Decathlon v EUIPO - Athlon Custom Sportswear (athlon custom sportswear) (U trade mark - Judgment) [2020] EUECJ T-349/19 (15 October 2020)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark athlon custom sportswear – Earlier EU word mark DECATHLON – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

Decathlon, established in Villeneuve-d’Ascq (France), represented by A. Cléry and C. Devernay, lawyers,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 March 2019 (Case R 1724/2018‑2), relating to opposition proceedings between Decathlon and Athlon Custom Sportswear,

composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,

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

1 On 14 December 2016, Athlon Custom Sportswear PC, established in Kallithea (Greece), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 2017/011 of 18 January 2017.

5 On 14 April 2017, the applicant, Decathlon, established in Villeneuve-d’Ascq (France), filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the EU word mark DECATHLON, registered on 28 April 2004 under No 262931 and covering, inter alia, goods in Classes 25 and 28 corresponding, for each of those classes, to the following description:

– Class 28: ‘Gymnastic and sporting articles (except clothing, mats and shoes) except those relating to decathlon events and except discuses for sports, javelins, shots and discuses for throwing and poles’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 6 July 2018, the Opposition Division upheld the opposition for all the goods referred to in paragraph 3 above on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

9 On 3 September 2018, Athlon Custom Sportswear filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 On 5 November 2018, Athlon Custom Sportswear withdrew its application for registration of the mark applied for in respect of goods in Class 28. In addition, on that date, it stated that the goods in Class 25 for which registration was sought henceforth corresponded to the following description: ‘Athletic clothes and hats’.

11 By decision of 27 March 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue.

12 In particular, the Board of Appeal took note, first of all, of the limitation request filed by Athlon Custom Sportswear concerning the list of goods and accepted it. Next, the Board of Appeal found that the goods at issue were identical. Furthermore, it took the view that the signs at issue had a very low degree of visual similarity, an average degree of phonetic similarity and – for the part of the public that would understand the word elements of the signs – a certain conceptual similarity, but based on descriptive or allusive elements. It also stated that the conceptual comparison had no impact on the comparison of the signs so far as concerned the other part of the public that would not attribute any meaning to those word elements. Lastly, in the global assessment of the likelihood of confusion, the Board of Appeal concluded that, in the light of the low degree of visual similarity between the signs at issue and of the absence of objective and solid evidence showing an enhanced distinctive character of the earlier mark for the goods upon which the opposition was based, there was, in spite of the identity of the goods at issue, no likelihood of confusion between the marks at issue for the relevant public throughout the European Union that perceived the words ‘decathlon’ and ‘athlon’ as having a similar meaning. The Board of Appeal considered that this applied even more so to the relevant public that did not understand those words or only understood the meaning of one of them.

– order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.

15 The applicant relies on a single plea in law in support of annulment, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. According to the applicant, the Board of Appeal carried out an incorrect analysis both of the dominant component of the mark applied for and of the marks at issue, both as regards the visual and the conceptual comparison. Moreover, the Board of Appeal also made an erroneous assessment of the degree of distinctiveness of the earlier mark. Lastly, its global assessment of the likelihood of confusion was erroneous.

17 Article 8(1)(b) of Regulation 2017/1001 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, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

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

19 For the purposes of applying Article 8(l)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

20 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

21 In the present case, from a geographic point of view, the Board of Appeal was correct in considering that the scope of the relevant public was the entire territory of the European Union.

22 Moreover, the parties do not challenge that approach, but focus their arguments on the English-speaking public.

23 Furthermore, the Board of Appeal considered that the relevant public consisted both of the general public and of professionals and that, given that it was appropriate to take into account the group with the lowest level of attention (judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21), the goods designated by the marks at issue were mass consumption goods for the purchase of which the general public usually showed an average or normal level of attention. There is no reason to call into question that assessment, which, moreover, is not contested by the parties.

24 Thus, for the purpose of assessing the likelihood of confusion, the relevant territory is the entire European Union and, in the light of the case-law referred to in paragraph 23 above, it is appropriate to take into account the public with the lowest level of attention, namely the general public, whose level of attention is normal.

25 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 (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).

26 In the present case, the Board of Appeal found, in paragraphs 32 and 33 of the contested decision, that the goods at issue, which are in Class 25, were identical.

27 There is no reason to call into question that conclusion, which, moreover, is not contested by the parties.

28 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).

