JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
15 October 2015 (*)
(Community trade mark — Invalidity proceedings — International registration designating the European Community — Figurative mark cushe — Earlier national word mark SHE and figurative mark she — Relative ground for refusal — Genuine use of the earlier mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑642/13,
Wolverine International, LP, established in George Town, Cayman Islands (United Kingdom), represented by M. Plesser and R. Heine, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Fischer, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
BH Store BV, established in Curaçao, Curaçao (Autonomous Territory of the Netherlands), represented by T. Dolde, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 September 2013 (Case R 1269/2012-4) concerning invalidity proceedings between BH Store BV and Wolverine International, LP,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Registry on 2 December 2013,
having regard to the response of OHIM lodged at the Registry on 17 March 2014,
having regard to the response of the intervener lodged at the Registry on 4 April 2014,
having regard to the decision of 7 July 2014 refusing leave to lodge a reply,
further to the hearing on 22 April 2015,
gives the following
Judgment
Background to the dispute
1 On 10 October 2005 the applicant, Wolverine International, LP, obtained, from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), the international registration designating the European Community, under number 859 087, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), of the following figurative sign:
2 The goods in respect of which the mark at issue was registered are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘clothing, footwear and headgear’.
3 On 20 September 2010 the predecessor-in-title of the intervener, BH Store BV, filed a request for a declaration of invalidity against the mark at issue, pursuant to Article 53(1)(a) of Regulation No 207/2009.
4 The request for a declaration of invalidity is based on the following earlier trade marks:
– the word mark SHE, registered on 8 November 2000 in Germany under registration No 39 975 501 inter alia for the goods in Class 25: ‘clothing, footwear and headgear’;
– the figurative mark, registered on 25 April 2000 in Germany under registration No 30 018 423 for the goods included in Classes 3, 9, 16, 18 and 25 and reproduced below:
– the figurative mark, registered on 15 January 2000 in Germany under registration No 39 726 287 for the goods in Classes 3 and 25, identical to the mark reproduced above.
5 The ground relied on in support of the application for a declaration of invalidity was that referred to in Article 8(1)(b) of Regulation No 207/2009 read in conjunction with Article 53(1)(a) of that regulation.
6 By decision of 8 May 2012, the Cancellation Division rejected the request for a declaration of invalidity. It took the view that the goods at issue were identical. It found that the marks at issue were visually and phonetically similar to a low degree, but that they were not conceptually similar. It therefore concluded that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
7 On 9 July 2012 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
8 By decision of 30 September 2013 (‘the contested decision’) the Fourth Board of Appeal of OHIM annulled the decision of the Cancellation Division. First of all, as regards whether the earlier word mark had been put to genuine use, the Board of Appeal took the view that the intervener had proved such use for the goods ‘clothing and footwear’. Moreover, with regard to the likelihood of confusion, the Board of Appeal considered the goods at issue to be similar or identical. It found that the marks were phonetically identical and visually and conceptually similar. It also found that the earlier word mark had a low degree of distinctive character. In view of all those factors, the Board of Appeal found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
9 The applicant claims that the Court should:
– annul the contested decision;
– dismiss the application for a declaration of invalidity;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
11 The intervener submits that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those relating to the proceedings before the Cancellation Division and the Fourth Board of Appeal of OHIM.
Law
12 In support of its action, the applicant puts forward two pleas in law, respectively alleging infringement of Article 57(2) and (3) of Regulation No 207/2009 and of Article 8(1)(b) thereof.
The first plea, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009
13 The applicant claims that the Board of Appeal infringed Article 57(2) and (3) of Regulation No 207/2009 in taking the view that the intervener had proved that the earlier word mark had been put to genuine use.
14 First of all, the applicant argues that the documents provided by the intervener contain little information on use of the earlier word mark, in particular since some of the data refer to goods not in Class 25. Similarly, it argues that the intervener should have presented sales figures on a product-by-product basis and not the figures concerning all the products sold under the earlier word mark.
15 Moreover, the applicant states that the invoices and orders submitted by the intervener do not allow use of the earlier word mark to be assessed, either, since it is impossible to determine to what products the invoices relate. It also argues that the invoices submitted relate neither to end consumers or distributers nor to the German territory.
