Societe Elmar Wolf v EUIPO - Fuxtec (Representation d'une tête d'animal) (EU trade mark - Judgment) [2022] EUECJ T-596/21 (09 November 2022)

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(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark representing a head – Earlier national figurative mark representing the head of a canine – Earlier international registration designating the European Union – Figurative mark representing the head of a canine – Article 8(1)(b) of Regulation (EC) No 207/2009 – Relative ground for refusal – No likelihood of confusion)

Société Elmar Wolf, established in Wissembourg (France), represented by N. Boespflug, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

Fuxtec GmbH, established in Herrenberg (Germany), represented by M. Hammer and C. Koller, lawyers,

composed, at the time of the deliberations, of M.J. Costeira, President, T. Perišin and I. Dimitrakopoulos (Rapporteur), Judges,

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

1 By its action under Article 263 TFEU, the applicant, Société Elmar Wolf, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2021 (Case R 2834/2019‑4) (‘the contested decision’).

2 On 25 July 2016, Fuxtec GmbH obtained an international registration designating the European Union in respect of the following figurative sign:

3 The mark applied for covers goods and services in Classes 4, 7, 8, 12 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:

– Class 4: ‘Industrial oils and greases, in particular engine oil, lubricating oils and greases; lubricants’;

– Class 7: ‘Machines, mechanical equipment and hand-held tools, other than hand-operated for household and agricultural, horticultural and forestry purposes, in particular windlasses, starters for engines, painting machines, drive chains, except for agriculture, drive shafts, except for land vehicles, drilling heads (parts of machines), cutters (machine parts), drilling machines, steam engines, steam cleaners, seals (engine parts), compressed air machines, electric and motorized grass, hedges and pruning shears, chain saws, trimmers, brush cutters, leaf vacuum, scythes, road/walkway sucker, garden shredder, foxhole drills; inking machines, spray guns, filters (parts of machines or motors), air filters for motors, milling machines, blowers, exhaust fans, blowers, cabinets for machines and engines, power generators, alternators, transmissions, other than for land vehicles, glow plugs for diesel engines, shredders, shredder blades, high-pressure cleaners, woodworking machinery, wood splitters, weeders, glow plugs for diesel engines, spark plugs for internal combustion engines, chain sharpening devices (electric), valves for machines, blades (parts of machines), pistons for engines, pistons (machine or engine parts), piston rings, cultivator (motorized) [cultivators], cultivators [machines], couplings (connections) except for land vehicles, shaft couplings (machines), crankshafts, bearings [machine parts], self-lubricated bearings, machine housings, machine shafts, mowers, knives for movers, knives [machine parts], knife holders [parts of machines], knife grinding machines [machine parts], actuators [machine parts], motor casing, motors other than for land vehicles, silencers for engines, transmission belts for engines, emergency units, emergency generators, connecting rods for machines and engines, pumps (machine or engine parts), machine wheels, wheels gear, except for land vehicles, lawnmowers (machines), piston rings, saw blades (parts of machines), sawhorses (machine parts), saws (machines), aspirator, suction machines for industrial purposes, silencers for engines (exhaust), grinders, grinding wheels (parts of machines), pumps, lubrication rings (machine and engine parts), lubricators (machine parts), snow milling machines, cutting machines, self-lubricated bearings, sieves (machines or machine parts), chucks (machine parts), color-spray guns, coils for machines, shock absorber pistons (parts of machines), power generators, drive chains, except for land vehicles, transmission belts for engines, carburetors, dethatch machines, drive shafts, except for land vehicles, shaft couplings (machines), tools (machine parts), tool holders (machine parts), jacks (machines), spark plugs for internal combustion engines, cylinders for machines, cylinders for motors, pistons, cylinder heads for engines; parts of all goods previously specified as far as contained in this class’;

– Class 8: ‘Hand tools and hand-operated devices for household and agricultural, horticultural and forestry purposes, in particular axes (hatchets), axes (small), peak axes, pruning shears, hatchets (axes), drills, drill holder (hand tools), boring bars, foxhole drill, garden knives, secateurs, garden tools, hedge trimmers, long branch cutter, tools for grinding and sharpening, grinding wheels (hand tools), scarifier, scythes, sickles, weed cutters, hand-operated, tool belt (holder); cutlery, forks and spoons, especially forks, dinner forks; lawnmowers (hand operated)’;

