Armani v EUIPO - Asuncion (le Sac 11) (EU trade mark - Judgment) [2020] EUECJ T-654/18 (26 March 2020)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark le sac 11 — Earlier national word mark LESAC and earlier national figurative marks lesac — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Article 47(2) and (3) of Regulation 2017/1001)

Giorgio Armani SpA, established in Milan (Italy), represented by S. Martínez-Almeida y Alejos-Pita, lawyer,

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 August 2018 (Case R 2464/2017-4), relating to opposition proceedings between Mr Asunción and Giorgio Armani,

composed of V. Valančius, acting as President (Rapporteur), J. Svenningsen and U. Öberg, Judges,

having regard to the application lodged at the Court Registry on 31 October 2018,

1 On 29 December 2014, the applicant, Giorgio Armani SpA, 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 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 18: ‘Handbags; traveling bags; briefcases; leather briefcases; leather credit card holders; wallets; leather document briefcases; leather key cases; purses; suit cases; cosmetic bags sold empty; sports bags included in this class; bags for athletic equipment; evening and shoulder bags for ladies; leather shopping bags; school bags; garment bags for travel; suit carriers for travel; shoe bags for travel; beach bags; diaper bags; backpacks; Boston bags; traveling trunks; duffel bags; overnight bags; carry-on bags; satchels; opera bags; vanity cases (not fitted); cases and boxes made of leather; bags made of leather for packaging; leather straps’;

– Class 25: ‘Coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby dolls being nightwear; bathrobes; bathing costumes; négligée; swimsuits; dressing gowns; shawls; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; stockings; socks; shoes; slippers; overshoes; galoshes; wooden clog; boots; ski boots; half boots; esparto shoes or sandals; sandals; bath sandals; gloves; mittens; hats and caps; visors (headwear)’.

4 On 30 April 2015, the other party to the proceedings before the Board of Appeal, Felipe Domingo Asunción, 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.

– the Spanish word mark LESAC, which was registered on 5 May 1980 under the number 919 900 and covers ‘handbags, purses, suitcases and wallets made from leather’ in Class 18;

– the Spanish figurative mark reproduced below, which was registered on 20 January 2000 under the number 2 244 284 and covers ‘ready-made clothing, footwear, headgear’ in Class 25:

– the Spanish figurative mark reproduced below, which was registered on 20 October 2000 under the number 2 244 285 and covers ‘retail sales services’ in Class 35:

6 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).

7 On 8 January 2016, the applicant made a request pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) for Mr Asunción to furnish proof of genuine use of the earlier marks.

8 On 20 September 2017, the Opposition Division found that genuine use of the earlier marks, in particular of the earlier word mark No 919 900 and earlier trade mark No 2 244 284, had been proved in relation to ‘handbags and purses made from leather’ in Class 18 and ‘ready-made clothing, footwear’ in Class 25 and upheld the opposition in respect of the goods referred to in paragraph 3 above.

9 On 17 November 2017, the applicant 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 By decision of 13 August 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First of all, it found that earlier trade mark No 2 244 285 had been put to genuine use in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35 during the period which ran from 24 April 2010 to 23 April 2015. It added that those services and the goods covered by the mark applied for were aimed at the Spanish general public and that some of them were similar to a low degree and others were similar to an average degree. Next, it found that the mark applied for and earlier trade mark No 2 244 285 (taken together, ‘the signs at issue’) were visually similar to an above average degree and phonetically similar to a high degree and were not similar conceptually. It added that that earlier mark had an average degree of distinctiveness and that the end consumers had an average level of attention. Lastly, it deduced from the foregoing that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 regarding all the goods referred to in paragraph 3 above.

– alter the contested decision by holding that the appeal before the Board of Appeal is well founded, that the opposition is to be rejected and that the mark applied for is to be registered;

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

13 EUIPO submits that the first head of claim in the application is inadmissible since it seeks to have the Court issue directions to EUIPO.

14 It must be pointed out at the outset that the applicant’s first head of claim contains, inter alia, an application for alteration that seeks to have the Court register the mark applied for.

