JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
7 October 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark TRECOLORE — Earlier Community and national word and figurative marks FRECCE TRICOLORI — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑365/14,
CBM Creative Brands Marken GmbH, established in Zurich (Switzerland), represented by U. Lüken, M. Grundmann and N. Kerger, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Aeronautica Militare — Stato Maggiore, established in Rome (Italy),
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 1 April 2014 (Case R 411/2013-5), relating to opposition proceedings between Aeronautica Militare — Stato Maggiore and CBM Creative Brands Marken GmbH,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 27 May 2014,
having regard to the response lodged at the Court Registry on 22 September 2014,
having regard to the decision of 17 November 2014 refusing to allow the lodging of a reply,
further to the hearing on 30 April 2015,
gives the following
Judgment
Background to the dispute
1 On 7 April 2011, the applicant, CBM Creative Brands Marken GmbH, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 18, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, rucksacks, bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 35: ‘Advertising; Business management; Business administration; Office functions; Retail services, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, bags, handbags, wallets, purses, key cases, rucksacks, pouches, umbrellas, parasols and walking sticks, whips, harness and saddlery; Arranging and conducting of advertising events and customer loyalty programmes.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 88/2011 of 11 May 2011.
5 On 5 August 2011, Aeronautica Militare — Stato Maggiore filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for.
6 The opposition was based on the following earlier rights:
– the Community word mark FRECCE TRICOLORI, registered on 27 January 2010 under No 8 425 481 and designating goods and services in Classes 9, 14, 16, 18, 20, 25, 28 and 41 (‘the earlier Community word mark’);
– the Italian word mark FRECCE TRICOLORI, registered on 30 November 2010 under No 1 379 870 and designating goods and services in Classes 9, 14, 16, 18, 20, 25, 28 and 41;
– the Community figurative mark reproduced below, registered on 27 January 2010 under No 8 425 531 and designating goods and services in Classes 9, 14, 16, 18, 20, 25, 28 and 41, corresponding, for Classes 9, 14, 18 and 25, to the following description:
– Class 9: ‘Protective helmets, spectacles, spectacle frames, spectacle chains’;
– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’.
– the Italian figurative mark reproduced below, registered on 30 November 2010 under No 1 380 680 and designating goods and services in Classes 9, 14, 16, 18, 20, 25, 28 and 41:
7 The opposition, in support of which Aeronautica Militare — Stato Maggiore relied on the grounds referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, was directed against all the goods and services covered by the mark applied for and was based on all the goods and services covered by the earlier rights.
8 On 19 December 2012, the Opposition Division rejected the opposition, concluding that there was no likelihood of confusion between the marks at issue and that the requirements of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 were not met.
9 On 24 February 2013, Aeronautica Militare — Stato Maggiore filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 1 April 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM: (i) annulled the Opposition Division’s decision in so far as it had rejected the opposition with regard to the goods in Classes 18 and 25 covered by the mark applied for and with regard to certain services in Class 35 covered by that mark, and thus upheld the opposition to that extent; (ii) rejected the trade mark application in respect of those goods and services; and (iii) dismissed the appeal as to the remainder.
11 Like the Opposition Division, the Board of Appeal decided to examine the likelihood of confusion with regard to the earlier Community figurative mark (‘the earlier trade mark’). The relevant territory for assessing the likelihood of confusion was thus that of the European Union. It held that the goods and services at issue were directed at both the general public and a public of professionals and that the level of attention displayed by those consumers fell to be described as average. The Board of Appeal found that the goods in Classes 18 and 25 covered by the marks at issue were identical, that certain services in Class 35 were similar to a low degree to the goods covered by the earlier trade mark, and that the rest of the services in Class 35 were dissimilar to those goods. It considered that the signs in question produced similar visual, phonetic and conceptual impressions. Consequently, it held, emphasising the importance of the visual aspect in view of the economic sector concerned, that there was a likelihood of confusion between the marks at issue for the goods in Classes 18 and 25 and for the services in Class 35 that were similar to the goods covered by the earlier trade mark. Lastly, the Board of Appeal considered that there was no need to examine the opposition to the extent that it was based on the opponent’s other marks besides the earlier trade mark and that, regarding the application of Article 8(5) of Regulation No 207/2009, it was necessary to confirm the Opposition Division’s findings regarding the evidence submitted by Aeronautica Militare — Stato Maggiore being insufficient to demonstrate the repute of the earlier trade marks relied on by that party.
