 15 June 2011, Graf-Syteco v OHIM — Teco Electric & Machinery (SYTECO), T‑229/10, not published, EU:T:2011:273, paragraph 34).
122 Therefore, the Board of Appeal correctly found that the signs at issue were highly similar visually.
– The phonetic similarity
123 The Board of Appeal stated, in paragraph 64 of the contested decision, that the marks at issue were phonetically similar to an average degree since, although they had the same first six letters, the presence of the letters ‘i’ and ‘a’ at the end of the earlier mark introduced a different syllabic structure and a longer pronunciation in comparison to that of the mark applied for.
124 That finding must be upheld and is not called into question by the applicant’s argument that the marks at issue give a different phonetic impression as the mark applied for consists of two syllables, ‘vic’ and ‘tor’, the second of which will be stressed by the relevant public, whereas the earlier mark consists of three syllables, ‘vic’, ‘to’ and ‘ria’, with the stress being placed on the third syllable.
125 It should be borne in mind that, according to the case-law, the fact that the number of syllables of the signs at issue is different is not sufficient to rule out any phonetic similarity between the signs, since that has to be assessed on the basis of the overall impression produced by their full pronunciation (judgments of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 48; of 28 October 2010, Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 39; and of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 50).
126 Moreover, as is apparent from the case-law, signs are phonetically similar when one of the marks is fully included in the other (see, to that effect, judgment of 2 February 2012, Almunia Textil v OHIM — FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited).
127 In the present case, even if the syllabic structure of the marks at issue differs because of the presence of three syllables in the mark applied for and two syllables in the earlier mark, the overall phonetic impression given by the signs at issue is similar, as the Board of Appeal correctly noted, in so far as the beginning of the earlier mark, to which consumers generally pay more attention, and the mark applied for will be pronounced in the same way.
128 Accordingly, the Board of Appeal correctly concluded in the contested decision that the signs at issue were phonetically similar to an average degree.
– The conceptual similarity
129 The Board of Appeal stated, in paragraph 65 of the contested decision, that the marks were conceptually similar, as the relevant public would perceive the words ‘victor’ and ‘victoria’ as the male and female versions of the same forename.
130 The applicant takes the view that the marks are not conceptually similar, given that the earlier mark can be construed not only as being the female version of the male forename Victor, constituting the mark applied for, as the Board of Appeal observed, but also as describing the Victorian era or a special clothing style relating to that era, or as the Spanish word for ‘victory’. It is clear from those arguments that, contrary to what was stated by EUIPO at the hearing, the applicant had already claimed in its written submissions before the Court that the signs at issue were conceptually different. The plea of inadmissibility which EUIPO put forward at the hearing must therefore be rejected.
131 It should be noted that the applicant does not dispute that the relevant Spanish public will perceive the word element ‘victoria’, which constitutes the earlier mark, as being the female version of the male forename Victor, which constitutes the mark applied for. The fact that the earlier mark may also convey other concepts, as the applicant claims, cannot remove the conceptual similarity of the marks at issue, at least for the part of the relevant public that will understand those marks as being the male and female versions of the same forename.
132 Accordingly, the Board of Appeal correctly concluded in the contested decision that there was a conceptual similarity between the signs at issue.
133 Consequently, in view of the foregoing, the Board of Appeal did not err in finding that there are visual, phonetic and conceptual similarities between the signs at issue.
The likelihood of confusion
134 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
135 In the present case, the Board of Appeal considered, in paragraph 70 of the contested decision, that, in accordance with the principle of interdependence of the factors to be taken into account, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue with regard to the goods and services covered by the mark applied for, as referred to in paragraph 3 above.
136 The applicant submits that the lack of similarity between the goods and services, as well as between the marks at issue, prevents any likelihood of confusion in the present case and, moreover, that the distinctiveness of the earlier mark is very low. As regards the latter argument, the applicant submits that the distinctive character of forenames as trade marks is significantly reduced if they are used for fashion and clothing, and that, with regard to the other meanings of the mark applied for, noted in paragraph 130 above, that mark is descriptive of the goods covered.
