Corte di giustizia UE n. 207/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 22 November 2018 ( * ) (EU trade mark — [OSCURATO:PERSONA] proceedings — [OSCURATO:PERSONA] registration designating the [OSCURATO:PERSONA] — Word mark [OSCURATO:PERSONA] — Earlier EU word mark [OSCURATO:PERSONA] — Relative ground for refusal — Likelihood of confusion — [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EC) No 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EU) 2017/1001)) [OSCURATO:PERSONA] T–724/17, [OSCURATO:PERSONA] LLC, established in Dover, Delaware ([OSCURATO:PERSONA]), represented by V. Perrichon, lawyer, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by P. Sipos and D. Walicka, acting as Agents, defendant, the other party to the proceedings before the [OSCURATO:PERSONA] of Appeal of EUIPO being [OSCURATO:PERSONA] GmbH, established in Mössingen (Germany), ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 14 July 2017 ([OSCURATO:PERSONA] R 285/2017-5), relating to opposition proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA], [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of V. Tomljenović, [OSCURATO:PERSONA], E. Bieliūnas and A. [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 17 October 2017, having regard to the response lodged at the [OSCURATO:PERSONA] on 1 February 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 [OSCURATO:PERSONA] 106(3) of the Rules of Procedure of the [OSCURATO:PERSONA], gives the following [OSCURATO:PERSONA] to the dispute 1 On 27 September 2013, the applicant, [OSCURATO:PERSONA] LLC, obtained, from the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] (WIPO), the international registration No 1181484 designating the [OSCURATO:PERSONA] (‘the international registration’). That registration was notified to the [OSCURATO:PERSONA] (EUIPO), pursuant to [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended (replaced by [OSCURATO:PERSONA] (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA] of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1)). 2 The international registration for which protection was sought is the word sign [OSCURATO:PERSONA]. 3 The goods in respect of which protection was applied for are in Classes 18 and 25 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] 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 18: ‘Backpacks; beach bags; card wallets; clutch bags; clutch purses; cosmetic bags sold empty; cosmetic cases sold empty; handbags; key bags; key cases; key wallets; luggage; purses; sport bags; tote bags; travel bags; travel cases; umbrellas; wallets; trunks; document cases; briefcases; attaché cases; shopping bags; animal carrier bags’; –        Class 25: ‘Clothing, namely, sweaters, t-shirts, shirts, blouses, corsets, suits, vests, raincoats, skirts, coats, trousers, pullovers, dresses, jackets, shawls, sashes for wear, scarves, neckties, pocket squares, suspenders, gloves, belts, stockings, tights, socks, singlets, bathing suits and bath robes; footwear; headwear’. 4 On 12 August 2014 [OSCURATO:PERSONA] GmbH filed a notice of opposition, pursuant to [OSCURATO:PERSONA] 41 of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 46 of [OSCURATO:PERSONA] 2017/1001), to the international registration in respect of all the goods referred to in paragraph 3 above. 5 The opposition was based inter alia on the EU word mark No 4685021, [OSCURATO:PERSONA], registered on 9 October 2006 (‘the earlier mark’), designating goods in Class 25 and corresponding to the following description: ‘Clothing, in particular underwear; footwear, headgear; belts for clothing’. 6 The ground relied on in support of the opposition was that set out in [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 2017/1001 )). 7 On 8 December 2016 the [OSCURATO:PERSONA] upheld the opposition in part. In particular, the [OSCURATO:PERSONA] found that the evidence submitted by [OSCURATO:PERSONA] showed genuine use of the earlier mark only for ‘underwear’ in Class 25. Next, it found that the goods in Class 18 and ‘footwear; headwear’ in Class 25 designated by the international registration were different from items of ‘underwear’ for which genuine use of the earlier mark had been established. On the other hand, the remaining goods in Class 25 covered by the international registration were considered to be identical or similar to items of ‘underwear’. 8 Considering that the earlier mark and the international registration were similar overall to an average degree, the [OSCURATO:PERSONA] concluded that there was a likelihood of confusion with regard to the goods deemed to be identical or similar, specifically ‘Clothing, namely, sweaters, t-shirts, shirts, blouses, corsets, suits, vests, raincoats, skirts, coats, trousers, pullovers, dresses, jackets, shawls, sashes for wear, scarves, neckties, pocket squares, suspenders, gloves, belts, stockings, tights, socks, singlets, bathing suits and bath robes’ in Class 25. [OSCURATO:PERSONA] therefore upheld the opposition to the international registration in part, in so far as it concerned those goods. 