Procedure and forms of order sought
12 By application received at the Court Registry on 27 May 2014, the applicant brought the present action.
13 The applicant claims that the Court should:
– annul the contested decision to the extent that it annuls the Opposition Division’s decision and upholds the opposition;
– reject the opposition in its entirety;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The applicant requested leave, pursuant to Article 135a of the Court’s Rules of Procedure of 2 May 1991, to set out its views at a hearing and requested that the Court give a ruling following the oral procedure. The Court granted that request.
16 By order of the President of the Fifth Chamber of the General Court of 13 April 2015, the present case was joined to Cases T‑227/14 CBM v OHIM — Aeronautica Militare (TRECOLORE) and T‑228/14 CBM v OHIM — Aeronautica Militare (TRECOLORE) for the purposes of the oral procedure.
17 In the context of a measure of organisation of procedure, a written question was put to the parties, which answered that question at the hearing as the Court had requested.
Law
18 The applicant seeks the annulment of the contested decision by relying on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
20 It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion (see, by analogy, judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 17). 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 the goods or services in question and taking into account all factors relevant to the circumstances of the case (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 and 31 and the case-law cited).
21 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and in GIORGIO BEVERLY HILLS, cited in paragraph 20 above, EU:T:2003:199, paragraph 32).
22 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
23 According to 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).
24 It is in the light of those considerations that the Court must assess whether the Board of Appeal was right to reject the Community trade mark application submitted by the applicant on the ground that there was a likelihood of confusion between the marks at issue.
25 As a preliminary point, the Court points out that the Board of Appeal, echoing the Opposition Division in that regard, carried out its assessment of the likelihood of confusion between the marks at issue by comparing the mark applied for with the earlier trade mark.
The relevant public
26 The Board of Appeal held that the relevant public consisted of average consumers in the European Union and a more professional public, the level of attention of those consumers being — in its view — average, focusing on the Italian public in particular.
27 In its criticism of the assessment of the likelihood of confusion carried out by the Board of Appeal, the applicant submits, relying on the judgment of 12 January 2006 in Ruiz-Picasso and Others v OHIM (C‑361/04 P, ECR, EU:C:2006:25, paragraph 39), that since the goods and services concerned are directed at the general public, consumers will display a high level of attention at the time of purchasing such goods, which fall within the fashion sector. In its view, in such a sector, the differences between the marks will be clearly perceived, recognised and remembered by consumers.
28 As OHIM observes in its defence, the case-law cited by the applicant is of no relevance, since the goods at issue in the case in question were motor vehicles, in respect of which — by reason of the high cost and highly technological nature of such goods — the relevant consumer displays a particularly high degree of attentiveness.
29 It follows from case-law that the degree of attentiveness of consumers when purchasing goods in Classes 18 and 25 is no more than average (see, to that effect, judgments of 19 June 2012 in H.Eich v OHIM — Arav (H.EICH), T‑557/10, EU:T:2012:309, paragraph 22, and 19 April 2013 in Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, EU:T:2013:207, paragraph 23) and that, regarding the goods in Classes 9 and 14 covered by the earlier trade mark, certain watches, watch bands, alarm clocks, items of costume jewellery or even optical sunglasses may be purchased without consumers paying particular attention to them (see, to that effect, judgment of 12 February 2015 in Compagnie des montres Longines, Francillon v OHIM — Cheng (B), T‑505/12, ECR, EU:T:2015:95, paragraph 34). It is therefore appropriate to consider that, as regards the retail services in Class 35 covered by the mark applied for, including via websites and teleshopping, in relation to goods in Classes 9, 14, 18 and 25, the degree of attentiveness of consumers is no more than average. Consequently, the applicant’s arguments must be rejected.