– Class 12: ‘Vehicles and apparatus for locomotion by land, in particular, trailers, trailer hitches for vehicles, sidecars, buffet cars, food carts, tricycles, vehicle tires, vehicle seats, vehicle covers, trolley wheels, interior upholstery for vehicles, carts, strollers, stroller covers, handcart, covers for prams, hubcaps, wheel bearings for vehicles, tires, hand trucks, inner tubes for vehicle tires, transport tricycles, trolleys, trolley for cleaning material and cleaning apparatus’;

– Class 35: ‘Retail services including retail services for mail order and catalogue mail order, via Internet or via teleshopping concerning industrial oils and greases, in particular engine oil, lubricating oils and greases; lubricants; machines, mechanical equipment and hand-held tools, other than hand-operated for household and agricultural, horticultural and forestry purposes, in particular windlasses, starters for engines, painting machines, drive chains, except for agriculture, drive shafts, except for land vehicles, drilling heads (parts of machines), cutters (machine parts), drilling machines, steam engines, steam cleaners, seals (engine parts), compressed air machines, electric and motorized grass, hedges and pruning shears, chain saws, trimmers, brush cutters, leaf vacuum, scythes, road/walkway sucker, garden shredder, foxhole drills; inking machines, spray guns, filters (parts of machines or motors), air filters for motors, milling machines, blowers, exhaust fans, blowers, cabinets for machines and engines, power generators, alternators, transmissions, other than for land vehicles, glow plugs for diesel engines, shredders, shredder blades, high-pressure cleaners, woodworking machinery, wood splitters, weeders, glow plugs for diesel engines, spark plugs for internal combustion engines, chain sharpening devices (electric), valves for machines, blades (parts of machines), pistons for engines, pistons (machine or engine parts), piston rings, cultivator (motorized) [cultivators], cultivators [machines], couplings (connections) except for land vehicles, shaft couplings (machines), crankshafts, bearings [machine parts], self-lubricated bearings, machine housings, machine shafts, mowers, knives for movers, knives [machine parts], knife holders [parts of machines], knife grinding machines [machine parts], actuators [machine parts], motor casing, motors other than for land vehicles, silencers for engines, transmission belts for engines, emergency units, emergency generators, connecting rods for machines and engines, pumps (machine or engine parts), machine wheels, wheels gear, except for land vehicles, lawnmowers (machines), piston rings, saw blades (parts of machines), sawhorses (machine parts), saws (machines), aspirator, suction machines for industrial purposes, silencers for engines (exhaust), grinders, grinding wheels (parts of machines), pumps, lubrication rings (machine and engine parts), lubricators (machine parts), snow milling machines, cutting machines, self-lubricated bearings, sieves (machines or machine parts), chucks (machine parts), color-spray guns, coils for machines, shock absorber pistons (parts of machines), power generators, drive chains, except for land vehicles, transmission belts for engines, carburetors, dethatch machines, drive shafts, except for land vehicles, shaft couplings (machines), tools (machine parts), tool holders (machine parts), jacks (machines), spark plugs for internal combustion engines, cylinders for machines, cylinders for motors, pistons, cylinder heads for engines; parts of all goods previously specified as far as contained in this class; hand tools and hand-operated devices for household and agricultural, horticultural and forestry purposes, in particular axes (hatchets), axes (small), peak axes, pruning shears, hatchets (axes), drills, drill holder (hand tools), boring bars, foxhole drill, garden knives, secateurs, garden tools, hedge trimmers, long branch cutter, tools for grinding and sharpening, grinding wheels (hand tools), scarifier, scythes, sickles, weed cutters, hand-operated, tool belt (holder); cutlery, forks and spoons, especially forks, dinner forks; lawnmowers (hand operated); vehicles and apparatus for locomotion by land, in particular, trailers, trailer hitches for vehicles, sidecars, buffet cars, food carts, tricycles, vehicle tires, vehicle seats, vehicle covers, trolley wheels, interior upholstery for vehicles, carts, strollers, stroller covers, handcart, covers for prams, hubcaps, wheel bearings for vehicles, tires, hand trucks, inner tubes for vehicle tires, transport tricycles, trolleys, trolley for cleaning material and cleaning apparatus’.

