Provisional text
JUDGMENT OF THE GENERAL COURT (First Chamber)
22 September 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark NaraMaxx — Earlier national word mark MAXX — Relative ground for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑586/15,
Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi, established in Osmangazi-Bursa (Turkey), represented by M. López Camba and L. Monzón de la Flor, lawyers,
applicant,
v
European Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
NBC Fourth Realty Corp., established in North Las Vegas, Nevada (United States), represented initially by D. Stone and A. Dykes, and subsequently by A. Smith, Solicitors, and S. Malynicz QC,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2015 (Case R 1073/2014-4), relating to opposition proceedings between NBC Fourth Realty and Nara Tekstil Sanayi Ve Ticaret,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 8 October 2015,
having regard to the response of EUIPO lodged at the Court Registry on 15 December 2015,
having regard to the response of the intervener lodged at the Court Registry on 6 January 2016,
further to the hearing on 30 May 2017,
gives the following
Judgment
Background to the dispute
1 On 27 August 2012, the applicant, Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration of the mark was sought are in, inter alia, 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, for each of those classes, to the following description:
– Class 18: ‘Leather and imitation leather, animal skins; animal hides, artificial leathers, stout leathers, lining leather; goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes; umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles’;
– Class 25: ‘Clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pyjamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits; clothing for sports (for exclusive use for sports); clothing for babies, namely, shirts, pants, coats, dresses; underclothing, namely, boxer shorts, brassieres, briefs, pants, socks; footwear, namely, shoes (excluding orthopedic shoes), sandals, waterproof boots, walking boots, booties, sporting shoes, slippers; shoe parts, namely, heelpieces, insoles for footwear, footwear uppers; headgear, namely caps, skull caps, sports caps, hats, berets; gloves (clothing); stockings; belts (clothing); camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts’;
– Class 35: ‘Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials; clothing, footwear, headgear’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2012/199 of 18 October 2012.
5 On 16 January 2013, the intervener, NBC Fourth Realty Corp., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier registered word marks owned by the intervener:
– the Bulgarian trade mark MAXX, filed on 8 December 2011 and registered on 19 November 2013, under number 121893, for the goods and services in the following classes:
– Class 18: ‘Goods of leather and imitations of leather, sports bags, shopping bags, beach bags, bags made of leather and shoulder bags included in this class; not fitted cosmetic bags; handbags, wallets; backpacks; trunks [luggage]; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddler’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 35: ‘Advertising; business management; business administration; office functions; retail services in the fields of cleaning preparations, body lotions, bath lotions, soaps, cosmetics, toilet waters, eau de Cologne, perfumes, cosmetic kits with make-up, jewellery, watches, paper goods and printed matter, stationery, bags, handbags, wallets, backpacks, trunks [luggage], umbrellas, furniture, household and kitchen goods, fabrics and textile goods, clothing, footwear, headgear, games and playthings, plush toys and animals; gymnastic and sporting articles, Christmas and Halloween decorations’.
– EU trade mark T.K. MAXX, registered on 22 February 2010, under number 8220964, for goods in Classes 3, 14, 16, 21, 25 and 28;
– EU trade mark T.K. MAXX, registered on 30 May 2009, under number 7088991, for goods and services in Classes 18, 24 and 35;
– EU trade mark HOME MAXX, registered on 17 April 2008, under number 5939038, for goods and services in Classes 21, 24 and 35.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.
8 On 24 February 2014, the Opposition Division upheld the opposition, in so far as it was based on the earlier Bulgarian mark MAXX, in respect of all the goods and services referred to in the application for registration, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
9 On 21 April 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 27 July 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It noted that the parties had not disputed the Opposition Division’s finding to the effect that the goods and services covered by the mark applied for were in large part identical and, in part, similar to the goods and services covered by the earlier mark. In its view, the signs at issue had above-average visual and phonetic similarities and, since they had no conceptual meaning for Bulgarian consumers, their conceptual comparison was neutral for the outcome of the case. It found that the earlier mark had an average degree of inherent distinctive character and concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it claims that, since the signs at issue are dissimilar visually, phonetically and even conceptually, the Board of Appeal was wrong to find that there was a likelihood of confusion. In addition, the applicant maintains that it cannot be concluded that there is a likelihood of confusion solely on the basis of the presence of the common element ‘maxx’, since that term has a laudatory connotation. Lastly, it submits that the mark applied for contains figurative elements and that the term ‘nara’, placed at the beginning of the sign, is fully distinctive.
14 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. 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 which is earlier than the date of application for registration of the EU trade mark.
15 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 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).
16 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).
The relevant public
17 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, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
18 As regards the relevant public, the Board of Appeal found, without being challenged by the applicant on that point, that the goods and services covered by the marks at issue were directed at the public at large and that the services in Class 35 were aimed partly at professionals and partly at the end consumer in so far as retail services were concerned. The Board of Appeal considered that it was necessary to analyse the likelihood of confusion from the point of view of the public at large in Bulgaria, with an average degree of attentiveness, and that of professional clients, with above average attentiveness.
The comparison of the goods and services at issue
19 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account (see 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 37 and the case-law cited).
