Jirus v EUIPO - Nile Clothing (Racing Syndicate) (EU trade mark - Judgment) [2021] EUECJ T-356/20 (27 October 2021)

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(EU trade mark – Invalidity proceedings – EU figurative mark Racing Syndicate – Earlier international word mark SYNDICATE – Submission of evidence for the first time before the Board of Appeal – Article 95(2) of Regulation (EU) 2017/1001 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))

Václav Jiruš, residing in Vitín (Czech Republic), represented by J. Zedníková, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Nile Clothing AG, established in Sutz-Lattrigen (Switzerland), represented by C. Raßmann, M. Suether and F. Adinolfi, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 31 March 2020 (Case R 1488/2019-5), relating to invalidity proceedings between Nile Clothing and Mr Jiruš,

composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 1 September 2020,

having regard to the response of the intervener lodged at the Court Registry on 22 September 2020,

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 8 May 2013, the applicant, Mr Václav Jiruš, 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 9, 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:

– Class 9: ‘Protective helmets, protective helmets for motorcyclists, body protectors for motorcyclists, back protectors and kidney belts for motorcyclists’;

– Class 28: ‘Sporting articles included in this class, toe sliders – protective paddings (parts of sports suits), guards and protective paddings for parts of the body, knee guards, shin guards and elbow pads’.

4 The trade mark application was published in Community Trade Marks Bulletin No 141/2013 of 29 July 2013 and the corresponding figurative sign was registered on 27 December 2014.

5 On 16 June 2015, the intervener, Nile Clothing AG, filed with EUIPO an application for a declaration that the contested mark was invalid in respect of all of the goods referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on international registration No 691975 in respect of the word mark SYNDICATE, designating the European Union, Germany, France, Italy and Lithuania, which was registered on 26 March 1998 and covers goods in Classes 24 and 25 corresponding, for each of those classes, to the following description:

– Class 25: ‘Clothing such as pullovers, blouses, shirts, outerwear and sleeveless outerwear, trousers, skirts, outfits, vests, jackets, blazers, coats, ski clothing, ski jackets, ski pants, mufflers, bathing suits, pockets for clothing, belts’.

7 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).

8 From 16 July 2015 to 19 April 2018, the invalidity proceedings were suspended on account of pending revocation proceedings against the earlier mark, at the end of which the earlier mark was revoked in respect of the ‘bath towels’ in Class 24 and the ‘clothing such as vests, pockets for clothing’ in Class 25.

9 On 14 May 2019, the Cancellation Division rejected the application for a declaration of invalidity in its entirety as a result of the finding of its own motion that the earlier international registration had expired and that no evidence of renewal of that mark had been submitted before the date of closure of the adversarial part of the proceedings, namely 22 August 2018.

10 On 12 July 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

11 By decision of 31 March 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the Cancellation Division’s decision of 14 May 2019 and declared the contested mark invalid in respect of all of the goods for which it was registered. In particular, first, it found that the existence of the earlier mark, on which the application for a declaration of invalidity was based, was validly proved by the renewal certificate in respect of the earlier mark (‘the renewal certificate’) which the intervener had submitted before it with the statement of grounds for its appeal. Secondly, it found that there was a likelihood of confusion on the part of the relevant public with regard to all the goods covered by the contested mark. In that regard, it pointed out that, in the light of the nature of the earlier mark, the relevant public consisted of all the consumers in the European Union. Furthermore, it stated, as regards the goods in Classes 9 and 28, that the relevant public’s level of attention was above average and, as regards the goods in Class 25, that the public’s level of attention was average.

12 As regards, the comparison of the goods at issue, the Board of Appeal found that the ‘clothing’ in Class 25 covered by the marks at issue was identical and that the goods ‘footwear, headgear’ in that class covered by the contested mark were similar to an average degree to the ‘clothing’ covered by the earlier mark. It added that the goods in Classes 9 and 28 covered by the contested mark were similar to a low degree to the ‘clothing’ covered by the earlier mark.