4 On 17 August 2017, the applicant filed a notice of opposition to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.

5 That opposition, on the basis of Article 8(1)(b) of 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), was based on 10 earlier marks, including the following rights:

– French figurative trade mark No 123965429, which is reproduced below and was registered on 29 March 2013:

– international registration No 1177742, designating Spain, Portugal and Romania, which was registered on 27 May 2013 and relates to the figurative mark reproduced below:

6 The goods and services covered by the earlier marks which have been referred to in paragraph 5 above are in Classes 7, 8 and 35 and correspond, for each of those classes, to, inter alia, the following description:

– Class 7: ‘Motor-driven lawnmowers, including ride-on lawn mowers and lawn-mowing robots as well as spare parts therefor, namely casings, hoods, bodies, handlebars, wheels, engines, transmission parts, blades; motor hoes; soil tilling apparatus for gardening and agriculture (other than hand-operated ones), that can be fitted to lawnmowers; implements for lawn care, gardening and horticulture, gardening implements (agricultural implements other than hand-operated), agricultural implements, forestry implements and horticultural implements (other than hand-operated); mechanical reeling apparatus particularly for watering hoses; lawnmowers (hand-held implements) and spare parts thereof, namely housings, hoods, frames, handlebars, wheels, motors, engines, transmission parts, blades’;

– Class 8: ‘Soil cultivating apparatus for gardening and agriculture (hand-operated), that can be fitted to lawnmowers; implements for lawn care, gardening and horticulture, gardening implements (hand-operated agricultural implements), (hand-operated) implements for agriculture, forestry and horticulture’;

– Class 35: ‘Retail and wholesale sale, mail-order or Internet sale of lawnmowers, including ride-on lawn mowers and lawn-mowing robots, motor hoes, horticultural, forestry and agricultural machines, hand-operated or electric horticultural, forestry and agricultural instruments and tools; presentation of goods on communication media for retail sale of the aforementioned goods, namely sales promotion’.

7 On 30 October 2019, the Opposition Division of EUIPO rejected the applicant’s opposition.

8 On 11 December 2019, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By the contested decision, the Board of Appeal dismissed the appeal in its entirety, finding that there was no likelihood of confusion.

12 Given the date on which the application for registration at issue was filed, namely 25 July 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (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.

13 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 to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

The issue of whether the new evidence submitted by the applicant is admissible

14 EUIPO contends that the applicant submitted Annex A.13 to the application, in support of its argument that the signs at issue are conceptually identical, for the first time before the Court, that it is a new item of evidence and that it should not therefore be taken into account. It is a description of the main characteristics of canines, which can be consulted on a website at the following address: https://www.manimalworld.net.

15 In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001. It follows from that provision that the Court may not review the facts in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see, to that effect, judgments of 14 December 2017, GeoClimaDesign v EUIPO – GEO (GEO), T‑280/16, not published, EU:T:2017:913, paragraph 20, and of 7 July 2021, Frommer v EUIPO – Minerva (I-cosmetics), T‑205/20, not published, EU:T:2021:414, paragraph 14).

16 However, the document included as Annex A.13 to the application was submitted for the first time before the Court, with the result that it must be excluded and there is no need to assess its evidential value.

17 In support of its action, the applicant puts forward, in essence, a single plea in law, alleging that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009.

18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, 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.

19 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).

20 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).

21 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that no likelihood of confusion on the part of the relevant public could be found to exist between the earlier marks and the mark applied for.

22 It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s decision to take into account only French trade mark No 123965429 and international registration No 1177742 in its assessment of the opposition. Consequently, the Court’s examination will relate only to those two earlier marks, on which the applicant relied in support of the present action.

23 The Board of Appeal found, in paragraph 36 of the contested decision, that the relevant public consisted, in the light of the nature of the goods and services at issue, first, of the professional public, the level of attention of which was high, and, secondly, of the general public, the level of attention of which could vary from average to high depending on the degree of specialisation and the price of the goods and services at issue.

24 Furthermore, the Board of Appeal found, in paragraph 21 of the contested decision, that, since the earlier marks were a registration in France and an international registration designating Spain, Portugal and Romania, the relevant territory corresponded, in the present case, to that of those Member States.

25 Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

26 In the present case, the Board of Appeal implicitly found, in paragraph 22 of the contested decision, that all the goods and services covered by the earlier marks were identical to the goods and services covered by the mark applied for.

