Provisional text
JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
17 February 2017 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative trade mark POCKETBOOK — Earlier national figurative marks POCKET — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑596/15,
Batmore Capital Ltd, established in Tortola (British Virgin Islands), represented by D. Masson, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Univers Poche, established in Paris (France), represented by F. Dumont, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 30 July 2015 (Case R 1952/2014-1), relating to opposition proceedings between Univers Poche and Batmore Capital,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 19 October 2015,
having regard to the response of EUIPO lodged at the Court Registry on 4 January 2016,
having regard to the response of the intervener lodged at Court Registry on 19 January 2016,
having regard to the fact that no request for a hearing was submitted by the main 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,
gives the following
Judgment
Background to the dispute
1 On 24 March 2010, Western Graphics, Inc., established in Rockville, Maryland (United States), filed an application for an international registration in respect of the sign POCKETBOOK, pursuant to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22) (‘the Protocol relating to the Madrid Agreement’), with the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva (Switzerland) through the United States Patent and Trademark Office. That application for an international registration was based on registration No 3675976, which had taken place on 1 September 2009 in the United States, but no priority was, however, claimed. It designated, inter alia, the European Union as the territory in which protection was sought. The registration in the international register of WIPO took place on 12 April 2010 under the number 1034872 and has a date of 24 March 2010.
2 On 29 April 2010, that international registration was notified to 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). Furthermore, as is apparent from WIPO’s letter to EUIPO of 25 February 2015, the applicant, Batmore Capital Ltd, is, for the purposes of the present proceedings, the successor to Western Graphics, following the transfer of all of the rights relating to that international registration. That transfer was preceded by the transfer, on 10 May 2012, from Western Graphics to Pocketbook USA, Inc., which is located in Overland Park, Kansas (United States).
3 The sign covered by the international registration is reproduced below:
4 The goods covered by the international registration are in Class 9 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 to the following description: ‘Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files’.
5 The international registration in question was published in Community Trade Marks Bulletin No 79/2010 of 3 May 2010.
6 On 2 February 2011, the intervener, Univers Poche, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009, read in conjunction with Article 156 of that regulation, to the international registration, in so far as it designated the European Union, in respect of all the goods referred to in paragraph 4 above.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
8 As regards Article 8(1)(b) and (5) of Regulation No 207/2009, the opposition was based, first, on earlier figurative mark No 93488013, which was registered in France on 14 October 1993 in respect of goods and services in Classes 16, 38 and 41 of the Nice Agreement corresponding to the following description: ‘Paper, cardboard and goods made from these materials, namely books, letterhead, catalogues, order forms, envelopes; radio or television programs, editing services of books, newspapers and magazines, educational services and entertainment services’ and is reproduced below:
9 Secondly, the opposition was based on earlier figurative mark No 93680456, which is reproduced below and was registered in France on 1 October 2009 in respect of goods and services in Classes 9, 16, 38 and 41 of the Nice Agreement corresponding to the following description:
– Class 9: ‘Pre-recorded data carriers in the form of disks, diskettes, magnetic tapes, audio and video tapes, CD-ROM, digital disks, magnetic disks, optical disks, compact disks (audio-video), DVDs, all digital magnetic or optical data carriers; electronic publications; software (recorded programs); electronic databases’;
– Class 16: ‘Reading sheets, educational sheets, periodical publications including information letters, instructional and teaching material (except apparatus) including boxes consisting both of books or booklets and of audio and or video supports such as CD-ROMs and video disks’;
– Class 38: ‘Providing internet chat-rooms services; downloading services of data (information, images, sounds) through a global computer network, through computer networks and/or via a computer site on communication networks; providing on-line electronic publications services namely downloading services, electronic transmission and diffusion of texts, messages, information, sounds, images and data; transmission of information contained in electronic catalogues; providing access to online shopping websites more specifically for books’;
– Class 41: ‘Information services in education, teaching, reading; literature, inter alia for teachers; training and teaching services inter alia by correspondence and through computer networks; conception and distribution of training and teaching units (training); edition and publication of sheets, reading sheets, educational sheets, catalogues and brochures, posters, on every supports, including electronic and digital supports; on-line publication of newspapers, magazines, books, sheets, catalogues and brochures; providing on-line electronic publications, not downloadable; publication of texts, other than publicity texts on every supports; organization services of exhibitions, fairs, shows and every other exhibitions for cultural or educational purposes, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums; organization services of competitions in education, entertainment, recreation, with or without distribution of price or awarding of honour; party planning and organization (entertainment); leisure services’:
10 As regards Article 8(4) of Regulation No 207/2009, the opposition was based on the domain name ‘pocket.fr’ and certain goods, services or activities for which the mark or sign was allegedly used in the course of trade. In that regard, the intervener had claimed the right to prohibit the use of the contested sign according to Article L. 711-4 of the French Intellectual Property Code (Code de la propriété intellectuelle français).
11 On 11 March 2011, the examiner notified Western Graphics of a provisional refusal of protection in the European Union of the sign covered by the international registration, in accordance with Article 5 of the Protocol relating to the Madrid Agreement and Rule 115 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). The provisional refusal was based on the fact that an opposition had been filed against that registration.