13 As regards, next, the comparison of the signs at issue, the Board of Appeal first of all found that the term ‘syndicate’, which was contained in both of the signs at issue, had an average degree of distinctiveness and that the term ‘racing’, which was only contained in the contested sign, was, in the light of its descriptive meaning with regard to the goods in Classes 9 and 28, weakly distinctive with regard to those goods in the eyes of English-speaking consumers. It also found that, visually and phonetically, the signs at issue were, on account of the presence in both of them of the distinctive element ‘syndicate’, similar to an average degree and that the presence of the weakly distinctive word element ‘racing’ in the contested sign did not make it possible to conclude that there was no visual and phonetic similarity between them. Conceptually, it found that the signs at issue were identical for the part of the public which did not understand the meaning of the term ‘racing’ and similar to an average degree for the part of the public which did understand the meaning of that term. Furthermore, the Board of Appeal pointed out that the inherent distinctiveness of the earlier mark was average. In addition, it rejected the applicant’s argument relating to the coexistence of two other SYNDICATE word marks, on account of the lack of any evidence of use of those marks.

16 In support of his action, the applicant puts forward two pleas in law, alleging (i) infringement of Article 95(2) of Regulation 2017/1001 and of Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), inasmuch as the Board of Appeal erred in accepting the evidence of the existence of the earlier mark which had been submitted for the first time before it, and (ii) infringement of Article 8(1)(b) of Regulation 2017/1001, inasmuch as there is no likelihood of confusion on the part of the relevant public.

17 It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 8 May 2013, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

18 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to the articles of Regulation 2017/1001 must be understood as referring to the articles of Regulation No 207/2009, which are substantively identical. By contrast, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the first plea, which relates to an infringement of a procedural nature, will be examined in the light of the provisions of Regulation 2017/1001 and of Delegated Regulation 2018/625 which the applicant relied on.

The first plea, alleging that the evidence of the existence of the earlier mark which was submitted for the first time before the Board of Appeal was wrongly accepted

19 The applicant claims that the Board of Appeal infringed Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, by accepting, without any valid justification, the evidence which had been submitted for the first time before it seeking to prove that the registration of the earlier mark had been renewed.

20 He takes the view that the reasons put forward for that late submission before the Board of Appeal are not valid, because the intervener had had sufficient time to be able to submit the renewal certificate before the Cancellation Division. He also adds that, in the light of the fact that the intervener brought the invalidity proceedings, it should have shown itself to be more responsive and diligent in asserting its rights in good time before the Cancellation Division.

22 According to Article 95(2) of Regulation 2017/1001, EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.

23 It follows from the wording of Article 95(2) of Regulation 2017/1001 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see, by analogy, judgments of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraph 34, and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 21).

24 In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see, by analogy, judgment of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 22).

25 Furthermore, Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision reads as follows:

‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:

(a) they are, on the face of it, likely to be relevant for the outcome of the case; and

(b) they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’

26 In the present case, it must first of all be pointed out that the applicant does not dispute that the renewal certificate is relevant for the outcome of the case, but solely submits that there is no valid reason for the late submission of that certificate before the Board of Appeal. He does not therefore dispute the first condition laid down in Article 27(4)(a) of Delegated Regulation 2018/625.

27 As regards the second condition laid down in Article 27(4)(b) of Delegated Regulation 2018/625, it must be stated that the Board of Appeal, first, pointed out that the renewal certificate had been submitted before it in order to contest the finding which the Cancellation Division had made of its own motion, namely that the evidence of the existence of the earlier mark was lacking at the relevant point in time. Secondly, it found that the circumstances of the case justified the late submission of the renewal certificate in respect of the earlier mark, on account of the lengthy suspension of the invalidity proceedings, which had the consequence that, at the relevant point in time for proving the existence of the earlier mark, namely 22 August 2018, the first certificate of registration of the earlier mark had expired.

28 In that regard, it must be stated that the applicant disputes only the existence of specific circumstances which justified the late submission of the renewal certificate at issue. By contrast, he does not dispute that the purpose of the submission of the renewal certificate was to contest the finding which the Cancellation Division had made of its own motion, namely that the earlier mark no longer existed at the relevant period in time.