27 That assessment on the part of the Board of Appeal, which is not, moreover, disputed by the applicant, must be upheld.

28 In order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, phonetic and conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed (see judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 85 and the case-law cited).

29 Accordingly, 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 of those relevant aspects (see judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 30 and the case-law cited).

30 Furthermore, it is settled case-law 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, who is reasonably well informed and reasonably observant and circumspect, 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). In addition, account must be taken of the fact that the average consumer only rarely has a chance to compare the various marks directly and must rely on his or her imperfect recollection of them (see judgment of 28 March 2017, Regent University v EUIPO – Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 28 and the case-law cited).

31 The Board of Appeal found that, since the marks at issue were figurative marks, a phonetic comparison between them was not possible.

32 That assessment, which is not, moreover, disputed by the applicant, must be upheld.

33 The Board of Appeal stated that the signs at issue were dominated, from a visual standpoint, by a black and white element. It found that the earlier marks were surrounded by a circle and would be perceived as the silhouette of the head of an animal, namely a canine. The Board of Appeal also found that, visually, the earlier marks would be perceived as the head of a canine, for example a wolf, fox or dog, with a menacing expression. Conversely, it found that the mark applied for would be visually perceived as very abstract and that the identification of the head of a particular animal would be highly arbitrary. Consequently, the Board of Appeal concluded that the signs at issue were visually similar at most to a low degree.

34 In the first place, the applicant disputes the Board of Appeal’s finding that the signs at issue are dominated by a black and white element. It submits that those signs are spontaneously perceived and analysed by the consumer as black drawings on a white background and not as a black and white element, which is the first source of similarity. In the second place, the applicant disputes the Board of Appeal’s analysis that the consumer would have to enter into long speculations in order to perceive the mark applied for as representing the silhouette of a canine. Acknowledging that the earlier marks will immediately be perceived as representing the head of a canine, it submits that the contested sign will also be identified spontaneously as the stylised and simplified head of a canine. In that regard, it states that there are many similarities between the signs at issue and carries out a direct comparison of the central, upper and lower parts of those signs. In that context, it submits that, with regard to both of the signs at issue, the consumer’s visual attention is drawn to the eyes of the silhouette of the canine, which are represented by two white holes which give those silhouettes a menacing air, that the upper outlines of the silhouettes are very similar, because they represent the ears and the rounded shape of the top of the skull of a canine, and that the muzzles of the canines are triangular-shaped. Consequently, it argues that the marks at issue are visually similar to at least a normal degree.

36 In the present case, in the first place, it must be stated that each of the signs at issue represents a black drawing on a white background. As regards, next, the circle in the earlier marks, it must be pointed out that that circle is fine and is devoid of distinctive character. It is a basic shape which is commonly used as a frame in order to circumscribe a sign. The applicant is right in submitting that it is barely perceptible to the consumer and will not be memorised by him or her, and it must therefore be disregarded in the context of the overall impression created by the earlier marks. The Board of Appeal was therefore right in not taking that element into account in comparing the signs at issue.

37 In the second place, it must be pointed out that the earlier marks consist of the representation of the head of a canine. More specifically, first, that representation includes black elements, on a white background, which represent the contours of the front view of the face of an animal, two raised upright triangular ears, the fur on each side of the head and an elongated muzzle. Secondly, that representation includes white elements, on a black background, in the middle and at the bottom of the face, which evoke two eyes and a slightly open mouth, creating a menacing expression. Consequently, the earlier signs create the overall impression of the head of a canine, which is capable of being perceived as a wolf, a fox or a dog, with a menacing expression, a finding which is not, moreover, disputed by the applicant.

38 By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.

39 It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.

40 The arguments put forward by the applicant are not capable of calling those assessments into question. The argument regarding the many similarities between the two signs at issue cannot, in the light of the considerations set out in paragraph 39 above, be accepted, since it is based on a separate comparison of each of the central, upper and lower parts of the marks at issue and not on the overall impression created by those signs. Furthermore, the argument that the signs at issue will be identified spontaneously as the stylised and simplified head of a canine can also not succeed. As has been analysed in paragraphs 37 and 38 above, the shape represented by the contested sign is abstract and therefore unlikely to be associated with the head of an animal and even less with the head of a canine, whereas the representation of a silhouette in the earlier marks is much more naturalistic and detailed, with the result that it creates the overall impression of the head of a canine with a menacing expression.