16 Last, the applicant claims that the catalogues submitted are too few in number for genuine use of the earlier word mark to be inferred, especially since they also refer to other goods not in Class 25.
17 Under Article 57(2) and (3) of Regulation No 207/2009, the applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of filing of the application for a declaration of invalidity and for the period of five years preceding the publication of the Community trade mark application.
18 According to settled case-law, it is apparent from Article 57(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market (judgments of 12 March 2003 in Goulbourn v OHIM — Redcats (Silk Cocoon), T‑174/01, ECR, EU:T:2003:68, paragraph 38, and 8 July 2004 in Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, ECR, EU:T:2004:225, paragraph 38). However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (judgment of 8 July 2014 in VITAFRUIT, cited above, EU:T:2004:225, paragraph 38).
19 According to Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), proof of use is to consist of indications concerning the place, time, extent and nature of use of the earlier trade mark (judgment in VITAFRUIT, cited in paragraph 18 above, EU:T:2004:225, paragraph 37).
20 According to the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003 in Ansul, C‑40/01, ECR, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment in VITAFRUIT, cited in paragraph 18 above, EU:T:2004:225, paragraph 39).
21 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment in VITAFRUIT, cited in paragraph 18 above, EU:T:2004:225, paragraph 40; see also, by analogy, judgment in Ansul, cited in paragraph 20 above, EU:C:2003:145, paragraph 43).
22 As for the extent of use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments in VITAFRUIT, cited in paragraph 18 above, EU:T:2004:225, paragraph 41, and of 16 November 2011 in Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, ECR, EU:T:2011:675, paragraph 49).
23 In addition, in order to determine whether use of a trade mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. That assessment implies a degree of interdependence between the factors taken into account. Thus, the low volume of goods marketed under the mark may be offset by the fact that use of the mark was extensive or very regular and vice versa (judgments in VITAFRUIT, cited in paragraph 18 above, EU:T:2004:225, paragraph 42, and BUFFALO MILKE Automotive Polishing Products, cited in paragraph 22 above, EU:T:2011:675, paragraph 51).
24 It is in the light of those considerations that the question whether the Board of Appeal was right to find that the intervener had provided proof of genuine use of the earlier word mark should be examined.
25 As a preliminary issue, it should be pointed out that neither the duration of use, which covers the period from 28 September 2005 to 27 September 2010 (‘the relevant period’), nor the nature of use is disputed by the applicant. The applicant does dispute, in the context of the first plea, in essence, the place and extent of use of the earlier word mark.
26 In the present case, it should be noted that the intervener submitted, during the proceedings before the Cancellation Division, a number of documents, such as catalogue excerpts, a table listing advertisements of clothing and footwear covered by the earlier mark, a list of producers of the goods marketed by the intervener under the earlier mark, invoices, examples of labels of the earlier mark and a sworn statement made in 2011 regarding the sales figures generated by the earlier word mark over the relevant period.
27 First, with regard to the catalogues challenged by the applicant, it must be stated that the intervener provided excerpts of 24 catalogues published at various dates throughout the relevant period. Those catalogue excerpts offer various types of items for sale under the earlier word mark, such as t-shirts, coats, boots, sandals, sweatshirts, trousers, blouses, vests, pumps, dresses, skirts and jackets, which correspond to the goods for which the earlier word mark was registered. It is true that, as the applicant correctly noted, the catalogues also offer for sale goods other than those for which the earlier mark was registered, such as bags. Nevertheless, that fact is not such as to undermine the probative nature of those catalogues since it cannot be disputed that they primarily offer for sale goods for which the earlier word mark was registered, namely clothing and footwear.
28 Moreover, it must be pointed out that the catalogues are in German and are thus clearly intended for a German-speaking public. More specifically, the catalogues show that the relevant territory is Germany, in view of the fact that they list the shops in Germany selling the goods at issue, as well as the intervener’s German website address.