29 Consequently, the Board of Appeal, by agreeing to take the renewal certificate into account on the basis of that justification, complied with the two cumulative requirements laid down by Article 27(4) of Delegated Regulation 2018/625 and consequently exercised its discretion correctly.

The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

31 In support of his second plea, the applicant claims that the Board of Appeal made errors of assessment in applying Article 8(1)(b) of Regulation No 207/2009. He submits that the differences between, first, the signs at issue and, secondly, the goods at issue did not make it possible for the Board of Appeal to conclude that there was a likelihood of confusion. He also argues that the application for registration of the contested mark had been the subject of an opposition on the part of the intervener which had been rejected by EUIPO. The applicant submits that the fact that the same competent authority arrived at a completely different conclusion in the context of the application for a declaration of invalidity of the contested mark is contrary to the principle of legal certainty.

32 Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, provides that, upon application by the proprietor of an earlier mark, an EU trade mark is to be declared invalid 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. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

33 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. 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).

34 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

35 It is in the light of the foregoing considerations that it must be examined whether the Board of Appeal was right in finding that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public.

36 In the present case, the Board of Appeal found in the contested decision, as regards the goods in Class 9, that the relevant public consisted both of motorcycling professionals and enthusiasts and of the general public and that, on account of the importance of the goods in that class, which served to protect the human body, all of those consumers displayed an above-average level of attention. As regards the goods in Class 28, the Board of Appeal found that the relevant public consisted of sports enthusiasts and the general public, which displayed an above-average level of attention. Lastly, as regards the goods in Class 25, the Board of Appeal found that the relevant public consisted of the general public, which displayed an average level of attention.

37 The parties do not dispute those assessments on the part of the Board of Appeal so far as concerns the definition of the relevant public. It must be pointed out in that regard that, in the context of his arguments regarding the comparison of the goods at issue, the applicant submits that the goods in Classes 9 and 28 covered by the contested mark are aimed at motorcyclists, that is to say, at a public which is completely different from that at which the earlier mark is aimed. Since the applicant puts that argument forward in the context of the question of whether the goods are similar and it relates more to the nature and the intended purpose of the goods at issue, it is appropriate to examine it in the context of the comparison of the goods at issue.

38 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

39 The applicant submits that the goods in Classes 9 and 28 covered by the contested mark are aimed at a specific public, namely motorcyclists. It argues that motorcyclists are better informed and more attentive than the public at which the goods covered by the earlier mark are aimed. It adds that the goods in Classes 9 and 28 covered by the contested mark are sold in specialist shops. Furthermore, it claims that the nature, the purpose, the method of use and the distribution channels of the goods at issue are also different, as are the prices of the goods covered by the contested mark, which are higher than those of the goods covered by the earlier mark.

41 In paragraphs 47 and 48 of the contested decision, the Board of Appeal, first of all, found that the ‘clothing’ covered by the contested mark was identical to that covered by the earlier mark. Next, it found that the goods ‘footwear, headgear’ in Class 25 covered by the contested mark had the same aesthetic purpose, were aimed at the same public and were often manufactured by the same undertakings and marketed thorough the same distribution channels as the ‘clothing’ covered by the earlier mark, with the result that those goods were similar to an average degree. The parties do not dispute those findings.

42 In paragraphs 49 and 50 of the contested decision, the Board of Appeal pointed out that the ‘protective helmets, protective helmets for motorcyclists, body protectors for motorcyclists, back protectors and kidney belts for motorcyclists’ in Class 9 were specific equipment for the protection of the bodies of motorcyclists and that they belonged to the same market sector as the sportswear which was included in the broader category of the ‘clothing’ covered by the earlier mark. It took the view that those goods were commonly manufactured under the control of the same entity, were offered for sale in the same specialist shops or sports departments in shops and satisfied the needs of the same public. The Board of Appeal concluded that those goods were similar to a low degree.