30 Accordingly, it must be found that the Board of Appeal was right to consider that the relevant public consisted of average consumers in the European Union, deemed to be reasonably well informed and reasonably observant and circumspect.
The comparison of the goods and services
31 In the contested decision, the Board of Appeal found that the goods in Classes 18 and 25 covered by the mark applied for were identical to those in the same classes covered by the earlier trade mark and that certain services in Class 35 covered by the mark applied for were similar to a low degree to the goods covered by the earlier trade mark.
32 The applicant agrees with the Board of Appeal’s findings as regards both the identity of the goods in Classes 18 and 25 and the similarity, which it describes as very weak, between those goods and the services in Class 35.
33 It is appropriate to recall the case-law according to which, where it is called upon to assess the legality of a decision of the Board of Appeal of OHIM, the General Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the General Court (judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 48).
34 Regarding the assessment of the degree of similarity between certain services in Class 35 covered by the mark applied for, on the one hand, and the goods covered by the earlier trade mark, on the other, it should be borne in mind that, according to case-law, there is a similarity between goods and the retail services which relate to those goods (judgments of 5 July 2012 in Comercial Losan v OHIM — McDonald’s International Property (Mc. Baby), T‑466/09, EU:T:2012:346, paragraph 24, and 16 October 2013 in El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), T‑282/12, EU:T:2013:533, paragraph 37), as those goods and services are complementary. In the present case, as can be seen from their wording, the services in Class 35 covered by the mark applied for relate to the goods in Classes 9, 14, 18 and 25 covered by the earlier trade mark. Accordingly, there is a similarity between the various retail services, including via websites and teleshopping, relating to sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of those materials, animal skins, hides, trunks and travelling bags, bags, handbags, wallets, purses, key cases, rucksacks, pouches, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, footwear and headgear covered by the mark applied for and the corresponding goods in Classes 9, 14, 18 and 25 covered by the earlier trade mark.
35 Consequently, it must be found that the Board of Appeal erred in its assessment of the similarity between the goods and services covered by the marks in question by holding that the services in Class 35 covered by the mark applied for, mentioned in paragraph 34 above, were similar to a low degree to the goods in Classes 9, 14, 18 and 25 covered by the earlier trade mark, when they are in fact similar to those goods.
The comparison of the signs
36 As a preliminary point, it should be borne in mind that the Board of Appeal focused on the Italian public in order to carry out a comparison of the signs in question, while still taking the publics of other Member States into consideration in order to assess the conceptual similarity of those signs. Where the earlier trade mark is a Community trade mark and the relevant territory for assessing the likelihood of confusion is thus the whole of the European Union, registration must be refused, taking into account the unitary character of the Community trade mark, even where the ground for refusal obtains in only part of the European Union (judgment of 3 March 2004 in Mülhens v OHIM — Zirh International (ZIRH), T‑355/02, ECR, EU:T:2004:62, paragraphs 34 to 36).
37 Next, it must be noted that the applicant challenges the Board of Appeal’s conclusion regarding the similarity of the signs in question, relying mainly on a comparison of the mark applied for and the earlier Italian and Community word marks FRECCE TRICOLORI. However, the Board of Appeal compared the signs in question by taking only the earlier trade mark into consideration. Thus, as it had concluded that there was a similarity between the signs in question with regard to the earlier trade mark, it was no longer necessary for it to assess the similarity of the mark applied for with regard to the other earlier trade marks relied on by Aeronautica Militare — Stato Maggiore.
38 Consequently, a number of the criticisms levelled against the contested decision by the applicant are of no importance.
39 Such is the case in particular as regards the reference to the case-law according to which the element situated at the beginning of a sign will be immediately perceived and thus more likely to attract the consumer’s attention (judgments of 27 October 2005 in Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, ECR, EU:T:2005:379, paragraph 45; 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 51; and 13 February 2007 in Ontex v OHIM — Curon Medical (CURON), T‑353/04, EU:T:2007:47, paragraph 67).