29 Therefore, it is clear from the catalogues that the earlier word mark has been used in the German territory for the goods at issue throughout the relevant period. Those catalogues, which were directed at end consumers, contained detailed information on the goods offered for sale, their prices and the way they were sold. Judging by the website address and the various references to the shops offering the goods at issue, it has to be found that the goods were offered for sale under the earlier word mark to end consumers in Germany. Furthermore, those facts are supported, first, by the document concerning the distribution of the catalogues which shows that several million copies were distributed over the relevant period and, second, by the sworn statement provided by the intervener, which asserts that the goods sold under the earlier word mark have been marketed in Germany.
30 Second, with regard to the invoices disputed by the applicant, it should, in the first place, be stated that, during the administrative procedure, the intervener submitted 38 invoices issued in the relevant period.
31 Those invoices were addressed to the intervener by different producers and indicate a large volume of purchases, the amounts ranging from EUR 1 959.89 to EUR 48 951.30. Similarly, it must be found that those invoices were issued for a large volume of goods, such as clothing or footwear, given that the quantities of goods vary between 88 and 3 552 items. The amounts of those invoices and the number of items ordered therefore indicate fairly extensive use of the earlier word mark.
32 In the second place, it must also be found that those invoices cover the whole of the relevant period, which reflects an ongoing use of the earlier word mark during that period.
33 In the third place, it should be noted, first of all, that the invoices referred to were sent to the intervener by some 15 different suppliers of goods marketed under the earlier word mark. That variety of suppliers is corroborated by the list of suppliers from 2007 to 2010 that was produced by the intervener. These factors demonstrate that the earlier word mark has been used publicly and outwardly within the meaning of the case-law cited in paragraph 21 above.
34 In addition, contrary to what the applicant claims, the Board of Appeal was entitled to rely on those invoices, even though they were sent by the suppliers and not to end consumers. First, it should be noted that, according to settled case-law, it cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 30 September 2014 in Scooters India v OHIM — Brandconcern (LAMBRETTA), T‑132/12, EU:T:2014:843, paragraph 25 and the case-law cited). In addition, it must be stated that, taking account of the particular method of distribution that retail constitutes, it is possible for the intervener to provide evidence other than the invoices addressed to end consumers (see, to that effect, judgment of 16 December 2008 in Deichmann-Schuhe v OHIM — Design for Woman (DEITECH), T‑86/07, EU:T:2008:577, paragraphs 59 and 60).
35 Second, as is noted in paragraph 21 above, determining whether use of the earlier word mark is genuine requires an overall assessment. In the present case, the intervener has provided a large number of invoices, which, although not sent to the end consumer, but sent by suppliers to the intervener, nevertheless demonstrate the extent of use of the earlier word mark, regard being had to the number of invoices provided as well as the volumes ordered, as has been shown in paragraph 31 above. It is also clear from the sworn statement, the validity of which is not disputed by the applicant, from the catalogues, of which several million copies have been distributed, as well as from the document concerning the distribution of those catalogues, that the earlier mark has been used publicly and outwardly.
36 In the last place, contrary to what the applicant claims, the invoices are sufficiently detailed to allow a precise determination of what the goods at issue are. In that regard, it should be stated that the invoices or purchase orders that are directly annexed to them indicate the type of product ordered as well as the sizes and quantities requested. Therefore, the applicant’s argument cannot be accepted.
37 With regard to the applicant’s argument that the intervener was required to produce sales amounts by product or by class of product, genuine use of the earlier word mark, as is noted in paragraphs 22 and 23 above, requires an overall assessment and depends, in particular, on the commercial volume, the length of the period during which the mark was used and the frequency of use. While such use may thus be demonstrated by submitting sales figures by product, it can also be demonstrated through the submission of other items, as has been shown in paragraphs 30 to 36 above.
38 Having regard to the foregoing, the Board of Appeal was entitled to find that the intervener had provided evidence that the earlier word mark had been put to genuine use. Accordingly, the first plea must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
39 In support of its second plea, the applicant argues that the Board of Appeal committed errors in its analysis of the likelihood of confusion. It claims that the Board of Appeal erred in the analysis of the level of attention of the relevant public, in the analysis of the similarity between the signs and in the examination of the descriptive nature of the earlier word mark.
40 Pursuant to Article 53(1)(a) of Regulation No 207/2009 read in conjunction with Article 8(1)(b) thereof, upon application by the proprietor of an earlier trade mark, a Community trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks means trade marks registered in a Member State with a date of application for registration earlier than the date of application for registration of the Community trade mark.