43 As for the ‘sporting articles including protective paddings and guards of all kind[s]’ in Class 28, the Board of Appeal found that they constituted a broad category covering some specific appliances and equipment which were produced by manufacturers of clothing, sold in the same shops and aimed at the same public. It found that those goods were similar to a low degree to the ‘clothing’ covered by the earlier mark.

44 In the first place, it is true that, as has been submitted by the applicant, the goods referred to in paragraph 42 above do not coincide, in principle, either as regards their nature or their intended purpose. Although the ‘protective helmets, protective helmets for motorcyclists, body protectors for motorcyclists, back protectors and kidney belts for motorcyclists’ in Class 9 and the ‘clothing’ in Class 25 have the characteristic in common of covering the human body, their intended purpose is not the same. The former are worn on the head or on various parts of the body in order to protect them in the event of cycling or motorcycling accidents. The latter is intended in a more general manner to cover the human body, conceal it, adorn it and protect it against the elements (see, to that effect, judgment of 29 January 2020, Aldi v EUIPO – Titlbach (ALTISPORT), T‑697/18, not published, EU:T:2020:14, paragraph 55 and the case-law cited).

45 The fact, however, remains that, as is correctly pointed out by EUIPO, the category of goods in Class 25 covered by the earlier mark also includes items of clothing that are used for various sporting disciplines, including cycling or motorcycling (judgment of 20 February 2013, Caventa v OHIM – Anson’s Herrenhaus (BERG), T‑225/11, not published, EU:T:2013:82, paragraph 36). Accordingly, the ‘clothing’ in Class 25 can also include sports clothing for motorcyclists, such as jackets or trousers for motorcyclists. It must in that regard be pointed out that, in the specification of the goods in Class 25 covered by the earlier mark, the words ‘such as’ are used after the general term ‘clothing’, which can only mean that the goods listed after that term should merely be regarded as non-exhaustive examples of the more general category of ‘clothing’ in respect of which the earlier mark has been registered.

46 Consequently, contrary to what is submitted by the applicant, the category of ‘clothing’ in Class 25 can include items of clothing which are also aimed at motorcyclists, like those in Class 9 covered by the contested mark. In that regard, it must be pointed out that in the judgment of 7 July 2005, Miles International v OHIM – Biker Miles (Biker Miles) (T‑385/03, EU:T:2005:276), the Court found, as regards the goods ‘equipment and clothing for riders of two‑wheeled vehicles, namely boots, shoes, gloves, scarves, rainwear, weather protection clothing, pullovers, helmets, kidney protectors, leather clothing, imitation leather clothing’ in Class 25, that ‘it [could not] be inferred from the designation of the goods in the application for registration that the clothing covered by the application possesses characteristics, besides its function, allowing it to be distinguished from clothing in general’ (judgment of 7 July 2005, Biker Miles, T‑385/03, EU:T:2005:276, point 36).

47 In the second place, as regards the question of whether the goods at issue are complementary, it must be borne in mind that, according to the case-law, complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). Accordingly, for the purposes of assessing whether goods or services are complementary, the relevant public’s perception of the importance of a product or service for the use of another product or service should be taken into consideration (see, to that effect, judgment of 14 May 2013, Representation of a chicken, T‑249/11, EU:T:2013:238, paragraph 22 and the case-law cited). In the present case, in view of what has been pointed out in paragraph 45 above, the goods referred to in paragraph 42 above may be designed to be used together, and some of the clothing for motorcyclists may be worn for cycling or motorcycling.

48 In the third place, for the same reason and contrary to what the applicant claims, it cannot be ruled out that the goods referred to in paragraph 42 above are marketed in the same sales outlets.

49 In the fourth place, the applicant’s argument that the goods covered by the contested mark are sold at much higher prices than the goods covered by the earlier mark must be rejected, because the applicant has not established that protective equipment for motorcyclists is generally more expensive than clothing for motorcyclists, such as, for example, motorcycling jackets.