40 As OHIM observes, such reasoning is not entirely relevant unless the signs being compared are word signs and the letters or words which they contain are perceived by consumers as forming a word or an expression. In the present case, the signs in question are figurative signs and, while the earlier trade mark does contain the words ‘frecce’ and ‘tricolori’, those words are written vertically on a yellow background and are separated by a dark blue quadrilateral containing figurative elements consisting of stylised arrows and a bow and arrow, which constitutes the biggest part of the mark (see paragraph 6 above). As the applicant has not shown that the word elements of the earlier trade mark would be read as forming a single expression or that that expression would be likely to dominate the overall impression conveyed to the relevant public by that mark for the purposes of the judgment of 12 June 2007 in OHIM v Shaker (C‑334/05 P, ECR, EU:C:2007:333, paragraph 41 and the case-law cited), it does not appear to be possible to apply, as such, the case-law cited in paragraph 39 above.
41 The same is also true of the argument relating to the dominant character of the word ‘frecce’ in the earlier Community word mark. Since the figurative elements of the earlier trade mark with which the mark applied for was compared have not been taken into account in order to establish that the word ‘frecce’ would be dominant in that earlier trade mark, such an argument must be rejected.
42 The same is true regarding the visual similarity of the signs in question, as the applicant notes that the mark applied for contains a figurative element which is not present in the earlier Community word mark.
43 In addition, the applicant relies on an Opposition Division decision adopted in the context of other proceedings between itself and Aeronautica Militare — Stato Maggiore in order to argue that the Board of Appeal’s assessment regarding the similarity of the marks at issue was incorrect.
44 Such an argument must be rejected. Given that the principles of equal treatment and sound administration must be reconciled with observance of the principle of legality, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to his benefit in other proceedings (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 75 and 76). Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (judgment in Agencja Wydawnicza Technopol v OHIM, cited above, EU:C:2011:139, paragraph 77). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, cited above, EU:C:2011:139, paragraph 77).
The visual similarity of the signs in question
45 The applicant submits that the Board of Appeal did not correctly assess the general appearance of the signs in question, as it did not take sufficient account of the word ‘frecce’ in the earlier trade mark or of the differences between the figurative elements of the signs in question, namely, the image of a bow and arrow and the yellow and dark blue colours of the earlier trade mark and the white background of the mark applied for.
46 The mark applied for does not contain any element which is identical or similar to the element ‘frecce’ of the earlier Community word mark, which contains sixteen characters whereas the element ‘trecolore’ contains nine, the visual dissimilarity being increased by the visual difference between the vowels. The mark applied for contains a figurative element which is entirely absent from the earlier Community word mark. The representation of arrows pointing upwards underlined by the image of a bow and arrow which appears in the earlier trade mark is absent from the mark applied for and is neither similar to the graphical element of that mark nor the dominant element of the earlier trade mark.
47 OHIM disputes the applicant’s arguments.
48 It is true that the mark applied for does not contain any element which is identical or similar to the word element ‘frecce’ that appears in the earlier trade mark. However, the fact remains that the single word element which the mark applied for contains comprises seven of the nine letters of the second word element of that earlier trade mark, including, in particular, the first two letters. Furthermore, as the Board of Appeal found, it can be seen from an examination of the signs in question that there is a similarity between the word elements ‘trecolore’ and ‘tricolori’ which is not undermined by the visual difference between the vowels.
49 Regarding the alleged differences between the figurative elements of the signs in question, it should be noted that, in its assessment of the visual similarity of those signs, the Board of Appeal observed that they both contained a set of three stylised geometric three-pronged shapes and a green-white-red colour combination. It also observed that the word element ‘frecce’, the representation of a bow and arrow and the yellow and dark blue colours of the earlier trade mark had no counterparts in the mark applied for and that, conversely, the white background in the mark applied for was absent from the earlier trade mark, and that, to that extent, those signs were dissimilar. It concluded that the overall visual impression was one of similarity, in view of the partial similarity of the word elements of the signs in question and the partial similarity of their colours and figurative elements.