41 According to settled case-law, the risk that the public might 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
42 Moreover, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).
The relevant public
43 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
44 In the present case, given that the goods at issue are everyday consumer goods, the Board of Appeal was correct to find that the relevant public was made up of average German end consumers, who are reasonably observant and circumspect.
45 That conclusion cannot be called into question by the applicant’s argument that the end consumer is generally very observant when buying clothing or shoes.
46 It should be noted that the clothing sector comprises goods which vary widely in quality and price. Thus, whilst it is possible that the consumer is more attentive to the choice of mark where he or she buys a particularly expensive item of clothing, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector (see judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293). In the present case, however, the applicant has provided no evidence tending to demonstrate such an attitude on the part of the consumer.
The comparison of the goods
47 According to settled case-law, in assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
48 In the present case, the Board of Appeal was right to consider the goods at issue included in Class 25 to be partly identical and partly similar, given that the marks at issue covered clothing and footwear in the same way and that headgear had the same function as the goods at issue and shared the same distribution channels and sales outlets.
The similarity of the signs
49 It should be noted that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002 in Matrazen Concord v OHIM — Hukla Germany (MATRAZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).
50 Moreover, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
51 Last, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (see MATRATZEN, cited in paragraph 49 above, EU:T:2002:261, paragraph 30 and the case-law cited).
52 First, in terms of the visual comparison, the Board of Appeal considered the signs at issue to be similar given that they have the same letter sequence ‘she’, which is the only element of the earlier word mark. It also took the view that the figurative element of the mark at issue would not be perceived as the stylised letter sequence ‘cu’ and that that element did not have a significant influence on the perception of the mark at issue by the average consumer.
53 The applicant argues that the Board of Appeal was wrong to divide the mark at issue into a word element and a figurative element, in so far as that mark does not show any visual separation between the two elements. More specifically, it argues that the mark at issue consists of a homogenous sign and, therefore, that the consumer will not conclude that the stylised characters are a figurative element.
54 It should, first of all, be noted that there is nothing to prevent a finding that a word mark and a figurative mark are visually similar, since both types of mark have a graphic form which is capable of creating a visual impression (see judgment of 16 October 2014 in Junited Autoglas Deutschland v OHIM — Belron Hungary (United Autoglas), T‑297/13, EU:T:2014:893, paragraph 47 and the case-law cited).
55 In the present case, it must be found that the earlier word mark is composed of the word ‘she’. It must also be found that the applicant does not dispute the Board of Appeal’s analysis that the mark at issue contains the letter sequence ‘she’, which is the only element of the earlier mark. Only the analysis of the first element of the mark at issue is discussed by the parties.
56 It should be noted that, contrary to what the applicant submits, the mark at issue is not a compact and homogenous sign. The sign is in fact clearly divided into two parts. The last part is made up of the element ‘she’ written in a classic typeface. The first part, on the other hand, is made up of an element consisting of a curved line.
57 Even though a part of the relevant public would analyse that curved line as the stylised script of the element ‘cu’, that is not true for all of the relevant public. The Board of Appeal therefore did not make any error in considering that such an analysis would be excessive. In this regard, it should be stated that the word ‘cushe’ does not exist in the German language. Given that the word element of the mark at issue does not have any meaning for the relevant public, it cannot be accepted that that public will favour such an interpretation of that mark. It should be noted that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he will nevertheless, perceiving a verbal element within a figurative sign, break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 6 September 2013 in Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, EU:T:2013:399, paragraph 104 and the case-law cited). In addition, the three final letters of the mark at issue are separated from each another; it must therefore be considered that the average consumer will interpret the initial stylistic element not as the succession of two interconnected letters, but more as a fanciful element.
58 The Board of Appeal was therefore entitled to consider that the sign at issue was perceived, by the relevant public, as the combination of the word element ‘she’ and a figurative element representing a curved line preceding it.
59 In so far as the marks at issue share the word element ‘she’ and the earlier word mark is made up exclusively of that element, the Board of Appeal was entitled to consider the signs at issue to be visually similar.
60 Second, with regard to the phonetic similarity of the signs at issue, the Board of Appeal considered them to be identical owing to the fact that the figurative element of the mark at issue could not be pronounced.