9 On 7 February 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009 (now Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001), against the decision of the [OSCURATO:PERSONA], requesting that that decision be annulled in so far as it had upheld the opposition. 10 By decision of 14 July 2017 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal, upholding the grounds relied on by the [OSCURATO:PERSONA]. Forms of order sought 11 The applicant claims that the [OSCURATO:PERSONA] should: –        uphold the action and annul the contested decision; –        order [OSCURATO:PERSONA] to pay the costs incurred by the applicant before the [OSCURATO:PERSONA] and before EUIPO. 12 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the action in its entirety; –        order the applicant to pay the costs incurred by EUIPO. [OSCURATO:PERSONA] matter of the dispute 13 EUIPO submits that, after the adoption of the contested decision, the applicant restricted the list of goods in Class 25 covered by the international registration; it states however that that restriction does not alter the subject matter of the dispute and should, therefore, be taken into account for the purposes of the resolution of that dispute. 14 The applicant does not mention such a restriction in its application. 15 In principle, a restriction made to the list of goods or services contained in a trade mark application after the adoption of the decision of the [OSCURATO:PERSONA] of Appeal challenged before the [OSCURATO:PERSONA] cannot affect the legality of that decision, which is the only decision being challenged before the [OSCURATO:PERSONA] (see, by analogy, judgment of 9 July 2008, Reber v OHIM — [OSCURATO:PERSONA] & Sprüngli (Mozart) , T‑304/06, EU:T:2008:268, paragraph 25 and the case-law cited). 16 Therefore such a restriction, if it exists, cannot have an effect on the legality of the contested decision. Substance 17 The applicant relies, in essence, on two pleas in law, alleging, first, the irrelevance of the evidence of genuine use submitted by [OSCURATO:PERSONA] before the [OSCURATO:PERSONA] and, secondly, infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. The first plea, alleging the irrelevance of the evidence of genuine use submitted by [OSCURATO:PERSONA] before the [OSCURATO:PERSONA] 18 By its first plea in law, the applicant claims, in essence, that the evidence submitted before the [OSCURATO:PERSONA] by [OSCURATO:PERSONA] in order to demonstrate genuine use of the earlier mark was irrelevant and thus did not prove such use. 19 First, it should be recalled that, under [OSCURATO:PERSONA] 65(1) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 72(1) of [OSCURATO:PERSONA] 2017/1001), it is the decisions of the Boards of Appeal, and not those of the [OSCURATO:PERSONA], which are subject to the jurisdiction of the [OSCURATO:PERSONA]. Therefore, in so far as, by its first plea, the applicant submits that the [OSCURATO:PERSONA] decision was incorrect, that part of the plea must be rejected as inadmissible (see, to that effect, judgment of 24 November 2010, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] (R10) , T‑137/09, EU:T:2010:478, paragraph 13). 20 Second, in so far as the applicant’s first plea is in fact directed against the decision of the [OSCURATO:PERSONA] of Appeal, it should be noted, as EUIPO has observed, that, before the [OSCURATO:PERSONA] of Appeal, the applicant did not challenge the [OSCURATO:PERSONA] decision in so far as it found there to be genuine use of the earlier mark for items of ‘underwear’ in Class 25. On the contrary, the applicant had expressly stated, in its appeal of 8 April 2017, that the [OSCURATO:PERSONA] decision had to be upheld in so far as the latter found that [OSCURATO:PERSONA] had established genuine use of the earlier mark for those items. 21 [OSCURATO:PERSONA] 188 of the Rules of Procedure of the [OSCURATO:PERSONA] the pleadings lodged by the parties in proceedings before the [OSCURATO:PERSONA] may not change the subject matter of the proceedings before the [OSCURATO:PERSONA] of Appeal. Thus, the purpose of an action brought before the [OSCURATO:PERSONA] pursuant to [OSCURATO:PERSONA] 65 of [OSCURATO:PERSONA] 207/2009 is to obtain a review of the legality of the decisions of the Boards of Appeal of EUIPO and that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the [OSCURATO:PERSONA] of Appeal (see judgment of 1 December 2016, [OSCURATO:PERSONA] de la [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] de la [OSCURATO:PERSONA] ([OSCURATO:PERSONA] uniR) , T‑561/15, not published, EU:T:2016:698, paragraph 29 and the case-law cited). 