50 Although the Board of Appeal’s assessment of the visual similarity between the word elements of the signs in question can be confirmed, in so far as the second word element of the earlier trade mark is almost identical to the single word element of the mark applied for, in view of the findings summarised in paragraph 49 above, the finding of a similarity between the figurative elements of the signs in question appears to be incorrect.
51 It is true that the Board of Appeal highlighted the differences between the figurative elements of the signs in question, noting the representation of a bow and arrow and the yellow and dark blue colours of the background of the earlier trade mark on the one hand and the white background of the mark applied for on the other. However, it failed to give proper weight to some of those visual differences, since the fact that the backgrounds of the signs in question are strongly dissimilar — bright yellow and very dark blue in the earlier trade mark and, in reality, green, white and red in the mark applied for — introduces an important element of differentiation between those signs which was not mentioned as such in the contested decision.
52 In view of those features, the finding that there was an impression of visual similarity between the signs in question was incorrect. The Board of Appeal should have taken into account not only the near-total identity of the second word element of the earlier trade mark and the single word element of the mark applied for, the absence in the mark applied for of the representation of a bow and arrow and the first word element of the earlier trade mark, and the presence in the signs in question of three similar geometric shapes, but also the differences between the backgrounds of the signs in question in terms of their colour. An assessment of all of those elements should have led the Board of Appeal to acknowledge that there was, at best, a certain degree of visual similarity between the signs in question.
53 On the other hand, although the applicant submitted at the hearing that the colours green, white, and red contained in each of the signs in question, being references to Italy, are descriptive of the goods or services relating to fashion, it must be pointed out that the applicant has not adduced any evidence to substantiate such an assertion.
54 Accordingly, the Board of Appeal was wrong to find that there was a visual similarity instead of concluding that there was a certain degree of visual similarity.
The phonetic similarity of the signs in question
55 The applicant submits that the mark applied for does not contain any element which is identical or similar to the element ‘frecce’ of the earlier trade mark, the element to which consumers will pay more attention, as it is positioned at the beginning of that mark, and that the vowels of the marks at issue are different, with those marks differing considerably in terms of pronunciation, duration, rhythm and intonation. In addition, the marks in question differ in terms of the length of their word elements — six and three syllables respectively — and vowel arrangement, as they share only two of the six vowels from the earlier trade mark. The applicant considers that, even assuming that the pronunciation of the marks in question can be said to be similar, such similarity can be observed only between the second word element of the earlier trade mark and the word ‘trecolore’, which differ as to their vowels, the most important elements in a word.
56 OHIM disputes the applicant’s arguments.
57 Although the majority of the applicant’s arguments are made in the context of a comparison between the mark applied for and the earlier Community word mark, they are also relevant as regards the comparison which was actually carried out by the Board of Appeal, namely, the comparison with the earlier trade mark.
58 The Board of Appeal acknowledged that the first word element of the earlier trade mark did not appear in the mark applied for and that, accordingly, the two marks differed on that front. It also acknowledged that the words ‘trecolore’ and ‘tricolori’ did not contain the same vowels. None the less, the Board of Appeal concluded that the signs in question produced a similar phonetic impression on the ground that the pronunciation of the two word elements mentioned above was almost identical in a significant number of languages and that the figurative elements would probably not be pronounced.
59 Despite the absence of the word ‘frecce’ in the mark applied for, the Board of Appeal was rightly able to conclude that the signs in question produced a similar phonetic impression, having regard to the phonetic impression resulting from the near-identical pronunciation of the mark applied for and the second word element of the earlier trade mark.