12 By decision of 30 May 2014, the Opposition Division upheld the opposition in respect of all of the goods at issue, finding, in essence, that there was a likelihood of confusion between the sign covered by the contested international registration and earlier French trade mark No 93680456 (‘the earlier mark’).
13 On 28 July 2014, Pocketbook USA, which was, at that time, the proprietor of the international registration at issue (see paragraph 2 above), filed a notice of appeal, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
14 By decision of 30 July 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that, for reasons of procedural economy, it was appropriate first to examine the opposition in relation to the earlier mark. Secondly, it defined the relevant territory as being France. Thirdly, as regards the goods at issue, it found, first, that the goods in Class 9 covered by the earlier mark, which were aimed at the reasonably well informed and reasonably observant and circumspect general public, and the goods in the same class covered by the international registration were similar. Secondly, as regards the goods and services in Classes 16, 38 and 41 covered by the earlier mark, the Board of Appeal found that there was a certain degree of similarity between them and the goods protected by the international registration. In that regard, the Board of Appeal stated, inter alia, that there was a link between the various goods and services concerned, in the sense that an average consumer was likely to assume that the content provider, a publishing house that offers electronic publications, for example, would also provide the necessary hardware to reproduce or display those publications. Fourthly, the Board of Appeal found that the signs at issue were visually and phonetically similar and conceptually similar to a certain degree. As regards certain graphic elements in the signs at issue, namely the type of font used and the white line which follows the contour of the word element in the sign covered by the international registration, it found that they were of a rather decorative nature. Lastly, although it noted a certain weakness in the word element ‘pocket’, the Board of Appeal took into account the earlier mark’s enhanced degree of distinctiveness due to its use in France in relation to the publication-related goods and services in Classes 16, 38 and 41. Owing to the similarities between the signs at issue, in particular from a visual standpoint, the Board of Appeal found that the public might be led to assume that the goods covered by the international registration and the goods and services protected by the earlier mark, which had been found to be similar, had the same origin.
Forms of order sought
15 The applicant claims that the Court should:
– consider the present action to be admissible;
– annul the contested decision in its entirety;
– order protection to be granted to the international registration of trade mark No 1034872 in so far as it designates the European Union;
– order EUIPO to pay the costs.
16 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
17 The intervener contends that the Court should:
– consider the action to be inadmissible and unfounded and therefore dismiss it;
– confirm the contested decision in its entirety;
– refuse protection to the international registration of trade mark No 1034872 in so far as it designates the European Union;
– order the applicant to pay the costs incurred by the intervener in the course of the proceedings before EUIPO and in the present proceedings.
Law
The admissibility of the action
18 The intervener submits, in essence, that the action is inadmissible, inasmuch as the authority to act which the applicant sent to the Court, in order to prove that its lawyer has the legal capacity to represent it, is ‘clearly inaccurate, substantially incomplete and not valid’, with the result that it does not satisfy the requirements of Article 51 of the Rules of Procedure of the General Court. In particular, the intervener submits that that authority to act does not refer either to the name of the signatory or to his position, the date or place of his signature. Moreover, the intervener maintains that the applicant’s memorandum and articles of association were not communicated, which prevents the Court from carrying out any checks relating to the capacity to act or to issue any claim on behalf of the applicant at the time of the application. According to the intervener, the signature does not correspond to that of the director of the trust Midland Trust Ltd, which represents the applicant.
19 In that regard, it must be pointed out at the outset, that, according to Article 44(5) of the Rules of Procedure of the General Court of 2 May 1991, ‘an application made by a legal person governed by private law shall be accompanied by: (a) the instrument or instruments constituting and regulating that legal person or a recent extract from the register of companies, firms or associations or any other proof of its existence in law; (b) proof that the authority granted to the applicant’s lawyer has been properly conferred on him by someone authorised for the purpose’.
20 That provision is not applicable to the present case, which is governed by the provisions of the Rules of Procedure of the General Court which came into force on 1 July 2015. Under Article 51(3) of those Rules of Procedure, it is now solely provided that ‘where the party represented by the lawyer is a legal person governed by private law, the lawyer must lodge at the Registry an authority to act given by that person’.
21 In the present case, it must be stated that, contrary to the intervener’s claims, it is apparent from the authority to act submitted as an annex to the application not only that it is a document which bears the stamp of Batmore Capital, but also that that document is signed and that the period of ‘October 2015’ appears legibly on that document. Although the reference to the date appears to be somewhat hidden by the undertaking’s stamp, the date of the day of signature may be deciphered as being that of ‘13 October 2015’, that is to say, a date prior to that on which the application was lodged at the Court Registry. As regards the signatory, the document mentions the name of Smirnov, Holder of PoA. Lastly, it must be pointed out that, in accordance with Article 78(4) of the Rules of Procedure, the applicant has sent recent proof of its existence in law.
22 Accordingly, the Court holds that the action is admissible, since the authority to act was duly lodged at the Registry, in accordance with the provision in the Rules of Procedure that is referred to in paragraph 20 above.
The admissibility of the applicant’s third head of claim and of the intervener’s third head of claim
23 By its third head of claim, the applicant, in essence, requests that the Court order EUIPO to grant protection to the international registration of trade mark No 1034872 in so far as it designates the European Union. By its third head of claim, the intervener requests that the Court refuse to grant such protection.