15 In that regard, it is true that the Court has jurisdiction under Article 72(3) of Regulation 2017/1001 to alter the decision of the Board of Appeal. Nevertheless, that power to alter the decision is intended to ensure that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001, which means that the admissibility of an application for alteration must be assessed in the light of the powers conferred on that Board of Appeal (see judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 12 and the case-law cited).

16 However, although the registration of an EU trade mark is a consequence of the finding that all the conditions laid down in Article 51 of Regulation 2017/1001 have been satisfied, the departments of EUIPO that are responsible for the registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. Accordingly, a Board of Appeal, which may, under Article 71(1) of Regulation 2017/1001, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further treatment, does not have the power to decide on an application which seeks to have it register an EU trade mark. Consequently, it is also not for the Court to rule on an application for alteration which seeks to have it alter the decision of a Board of Appeal to that effect (see judgment of 18 October 2016, Brauwelt, T‑56/15, EU:T:2016:618, paragraph 13 and the case-law cited).

17 In the light of the foregoing, the applicant’s first head of claim must, in so far as it contains such an application, be rejected as inadmissible.

18 In support of the action, the applicant relies on four pleas in law, alleging: (i) infringement of Article 94(1) of Regulation 2017/1001, (ii) infringement of Article 8(1)(b) of that regulation as regards the scope of protection of earlier trade mark No 2 244 285, (iii) infringement of Article 18 and Article 47(2) of that regulation and, (iv) infringement of Article 8(1)(b) of that regulation as regards the existence of a likelihood of confusion.

The first plea, alleging infringement of Article 94 of Regulation 2017/1001

19 The applicant submits that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001 by finding, without giving the parties an opportunity to present their comments, that earlier trade mark No 2 244 285 had been put to genuine use in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35.

21 The first plea may be subdivided into two parts, the first of which alleges failure to have regard to the scope of the Board of Appeal’s powers as regards the examination of the proof of genuine use of earlier trade mark No 2 244 285 in connection with the services in Class 35, and the second of which is based on infringement of the right to be heard guaranteed by Article 94(1) of Regulation 2017/1001, which provides that EUIPO may base its decision only on matters of fact or of law on which the parties have had an opportunity to present their comments.

22 In the first place, in so far as the applicant appears to be complaining that the Board of Appeal failed to have regard to the scope of its powers by ruling anew as regards the genuine use of earlier trade mark No 2 244 285, it must be borne in mind that, according to settled case-law, there is continuity in terms of functions between the various departments of EUIPO, namely the Cancellation Divisions on the one hand, and the Boards of Appeal on the other. It follows from that continuity in terms of functions between the various departments of EUIPO that, contrary to what the applicant submitted during the hearing, when the Boards of Appeal conduct the required re-examination of decisions taken by the departments of EUIPO at first instance, they must base their decision on all the matters of fact and of law which the parties introduced either in the proceedings before the department which heard the application at first instance or in the appeal. More generally, it is apparent from Article 71(1) of Regulation 2017/1001, which provides that, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and may, in so doing, ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that, through the effect of the appeal before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the case brought before it, in terms of both law and fact (see judgment of 7 December 2017, Coca-Cola v EUIPO — Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).

23 In the present case, the applicant, by letter of 11 December 2015, requested that Mr Asunción provide proof of use of the earlier marks. Mr Asunción provided the evidence which he considered to be capable of establishing such use by letter of 6 April 2016. The applicant was aware of the evidence provided and was able to submit its observations as regards that evidence. The Opposition Division examined that evidence in order to ascertain whether those marks had been put to genuine use or not and whether or not the opposition was well founded. Furthermore, in the context of the appeal against the Opposition Division’s decision, the applicant disputed the Opposition Division’s findings relating to the genuine use of those marks. Consequently, the Board of Appeal was required to reassess whether the evidence submitted by Mr Asunción was capable of proving genuine use of those marks. The Board of Appeal did not therefore fail to have regard to the scope of its powers by carrying out a new, full examination of the case as regards the proof of genuine use of earlier trade mark No 2 244 285 in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35.

24 It follows that, in so far as the first part of the present plea is to be understood as meaning that it seeks to call the Board of Appeal’s powers into question, it must be rejected as unfounded.