The conceptual similarity of the signs in question
60 According to the applicant, the Board of Appeal erred in taking account of only the element ‘tricolori’ in order to assess the conceptual similarity of the signs in question. Given the meaning of the word ‘frecce’, it is unlikely that the earlier trade mark would be associated with the Italian flag or with any other flag. Furthermore, the applicant submits that the green-white-red colour combination is not a reference to the Italian flag, as several flags use the same colour combination. It states that the earlier Community word mark will be associated with the identically-named acrobatic demonstration team of the Italian Air Force, but the same will not be true of the mark applied for. Such conclusions are also valid in relation to the earlier trade mark. The applicant considers that the mark applied for contains a graphical representation of upward-moving elements similar to the capital letter ‘Y’, which do not resemble arrows but contrast with the traditional representation thereof and exclude any likelihood of association between those elements. It submits that Italian-speaking consumers will associate the earlier trade mark with the image of arrows without establishing a connection with the mark applied for.
61 OHIM disputes the applicant’s arguments.
62 It is clear from paragraph 24 of the contested decision that the Board of Appeal carried out an assessment of the conceptual similarity between the marks in question by mainly taking the Italian public into consideration, and that registration of the mark applied for had to be refused, in the light of the unitary character of the Community trade mark, even though the ground for refusal obtained in only part of the European Union (see paragraph 36 above).
63 First, the contested decision does not show that the Board of Appeal carried out a conceptual comparison of the signs in question solely with regard to the word element ‘tricolori’ of the earlier trade mark. Although it found that the signs in question were conceptually identical in so far as their respective word elements ‘trecolore’ and ‘tricolori’ communicated the same semantic content, it also noted that the first word element of the earlier trade mark was not reproduced in the mark applied for and that the concept conveyed by that word element did not appear in the latter mark. In addition, it took particular account of the figurative elements of each of the signs in question — particularly the presence in each of those signs of the three colours of the Italian flag — in order to reach the conclusion that those signs were conceptually similar as references to the concept of the Italian flag and, more broadly, Italy. Furthermore, it noted that the sets of three stylised geometric three-pronged shapes could communicate the concept of similar devices.
64 Nevertheless, the Board of Appeal made an error of fact in the remainder of its assessment by indicating that the green-white-red colour combination used to depict the geometric shapes in the signs in question would be understood as representing the Italian flag. In the mark applied for, the three geometric shapes are, uniformly, black. However, the Board of Appeal’s error on that point does not affect the assessment of the conceptual similarity of the signs in question, which stems from the association of those signs with the Italian flag and, more broadly, Italy. It is sufficiently clear from the contested decision that the reference to those concepts is mainly based on the presence in the signs in question of (i) the three colours of the Italian flag which, moreover, are presented in the mark applied for as a reproduction of the flag itself in a receding perspective as the background of that mark, and (ii) Italian or Italian-sounding words which, when associated with those colours, create an allusion of that kind.
65 Secondly, in view of the fact that the signs in question contain word and figurative elements, it is not possible to hold that the mere presence of a given word element, namely, the word ‘frecce’, would make an association between the earlier trade mark and the Italian flag unlikely. It is common ground that the signs in question contain the colours green, white and red, appearing in that order when viewed from left to right, and that the word element ‘tricolori’, a reference to the Italian expression ‘il tricolore’ designating the Italian flag, also appears in the earlier trade mark. In that context, the argument based on the presence of the word element ‘frecce’ in the earlier trade mark must be rejected.
66 Thirdly, for the same reasons, it is necessary to reject the argument that the green-white-red colour combination does not refer to the Italian flag, while the Board of Appeal emphasised the fact that the assessment of the conceptual similarity of the signs in question was carried out by taking the Italian public into consideration (see paragraph 62 above).
67 Fourthly, it should be noted that, in an assessment of the conceptual similarity, the only important thing is that there is a degree of similarity between the signs in question as a result of a reference to a shared meaning, a common concept, or related concepts. Accordingly, the fact that the mark applied for does not refer to the acrobatic demonstration team of the Italian Air Force has no effect, since the contested decision bases the conceptual similarity of the signs in question, which emerges from both the word and figurative elements of those signs, on the reference to the Italian flag and, more broadly, Italy.