29 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

30 The Board of Appeal found that the earlier mark was a word mark that would be perceived by the relevant public as consisting of one indivisible unit. Furthermore, it considered that, in the overall impression created by the mark applied for, more weight had to be attributed from a visual standpoint to the following two elements: the figurative element and the word element ‘athlon’.

31 The Board of Appeal also considered that the word element ‘athlon’, which was common to the marks at issue, did not have a clear meaning for the majority of the relevant public and had a normal level of distinctiveness. Nonetheless, according to the Board of Appeal, even for the part of the relevant public that understands the Greek meaning of the word ‘athlon’ or that understands the stylised individual letters as being the letters ‘a’, ‘t’, ‘h’, ‘l’, ‘o’ and ‘n’, the stylised script of that word is not negligible.

32 Lastly, the Board of Appeal took the view that the other elements of the mark applied for were of limited relevance, if any.

33 The applicant disputes the Board of Appeal’s findings, arguing that it erred in attaching more weight to the figurative elements of the mark than to the word element ‘athlon’. According to the applicant, that word element dominates the mark applied for and the figurative elements are negligible. The applicant also submits that the word element ‘athlon’ constitutes the only distinctive element of the mark applied for.

35 As a preliminary point, it should be noted that the mark applied for is a composite mark consisting of a figurative element placed before word elements. More specifically, it is composed of what may be perceived as a lemniscate (an infinity symbol), a stylised word element ‘athlon’ and a non-stylised word element ‘custom sportswear’.

36 In the first place, so far as concerns the dominant elements of the signs at issue, it should first be noted that the parties rightly agree on the fact that the words ‘custom sportswear’ do not constitute the dominant element of the mark applied for, given the small size of that element and, at least for the English-speaking public, its descriptive character. They do not dispute the Board of Appeal’s decision that those words are of limited relevance, if any.

37 Next, it should be noted that, according to settled case-law, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (see judgment of 6 October 2015, Monster Energy v OHIM – Balaguer (icexpresso + energy coffee), T‑61/14, not published, EU:T:2015:750, paragraph 37 and the case-law cited). Further, it is appropriate to examine the intrinsic qualities of the figurative elements and the word elements of the mark applied for, as well as their respective positions, in order to identify, where appropriate, whether one of those elements is dominant (judgment of 9 February 2017, International Gaming Projects v EUIPO – adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraph 35).

38 In the present case, in the light of the case-law cited in paragraph 37 above and of that cited in paragraph 29 above, it is necessary to reject the applicant’s argument that, in the mark applied for, the word element ‘athlon’ dominates and the figurative elements are negligible. The applicant treats the stylisation of the word element ‘athlon’ and the size of the figurative element on the left-hand side of that word as being of little importance. The stylised word element (‘athlon’) may also be read in a different way. Thus, the third letter ‘h’ may be perceived as the letter ‘r’, the penultimate letter ‘o’ as the letter ‘e’ and the last letter ‘n’ as the letter ‘r’. As regards the figurative element at the beginning of the mark applied for, it is true that, as the Board of Appeal acknowledges, it may be perceived as a stylised figurative element (a lemniscate) which is used in particular to represent the concept of infinity. In any event, in the light of the case-law according to which consumers will generally pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, in particular visually, than the final part (see judgment of 19 June 2018, Damm v EUIPO – Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER), T‑859/16, not published, EU:T:2018:352, paragraph 68 and the case-law cited), the Board of Appeal correctly noted that, from a visual point of view, the figurative element was not insignificant, since it formed the beginning of the mark applied for and, due to its size, it occupied a significant position in that mark and was not overshadowed by the subsequent stylised word.

39 In the second place, as regards the distinctive character of the elements making up the signs at issue, it should be noted at the outset that, according to the case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).

40 In the present case, it should be observed that, as is apparent from paragraph 48 of the contested decision, the figurative element of the mark applied for has no relationship with the goods at issue and cannot be considered to be descriptive of those goods. It follows that, as the Board of Appeal found, the figurative element is of average distinctive character.

41 Consequently, as the Board of Appeal rightly notes, the figurative element and the stylised word element of the mark applied for are more important from a visual standpoint in the overall impression given by that mark.