41 In view of the foregoing, the claim alleging that the Board of Appeal erred in finding that the signs at issue were visually similar only at most to a low degree must be rejected.

42 In the present case, the Board of Appeal took the view that, even if the relevant public were to perceive the mark applied for as the silhouette of an animal’s head, it was not possible to identify with certainty any particular species, whereas the earlier marks would undoubtedly be perceived as representing the head of a canine. Consequently, the Board of Appeal found that the marks at issue were not conceptually similar.

43 The applicant submits that, since the public will perceive the signs at issue as representing the head of a canine, it must be concluded that they are conceptually identical.

45 According to settled case-law, a conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 37 and the case-law cited).

46 However, it is apparent from the analysis of the visual similarity of the signs at issue which has already been carried out that the earlier signs evoke the concept of the head of a canine, whereas the sign applied for is abstract and is not therefore liable to be associated with such a concept by the relevant public, even though it may evoke the head of an animal in the minds of a non-negligible part of that public. It is clear from the foregoing that the signs at issue do not, for the relevant public, convey an idea in common.

47 It follows that the claim alleging that the Board of Appeal erred in finding that the signs at issue were not conceptually similar must be rejected.

48 In the present case, the Board of Appeal found, first, that the earlier marks did not have a high degree of inherent distinctiveness and, secondly, that the applicant had not submitted any evidence showing distinctive character acquired through use or reputation. The Board of Appeal therefore found that, taking into consideration the, at most, low degree of visual similarity and the lack of any phonetic similarity between the marks at issue and the no more than normal degree of distinctiveness of the earlier marks, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even if the goods and services were identical.

49 The applicant submits that the earlier signs have a high degree of inherent distinctiveness and that that serves only to support the conclusion that there is a likelihood of confusion between the marks at issue. The applicant states that the silhouette of a canine’s head has nothing to do with the goods and services covered by the earlier marks, that the consumer will be very surprised by the choice of that sign to designate the goods and services concerned and that the menacing nature of the silhouette will also strike the consumer. The applicant also submits that there is a likelihood of association, since the consumer may consider the visual differences between the signs to be the result of a new design of the earlier marks and may therefore associate the earlier signs with the sign applied for.

51 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; of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 56; and of 20 January 2021, Palírna U Zeleného stromu v EUIPO – Bacardi (BLEND 42 VODKA), T‑829/19, not published, EU:T:2021:18, paragraph 57).

52 In the context of that assessment, the degree of distinctiveness of the earlier mark, which determines the extent of the protection conferred by it, is one of the relevant factors that must be taken into account.

53 Accordingly, marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17). However, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion, in particular where the goods at issue are identical and the signs at issue are similar (see judgment of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 53 and the case-law cited).

54 It is also necessary to take into account the impact of the level of attention of the relevant public. It follows from the case-law that, although the relevant public only rarely has the chance to compare the various marks directly and must rely on ‘its imperfect recollection of them’, a high level of attention on the part of the relevant public may lead to the conclusion that it will not confuse the marks at issue despite the lack of direct comparison between the various marks (judgment of 20 January 2021, BLEND 42 VODKA, T‑829/19, not published, EU:T:2021:18, paragraph 59).

55 In any event, it is for the party to the proceedings which relies on the inherent distinctiveness of a trade mark despite EUIPO’s analysis to provide specific and substantiated information establishing its claims (order of 2 June 2021, Birkenstock Sales v EUIPO (Position of wavy crisscrossing lines on the sole of a shoe), T‑365/20, not published, EU:T:2021:319, paragraph 55).

56 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that no likelihood of confusion on the part of the relevant public could be found to exist between the earlier marks and the mark applied for.

57 In the present case, it must be pointed out that, in paragraph 35 of the contested decision, the Board of Appeal found that, in the light of the lack of meaning of the earlier marks in relation to the goods and services at issue, the inherent distinctiveness of those marks was normal.