22 Consequently, since the question of proof of genuine use of the earlier mark was not submitted to the [OSCURATO:PERSONA] of Appeal and the latter therefore did not rule on that matter, the plea to this effect put forward before the [OSCURATO:PERSONA] must be declared inadmissible in so far as underwear is concerned (see, to that effect, judgment of 7 November 2007, NV Marly v OHIM — Erdal (Top iX) , T‑57/06, not published, EU:T:2007:333, paragraph 18). The second plea in law, alleging infringement of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 23 This plea can be divided into two limbs, the first seeking to demonstrate that the goods covered by the signs at issue are different and the second seeking to demonstrate that the signs at issue are dissimilar. – The first limb, concerning the difference between the goods covered by the signs at issue 24 In the context of the first limb of its second plea, the applicant submits, in essence, that ‘most’ of the goods covered by the international registration and considered to be identical or similar to the ‘underwear’ covered by the earlier mark, for which genuine use was shown, are in fact different from underwear. 25 It should be noted in that regard, as has been observed by EUIPO, that the applicant did not dispute, before the [OSCURATO:PERSONA] of Appeal, the findings of the [OSCURATO:PERSONA] concerning the comparison of the goods. On the contrary, in its appeal of 8 April 2017, the applicant had expressly stated that it was not challenging the [OSCURATO:PERSONA] decision on that point. 26 In those circumstances, the first limb of the second plea in law must be considered inadmissible for the reasons set out in paragraphs 21 and 22 above. – The second limb, concerning the difference between the signs at issue and the absence of a likelihood of confusion 27 In the context of the second limb of its second plea, the applicant submits, first of all, that the signs at issue are different visually, arguing that, since the signs at issue are quite short, the average consumer will notice even slight differences between them. Moreover, the fact that two of the six letters of those signs are different, and the fact that repetition of the same group of letters ‘ia’ occurs only in the earlier mark, outweigh the similarities between the signs at issue. Secondly, the signs at issue are also different phonetically, the relevant public perceiving the dissimilarities between those signs because of the homophony resulting from the ‘ia’ repetition in the earlier mark which is not present in the international registration. Finally, from a conceptual standpoint, although the signs at issue have no meaning, the international registration may be perceived as a family name. Consequently, any likelihood of confusion should, in the applicant’s submission, be ruled out. 28 EUIPO disputes the applicant’s arguments. 29 [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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. 30 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 line of 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 — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). 31 Also according to settled case-law, two marks are similar, for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 25 November 2003, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), T‑286/02, EU:T:2003:311, paragraph 38 and the case-law cited). 32 As regards the comparison of the signs at issue, it is clear from the case-law that the visual, phonetic and conceptual aspects are relevant. The global assessment of the likelihood of confusion must, in so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, 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 7 July 2015, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] and [OSCURATO:PERSONA] (A ASTER) , T‑521/13, not published, EU:T:2015:474, paragraph 17 and the case-law cited). 33 In the present case, the [OSCURATO:PERSONA] of Appeal found, in paragraphs 16 to 20 of the contested decision, that the relevant public consisted of the general public, composed of average consumers of the [OSCURATO:PERSONA]. That finding, which is moreover not disputed by the parties, must be upheld. 34 As regards the comparison of the signs, the [OSCURATO:PERSONA] of Appeal found, first, in paragraph 24 of the contested decision, that the signs at issue, which are of the same length and coincide in the group of letters ‘vian’, while they differ in their endings, were visually similar to an average degree, as consumers normally attach more importance to the first element of a sign and tend to perceive a mark as a whole. 35 That finding is untainted by an error of assessment. [OSCURATO:PERSONA] of Appeal rightly found that the signs at issue coincided in their first four letters, presented in the same sequence of letters ‘vian’, out of six letters in total. Given that the consumer normally attaches more importance to the first part of words, this coincidence creates a visual similarity (see, to that effect, judgment of 13 June 2012, XXXLutz Marken v OHIM — [OSCURATO:PERSONA] (CIRCON) , T‑542/10, not published, EU:T:2012:294, paragraph 43 and the case-law cited). 