42 In the present case, in paragraph 52 of the contested decision, the Board of Appeal noted that, in so far as the contested mark was to be perceived as containing the word ‘athlon’, the signs at issue had in common that element, which was fully contained in the earlier mark. However, it noted that the signs differed in several aspects because of the three additional letters ‘d’, ‘e’ and ‘c’ at the beginning of the earlier mark and, in the mark applied for, the stylisation of the word ‘athlon’, the figurative element at the beginning of the mark and the words ‘custom sportswear’. In the light of its analysis of the distinctive and dominant elements of the marks (see paragraphs 30 to 32 above), the Board of Appeal found that, visually, the differences dominated and that the marks at issue had only a very low degree of similarity.

43 The applicant claims that, in the light of the dominance of the word element ‘athlon’, and of the fact that the marks at issue coincide in that element, those marks are visually similar.

44 In that regard, first of all, it should be noted that, as stated in paragraphs 38 and 41 above, the figurative element of the mark applied for is as prominent as the stylised word element of that mark. Consequently, as EUIPO notes, the figurative element has a significant impact on the overall visual impression.

45 Next, a comparison between the mark applied for and the earlier mark shows that, even though the signs at issue coincide in the word element ‘athlon’, those signs differ visually because of the presence of the letters ‘d’, ‘e’ and ‘c’ at the beginning of the earlier mark, of the figurative element at the beginning of the mark applied for and of the stylisation of the word element (‘athlon’) of that mark. Furthermore, the stylisation of the word element ‘athlon’ in the mark applied for may lead part of the relevant public to read the contested mark in a different way. The third letter ‘h’ may be read as the letter ‘r’, the penultimate letter ‘o’ as the letter ‘e’ and the last letter ‘n’ as the letter ‘r’.

46 Accordingly, from a visual standpoint, the differentiating elements noted are more important than the element of similarity, ‘athlon’.

47 In light of the foregoing, the Board of Appeal did not make an error of assessment in finding a very low degree of visual similarity between the marks at issue.

48 In the present case, in paragraph 54 of the contested decision, the Board of Appeal considered that the stylisation of the word ‘athlon’ and the figurative element preceding it did not play any role, since they were not pronounced. According to the Board of Appeal, the signs coincide phonetically in so far as the mark applied for is perceived as containing the word ‘athlon’. However, the two signs differ with regard to the sound of the letters ‘d’, ‘e’ and ‘c’ at the beginning of the earlier mark. As regards the words ‘custom sportswear’, the Board of Appeal inferred from its analysis of the distinctive and dominant elements of the marks (see paragraphs 30 to 32 above) that those words are likely to be omitted when the mark is referred to. It concludes that the signs are phonetically similar to an average degree.

49 Those findings, which, moreover, are not disputed by the parties, are free from error.

50 From a conceptual standpoint, the Board of Appeal found, first, that, for part of the relevant public, the words ‘decathlon’ and ‘athlon’ and, in the mark applied for, the words ‘custom sportswear’ and the figurative element might be perceived as meaningless. According to the Board of Appeal, it followed that the signs at issue were conceptually neutral. Secondly, it took the view that, for another part of the relevant public, including the English-speaking public, the word ‘decathlon’ would be associated with a competition in which athletes compete in various different sporting events. As regards the word ‘athlon’, the Board of Appeal noted that it meant ‘a contest’ in Greek and stated that part of the relevant public might associate that word with sports competitions. In that regard, it noted that the element ‘athlon’ was a commonly used suffix, in particular in English, in relation to athletics events, the number of which is indicated by a prefix (for example, a ‘decathlon’ consists of 10 athletics events), which, from that point of view, would make the words ‘decathlon’ and ‘athlon’ descriptive or allusive for the athletic goods at issue. Thirdly, it noted that the signs differed conceptually in so far as meaning would be attributed to the figurative element (the lemniscate) of the mark applied for.

51 As regards the conceptual aspects, the applicant makes a distinction according to whether or not the relevant public understands the words ‘athlon’ and ‘decathlon’. If the public does not understand them, the applicant states that it agrees with the Board of Appeal that a conceptual comparison of the signs is not possible for that public. If the public understands those two words, which would be the case for the English-speaking public, the applicant submits that they will be associated with sports competitions and that, for that public, the degree of conceptual similarity between the marks will be high.