24 According to settled case-law, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the EU judicature. Accordingly, it is not for the Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the Court (see, to that effect, 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 20 and the case-law cited). Therefore, the applicant’s head of claim requesting the Court to direct EUIPO to grant protection to the international registration at issue in so far as it relates to the European Union must be rejected. The intervener’s third head of claim, requesting that such protection be refused must likewise be rejected.
Substance
25 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
26 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Article 156(1) of Regulation No 207/2009 provides that international registrations designating the European Union are to be subject to opposition in the same way as published EU trade mark applications.
27 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).
28 For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should, however, 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 imperfect recollection of them. 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 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 33 and the case-law cited).
29 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).
30 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Consequently, 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. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether there is a likelihood of confusion (see judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraphs 32 and 33 and the case-law cited; judgment of 28 October 2010, Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 67).
31 Moreover, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T-81/03, T‑82/03 and T-103/03, EU:T:2006:397, paragraph 76 and the case-law cited). That case-law also applies where there is an application to designate the European Union as a territory in which an international registration is protected.
32 It is in the light of those principles that it must be examined whether, as the applicant submits, the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue.
The relevant territory
33 The Board of Appeal found that, since the earlier mark was a French mark, the relevant territory for the purposes of analysing whether there was a likelihood of confusion was France. That finding is not disputed by the parties.
The relevant public and its level of attention
34 It must be borne in mind that, according to the case-law, the relevant public consists of consumers who are likely to use both the goods or services protected by the earlier mark and those covered by the trade mark application (see, to that effect, judgment of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28 and the case-law cited).
35 In the contested decision, the Board of Appeal analysed the relevant public in the light of the goods covered by the international registration. It stated that those goods were aimed at the general public and that, for the purposes of a global assessment, the average consumer of the category of those goods was deemed to be reasonably well informed and reasonably observant and circumspect. It referred, in that regard, to the judgments of 16 July 1998, Gut Springenheide and Tusky (C‑210/96, EU:C:1998:369, paragraph 31), and of 22 June 1999, Lloyd Schuhfabrik Meyer (C‑342/97, EU:C:1999:323, paragraph 26). As regards the goods and services covered by the earlier mark, the Board of Appeal referred to the fact that the relevant public consisted of the general public.
36 Although the Board of Appeal did not specify the public’s level of attention with regard to those latter goods and services, it is important to point out that the parties have not disputed the Board of Appeal’s assessment as regards the relevant public and its level of attention. Having regard to that fact and to the description of all the goods and services at issue, the Board of Appeal’s assessment must be upheld and, for the purposes of the analysis in the present case, the general public with a normal level of attention must be taken into account.
The comparison of the goods and services at issue
37 According to settled case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and 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, to that effect, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
38 In the present case, the Board of Appeal compared the goods and services at issue in two stages. First of all, in particular in paragraph 21 of the contested decision, it compared the goods in Class 9 covered by the two signs at issue. Secondly, in paragraph 22 of that decision, it compared the goods covered by the international registration with the other goods and services protected by the earlier mark, namely those in Classes 16, 38 and 41.
39 As regards the first comparison, the Board of Appeal found that the goods were similar, in particular because the goods covered by the earlier mark are different types of pre-recorded data carriers for electronic data, software and electronic databases, which are frequently used together with portable and handheld digital electronic devices. Consequently, according to the Board of Appeal, there was a significant degree of complementarity between the goods at issue, due to the fact that those covered by the earlier mark could not be used without further electronic hardware. The Board of Appeal found that, in addition, the goods at issue are sold through the same channels. It took the view that the relevant public was likely to assume that they have the same source.
40 As regards the second comparison, the Board of Appeal found that the goods covered by the international registration were intended, in particular, to display text, data, image and audio files. According to the Board of Appeal, there was, on that basis, a link between those goods and the goods and services in Classes 16, 38 and 41 protected by the earlier mark. The Board of Appeal stated that the relevant public was likely to assume that a publishing house that offers for example, electronic publications, may also provide the necessary hardware to reproduce or display these publications. It took the view that the necessary hardware might be the contested portable and handheld digital electronic devices for recording, organising, transmitting, manipulating and reviewing text, data, image, and audio files. The Board of Appeal found that, when the average consumer encountered an electronic device for viewing digital content which was sold under the same trade mark as the digital content itself, he was likely to assume that the content provider had branched out into selling the respective hardware as well. The Board of Appeal concluded that, therefore, and despite the fact that, in general, the nature of the goods and services at issue is different, there was also a certain degree of similarity between the goods and services in Classes 16, 38 and 41 protected by the earlier mark and the goods in Class 9 covered by the international registration.
41 As regards the first comparison, the applicant disputes that there is any complementarity between the goods in Class 9 covered by the signs at issue. It takes the view that the Board of Appeal’s assessment is incorrect and that it does not matter that the goods in the same class covered by the earlier mark operate thanks to the goods covered by the international registration. The applicant states that the goods at issue are not sold in the same establishments. As regards the second comparison, the applicant disputes the complementarity of the goods and services at issue on the ground that the goods and services in Classes 16, 38 and 41 covered by the earlier mark are not portable, in contrast to the goods covered by the international registration, which are, in the applicant’s view, in particular, e-readers.