36 Admittedly, as the applicant submits, the shorter the sign, the better the public is able to perceive the differences between the signs at issue, since such differences may lead to different overall impressions (see judgment of 28 September 2016, [OSCURATO:PERSONA] B & S v EUIPO — G-[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑593/15, not published, EU:T:2016:572, paragraph 28 and the case-law cited). However, the case-law just cited has been developed in respect of signs generally not exceeding three or four letters or figures, whereas, in the present case, the signs at issue, which are each composed of six letters, are not particularly short. 37 Because the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 18 September 2014, Polo/Lauren v OHIM — FreshSide (Representation of a boy on a bicycle holding a mallet) , T–265/13, EU:T:2014:779, paragraph 22 and the case-law cited), neither the difference between the last two letters of the signs at issue, nor the repetition of the group of letters ‘ia’ in the earlier mark, can counteract the visual similarity created by the fact that those signs are of the same length and coincide in their first four letters, as the [OSCURATO:PERSONA] of Appeal found in paragraph 24 of the contested decision. 38 Secondly, as regards the phonetic comparison of the signs at issue, the [OSCURATO:PERSONA] of Appeal found, in paragraph 25 of the contested decision, that they were similar to an average degree, since their pronunciation coincided in the sound of the group of letters ‘vian’, which are identical in both signs, and differed in the sound of their last two letters. It also pointed out that consumers might notice the homophony of the sounds created by the vowels ‘ia’. 39 Given that the consumer will generally pay greater attention to the beginning of a word sign than to the end, as the first part of a trade mark normally has a greater impact, not only visually (see paragraph 35 above) but also phonetically, on the consumer than the final part (see judgment of 6 October 2011, [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] for all mankind ([OSCURATO:PERSONA]) , T‑176/10, not published, EU:T:2011:577, paragraph 39 and the case-law cited), the [OSCURATO:PERSONA] of Appeal rightly concluded, in paragraph 25 of the contested decision, that the signs at issue were phonetically similar to an average degree. 40 [OSCURATO:PERSONA] of Appeal took into account the homophony of the sounds produced by the vowels ‘ia’, to which the applicant had drawn attention, accepting that consumers may notice it. However, contrary to what the applicant claims, that homophony is not in itself sufficient to counteract all phonetic similarity between the signs at issue, in view of the presence of the common elements in them, identified in paragraph 38 above. 41 Thirdly, in paragraph 26 of the contested decision, the [OSCURATO:PERSONA] of Appeal observed, inter alia, that the signs at issue were not conceptually similar, since the earlier mark has no meaning, while the international registration might well be perceived in France as a family name. 42 The applicant repeats, in essence, those considerations without disputing the [OSCURATO:PERSONA] of Appeal’s assessment in that regard, which must be upheld. 43 It is therefore necessary to uphold the [OSCURATO:PERSONA] of Appeal’s conclusion that, since the signs at issue were visually and phonetically similar to an average degree and conceptually dissimilar, they were similar overall to an average degree. 44 As regards the likelihood of confusion, the applicant submits that it must be ruled out, first, because of the fact that the signs at issue are dissimilar and, secondly, because of the fact that the similarity between the signs at issue, even if it were established, is offset by the difference between the goods covered by those signs. 45 However, since the [OSCURATO:PERSONA] of Appeal correctly found, on the one hand, that the signs at issue were similar overall to an average degree (see paragraph 43 above), and, on the other hand, that the plea in law relating to the identity and similarity of the goods in question was inadmissible (see paragraph 26 above), the [OSCURATO:PERSONA] of Appeal could conclude –– in accordance with the case-law cited in paragraph 30 above and without making an error of assessment –– that there was a likelihood of confusion between the signs at issue in relation to the goods listed in paragraph 8 above. 46 Therefore, the second limb of the second plea in law must be rejected as unfounded. Accordingly, the second plea in law must be rejected in its entirety. 47 In those circumstances, the action must be dismissed in its entirety. Costs 48 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 49 In the present case, EUIPO has applied for costs against the applicant. Since the applicant has been unsuccessful, it must be ordered to pay, in addition to its own costs, the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby: 1. Dismisses the action; 2. [OSCURATO:PERSONA] LLC to pay, in addition to its own costs, the costs incurred by the [OSCURATO:PERSONA] (EUIPO) in the proceedings before the [OSCURATO:PERSONA]. Tomljenović Bieliūnas [OSCURATO:PERSONA] in open court in Luxembourg on 22 November 2018. E. Coulon V. Tomljenović [OSCURATO:PERSONA] * Language of the case: English.