50 Consequently, the Board of Appeal was right in finding that there was a low degree of similarity between the goods in Class 9 covered by the contested mark and the ‘clothing’ in Class 25 covered by the earlier mark.

51 Lastly, as regards the goods in Class 28 covered by the contested mark, it must be held that, as has already been acknowledged by the Court, the category of goods in Class 25 covered by the earlier mark may also include articles of clothing that are used for various sporting disciplines, such as football shirts or clothing for gymnastics (see, to that effect, judgment of 20 February 2013, BERG, T‑225/11, not published, EU:T:2013:82, paragraph 36). In that regard, it must be pointed out that the goods in Class 25 covered by the earlier mark expressly include clothing for sports, such as ski clothing, ski jackets, ski pants and bathing suits.

52 The sports clothing in Class 25 may be produced by the same manufacturers and marketed under the same mark as the sports apparatus and sporting articles in Class 28 covered by the contested mark. Furthermore, the goods in question may share the same distribution channels and may, in particular, be sold in the same specialist shops. Furthermore, they are complementary goods for certain sporting disciplines, the practice of which requires sporting articles and articles for protecting the body and also specific clothing to be used together (see, to that effect, judgment of 20 February 2013, BERG, T‑225/11, not published, EU:T:2013:82, paragraph 37).

53 In the light of all of those considerations, the Board of Appeal was right in finding, in paragraph 50 of the contested decision, that there was a low degree of similarity between the ‘sporting articles included in this class, toe sliders – protective paddings (parts of sports suits), guards and protective paddings for parts of the body, knee guards, shin guards and elbow pads’ in Class 28 covered by the contested mark and the ‘clothing’ in Class 25 covered by the earlier mark.

54 The applicant submits that the Board of Appeal did not sufficiently take into account the graphic stylisation of the contested mark and the word ‘racing’, the word which, according to the applicant, constitutes the dominant element in that mark. He also disputes the Board of Appeal’s assessments regarding the visual, phonetic and conceptual comparison of the signs at issue.

55 It must be pointed out, in the first place, that 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).

56 In the second place, it must be stated that 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 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).

57 In paragraphs 56 to 59 of the contested decision, the Board of Appeal found that the signs at issue contained English terms, namely the words ‘racing’ and ‘syndicate’. It stated that the term ‘Syndicate’ would be understood by the majority of consumers in the European Union because a very similar equivalent term existed in many languages. It added that there was no reason to consider the term ‘Syndicate’ to be descriptive or weakly distinctive in relation to the goods in Classes 9, 25 and 28. For that reason, it found that the term ‘Syndicate’ had an average degree of distinctiveness with respect to the goods at issue. As for the term ‘Racing’ at the beginning of the contested sign, the Board of Appeal found that, as regards the goods in Classes 9 and 28 covered by the contested mark, the meaning of that term denoted a characteristic of that protective equipment. For that reason, it stated that, for English-speaking consumers, who understood the term ‘Racing’, that term was weakly distinctive.

58 Furthermore, the Board of Appeal found that, on account of the weak figurative stylisation of the contested mark and on account of the word element ‘Syndicate’, which is common to the marks at issue, the earlier mark was included in the contested mark.

59 The applicant disputes that assessment and submits that the graphic characteristics of the contested mark, such as the way in which it slopes, make it sufficiently distinctive. Furthermore, he argues that the element ‘Racing’ is, in the light of its position in front of the word element ‘Syndicate’ in the contested sign, the dominant element in that sign.

61 For the purposes of assessing the distinctive character of an element of 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 23 March 2017, Vignerons de la Méditerranée v EUIPO – Bodegas Grupo Yllera (LE VAL FRANCE), T‑216/16, not published, EU:T:2017:201, paragraph 26).

62 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

63 In the present case, it is necessary, first of all, to uphold the Board of Appeal’s finding that the stylisation of the contested sign is weak.