25 In the second place, as regards the alleged infringement of Article 94(1) of Regulation 2017/1001, inasmuch as it is claimed that the Board of Appeal did not give the parties the opportunity to present any comments before finding that the earlier mark had been put to genuine use as regards ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35, it must be borne in mind that that provision lays down, in EU trade mark law, the general principle of protection of the rights of the defence. According to that principle, a person whose interests are appreciably affected by a decision addressed to him by a public authority must be given the opportunity effectively to make his point of view known (see judgment of 6 September 2013, Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 50 and the case-law cited).

26 In the present case, it must be stated that the applicant, on two occasions in the course of the proceedings before EUIPO, had the opportunity to submit its observations as regards the evidential value of the evidence which Mr Asunción had submitted for the purposes of proving genuine use of the earlier marks. Thus, first, it submitted its observations on that evidence before the Opposition Division, after having been requested to do so on 12 April 2016. Secondly, in the statement, dated 17 November 2017, setting out the grounds for the appeal against the Opposition Division’s decision, it disputed the Opposition Division’s findings relating to the genuine use of those marks and, more generally, submitted its views regarding that matter, without having been restricted in that regard as to the goods or services with regard to which genuine use had to be proved.

27 Furthermore, even if the applicant intends to rely on the argument that it was not informed in advance of the fact that the Board of Appeal was going to find that there had been genuine use in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35, it must be pointed out that the Board of Appeal was not required to inform the applicant that it was going to adopt a position that was different from that which the Opposition Division had adopted regarding those services and give it the opportunity to submit its observations regarding that position. The right to be heard for the purposes of Article 94(1) of Regulation 2017/1001 extends to the factual and legal matters on which the decision-making act is based, but not to the final position which the authority intends to adopt (judgment of 7 September 2006, L & D v OHIM — Sämann (Aire Limpio), T‑168/04, EU:T:2006:245, paragraph 116).

28 Consequently, the second part of the first plea must be rejected as unfounded and that plea must therefore be rejected as unfounded in its entirety.

The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 as regards the scope of protection of earlier trade mark No 2 244 285

29 The applicant claims that EUIPO erred in finding that the services protected by earlier trade mark No 2 244 285 were ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ and not simply ‘retail sales services’, although that mark was registered in respect of ‘retail sales services’ without any further details.

30 The applicant submits the comparison of the goods and services must be based on the wording indicated in the lists of goods and services and that any actual or intended use which is not stipulated in those lists is not relevant for the purposes of the assessment of the likelihood of confusion in relation to the goods and services on which the opposition is based.

32 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, that 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.

33 In that regard, it must be borne in mind that the purpose of the requirement that the earlier mark must have been put to genuine use is to limit the risk of conflict between two marks by protecting only trade marks which have actually been used, provided that there is no good commercial justification for them not having been used (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 42). That interpretation is borne out by the 24th recital of Regulation 2017/1001, which expressly refers to that objective.

34 With that in mind, Article 47(2) of Regulation 2017/1001 must be interpreted as seeking to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, when that provision is applied, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 44).

35 It follows that if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition. However, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).

36 As regards the goods and services referred to in applications for registration, it must be borne in mind that, in order to comply with the requirements of clarity and precision, an applicant for a trade mark who uses all of the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection of the trade mark is sought must specify whether his application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered (see judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 37 and the case-law cited). Furthermore, although retail trade in goods constitutes a service in Class 35 of the Nice Agreement, the applicant must nevertheless specify, for the purposes of registering a trade mark, the goods or the types of goods to which the retail trade relates (see judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 44 and the case-law cited).

37 As regards the specifications in question, the Court of Justice has stated that those requirements apply only to applications for registration subsequent, as the case may be, to the judgments of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), and of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), and do not therefore concern trade marks that were already registered as at the date on which those judgments were delivered (see judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraphs 37 and 45 and the case-law cited). That is the case here since the earlier trade mark No 2 244 285 at issue was registered on 20 October 2000.

38 In that regard, it must be held that, by using all the general indications listed in the class heading of Class 35, the other party to the proceedings, whose earlier trade marks had been registered before the judgments of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), and of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), were delivered, intended to cover all the services in that class (see, to that effect, judgment of 31 January 2013, Present-Service Ullrich v OHIM — Punt Nou (babilu), T‑66/11, not published, EU:T:2013:48, paragraph 50).