42 EUIPO and the intervener dispute the applicant’s claims.
43 In the first place, as regards the alleged lack of complementarity between the goods and services at issue, it must be stated that, in accordance with 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. By definition, goods intended for different publics cannot be complementary (see, to that effect, judgment of 27 September 2012, Pucci International v OHIM — El Corte Inglés (Emidio Tucci), T‑357/09, not published, EU:T:2012:499, paragraph 50 and the case-law cited).
44 In the present case, as regards the first comparison, relating to the goods in Class 9 covered by the signs at issue, it must be pointed out that, contrary to the applicant’s claims, the Board of Appeal’s finding, in paragraph 21 of the contested decision, that the goods covered by the earlier mark may be used together with the goods covered by the international registration, that is to say with portable and handheld digital electronic devices, is not only correct, but is also relevant in comparing those goods. The Board of Appeal was right in finding that there is a significant degree of complementarity between the goods in question, owing to the fact that some of the goods protected by the earlier mark cannot be used without additional electronic hardware, such as that covered by the international registration. It must be held, in that regard, that it is reasonable to take the view, as the Board of Appeal stated, that goods such as ‘software (recorded programs); electronic databases’ are used with portable and handheld digital electronic devices, making it possible to carry out the various actions set out in the description of the goods protected by the international registration, such as the recording, organisation, transmission, manipulation or review of text, data, image or audio files. Moreover, it cannot be ruled out that ‘portable and handheld digital electronic devices’ might function as a result of the insertion of some of the ‘pre-recorded data carriers’ protected by the earlier mark. The latter might be, inter alia, diskettes, CD-ROMs or other digital data carriers. In that regard, in line with what EUIPO stated, it must also be pointed out that the international registration does not cover only e-readers. Contrary to the applicant’s claims, the fact that it was only later that the Nice Agreement made it possible to register marks in respect of e-readers is not relevant with regard to the analysis in the present case, since it has not been shown that the applicant restricted the list of goods covered solely to e-readers.
45 It must be added that a finding that there is complementarity, such as that mentioned in the previous paragraph, is not, as the applicant seems to suggest, an extension of the earlier marks’s protection to goods other than those specifically covered by that mark, but is only an assessment of the links and connections which those goods have with the goods covered by the international registration, in accordance with the case-law resulting from the judgment of 27 September 2012, Emidio Tucci (T‑357/09, not published, EU:T:2012:499, paragraph 50 and the case-law cited). It is on account of that connection that it must be held that the Board of Appeal was right in finding, having also referred to the fact that the goods are sold through the same channels, that the relevant public is likely to assume that those goods have the same origin.
46 That finding is not invalidated by the applicant’s other claims. First, it must be held that its argument that the earlier mark claims protection mainly ‘in the field of book and edition services’ in France, ‘nothing more’, has no factual basis. Having regard to the description of the goods and services protected by the earlier mark, as referred to in paragraph 9 above, it must be held that the abovementioned argument on the part of the applicant unduly limits the scope of the protection granted to the earlier mark, without any basis for making such a limitation having been put forward.
47 Secondly, the applicant’s contention that e-readers are different from and, in particular, more technically complex than the goods covered by the earlier mark is irrelevant. Not only is the description of the goods covered by the international registration not restricted solely to e-readers, but it must be added that all of the goods under comparison are to a certain extent technical and that some of those protected by the earlier mark may even come within the sector of new technologies. In any event, the Board of Appeal did not find that the goods at issue were identical in nature, but that they were complementary.
48 Thirdly, the connection between the goods at issue, which was pointed out by the Board of Appeal, is not ‘much too broad’, as the applicant submits, stating that, in its view, according to that reasoning, almost all the apparatus of daily life would be complementary to data carriers and that data carriers and software would be complementary, for example, to cars or planes, which make use of data carriers and software. In that regard, it must be stated that, in contrast to the examples given by the applicant, the difference in nature between the goods under comparison in the present case is less striking than that between software and cars or planes, inasmuch as they are either digital electronic devices as specified in the international registration or pre-recorded data carriers in various forms and certain other goods in the same technical sector as that of software. Consequently, in principle, they are goods which come within the scope of the new technologies, in particular digital technologies. Moreover, the fact that certain pre-recorded data carriers, software, certain electronic publications or electronic databases might be produced by the same undertakings as those that produce the devices that make it possible to use them may be considered to be well known, as EUIPO submits, in essence, before the Court, referring, first, to video game cartridges for handheld consoles and, secondly, to CDs and CD readers.
49 In that regard, it must be pointed out that, according to the case-law, the Board of Appeal may take into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is to say, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29 et seq.), or facts relating to the normal methods for marketing the goods, which may be equated with facts which are well known (see, by analogy, judgments of 10 September 2008, Astex Therapeutics v OHIM — Protec Health International (astex TECHNOLOGY), T‑48/06, not published, EU:T:2008:329, paragraph 43, and of 23 September 2009, Phildar v OHIM — Comercial Jacinto Parera (FILDOR), T‑99/06, not published, EU:T:2009:346, paragraph 94).