137 EUIPO and the interveners dispute the applicant’s arguments.
138 It must be noted in that regard, as did the Board of Appeal, that, in the present case, in view of the principle of the interdependence of the factors to be taken into account referred to in paragraph 134 above, there is a likelihood of confusion between the marks at issue, since the relevant public is likely to believe that the goods and services come from the same undertaking or economically-linked undertakings in so far as the goods and services concerned are partially identical and partially similar, as has been stated in paragraph 113 above, and, moreover, the signs at issue are visually, phonetically and conceptually similar, as has been stated in paragraph 133 above.
139 It should also be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element), in order to distinguish its various lines from one another (women’s, men’s, youth). In such circumstances, the relevant public might regard the clothing products designated by the marks at issue as belonging to two distinct ranges of products but as coming, nonetheless, from the same undertaking (see, to that effect, judgments of 8 March 2005, Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, not published, EU:T:2005:82, paragraph 51, and of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 68 and the case-law cited). Thus the relevant public will be entitled to believe, in this instance, that the mark applied for covers the products of a men’s collection or sports collection, or services relating to such products, which come from the same undertaking as that marketing the products under the earlier mark.
140 That conclusion is not called into question by the applicant’s arguments regarding the low distinctiveness of the earlier mark.
141 As noted in paragraph 32 above and contrary to what is submitted by the applicant, marks consisting of forenames are not devoid of any distinctive character.
142 Furthermore, as regards the coexistence of the earlier mark with other marks composed of or containing the forename Victoria, suffice it to note that, even if the possibility cannot be dismissed that, in certain cases, the coexistence of earlier marks on the market could eliminate or reduce the likelihood of confusion between two conflicting marks, in the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark must nevertheless have duly demonstrated that such coexistence was based upon the absence of a likelihood of confusion on the part of the relevant public between the earlier marks upon which he relies and the earlier mark on which the opposition is based, and, moreover, the earlier marks relied on by the applicant for the trade mark and the marks at issue must be identical (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 72, and of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 60 and the case-law cited).
143 It is clear from that case-law that the applicant was obliged in this instance to demonstrate that the coexistence of the earlier marks upon which it relies with the interveners’ earlier mark was based upon the absence of a likelihood of confusion between them on the part of the relevant public. As noted in paragraph 33 above, the evidence produced by the applicant provides no information as to how the relevant public would have encountered the marks upon which the applicant relies, nor does it prove that the marks upon which it relies, consisting of or containing the forename Victoria, have actually been used on the market. It must therefore be concluded that the evidence was not sufficient to demonstrate in the present case that, as the applicant maintained, the distinctive character of the earlier mark had been weakened or diluted by the earlier mark’s coexistence with other marks consisting of or containing the word ‘victoria’.
144 In any event, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 24), it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs at issue and between the goods or services covered (see, to that effect, judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 61, and of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
145 Accordingly, the applicant’s arguments to the effect that there is no likelihood of confusion between the marks at issue on account of the weak distinctive character of the earlier mark cannot be accepted.
146 It follows from the foregoing that the Board of Appeal did not err in concluding in this case that there is a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
147 The third plea in law must therefore be rejected.
148 Since all the pleas put forward in support of the present action have been rejected, the action must be dismissed in its entirety.
Costs
149 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.
150 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the interveners.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Victor International GmbH to pay the costs.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 7 September 2016.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
The second plea in law: infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation
The first plea in law: infringement of Article 15(1) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) and (4) of Regulation No 2868/95
The third plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
The relevant public
The comparison of the goods and services
– The goods in Class 25
– The comparison of the goods in Class 25 and the services in Class 35
The comparison of the signs
– The visual similarity
– The phonetic similarity
– The conceptual similarity
The likelihood of confusion
Costs