53 As a preliminary point, it should be noted that the parties do not disagree as regards the conceptual analysis of the marks at issue so far as concerns the part of the relevant public that will not understand the words ‘athlon’ or ‘decathlon’. It must be regarded as established that, as the Board of Appeal rightly stated, the conceptual comparison remains neutral for that part of the public in the context of the assessment of the similarity of the signs at issue.

54 The question is therefore whether the Board of Appeal correctly analysed the conceptual aspects of the marks at issue for the part of the relevant public that will attribute a meaning to the word elements of the signs at issue.

55 In that regard, it should be noted that where some elements of a trade mark are descriptive of the goods in respect of which that mark is registered or the goods covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM – Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited).

56 In the present case, the Board of Appeal was right in considering that, for that part of the relevant public comprising the English-speaking public, the word ‘decathlon’ would be associated with a competition in which athletes compete in various different sporting events. It was also right in stating that the word ‘athlon’ meant ‘a contest’ in Greek and that part of the relevant public might associate that word with sports competitions, as the element ‘athlon’ is a commonly used suffix, in particular in English, in relation to athletics events, the number of which is indicated by a prefix. It correctly inferred from that that the words ‘decathlon’ and ‘athlon’ were inherently descriptive or allusive for the athletic goods at issue.

57 Consequently, for the part of the relevant public that would attribute a meaning to the word elements of the signs at issue, it must be found, as the Board of Appeal did, that those signs have a certain conceptual similarity, but that the word element at the origin of that similarity (‘athlon’) has a weak distinctive character.

58 Furthermore, it is true that, as the Board of Appeal and EUIPO have noted, the signs may differ conceptually because of the presence of the figurative element at the beginning of the mark applied for in so far as that element would be perceived as a figurative element (a lemniscate) which, as stated in paragraph 40 above, has a distinctive character.

59 The Board of Appeal first noted that the earlier mark had a minimum degree of distinctiveness throughout the European Union as it was a validly registered EU trade mark. Moreover, it added that, depending on the word ‘decathlon’ being understood by the relevant public, the earlier mark had either a weak or normal inherent distinctive character for the goods identical to those of the contested mark.

60 In response to the applicant’s argument that the earlier mark has an enhanced distinctive character, the Board of Appeal stated that the evidence adduced by the applicant essentially referred to retail services and that the opposition was not based on those services. Furthermore, it noted that that evidence suggested that the applicant had sold its goods under various marks owned by it, none of which were the earlier mark.

61 The Board of Appeal found that the applicant had failed to demonstrate any enhanced distinctive character of the earlier mark for the goods at issue.

62 The applicant submits that the earlier mark has a normal degree of distinctiveness for the part of the public for which the word ‘decathlon’ has no meaning. So far as concerns the part of the public that understands the meaning of that word, the applicant submits that the earlier mark has an inherent distinctive character because, although that mark corresponds to a word which exists in some dictionaries, it does not directly designate clothes, but is only evocative of such goods. According to the applicant, the earlier mark is not therefore descriptive.

63 Still so far as concerns the part of the public that understands the meaning of the word ‘decathlon’, the applicant submits that the earlier mark also has an enhanced distinctive character. In that regard, it provides several explanations relating to the duration and scale of its operations and to the size of its investments in the mark. In order to demonstrate the reputation of the earlier mark in the European Union, it relies on various studies and on two decisions given by French courts. It includes a set of annexes which, according to it, prove the existence of an enhanced distinctive character and thus of a broader scope of protection of the earlier mark. Lastly, it notes that Athlon Custom Sportswear uses on its website the same colours as the earlier mark and advertising for that mark, for identical goods.

64 Furthermore, the applicant submits that the Board of Appeal erred in considering that the evidence adduced before it referred to retail services and not to clothes. It explains that it is not only a retailer, but also a manufacturer of goods sold under ‘the umbrella mark’ DECATHLON.

65 The applicant claims that the public knows that it manufactures its own goods and notably its own clothes, selling them under its own marks (for example, the marks KALENJI, DOMYOS, ARTENGO, QUECHUA and TRIBORD), so that it would not be possible to purchase those clothes without being aware that the goods originate from it.

66 Lastly, the applicant states that, even if the Court were to consider that the earlier mark has a weak distinctive character, that would not preclude the existence of a likelihood of confusion.

68 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24), and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

69 The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation 2017/1001. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).