50 In the second place, contrary to the applicant’s claims, it cannot be held that the Board of Appeal erred in finding that the goods at issue could be sold through the same channels. It is apparent from their objective characteristics that there is, at least with regard to some of them, a connection in the sense that they are, on the one hand, modern digital electronic devices, which are, more specifically, portable and handheld, and, on the other hand, pre-recorded data carriers or certain other goods which may also be regarded as technically advanced. Consequently, it cannot be ruled out that they may be offered in the same sales outlets, inter alia in computer shops which sell not only various types of computers, inter alia, portable, and also e-readers, but also digital content, including all kinds of software. Similarly, it cannot be ruled out that, in addition to the contents themselves, in audio or video form, the electronic devices that make it possible to read those contents may be also found in some bookshops as well as in some newspaper kiosks or libraries. Those circumstances must be held to be objective facts relating to the normal methods for marketing the goods at issue, in accordance with what is set out in the case-law referred to in paragraph 49 above, which could therefore be taken into consideration.
51 By contrast, in that regard, the applicant claimed that, whereas the goods bearing the earlier mark were mainly sold in bookshops, the goods covered by the international registration were sold on the Internet. The Court holds that that is not a necessary, objective or normal method for marketing the goods at issue, but an argument, which is not, moreover, supported by any evidence, relating to specific methods for marketing the goods at issue. The fact remains that whether or not there is a marketing concept is of no consequence to the right conferred by the EU trade mark (see, to that effect, judgments of 20 March 2002, DaimlerChrysler v OHIM (TELE AID), T‑355/00, EU:T:2002:79, paragraph 42, and of 20 March 2002, DaimlerChrysler v OHIM (CARCARD), T‑356/00, EU:T:2002:80, paragraph 46). Furthermore, since a marketing concept is purely a matter of choice for the undertaking concerned, it may change after a sign has been registered as an EU trade mark and it cannot therefore have any bearing on the assessment of likelihood of confusion in opposition proceedings (see, to that effect, judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 23 September 2009, FILDOR, T‑99/06, not published, EU:T:2009:346, paragraph 95).
52 Accordingly, it must be held that the Board of Appeal did not err in finding that the goods in Class 9 covered by the international registration at issue and the goods in that class protected by the earlier mark were similar, inasmuch as, on account of their complementarity and of the fact that they are sold through the same channels, the relevant public regard them as having the same origin.
53 Moreover, it must be held that the Board of Appeal was also right in stating, in paragraph 22 of the contested decision, that the goods covered by the international registration served, in particular, ‘to display text, data, image, and audio files’, which created a certain link with some of the goods or services in Classes 16, 38 and 41 protected by the earlier mark. It must be pointed out that it is reasonable to take the view that, inter alia goods like the ‘instructional and teaching material’ in Class 16 or the publication-related services in Class 38, like those relating to the providing of online electronic publications, as well as certain services in Class 41, such as those connected with the online publication of newspapers or other content, may be linked, for the relevant public, with the portable digital electronic devices covered by the international registration, with the result that that public will take the view that the same undertaking is offering the content and the hardware to visualise or listen to it. That finding would not be invalidated by the applicant’s claim, which is, moreover, particularly lacking in clarity, that the goods covered by the international registration are not complementary to those protected by the earlier mark ‘for lack of portable nature’, even if that claim on the part of the applicant referred to the goods analysed in the present case.
54 The Board of Appeal was therefore right in finding that there is a certain degree of similarity between the goods and services at issue.
The comparison of the signs at issue
55 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 23 September 2009, FILDOR, T‑99/06, not published, EU:T:2009:346, paragraph 31 and the case-law cited).
56 Accordingly, in particular, it is apparent from the case-law 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 42). 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 the present case, the Board of Appeal found, in paragraphs 23 to 26 of the contested decision, that the signs at issue were visually and phonetically similar overall, inter alia on account of the fact that they shared the word element ‘pocket’, and that they were also conceptually similar to a certain degree, since both of them included that element, which would be understood by a significant part of the relevant French public with a sufficient knowledge of English.
58 As regards the visual comparison, the Board of Appeal found, in paragraph 24 of the contested decision, that the signs consisted of white capital letters inside black rectangular banners. It also found that, whereas, in the earlier mark, only the letter ‘o’ was printed in italics, by contrast, in the sign covered by the international registration, all the letters of which the word ‘pocketbook’ consists appeared to be printed in italics and there was no typographical emphasis on one single letter. It pointed out the contour of the word element in the sign covered by the international registration, which consists of a white line on three sides of that word element. In paragraph 25 of the contested decision, the Board of Appeal also found that the word element in the earlier mark was reproduced in the sign covered by the international registration. It concluded that the signs at issue were similar as regards their overall appearance, notwithstanding certain differences due to the presence of the additional word element ‘book’ in italics in the sign covered by the international registration and irrespective of the other graphic differences.
59 As regards the phonetic comparison, the Board of Appeal took into consideration, in paragraph 26 of the contested decision, the identical pronunciation of the first two syllables of the signs at issue, noting at the same time the difference due to the presence of the third syllable in the sign covered by the international registration.