64 Furthermore, the Board of Appeal was right in finding that the term ‘Syndicate’ had an average degree of distinctiveness with respect to the goods at issue. In that regard, it must be stated, as was correctly pointed out by the Board of Appeal, that that term, which is present in both of the marks, will be understood by the majority of the relevant public, because of the existence in a number of languages that are spoken in the European Union of a similar equivalent term, such as, for example, ‘Syndikat’ in German, ‘syndicat’ in French, ‘sindacato’ in Italian and ‘sindicato’ in Spanish and Portuguese. As that term refers to a group of individuals or organisations combined to promote a common interest, it cannot be regarded as having a descriptive or weakly distinctive meaning, since it does not refer to a characteristic of the goods covered by Classes 9, 25 and 28.

65 In this respect, it must be stated that the term ‘Racing’ in the contested mark refers in general to the concept of races which take place in the context of sporting events. Consequently, as the Board of Appeal rightly pointed out, so far as concerns the goods in Classes 9 and 28 covered by the contested mark, the term ‘Racing’ refers to a possible use of the protective equipment in question, namely the fact that it is intended or suitable for being used in races which take place in the context of sporting events. It therefore has a weak inherent distinctive character. In view of that finding and, moreover, in the light of the fact that, in the contested sign, the terms ‘Racing’ and ‘Syndicate’ are the same size, the same colour and are stylised in the same way, the term ‘Racing’ cannot, contrary to what the applicant claims, be regarded as dominating the overall impression created by the contested mark.

66 In paragraphs 60 to 68 of the contested decision, the Board of Appeal pointed out that, since, in particular, the earlier mark was included in the contested mark and the word element ‘Racing’ was not dominant, the signs at issue were visually and phonetically similar to an average degree. Furthermore, from a conceptual standpoint, the Board of Appeal found that, for the part of the relevant public which understood only the term ‘Syndicate’, the marks at issue had the same meaning, with the result that they would be conceptually identical. As regards the part of the relevant public which understood the term ‘Syndicate’ and the term ‘Racing’, it found that the signs would be conceptually similar to an average degree, since the term ‘Syndicate’ conveyed the main concept in the contested mark and the term ‘Racing’ was descriptive of a characteristic of the goods in Classes 9 and 28 covered by the contested mark.

67 The applicant disputes the Board of Appeal’s finding that there is an average degree of similarity in the mind of the relevant public, and does so on account of the originality of the graphic representation of the contested mark, the dominant nature of the term ‘Racing’ in that mark and the fact that consumers will remember the first word in that mark more than the word which follows it.

69 In the first place, as regards the visual and phonetic comparison, it must be pointed out that, given that the word element ‘SYNDICATE’, which is the sole component of the earlier mark, is included in its entirety in the contested mark, the signs at issue are partially identical in such a manner as to create, in the mind of the relevant public, as the Board of Appeal rightly found, an impression of an average degree of visual and phonetic similarity.

70 It is true that, as the applicant points out, the word element ‘Racing’ constitutes the initial part of the contested mark and that, according to the case-law, that part of word marks may be more likely to hold the consumer’s attention than the following parts. However, that consideration cannot hold good in all cases and cannot, in any event, cast doubt on the principle that the assessment of the similarity of the signs must take into account the overall impression which they create (see judgment of 10 March 2016, credentis v OHIM – Aldi Karlslunde (Curodont), T‑53/15, not published, EU:T:2016:136, paragraph 35 and the case-law cited).

71 In the present case, it has already been held that the word element ‘Syndicate’ has an average degree of distinctiveness. The word element ‘Racing’ has a weaker degree of distinctiveness than the word element ‘Syndicate’. Moreover, as the Board of Appeal rightly pointed out, the element ‘Syndicate’ is longer than the element ‘Racing’, because the element ‘Syndicate’ comprises nine letters and four syllables, whereas the element ‘Racing’ comprises six letters and two syllables. Since the word element ‘Racing’ is not dominant in the contested mark and the figurative stylisation of that mark is very weak, the Board of Appeal was right in finding that the signs at issue are visually and phonetically similar to an average degree.