39 According to the case-law, retail trade in goods constitutes a service in Class 35 (see, to that effect, judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 34 to 37). That class also includes, according to the Explanatory Note of the World Intellectual Property Organisation (WIPO) to the Nice Agreement with regard to the services in that class, ‘the bringing together, for the benefit of others, of a variety of goods …, enabling customers to conveniently view and purchase those goods’. It follows that, contrary to what the applicant submits, the term ‘retail sales services’ is not a vague term and covers the retail sale of any goods.

40 In those circumstances, the Board of Appeal of EUIPO was justified, pursuant to Article 47(2) of Regulation 2017/1001, in ascertaining in connection with which goods or services proof of genuine use of earlier trade mark No 2 244 285 had been furnished, although that mark had been registered in respect of the broad category of ‘retail sales services’.

41 In the present case, EUIPO did not infringe Article 8(1)(b) of Regulation 2017/1001 by finding that genuine use of earlier trade mark No 2 244 285 had been proved only in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ and not in connection with the broader category of ‘retail sales services’, even though that earlier mark had been registered in respect of ‘retail sales services’ in general.

The third plea, alleging infringement of Article 18 and Article 47(2) of Regulation 2017/1001

43 The applicant disputes that the evidence provided by Mr Asunción proves genuine use of earlier trade mark No 2 244 285 in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35.

44 The applicant submits that the invoices provided by Mr Asunción, which show sales to companies, do not serve to prove genuine use of earlier trade mark No 2 244 285 in connection with ‘retail sales services’ in relation to goods in Classes 18 and 25, which must be addressed to end consumers and not to companies.

46 It is clear from recital 24 of Regulation 2017/1001 that there is no justification for protecting the earlier mark except where it is actually used. In keeping with that recital, Article 47(2) and (3) of Regulation 2017/1001 provides that an applicant for an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five-year period preceding the date of publication of the trade mark application against which notice of opposition has been filed.

47 In the present case, it must be borne in mind that the application for registration of the mark against which notice of opposition was filed was published on 24 April 2015 and that the applicant requested proof of use of the earlier marks, with the result that the relevant period with regard to which genuine use of the earlier marks had to be assessed ran from 24 April 2010 to 23 April 2015. In that regard, the Board of Appeal found, on the basis of the evidence provided by Mr Asunción, that genuine use of earlier trade mark No 2 244 285 had been proved in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35.

48 In the first place, the applicant submits that the invoices which Mr Asunción provided do not serve to prove genuine use of earlier trade mark No 2 244 285 in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35. It maintains that retail sales services must be addressed to end consumers and not to companies. It adds that the fact that those invoices included the company name LESAC S.L. in the header should not have been considered to be use of that earlier mark as a trade mark, but rather as a company name.

49 As regards the applicant’s argument relating to the addressees of the invoices provided by Mr Asunción, it must be pointed out, as EUIPO rightly states, first, that a significant number of those invoices were, contrary to what the applicant submits, made out to individuals and, secondly, that undertakings may purchase goods at the retail level. In particular, in the present case, the low volume of goods concerned is not capable of establishing that there has been wholesale of goods. Consequently, the fact that some of the invoices in question were made out to companies does not imply that the goods sold were not sold retail.

50 As regards the applicant’s argument relating to the company name used on some of the invoices, it must be pointed out that it is true that the purpose of a company name is to identify a company and is not, in itself, to distinguish goods or services and that there is use in relation to goods or services where a third party affixes the sign constituting its company name to the goods which it markets or where, even if 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 name and the goods marketed or the services provided by the third party (see, by analogy, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23).

51 However, as the Board of Appeal rightly pointed out, the fact that a word element is used as a company’s trade name does not preclude its use as a mark to designate goods (see judgment of 18 July 2017, Savant Systems v EUIPO — Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 26 and the case-law cited).

52 In that regard, as EUIPO rightly states, earlier trade mark No 2 244 285 appears as registered on a certain number of invoices and it must be pointed out that the abbreviation ‘S.L.’ will be capable of being understood as designating a legal entity. In any event, since that abbreviation is, on the invoices in question, much smaller in size than that earlier mark or the word element constituting that mark, it will not preclude consumers from establishing a link between the company name LESAC S.L. and the services provided.