20 In the present case, the parties agree that the goods and services covered by the mark applied for and the goods covered by the earlier mark in Class 35, are in large part identical and, in part, similar, as the Board of Appeal noted in paragraph 11 of the contested decision.
The comparison of the signs at issue
21 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
22 The 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 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).
The distinctive elements of the mark applied for
23 The applicant complains, in essence, that the Board of Appeal failed to take into account the fact that the ‘nara’ element, which appears at the beginning of the mark applied for, is distinctive, and that the term ‘maxx’, which comes after it and has a laudatory connotation, has a very low degree of distinctiveness from the point of view of Bulgarian consumers. The applicant criticises the Board of Appeal for finding, in paragraph 14 of the contested decision, that Bulgarian consumers are not likely to associate the term ‘maxx’ with the concept of ‘maximum’.
24 It should be borne in mind that the distinctive character of an element of a mark is assessed on the basis of whether that element has a greater or lesser capacity to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).
25 In support of its argument, the applicant relies, first, on the judgment of 15 October 2008, Air Products and Chemicals v OHIM — Messer Group (Ferromix, Inomix and Alumix) (T‑305/06 to T‑307/06, not published, EU:T:2008:444, paragraph 49). However, as the Board of Appeal pointed out, that judgment did not rule on the perception of the term ‘maximum’ by the relevant Bulgarian public since that judgment predated the accession of Bulgaria to the European Union. Accordingly, it is irrelevant.
26 In that regard, the alleged similarity between the situation of the applicant and that of other States that have acceded to the European Union, such as Cyprus, Hungary and Poland, is also irrelevant to the perception and understanding of the term ‘maxx’ by the relevant Bulgarian public.
27 Secondly, the applicant relies on a decision of the Bulgarian Patent Office of 23 January 2015, which found that Bulgarian consumers perceived the term ‘maxx’ as an abbreviation of the term ‘maximum’ and that the term therefore had a very low degree of distinctiveness.
28 On that point, it should be noted that, even though that decision has been submitted by the applicant for the first time before the General Court, it cannot, contrary to EUIPO’s submission, be rejected as inadmissible. It is clear from case-law that neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of Regulation No 207/2009 (see judgment of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 18 and the case-law cited).
29 In the present case, as the Board of Appeal rightly pointed out in paragraph 14 of the contested decision, the term ‘maxx’ does not exist in Bulgarian, which uses the Cyrillic alphabet. The Bulgarian word for ‘maximum’ is ‘максимален’, which does not bear any apparent similarity to either the term ‘maxx’ or the term ‘maximum’. In addition, the spelling of the term ‘maxx’ is notable since it contains a double ‘x’ and it is not a basic word in English which may be known by the relevant public. Moreover, the applicant does not deny that, as the Board of Appeal observed, a word with a double ‘x’ is very unusual for the relevant Bulgarian public.
30 It follows that, contrary to the applicant’s claim, the term ‘maxx’ will not be perceived by the relevant public as an abbreviation of the term ‘maximum’ and, in any event, cannot be regarded as having very weak distinctive character.
31 Moreover, as the Board of Appeal rightly held, the distinctive character of the term ‘maxx’ cannot be regarded as being less than that of the term ‘nara’. The term ‘maxx’ does not exist in Bulgarian and will be perceived as a foreign word with no particular meaning for the relevant Bulgarian public.
32 As regards the argument that the Board of Appeal did not take account of the fact that the mark applied for will be perceived as a mark consisting of a first name, Nara, followed by a surname, Maxx, and that the distinctive character of the term ‘nara’ is therefore at least as great as that of ‘maxx’, it suffices to note that the Board of Appeal did not find that either of the two elements, ‘nara’ or ‘maxx’, was more distinctive than the other, but rather that both terms played their own distinctive role within the mark applied for. That argument must therefore be rejected as ineffective.
33 Lastly, as regards the applicant’s argument that the mark applied for might be perceived as consisting of a female name, Nara, followed by an expression describing the qualities of goods bearing the term ‘maxx’, it is sufficient to observe that, as the applicant has noted, the first name Nara is a name of Greek origin, which is not common in Bulgaria, and that the arguments relating to the perception of the term ‘maxx’ by Bulgarian consumers have already been rejected in paragraph 29 above.
34 Thus, that argument must be rejected as unfounded.
Visual similarity
35 As regards visual similarity, the Board of Appeal found, in paragraph 16 of the contested decision, that the earlier sign was fully included in the sign applied for, where it played its own distinctive role, and that the degree of visual similarity was above average.
36 The applicant claims, in essence, that the signs at issue differ visually for two reasons: first, on account of the fact that the earlier Bulgarian mark is composed of a single word, whereas the mark applied for consists of two words depicted in a font of fancy characters in different colours (black and grey); and, secondly, on account of the term ‘nara’ being positioned at the beginning of the mark applied for and the graphic representation of that mark. In addition, the applicant complains that the Board of Appeal failed to take into account the overall impression conveyed by the mark applied for, which is longer than the earlier mark and includes the first name Nara, providing an important element of differentiation.