60 Lastly, as regards the conceptual comparison, the Board of Appeal referred, in paragraph 27 of the contested decision, to an online dictionary, for the purposes of assessing the meaning of the words ‘pocket’ and ‘book’. It pointed out that the first of those words meant a ‘part of a piece of clothing that you can put things in’ or a ‘container or bag that is attached to something’ and that the second of those words referred to a ‘set of pages with writing on them fastened together in a cover’ or to a ‘set of pages fastened together in a cover and used for writing on’. Although it found that the word ‘book’ should be considered to be such a basic item of English vocabulary that the majority of the relevant French public would understand it, the Board of Appeal found that its impact was insufficient to rule out a conceptual similarity between the signs due to the word element ‘pocket’, which was common to the signs and was also understood by the relevant public.
61 The applicant disputes both the Board of Appeal’s analysis relating to the overall visual, phonetic and conceptual similarity between the signs and the adequacy of the reasoning in that regard. In particular, so far as concerns the visual aspect, it submits that the differences between the signs are notable. In that regard, it stresses the indivisible nature of the word ‘pocketbook’, the difference in the number of letters in the signs under comparison, the fact that the word ‘pocket’ is not dominant, distinctive or highlighted in the sign covered by the international registration and, lastly, the fact that the differences between the signs are strengthened by the additional figurative elements present in the sign covered by the international registration. So far as concerns the phonetic aspect, the applicant points out, in particular, the declining intonation in the earlier mark, whereas, in the sign covered by the international registration, the final syllable (buk) is, in its view, entirely audible. So far as concerns the conceptual aspect, while it concedes that the word ‘pocket’ is likely to be understood by the relevant public, the applicant submits that, as regards the word ‘pocketbook’, the relevant public will pay close attention to the ‘suffix’ which is used in respect of all sorts of electronic products such as ‘powerbook’ and ‘notebook’ and which will, according to the applicant, be associated in the mind of the average consumer with products related to writing, ‘excepting to books as such’. The applicant maintains that that term is commonly used in the domain of electronic products, inter alia in order to designate portable computers, which have no link with books. The applicant submits that, as regards electronic tablets, neither of the terms ‘pocket’ or ‘book’ in the sign covered by the international registration is more or less distinctive or dominant. In its view, the conceptual difference is that, whereas, in the earlier mark, the word ‘pocket’ refers merely to the concept of pocket or pouch, that word has a descriptive function in the sign covered by the international registration, designating devices of reduced size which are portable in a pocket.
62 EUIPO and the intervener dispute the applicant’s claims.
63 In the present case, in view of the applicant’s claims, it is necessary, first of all, to examine whether there are dominant or negligible elements in the signs at issue and to assess the degree of distinctiveness of each of the elements in those signs and, secondly, to compare the signs at issue as a whole from a visual, phonetic and conceptual standpoint.
Whether there are dominant or negligible elements in the signs at issue and the distinctiveness of the elements in those signs
64 It must be pointed out, as regards the word elements of which the signs at issue consist, that the Board of Appeal found, in paragraph 32 of the contested decision, that those signs contained weak elements. According to the Board of Appeal, the word element ‘pocket’, which the signs at issue have in common, alludes to the reduced size of the goods at issue, whereas the word ‘pocketbook’ suggests that the goods covered by the international registration are pocket-sized and book-like in respect of, for example, their weight, portability and method of use. With regard to the word ‘book’, the Board of Appeal found that the word ‘notebook’ is commonly used in relation to portable computers.
65 In paragraph 33 of the contested decision, the Board of Appeal took into consideration the fact that, notwithstanding the weakness of the word element ‘pocket’ per se, the earlier trade mark enjoyed a high degree of distinctiveness through its use on the publishing market in France in respect of the goods and services related to the publishing sector, including the publication of books, audio-books and other printed and electronic publications, including all the services in Class 38. The Board of Appeal took the view that the reputation of the earlier mark did not extend to the remaining goods and services, with the result that the mark’s degree of distinctiveness in relation to those goods had to be considered to be normal.
66 In that regard, it must be borne in mind that, according to settled case-law, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑566/15, not published, EU:T:2016:517, paragraph 28).
67 In the present case, as regards the earlier mark, it must be stated that it consists of a single word element, namely the word ‘pocket’ inside a black rectangle. The public will therefore remember that word, all the more so because it is particularly legible on account of the contrast between the white letters and the black background and because that mark does not contain any figurative element which would be capable of attracting the attention of consumers. Furthermore, as EUIPO claims, although the word ‘pocket’ alludes to the fact that certain goods covered by the earlier mark could fit in a pocket or are small, that is not true of other goods in respect of which such a characteristic cannot be assumed. By way of example, it is difficult to conceive of such a link being created in the minds of consumers with regard to software or electronic databases.
68 Moreover, since the earlier mark is a French trade mark and not an EU trade mark, it must be recognised as having a certain degree of distinctiveness in relation to the goods and services which it protects (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47).