58 As the Board of Appeal rightly pointed out in the contested decision, there is no rule that the absence of any conceptual link between the mark and the goods or services covered by that mark automatically confers on that mark a high degree of inherent distinctiveness capable of providing it with broader protection (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71, and judgment of 19 June 2019, Marriott Worldwide v EUIPO – AC Milan (AC MILAN), T‑28/18, not published, EU:T:2019:436, paragraph 107). In that regard, it must be stated that paragraph 18 of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442), on which the applicant bases its reasoning, in no way calls that analysis into question, since it refers generally to the highly distinctive character of a sign, without analysing the importance of the inherent nature of that distinctive character.

59 Since the Board of Appeal did not err in finding that the earlier marks had a normal degree of distinctiveness, it is necessary to ascertain whether there could nevertheless be a likelihood of confusion between the marks at issue.

60 First, it must be borne in mind that the Board of Appeal relied on the assumption that all the goods and services covered by the earlier marks were identical to the goods and services covered by the mark applied for.

61 Secondly, as regards the relevant public, it must be held, as stated in paragraph 23 above and as the Board of Appeal found, that that public consists (i) of the professional public, the level of attention of which is high, and (ii) of the general public, the level of attention of which may vary from average to high.

62 Thirdly, as has been stated in paragraphs 41 and 46 above, the marks at issue can be held to be (i) visually similar at most to a low degree and (ii) conceptually dissimilar. Lastly, the marks at issue cannot be compared phonetically since they consist of a single figurative element without any text.

63 It follows from the foregoing that the Board of Appeal was right in finding, in paragraph 37 of the contested decision, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even with regard to identical goods, even assuming a normal level of attention on the part of the relevant public and even if the contested mark were to be perceived as an animal’s head.

64 The applicant, however, submits that the General Court has already held that ‘the earlier mark has a highly distinctive character, both inherently and acquired through use’ (judgment of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf), T‑681/15, not published, EU:T:2017:296, paragraph 69).

65 In that regard, it must be stated that it is true that EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not (judgment of 19 December 2019, Karlovarské minerální vody v EUIPO – Aguas de San Martín de Veri (VERITEA), T‑28/19, not published, EU:T:2019:870, paragraph 96). However, according to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of EUIPO. Accordingly, EUIPO is not bound by its own previous decisions (see judgment of 9 March 2017, Maximum Play v EUIPO (MAXPLAY), T‑400/16, not published, EU:T:2017:152, paragraph 46 and the case-law cited).

66 Likewise, although the judgment of the Court on which the applicant relies may constitute one of the factors which the Board of Appeal must take into account in its analysis, it must nevertheless be stated that the Board of Appeal is not bound by a judgment of the Court which was delivered in the context of different proceedings, which concerned different marks and goods and services which were, in part, different. If it were sufficient for the applicant to rely on a previous decision of the Court relating to the same sign to demonstrate that that sign has inherent distinctiveness, that, first, would infringe the other party’s rights of defence, to the extent that it could not examine, assess and challenge the facts on which the Court and the Board of Appeal had previously relied, and, secondly, would erroneously extend the principle of res judicata of a judgment which concerned parties other than the parties to the present proceedings, thereby impeding the review of the legality of an administrative decision by a judicial authority, which would clearly be contrary to the principle of legality (see, to that effect, judgment of 1 February 2018, Philip Morris Brands v EUIPO – Explosal (Superior Quality Cigarettes FILTER CIGARETTES Raquel), T‑105/16, EU:T:2018:51, paragraph 57 and the case-law cited).

67 The Board of Appeal was therefore entitled to find, without making any error, in the context of its analysis and in the light of the evidence provided by the parties, that the earlier marks had only a normal degree of inherent distinctiveness, since the applicant has not adduced any evidence to call that analysis into question. Furthermore, the applicant has also not provided any evidence as regards the possible recognition of the earlier marks on the market, which would tend to show that those marks are highly distinctive.

68 In view of the foregoing findings, the single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and consequently the action must be dismissed in its entirety.

69 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.

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

2. Orders Société Elmar Wolf, since it has been unsuccessful, to pay the costs, in accordance with the form of order sought by the European Union Intellectual Property Office (EUIPO).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Societe Elmar Wolf v EUIPO - Fuxtec (Representation d'une tête d'animal) (EU trade mark - Judgment) [2022] EUECJ T-596/21 (09 November 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T59621.html Cite as: [2022] EUECJ T-596/21, EU:T:2022:697, ECLI:EU:T:2022:697

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