53 In the second place, the applicant claims that the other items of evidence do not serve to prove genuine use of earlier trade mark No 2 244 285, since the signs in those items of evidence are very different from the form in which that mark was registered.

54 In the present case, it is apparent from the case file that Mr Asunción submitted evidence in which the following sign appears:

55 The applicant submits that the addition of a figurative element including the capital letter ‘L’, and the different stylisation of the element ‘lesac’ have altered the distinctive character of earlier trade mark No 2 244 285.

56 Article 18(1)(a) of Regulation 2017/1001 provides that use of an EU trade mark ‘in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ is to be considered to be use of that EU trade mark.

57 The purpose of Article 18(1)(a) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is 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 accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the form of the sign used in trade differs from the form in which that sign was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgment of 10 June 2010, Atlas Transport v OHIM — Hartmann (ATLAS TRANSPORT), T‑482/08, not published, EU:T:2010:229, paragraph 30 and the case-law cited).

58 It must be borne in mind that graphic additions are a common practice in trade, in particular in the fashion sector, and tend to establish that the commercial exploitation of the mark in question is real (see, to that effect, judgment of 12 December 2014, Ludwig Schokolade v OHIM — Immergut (TrinkFix), T‑105/13, not published, EU:T:2014:1070, paragraph 49).

59 Furthermore, according to settled case-law, there is no rule in the EU trade mark system that requires use of an earlier mark on its own, independently of any other mark, to be proved. Two or more trade marks may therefore be used jointly and autonomously without the distinctive character of that earlier mark being altered (see, to that effect, judgments of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 32, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34).

60 In particular, the respective positions of the various elements and their differences in colour, size and font result in their appearing not as a unit, but as the juxtaposition of independent elements. Furthermore, the capital letter ‘L’ above the term ‘lesac’, of which it constitutes the first letter, is automatically perceived as an abbreviation of that term. The addition of that abbreviation has the same conceptual meaning as earlier trade mark No 2 244 285, which consists of that term, and is not therefore capable of altering the distinctive character of that mark as registered. In that regard it must be pointed out that the situation in the present case is different from that which gave rise to the judgment of 28 June 2017, Josel v EUIPO — Nationale-Nederlanden Nederland (NN) (T‑333/15, not published, EU:T:2017:444), to which the applicant refers and in which the registered mark corresponded to an abbreviation. The term in question thus retains its function as an indication of the commercial origin of the services at issue in the sign reproduced in paragraph 54 above.

The fourth plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 as regards the existence of a likelihood of confusion

62 The applicant maintains that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public. In particular, it submits that the Board of Appeal erred in finding that there was similarity, first, between the signs at issue and, secondly between the goods and services at issue, which led it to find that there was a likelihood of confusion on the part of the relevant public with regard to all the goods in Classes 18 and 25.

64 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).

65 For the purposes of applying Article 8(1)(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).

66 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. 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 (see judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

67 In the present case, in view of the nature of the goods and services concerned and owing to the fact that earlier trade mark No 2 244 285, which was relied on in support of the opposition, is protected in Spain, the likelihood of confusion must be analysed from the point of view of the relevant public consisting of the Spanish general public with an average level of attention.

68 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).

69 In the present case, the Board of Appeal found, in paragraphs 55 to 58 and 60 of the contested decision, that the retail sales services in Class 35 constituted one of the distribution channels of the goods in Classes 18 and 25, with the result that there was an average degree of similarity between, on the one hand, some of the goods in Classes 18 and 25 covered by the mark applied for and, on the other hand, the retail sales services which related to the same goods, mainly on account of their complementary nature.

70 The applicant disputes that analysis and submits, in essence, that, since goods and retail sales services which relate to the same goods differ in their nature, their intended purpose and their method of use, the degree of similarity between them is low.

71 It must be borne in mind 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, to that effect, judgments of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 24, and of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 54).

72 In the present case it must be pointed out, as observed by the Board of Appeal, that there is an average degree of similarity between some of the goods in Classes 18 and 25 covered by the mark applied for and the retail sales services in Class 35 covered by earlier trade mark No 2 244 285 which relate to the same goods.