69 As regards, in addition, the sign covered by the international registration, as EUIPO correctly points out, the word element ‘pocket’ appears at the beginning of the sign, the part to which the consumer usually attaches the greatest significance (see, to that effect, judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 83). It must also be pointed out that although, strictly speaking, the visual impression of a sign consists of the overall impression it creates, it cannot, however, be ruled out that some of its components may have a greater or lesser visual impact (see, to that effect, judgment of 13 February 2007, Ontex v OHIM — Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 68). That is also true in a case like that in the present case, in which the sign consists of a single word with a particular graphic form, having regard to the context in which the international registration, which covers portable and handheld digital electronic devices, is set. A significant part of the relevant public will be able to understand both the meaning of the word ‘pocket’ and that of the word ‘book’, as the Board of Appeal found and as has, moreover, been conceded by the applicant. Furthermore, it is common ground that, in the sector of which the goods covered by the international registration are part, the word ‘notebook’ is not only well known, but commonly used to designate portable computers. In those circumstances, the average consumer may focus his attention more specifically on the first two syllables of the word element ‘pocketbook’, which differentiate it from the term ‘notebook’. The same is true, mutatis mutandis, of consumers who also know the term ‘powerbook’ to which the applicant refers.
70 Consequently, it cannot be ruled out that a non-negligible part of the relevant public might take the view that what is involved here concerns a play on words, in view of the other compound terms which include the word ‘book’ and in respect of which it is established that they are used, in trade, to designate the goods at issue. For that reason, those consumers will focus more on the first part of the word ‘pocketbook’, which they will perceive as differentiating it from the well-known terms ‘notebook’ and ‘powerbook’. In addition, the use of those latter two terms on the market constitutes an additional indication of the foregoing inasmuch as the Board of Appeal was right in finding that the term ‘book’ referred to certain characteristics of the goods covered by the international registration, namely their weight, portability or method of use. It is on the basis of that link with the goods at issue that the terms normally used include the component ‘book’.
71 Accordingly, it cannot be accepted, as the applicant suggests, that the expression ‘pocketbook’ forms an indivisible whole, in the sense that the consumer will not distinguish the first part in that expression, ‘pocket’. Although it is true, as the applicant submits, that the sign covered by the international registration is written without a space, the fact remains that each of the two English words of which it consists is likely to be understood by the relevant public, which will thus read that sign in two stages, so as not to deprive each part of that sign of a specific independent existence.
72 It thus follows from all of the above considerations that the Board of Appeal was right in finding that the signs at issue had to be examined as a whole and it cannot, in particular, be held that, in the sign covered by the international registration, the component ‘book’ would be more important, from the point of view of the relevant public, than the component ‘pocket’.
The visual comparison of the signs at issue
73 The Court is not convinced by the applicant’s claims that the signs at issue are, as a whole, dissimilar, on account of, first, their respective lengths, which are due to the number of letters of which their word elements consist, secondly, the ‘indivisible’ nature of the sign covered by the international registration and, thirdly, the existence of additional figurative elements in the latter sign. As the Board of Appeal correctly found, in paragraphs 24 and 25 of the contested decision (see also, paragraphs 57 and 58 above), the two signs at issue consist of white capital letters inside black rectangles. What is more, although it is true that it is only in the earlier mark that there is a typographical emphasis on a single letter, whereas the word element in the sign covered by the international registration is completely printed in italics, the fact remains that the letters in both signs are still printed in very similar capital-letter fonts, which do not, moreover, contain any particularly inventive or fanciful elements. In particular, the contrast of the words in relation to the black background is apparent from the signs at issue. Furthermore, the white line which follows the contour of the word element of the sign covered by the international registration cannot be held to be anything other than merely decorative, as the Board of Appeal correctly found.
74 Accordingly, it must be held that the Board of Appeal was right in finding that there is visual similarity.
The phonetic comparison of the signs at issue
75 The Court can also not hold that the applicant’s claims relating to the alleged phonetic dissimilarity are well founded. Although the applicant states that the earlier mark will be pronounced, by the relevant public, as two syllables, with a declining intonation, whereas the sign covered by the international registration contains three syllables, the last syllable, ‘book’, being, in its view, entirely audible, it must be pointed out that the identical pronunciation of the first part ‘pocket’, as two syllables, which consumers will inevitably notice for the reasons already analysed, makes it possible to conclude that the Board of Appeal was right in finding, in paragraph 26 of the contested decision, that there is phonetic similarity between the signs.
The conceptual comparison of the signs at issue
76 It must be pointed out that the applicant bases its claim that the marks at issue are conceptually different in particular on the assertion that the word ‘pocket’, although it is understood by the relevant public, since it is a word which is part of basic English vocabulary, has a different meaning in each of the signs at issue. According to the applicant, whereas, in the earlier mark, the concept perceived is, in essence, that which is set out in the dictionaries to which the Board of Appeal referred, as regards the sign covered by the international registration, the relevant public will perceive the word sign rather as designating ‘devices of reduced size and portable in a pocket’, in the context of terms such as ‘notebook’ or ‘powerbook’. It must be held, as EUIPO submits, that those claims do not clearly show what, precisely, is the difference in the perceived meanings of the word ‘pocket’, since, in both cases, reference is made to a pocket, a pouch or, possibly, to the associated concept of reduced size. Moreover, that concept of reduced size is also present in the English expression ‘pocketbook’, which may be considered to be well known to the relevant public.