70 In the present case, the applicant seeks to prove that the earlier mark has enhanced distinctiveness by means of various documents that it has included as annexes to the application. Those documents are as follows:

– general descriptions of the applicant’s history and of its activities (annexes 1, 2, 9 and 13),

– results of market studies concerning the reputation of several marks, in particular the earlier mark (annexes 3 to 8, 11 and 12),

71 EUIPO contends that annexes 12 and 13 to the application are inadmissible. They consist of a magazine article of 6 June 2019 relating to the favourite marks of the French (annex 12) and an extract from the applicant’s website describing the applicant’s history (annex 13).

72 Without it being necessary to rule on the admissibility of annexes 12 and 13 to the application, it must be found that the documents submitted by the applicant do not show that the earlier mark has enhanced distinctiveness. In the first place, it should be noted, as EUIPO did, that several documents prove that the earlier mark is associated with the applicant’s retail services and not with the goods sold by the applicant (see, for example, annexes 1, 3 and 5, which present the applicant as a ‘retailer’ or the earlier mark as a ‘retail brand’).

73 In the second place, even assuming that the applicant’s argument, referred to in paragraph 66 above, may be interpreted as being based on the case-law arising from the judgment of 11 September 2007, Céline (C‑17/06, EU:C:2007:497, paragraphs 22 and 23), according to which there is use in relation to goods where a third party affixes the sign constituting his or her company name, trade name or shop name to the goods which he or she markets or, even where the sign is not affixed, the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed by the third party, that argument cannot succeed. First, as the applicant itself acknowledges in its application, it sells many goods, in particular clothes, under other brands, which it develops itself, but which are different from the earlier mark (see, for example, annex 1, pp. 3 and 4; annex 2, p. 10; annex 9, pp. 35, 37, 41 et seq.). Furthermore, the applicant does not submit that the earlier mark is affixed to those goods. Secondly, the applicant has not provided any evidence showing, as it claims, that there is a link between the earlier mark and the goods marketed.

74 In the third place, so far as concerns the court decisions annexed to the application, the decision given by the cour d’appel d’Aix-en-Provence (Court of Appeal, Aix-en-Provence, France) concerned, inter alia, apparatuses for recording, transmission or reproduction of sound or images, printed matter, radio and television broadcasts, the publication of books and magazines and the organisation of symposia, conferences and congresses. That decision did not therefore concern the goods at issue in the present case, namely athletic clothes and hats (see annex 10, p. 97). As regards the decision given by the cour d’appel d’Agen (Court of Appeal, Agen, France) in 1997, it should be noted that the date to be taken into account for assessing the enhanced distinctiveness of the earlier mark is the filing date of the contested trade mark application (see, to that effect, judgments of 18 September 2014, Herdade de S. Tiago II v OHIM – Polo/Lauren (V), T‑90/13, not published, EU:T:2014:778, paragraph 41, and of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 46). In the present case, the contested trade mark application was filed on 14 December 2016. The judgment of the the cour d’appel d’Agen (Court of Appeal, Agen) had been delivered 15 years before that date, that is to say, in a period long before the filing date of the contested trade mark application. It is therefore irrelevant.

75 Accordingly, the Board of Appeal was right in finding that the applicant had failed to demonstrate the enhanced distinctive character of the earlier mark for the goods at issue.

76 That finding cannot be invalidated by the applicant’s argument that the earlier mark is the ‘umbrella brand’ for its other marks. In so far as that argument should be understood as invoking the existence of a family of marks, it cannot be accepted, in the absence of a common characteristic which makes it possible for the applicant’s marks to be regarded as part of a family or series of marks (see, to that effect, judgments of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 62, and of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 123). There is no common characteristic between the earlier mark and, for example, the marks KALENJI, DOMYOS, ARTENGO, QUECHUA and TRIBORD, mentioned by the applicant.

77 The Board of Appeal referred to the case-law according to which the degree of phonetic similarity between two marks was of less importance in the case of goods which were marketed in such a way that, when making a purchase, the relevant public usually perceived visually the mark designating those goods. It therefore considered that, in relation to the goods at issue, which are in Class 25, the visual aspect was more important than the phonetic aspect for the purpose of assessing the likelihood of confusion.

78 As regards the conceptual aspect, the Board of Appeal took the view that, in so far as, for part of the relevant public, the signs contained a similar conceptual component in the form of the words ‘athlon’ and ‘decathlon’, this concerned a weak element. For the remaining part of the public, the signs referred to different concepts or were conceptually neutral. Accordingly, the conceptual comparison had no impact on the global assessment.