72 In the second place, as regards the conceptual comparison, in view of the findings in paragraph 64 and 65 above, and as the Board of Appeal rightly found, the signs at issue are identical for the part of the relevant public which understands the meaning of the term ‘Syndicate’, but not that of the term ‘Racing’. As regards the part of the relevant public which understands the meaning of both of the terms, the Board of Appeal was right in finding that the signs at issue will be similar to an average degree.

73 In paragraphs 77 to 84 of the contested decision, the Board of Appeal took the view that there was, in the present case, a likelihood of confusion on the part of the relevant public. It found, in essence, that, as regards the contested goods in Class 25, there was a likelihood of confusion with regard to the whole of the relevant public on account of the important visual, phonetic and conceptual similarities between the signs at issue and the identity or average degree of similarity between those goods. As regards the contested goods in Classes 9 and 28, it pointed out, in essence, that there was a likelihood of confusion at least on the part of the public which also understood the term ‘Racing’, even though the public displayed an above-average level of attention and the goods were similar to a low degree.

74 EUIPO contends that the applicant has not taken issue with the global assessment of the likelihood of confusion carried out by the Board of Appeal and, in any event, like the intervener, takes the view that that assessment is correct.

75 It must be pointed out at the outset that, contrary to what EUIPO submits, the applicant disputes the Board of Appeal’s finding as regards the existence of a likelihood of confusion on the part of the relevant public, although he does not put forward any arguments relating, in particular, to the global nature of the assessment of the likelihood of confusion.

76 It must be borne in mind 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, 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).

77 As regards, in the first place, the likelihood of confusion with regard to the goods in Class 25, it must be pointed out that, in the present case, as has been established above, the goods covered by the signs at issue are identical or similar to an average degree (see paragraph 41 above), the signs at issue are visually and phonetically similar to an average degree (see paragraph 71 above) and are conceptually either identical or similar to an average degree (see paragraph 72 above). Furthermore, it must be pointed out that the Board of Appeal’s assessment that the inherent distinctiveness of the earlier mark must be considered to be average has not been disputed by the applicant.

78 In the light of the similarity of the signs at issue, the identity or similarity of the goods at issue and the average distinctiveness of the earlier mark, the Board of Appeal did not err in finding that there is a likelihood of confusion on the part of the relevant public.

79 As regards, in the second place, the likelihood of confusion with regard to the goods in Classes 9 and 28, it must be pointed out that, in the present case, as has been established above, the goods covered by the signs at issue are similar to a low degree (see paragraphs 50 and 53 above) and the relevant public will display an above-average level of attention (see paragraph 36 above). Those signs are visually and phonetically similar to an average degree (see paragraph 71 above) and are conceptually either identical or similar to an average degree (see paragraph 72 above). The Board of Appeal’s assessment that the inherent distinctiveness of the earlier mark must be considered to be average has not been disputed by the applicant. Furthermore, the word element ‘Syndicate’ is the most distinctive element in the contested mark, whereas the term ‘Racing’ refers to a characteristic of the protective equipment covered by Classes 9 and 28 and is therefore weakly distinctive for the consumers who understand it.

80 It must therefore be held, as the Board of Appeal found, that, at the very least the part of the relevant public which understands the term ‘Racing’ will consider that differentiating term to be merely information regarding the characteristics of the goods in Classes 9 and 28, in the sense that they are intended or suitable for use in races in the context of sporting events. Consequently, the Board of Appeal did not err in finding that the consumers concerned will assume or are liable to assume that the contested mark is merely a special product line covered by the earlier mark which designates specific protective equipment and gear for racing purposes and that there is therefore, with regard to those goods, a likelihood of confusion on the part of the relevant public.

81 In view of all of the foregoing considerations, the second plea on which the applicant relies must be rejected and the action must therefore be dismissed in its entirety.

82 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. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Jirus v EUIPO - Nile Clothing (Racing Syndicate) (EU trade mark - Judgment) [2021] EUECJ T-356/20 (27 October 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T35620.html Cite as: EU:T:2021:736, [2021] EUECJ T-356/20, ECLI:EU:T:2021:736

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