77 Consequently, the Board of Appeal was right in finding that there is a certain degree of conceptual similarity.
The global assessment of the likelihood of confusion
78 The Board of Appeal found, in paragraph 38 of the contested decision, that there was a likelihood of confusion, despite the weakness of the word element ‘pocket’, which is common to the signs at issue. It took into account, in particular, the visual similarities between those signs, more specifically in the first part of those signs, which consists of the word ‘pocket’, and referred to the earlier mark’s enhanced degree of distinctiveness due to its use in France in relation to the publication-related goods and services in Classes 16, 38 and 41. According to the Board of Appeal, the similarity of the signs at issue might lead the public to assume that the goods covered by the international registration and the goods and services protected by the earlier mark, which had been found to be similar, have the same origin.
79 The applicant submits that consideration of the differences between the signs at issue is sufficient to outweigh the similarities and, consequently, to exclude any likelihood of confusion. Moreover, it claims that the absence of a likelihood of confusion is even more evident given the fact that the earlier mark has already been coexisting in the European Union with several other trade marks which include the term ‘pocket’.
80 EUIPO and the intervener dispute the applicant’s claims.
81 In that regard, it must be pointed out at the outset that the applicant does not in any way dispute the Board of Appeal’s statements relating to the earlier mark’s enhanced degree of distinctiveness due to its use in relation to the goods and services referred to in paragraph 78 above. That factor is relevant in assessing whether there is a likelihood of confusion, as has been pointed out in paragraph 30 above.
82 Next, it must be borne in mind that, according to settled case-law, in the assessment of the likelihood of confusion, a low degree of similarity between the goods and services may be offset by a high degree of similarity between the marks, and vice versa (see, to that effect, judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO — Central Hisumer (Botanic Williams & Humbert), T‑193/15, not published, EU:T:2016:266, paragraph 69 and the case-law cited). In the present case, it has already been held that the Board of Appeal was right in finding that there are similarities between the goods and services at issue and that the signs at issue are similar visually, phonetically and, to a certain degree, conceptually.
83 As regards the applicant’s reference to coexistence between the earlier mark and certain other marks that are allegedly present on the relevant market, such as pocketbook touch lux in Germany and the EU trade marks pocket guide, reader pocket edition pocket guide, pocket guide and pocket connect, it is sufficient to point out, in addition to the fact that the first mark referred to above does not relate to French territory, that, first, the marks relied on differ from those at issue in the present case and, secondly, that it has not, in any event, been established that they were actually used on the relevant market in relation to the goods and services at issue. The applicant has submitted evidence relating only to the registration of those marks, but not evidence which makes it possible to establish that there is genuine ‘coexistence’ of those marks and the earlier mark on the relevant market.
84 In that regard, according to settled case-law, although, of course, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the adjudicating bodies of EUIPO find exists as between two marks at issue, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see, to that effect, judgment of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86 and the case-law cited). According to that same case-law, the submission of a list relating to trade marks which have been registered is insufficient to show that the likelihood of confusion between the marks at issue is reduced, still less eliminated (judgment of 11 May 2005, GRUPO SADA, T‑31/03, EU:T:2005:169, paragraph 87).
85 Lastly, as regards the applicant’s claim that the Board of Appeal’s conclusions were not ‘properly reasoned’, it must be borne in mind that Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Courts of the European Union to exercise their power to review the legality of the decision. It is not, however, necessary for the reasoning to go into all the relevant facts and points of law. The question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see, to that effect, judgments of 29 February 1996, Commission v Council, C‑122/94, EU:C:1996:68, paragraph 29, and of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraph 52). Likewise, the requirement to state reasons must be assessed according to the circumstances of each case, in particular the content of the measure and the nature of the reasons given, which means that it is not always required that an express view be adopted on all the matters put forward or requested by the persons concerned (judgment of 30 March 2000, VBA v Florimex and Others, C‑265/97 P, EU:C:2000:170, paragraph 93; see also, to that effect, judgments of 30 November 2000, Industrie des poudres sphériques v Commission, T‑5/97, EU:T:2000:278, paragraph 199, and of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46).
86 In the present case, it must be held that the contested decision contains a statement of reasons consistent with the requirements referred to in paragraph 85 above, which made it possible to understand the Board of Appeal’s reasoning and to compile the summary of that reasoning which appears, in particular, in paragraphs 14, 33, 35, 38 to 40, 57 to 60, 64, 65 and 78 above and which enabled the applicant to prepare its action. The applicant’s claim alleging that there is a lack of proper reasoning must therefore be rejected.
87 In view of all of the foregoing, the Court holds that the Board of Appeal did not err in finding, in the light of the interdependence between the factors at issue, that there is a likelihood of confusion between the signs at issue.
88 Consequently, the single plea in law put forward by the applicant must be rejected as unfounded and the action must be dismissed in its entirety.
Costs
89 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
90 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
91 Furthermore, the intervener has claimed that the applicant should be ordered to pay the costs that the intervener incurred ‘in the course of the [EUIPO] ... proceedings’, that is to say also those incurred in the opposition proceedings. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgment of 11 October 2016, Guccio Gucci v EUIPO — Guess?IP Holder (Representation of four interlocking Gs), T‑753/15, not published, EU:T:2016:604, paragraph 56 and the case-law cited).
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Batmore Capital to pay the costs, including the costs necessarily incurred by Univers Poche before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 17 February 2017.