61 The applicant disputes the Board of Appeal’s assessment and claims that the phonetic similarity of the signs at issue is low.
62 According to the case-law, the phonetic reproduction of a composite sign corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level. Therefore, the figurative elements of the earlier sign should not be taken into account for the purpose of a phonetic comparison of the signs at issue (see, to that effect, judgment in EUROCOOL, cited in paragraph 57 above, EU:T:2013:399, paragraph 118 and the case-law cited). The relevant public thus perceives the word element of the mark applied for as the element ‘she’, and not as the element ‘cushe’.
63 As has been noted in paragraph 55 above, the earlier word mark is made up exclusively of the word element ‘she’.
64 Therefore, the Board of Appeal was correct to consider the signs at issue to be phonetically identical.
65 Third, with regard to the conceptual analysis of the signs at issue, the Board of Appeal concluded that they were similar because they shared the word ‘she’ and that the figurative element of the sign at issue neither changed nor neutralised the meaning of the word element.
66 The applicant disputes the Board of Appeal’s conclusion and claims there is only a low conceptual similarity, since the word ‘cushe’ has no meaning.
67 In the present case, as has been noted in paragraph 55 above, the earlier word mark is made up exclusively of the word element ‘she’. It should be stated that that element will be read and understood by the relevant public as referring to the third person singular feminine pronoun in English. The word element ‘she’, common to the signs at issue, has a meaning understood by the German general public, given that it is part of basic English vocabulary and is normally understood even by most of the public that does not speak that language.
68 It follows that the Board of Appeal was correct to find that the signs at issue were conceptually similar.
69 Having regard to the foregoing, in so far as the marks at issue are phonetically identical and visually and conceptually similar, they should be regarded as similar overall.
The likelihood of confusion
70 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. 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 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
71 Contrary to what the applicant claims, the Board of Appeal was not required to attach greater weight to visual similarity in the global assessment of the likelihood of confusion. Certainly, as the applicant maintains, in clothes shops, whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually (see, to that effect, judgment in NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 46 above, EU:T:2004:293, paragraph 50). Nevertheless, that circumstance is not such as to undermine the conclusion of the Board of Appeal regarding the similarity of the signs at issue, given that it has been demonstrated in paragraphs 52 to 59 above that they were, in any event, visually similar.
72 In the present case, it should be held that, because of the similarity of the signs at issue and the fact that the goods in question are identical or similar, the Board of Appeal was justified in finding that there was a likelihood of confusion between the marks at issue.
73 That conclusion is not called into question by the applicant’s argument that the earlier word mark is purely descriptive and thus has a low distinctive character.
74 Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 23 September 2011 in NEC Display Solutions Europe v OHIM — C More Entertainment (see more), T‑501/08, EU:T:2011:527, paragraph 57).
75 Accordingly, the Board of Appeal was correct to consider, in the present case, that the low distinctiveness of the earlier word mark did not automatically exclude any likelihood of confusion, given the similarity of the signs at issue and the similarity or identity of the goods in question.
76 Furthermore, the applicant’s argument that the Board of Appeal erroneously considered that the mark at issue could be perceived as a variation of the earlier word mark cannot succeed.
77 In this regard, it should be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another. In the present case, the fact that the mark at issue consists of the same word sign as the earlier word mark and differs from it solely by a figurative element without particular meaning could be perceived as a particular configuration of the earlier word mark (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 46 above, EU:T:2004:293, paragraph 51). It must thus be held that the Board of Appeal took the view that the goods covered by the mark at issue could be perceived by the relevant public as originating from the same undertaking or undertakings economically linked to the earlier word mark.
78 It follows from the foregoing that the second plea must be rejected.
79 Accordingly, since none of the pleas raised by the applicant in support of its action is well founded, the action must be dismissed in its entirety.
Costs
80 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
81 Pursuant to Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are regarded as recoverable costs. Therefore, the intervener’s claim concerning the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Wolverine International, LP to pay the costs, apart from those incurred by BH Store BV before the Cancellation Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);
3. Rejects the claim of BH Store relating to the costs it incurred before the Cancellation Division.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 15 October 2015.
[Signatures]