73 The connection between those services and goods is clearly a close one, in the sense that those goods are indispensable or, at the very least, important for the provision of the services covered by earlier trade mark No 2 244 285, which, in turn, are necessarily provided when those goods are sold. The services and goods covered by the signs at issue are therefore complementary, as the Board of Appeal rightly pointed out in paragraphs 51 and 53 of the contested decision.

74 In those circumstances, the applicant errs in disputing the Board of Appeal’s findings in paragraphs 56 to 58 and 60 of the contested decision that some of the goods covered by the mark applied for and the services covered by earlier trade mark No 2 244 285 are similar to an average degree.

75 According to the case-law, 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 (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). 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).

76 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 (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, 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 51).

77 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 elements making up the mark are negligible that the assessment of the similarity between the signs at issue can be carried out solely on the basis of the dominant element (see, to that effect, 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 element 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 elements 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).

78 The applicant submits, in essence, that the Board of Appeal underestimated the importance of the figurative elements of the mark applied for, as well as of the number 11 in that mark, and attributed the greatest importance to the elements ‘lesac’ and ‘le sac’ in those marks, in spite of their weak distinctive character.

79 The applicant adds that the element ‘le sac’ in the mark applied for can easily be understood by Spanish consumers as referring to a bag or a garment and is virtually identical to the Spanish word ‘saco’. Consequently, it submits that that element will not be perceived as being highly distinctive or as being the dominant element to which those consumers will pay greater attention within that mark.

80 In the present case, earlier trade mark No 2 244 285 is a figurative mark consisting of the word element ‘lesac’ written in lower-case letters in a stylised font with the letter ‘s’ slightly slanted to the right.

81 The mark applied for is a figurative mark consisting of the word element ‘le sac’, written in lower-case letters in a stylised font similar to handwriting, placed in the centre and the number 11, written in a standard black font, below it.

82 It must be pointed out, first, that, in the overall impression created by the mark applied for, the most important element is the word element ‘le sac’, on account of its size, stylisation and central position. By contrast, the element ‘11’ is of less importance, on account of its very small size in comparison with that of the other element, its lower position in the sign and its relatively banal stylisation.

83 Secondly, the arguments put forward by the applicant do not support the view that the word element ‘le sac’, which will be perceived as coming from French, will be understood by the Spanish public. Knowledge of a foreign language cannot in general be assumed (judgment of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83). In the present case, the Spanish public will not understand the element ‘le sac’ as referring to a bag or garment. It is, on the contrary, highly probable that at least a non-negligible part of the relevant public, the level of attention of which has been held to be average, will not perceive the meaning of that word and will perceive that element for what it is, namely a foreign-sounding term, with the result that that word element will, for those consumers, have an average degree of distinctiveness.

84 It follows that the element ‘le sac’ is the element that contributes most to the overall impression created by the mark applied for. Furthermore, that element is common to the signs at issue, since earlier trade mark No 2 244 285 consists solely of the word element ‘lesac’ written in a stylised font.

85 The Board of Appeal, in paragraphs 72 to 74 of the contested decision, upheld the Opposition Division’s analysis and found that the signs at issue were visually and phonetically similar since the word element ‘le sac’ in the mark applied for and the word element ‘lesac’ in earlier trade mark No 2 244 285 were identical. It pointed out, in that regard, that the stylised font of those word elements was essentially decorative or ornamental and only played a secondary role. Taking into account the differences arising out of the other elements of the earlier mark and the element ‘11’ in the mark applied for, it found that there was an above average degree of visual similarity and a high degree of phonetic similarity.

86 The applicant submits, in essence, that the signs at issue are visually and phonetically different and are not therefore similar. It maintains that the structure of those signs is completely different: the mark applied for is composed of several word elements, namely the two words ‘le’ and ‘sac’ and the number 11, which is placed under those words in the centre of the line, whereas earlier trade mark No 2 244 285 consists of one single word, ‘lesac’.

87 From a phonetic standpoint, the applicant submits that earlier trade mark No 2 244 285, which consists of the word ‘lesac’, is very short, comprises two syllables and is read as a single word, whereas the mark applied for is longer and consists of three separate words, namely ‘le’, ‘sac’ and ‘once’ (the Spanish word for ‘eleven’), which are read separately.