68 Fifthly, the applicant submits, first, that the mark applied for contains a graphical representation of upward-moving elements similar to the capital letter ‘Y’, which do not resemble arrows but contrast with the traditional representation thereof and exclude any likelihood of association between those elements, and, second, that Italian-speaking consumers will associate the earlier trade mark with the image of arrows without establishing a connection with the mark applied for. However, such an argument cannot call in question the Board of Appeal’s conclusion regarding the conceptual similarity of the signs in question, which is based — as stated in paragraph 67 above — on the reference to the Italian flag and, more broadly, Italy, the Board of Appeal having moreover rightly found that the concept of arrows did not appear in the mark applied for, thus implicitly stating that, to that extent, the signs in question were dissimilar.
69 Therefore, the Board of Appeal was right to conclude that there was a conceptual similarity between the signs in question.
70 It follows from the foregoing that, as there is a certain degree of visual similarity between the signs in question, the Board of Appeal was right to conclude that there was a similarity between those signs.
The likelihood of confusion
71 The applicant emphasises that the signs in question are dissimilar and that, as a result, any likelihood of confusion between the marks at issue is excluded. In addition, it submits that consumers, who have a high level of attention in view of the nature of the goods and services concerned, will not confuse a sign communicating a fairly simple word combination such as ‘frecce tricolori’ with a sign which has no clear or specific meaning, and that the conceptual differences between those signs are such as to counteract the visual and phonetic similarities.
72 OHIM disputes the applicant’s arguments.
73 In order to assess the likelihood of confusion between the marks at issue, the Board of Appeal found that the Opposition Division had rightly held that the visual aspects of the signs in question were the most important, since, when consumers purchased the goods covered by the marks at issue, the choice was generally made on a visual basis, the near-identity of the words ‘tricolori’ and ‘trecolore’ and the stylised emblems, grouped in threes and identically coloured, having a strong visual impact on consumers. Next, it observed that, in the clothing sector, it was possible that an undertaking might use sub-brands — signs deriving from a main trade mark and sharing an element with that mark — in order to distinguish one range of products from another, and that the public might believe that the goods and services covered by the signs in question came from a single undertaking. Having regard to: (i) the identity of the goods in Classes 18 and 25 covered by the marks at issue and the similarity of certain services in Class 35 covered by the mark applied for; (ii) the visual, phonetic and conceptual similarities of the marks in question; and (iii) the fact that consumers rarely have the opportunity to compare the signs and must rely on their imperfect recollection thereof, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue for the goods and services in question. It upheld the opposition to that extent, but rejected it in respect of certain services in Class 35 covered by the mark applied for. For reasons of procedural economy, it did not examine the other earlier rights besides the earlier trade mark and concluded, regarding the application of Article 8(5) of Regulation No 207/2009, that the evidence produced by Aeronautica Militare — Stato Maggiore was not sufficient to demonstrate the repute of the earlier trade marks relied on by that party.
74 Although the Board of Appeal should have taken into consideration the fact that there was a certain degree of visual similarity between the signs in question, which is particularly relevant in the fashion sector where goods are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually (see, to that effect, judgments of 14 October 2003 in Philipps-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, ECR, EU:T:2003:264, paragraph 55, and 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, paragraph 49), it must none the less be found that that fact alone does not prohibit the conclusion that there is a similarity between the signs in question (see paragraph 70 above), having regard to the elements of visual, phonetic and conceptual similarity between those signs. In addition, it has already been stated that the Board of Appeal rightly concluded that the goods in Classes 18 and 25 covered by the marks at issue were identical and that, furthermore, the services in Class 35 covered by the mark applied for mentioned in paragraph 34 above were similar to the goods in Classes 9, 14, 18 and 25 covered by the earlier trade mark.
75 Accordingly, the Board of Appeal was right to conclude that there was a likelihood of confusion between the marks at issue.
76 Consequently, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and, accordingly, the action must be dismissed in its entirety as unfounded, without it being necessary to give a ruling on the admissibility of the head of claim seeking the rejection of the opposition.
Costs
77 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.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders CBM Creative Brands Marken GmbH to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 7 October 2015.
[Signatures]