79 The Board of Appeal concluded in paragraph 77 of the contested decision that, in the light of the ‘low’ degree of visual similarity between the signs at issue and of the absence of objective and solid evidence showing an enhanced distinctive character of the earlier mark for the goods upon which the opposition was based, there was, in spite of the identity of the goods at issue, no likelihood of confusion between the marks at issue for the relevant public throughout the European Union that perceived the words ‘decathlon’ and ‘athlon’ as having as similar meaning. According to the Board of Appeal, that applies even more so with respect to the relevant public that does not understand those words or only understands the meaning of one of them.

80 Consequently, the Board of Appeal found that the Opposition Division had erred in rejecting the trade mark application of Athlon Custom Sportswear. It thus annulled the decision of the Opposition Division.

81 The applicant cites decisions of French courts and of EUIPO in which it was found, in cases that it claims are similar to the present case, that there was a similarity between certain signs and the earlier mark.

82 The applicant believes that it has demonstrated that the dominant element of the mark applied for is the word ‘athlon’ and that, therefore, the marks at issue are visually similar to a high degree. It considers that it has also proved that the word ‘decathlon’ is distinctive and that the earlier mark enjoys an enhanced scope, at least for a significant part of the public that does not understand the meaning of that word.

83 The applicant concludes from this that, in the light of all the relevant factors, there is a likelihood of confusion. It summarises its reasoning by submitting that the signs are confusingly similar since they are both dominated by the distinctive and attractive word ‘athlon’, the goods are strictly identical and the earlier mark is well known and highly distinctive in the light of its intensive use in Europe for several years, with the result that there is a likelihood of confusion.

85 First of all, as regards the French court decisions cited by the applicant, it is appropriate to refer to the above examination of those decisions (see paragraph 74 above).

86 As regards the decisions of the Opposition Division mentioned by the applicant, it should be noted that the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO (see judgment of 19 September 2019, Showroom v EUIPO – E-Gab (SHOWROOM), T‑679/18, not published, EU:T:2019:631, paragraph 96 and the case-law cited). In any event, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).

87 Next, it is appropriate to refer to the principle that 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

88 Furthermore, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight and the extent of the similarity or difference between those signs may depend on their inherent qualities (see judgment of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 72 and the case-law cited).

89 In that regard, in the present case, the visual aspects dominate for two reasons.

90 In the first place, it is apparent from the case-law that, where the elements of similarity between two signs are the result of the fact that they have a weakly distinctive component in common, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited).

91 In the present case, it was found that the word element ‘athlon’, which was common to the signs at issue, had a weak distinctive character for part of the public and would not therefore be perceived as an indication of commercial origin (see paragraphs 53 to 57 above).

92 Consequently, the visual differences noted above, which arise primarily from the stylisation of the common word element and of the figurative element in the mark applied for, will dominate in the overall impression on the relevant public created by the signs at issue. Those differences will thus counteract the phonetic similarity and, for part of the public, the conceptual similarity resulting from the common word element ‘athlon’ and the concept to which it refers.

93 In the second place, the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation 2017/1001 and are to be taken into account at the stage of the global assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 70).

94 In the present case, the goods at issue, namely athletic clothes and hats, are in a sector in which visual perception of the marks will generally take place prior to purchase. Consequently, the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgments of 14 October 2003, Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 55; of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50; and of 24 January 2012, El Corte Inglés v OHIM – Ruan (B), T‑593/10, not published, EU:T:2012:25, paragraph 47).

95 Consequently, in the light in particular of the weak distinctive character of the element ‘athlon’, of the dominance of the weak, or even very weak, visual similarity and of the circumstances under which the goods in question are marketed, it follows from all the foregoing that there is no likelihood of confusion.

96 Since the single plea in law relied on by the applicant, alleging a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, is unfounded, the action should be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second and third heads of claim.

97 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.

98 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Decathlon v EUIPO - Athlon Custom Sportswear (athlon custom sportswear) (U trade mark - Judgment) [2020] EUECJ T-349/19 (15 October 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T34919.html Cite as: [2020] EUECJ T-349/19, EU:T:2020:488, ECLI:EU:T:2020:488, [2021] ETMR 11

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