88 From the visual and phonetic standpoints, it must be held that, in the light of the presence in the signs at issue of the word elements ‘le sac’ and ‘lesac’, which are almost identical visually and will be pronounced in the same way, there are similarities between those signs. Furthermore, in view of those similarities, the elements of dissimilarity are not capable of dispelling the impression on the part of the relevant public that those signs are visually similar to an above average degree and phonetically similar to a high degree when they are assessed as a whole.

89 Consequently, the Board of Appeal’s finding that the signs at issue are visually similar to an above average degree and phonetically similar to a high degree must be upheld.

90 The Board of Appeal pointed out, in paragraph 75 of the contested decision, that the signs at issue were not conceptually similar, because both earlier trade mark No 2 244 285 and the mark applied for had no meaning for the Spanish public.

92 It is apparent from the foregoing findings in paragraph 83 above relating to the lack of meaning of the word elements ‘le sac’ and ‘lesac’ for the relevant public that the Board of Appeal did not err in finding that the signs at issue had no meaning for the relevant public. In that regard, it must, however, be stated that, since it is true that, because they have no meaning, those signs are not conceptually similar, the conceptual comparison is, in actual fact, irrelevant (see, to that effect, judgment of 14 November 2017, Claranet Europe v EUIPO — Claro (claranet), T‑129/16, not published, EU:T:2017:800, paragraph 83 and the case-law cited).

93 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).

94 The Board of Appeal found in paragraphs 76 and 77 of the contested decision that the distinctiveness of earlier trade mark No 2 244 285 rested on its distinctiveness per se and that, since that earlier mark had no apparent meaning for the relevant Spanish public in relation to the services in Class 35 in question because the French word ‘sac’ is translated into Spanish by the word ‘bolsa’, its inherent distinctiveness had to be seen as normal.

95 It follows from the foregoing findings relating to the lack of meaning of the French word ‘sac’ for the relevant public that that assessment is not marred by error.

96 The Board of Appeal found that, in view of the above average degree of visual similarity and high degree of phonetic similarity, the average degree of distinctiveness of earlier trade mark No 2 244 285 and the similarity of the goods and services, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

97 The applicant submits that, since the goods and services at issue are different, there is no likelihood of confusion. It is, however, clear from the foregoing considerations in paragraphs 68 to 74 above regarding the comparison of the goods and services at issue, between which goods and services the degree of similarity varies from low to average, that the premiss on which the applicant’s argument is based is incorrect.

98 In the alternative, the applicant submits that the goods and services at issue as well as the signs at issue may be considered to be, at most, similar to a low degree, with the result that it must be held that there is no likelihood of confusion. However, in that regard the applicant’s argument is also based on an incorrect premiss, since, as is apparent from the foregoing considerations in paragraphs 75 to 92 above concerning the comparison of those signs, they are similar to an above average degree from the visual standpoint and similar to a high degree from the phonetic standpoint, which are the only ones that matter in the present case.

99 In conclusion, it is clear from the examination carried out in paragraphs 68 to 92 above that, in view of the low to average degree of similarity between the goods and services at issue; the above average degree of visual similarity and high degree of phonetic similarity between the signs at issue, since they partially coincide in the presence of the element ‘le sac’ in the mark applied for and that of the element ‘lesac’ in earlier trade mark No 2 244 285; the average degree of distinctiveness of the latter mark and the not uncommon practice, in the clothing sector, of configuring a mark in different ways (see, to that effect, judgment of 25 May 2012, Nike International v OHIM — Intermar Simanto Nahmias (JUMPMAN), T‑233/10, not published, EU:T:2012:267, paragraph 53 and the case-law cited), there is, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

100 Consequently, the Board of Appeal did not err in finding that there is such a likelihood of confusion in the present case.

101 The fourth plea must therefore be rejected as unfounded and consequently the present action must be dismissed.

102 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.

103 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) >> Armani v EUIPO - Asuncion (le Sac 11) (EU trade mark - Judgment) [2020] EUECJ T-654/18 (26 March 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T65418.html Cite as: EU:T:2020:122, ECLI:EU:T:2020:122, [2020] EUECJ T-654/18

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