37 In the present case, it should be noted that the earlier mark is composed of a single word, ‘maxx’, whereas the mark applied for consists of two words, ‘nara’ and ‘maxx’, written in upper-case and lower-case letters in different colour shades, which means that consumers will immediately perceive the mark applied for as consisting of two words, ‘nara’ and ‘maxx’. The fact that the name Nara is placed at the beginning of the mark applied for, in upper-case and lower-case letters and a darker colour, constitutes an element of differentiation in relation to the earlier mark.
38 It must be borne in mind that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see judgment of 7 March 2013, FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31 and the case-law cited).
39 In that regard, it should be noted that the name Maxx, written in upper-case and lower-case letters, which is the second word of the mark applied for, is also the single word constituting the earlier mark, so that the word ‘maxx’ is common to both signs. Furthermore, the word ‘maxx’ has distinctive character in the trade mark applied for. Consequently, the two marks are visually similar.
40 In those circumstances, it must be concluded, as the Board of Appeal did, that the degree of visual similarity between the signs at issue is above average.
Phonetic similarity
41 In paragraph 17 of the contested decision, the Board of Appeal found that the phonetic similarity of the signs at issue was above average due to the presence of the term ‘maxx’, which, even though placed second in the contested sign, is clearly audible.
42 The applicant complains that the Board of Appeal failed to take into account the difference in length, rhythm and composition of the two marks and the fact that the mark applied for contains the word ‘nara’, which creates a different overall impression from that of the earlier mark.
43 In this instance, it should be noted that the earlier mark has one syllable and the mark applied for three syllables, the last of which is identical to the earlier mark. In those circumstances, it must be concluded, as the Board of Appeal did, that the phonetic similarity of the signs at issue is above average.
Conceptual similarity
44 The Board of Appeal found, in paragraph 18 of the contested decision, that, conceptually, neither of the signs at issue nor any element of those signs conveys a meaning for Bulgarian consumers and that the conceptual comparison of the signs was therefore neutral for the outcome of the case.
45 The applicant maintains that the relevant Bulgarian public will perceive the term ‘maxx’ as a laudatory term, that the term therefore has low distinctive character and that, if that term were to be perceived as a surname, it would at the very least have the same distinctive character as the term ‘nara’, which would constitute a conceptual difference in relation to the earlier Bulgarian mark MAXX.
46 In that regard, it should be borne in mind that, just like the term ‘nara’, the term ‘maxx’ does not exist in Bulgarian. It is apparent from paragraph 30 above that the relevant public will not understand the term ‘maxx’ as an abbreviation of the word ‘maximum’ or as having laudatory connotations. Furthermore, the applicant has not furnished any evidence to establish that ‘maxx’ will be perceived as a surname which could lead the relevant public to perceive the mark applied for as a first name followed by a surname.
47 Consequently, the applicant’s argument that, if the mark applied for were to be perceived as a first name followed by a surname, that would constitute a conceptual difference in relation to the earlier mark, must be rejected. In those circumstances, it must be concluded, as the Board of Appeal did, that the conceptual comparison is neutral for the outcome of the present case since the signs at issue do not have any meaning for the relevant public.
The likelihood of confusion
48 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
49 In paragraphs 21 and 22 of the contested decision, the Board of Appeal found, taking into account the fact that the goods and services in question were in large part identical and, in part, similar, and that the signs at issue were highly similar visually and phonetically, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
50 The applicant argues that, since the signs at issue are dissimilar visually, phonetically and even conceptually, the Board of Appeal erred in finding that there was a likelihood of confusion.
51 In that regard, it is apparent from the analysis of the similarity between the signs at issue that the applicant is wrong to claim that the signs are dissimilar. Given that the premiss it relies on in disputing that there is a likelihood of confusion is incorrect, its argument must be rejected.
52 The applicant puts forward other arguments for the sake of completeness.
53 As regards, first, the argument that, like the Opposition Division, the Board of Appeal failed to compare the mark applied for with the other marks relied on in support of the opposition, it should be noted that, for reasons of procedural economy, neither the Board of Appeal nor the Opposition Division carried out such an analysis in the contested decision because the opposition was upheld on the basis of the earlier mark.
54 Even if a comparison of the mark applied for with the other marks relied on in support of the opposition were to produce a different conclusion, it could not call into question the fact that the opposition was upheld on the basis of the earlier mark. Accordingly, such a comparison would be ineffective. It follows that the Board of Appeal, like the Opposition Division, was not required to compare the mark applied for with the other marks relied on in support of the opposition.
55 As regards, secondly, the argument that the intervener did not furnish evidence to establish, to the requisite legal standard, that the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier marks relied on, within the meaning of Article 8(5) of Regulation No 207/2009, it is sufficient to note that, since the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation, it did not examine that question. Consequently, that argument must be rejected as ineffective.
56 As the single plea in law put forward by the applicant in support of its claims is unfounded, that plea must be rejected and the action be dismissed in its entirety.
Costs
57 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.
58 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.
On those grounds,
THE GENERAL COURT (First Chamber),
hereby:
1. Dismisses the action;
2. Orders Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi to pay the costs.
Delivered in open court in Luxembourg on 22 September 2017.