JUDGMENT OF THE GENERAL COURT (First Chamber)

14 May 2019 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark Triumph — Earlier EU word mark TRIUMPH — Partial rejection of the application for registration — Relative ground for refusal — Likelihood of confusion — Identical signs — Enhanced distinctiveness of the earlier mark acquired through use — Similarity between products — Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑12/18,

Zweirad-Center Stadler GmbH, established in Regensburg (Germany), initially represented by P. Ruess and A. Doepner-Thiele, subsequently by P. Ruess, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Triumph Designs Ltd, established in Swadlincote (United Kingdom), represented by S. Malynicz QC,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 2 November 2017 (Case R 665/2017-5), relating to opposition proceedings between Triumph Designs and Zweirad-Center Stadler,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová (Rapporteur), President, P. Nihoul and J. Svenningsen, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 11 January 2018,

having regard to the response of EUIPO lodged at the Court Registry on 29 March 2018,

having regard to the response of the intervener lodged at the Court Registry on 26 March 2018,

further to the hearing on 9 January 2019,

gives the following

Judgment

1        On 3 March 2008, the applicant, Zweirad-Center Stadler GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1), itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the word sign Triumph.

3        The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in, inter alia, Classes 9, 12, 25 and 28 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 9: ‘Bicycle sports helmets; bicycle computers; bicycle milometers’;

–        Class 12: ‘Bicycles, parts thereof and bicycle accessories, namely frames, handles, stems, gear systems, pedals, saddles, seats, chains, rims, mud guards, anti-theft devices, luggage carriers, pumps, wire baskets, all of aforementioned goods for bicycles’;

–        Class 25: Class ‘Rain clothing for cyclists; gloves, headgear, caps, all of aforementioned goods for bicycles’;

–        Class 28: ‘Fixed training bicycles’.

4        The application was published in Community Trade Marks Bulletin No 34/2008 of 25 August 2008 under number 6 717 672.

5        On 25 November 2008, the intervener, Triumph Designs Ltd, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (which became Article 41 of Regulation No 207/2009 and is now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier EU word mark TRIUMPH, registered on 8 November 2002 under number 1 145 671, covering, inter alia, goods and services in Classes 6, 9, 11, 12, 14, 16 to 18, and 28 corresponding, for each of those classes, to the following description:

–        Class 6: ‘Locks and keys, of metal’;

–        Class 9: ‘Protective clothing for motorcyclists; protective gloves and protective footwear for motorcyclists; steel capped boots; sunglasses; electrical accessories, parts and instruments for motorcycles; switches for controlling electrical accessories for motorcycles; batteries; battery chargers; tachometers; thermometers; speedometers; horns; starters; electrical wiring; harnesses; sub-harnesses; adapters; electrical locks; alarm apparatus and instruments’;

–        Class 11: ‘Lighting apparatus and instruments for motorcycles and vehicles; headlamp covers; motorcycle and vehicle reflectors;’

–        Class 12: ‘Motorcycles; luggage racks; alarm devices for motorcycles and vehicles; stands for motorcycles; tyres; parts, accessories and fittings for all of the aforesaid goods’;

–        Class 14: ‘Watches; clocks; watch bands, straps and chains; buckles; cufflinks; key rings; key fobs; badges; articles made of precious metal or coated therewith; tie clips and pins’;

–        Class 16: ‘Banners; stickers’;

–        Class 17: ‘Goods made from rubber and plastic materials’;

–        Class 18: ‘Umbrellas; belts; back packs; bags; tool belts; wallets; covers for motorcycles and vehicles’;

–        Class 28: ‘Model motorcycles and parts thereof’.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation No 40/94 (which became Article 8(1)(a) and (b) of Regulation No 207/2009 and is now Article 8(1)(a) and (b) of Regulation 2017/1001).

8        On 18 September 2015, the applicant made a request under Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) to have the intervener furnish proof of genuine use of the earlier mark.

9        By decision of 3 February 2017, the Opposition Division upheld the opposition. It thus rejected the trade mark application in respect of all the goods in accordance with Article 8(1)(b) of Regulation No 207/2009.

10      On 3 April 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

11      By decision of 2 November 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the decision of the Opposition Division to the extent that the trade mark application was rejected for ‘fixed training bicycles’ in Class 28 on the ground that those goods were dissimilar to the goods covered by the earlier mark for which genuine use had been proved. However, the Board of Appeal dismissed the appeal for the contested goods in Classes 9, 12 and 25 on the ground that a likelihood of confusion existed on the part of the relevant public. The Board of Appeal ordered each party to bear its own costs.

 Forms of order sought

12      The applicant claims, following a partial withdrawal at the hearing, that the Court should:

–        annul the contested decision to the extent that it rejected the trade mark application for the following goods:

–        Class 9: ‘Bicycle sports helmets; bicycle computers; bicycle milometers’;

–        Class 12: ‘Bicycles, parts thereof and bicycle accessories, namely frames, handles, stems, gear systems, pedals, saddles, seats, chains, rims, mud guards, anti-theft devices, luggage carriers, pumps, wire baskets, all of aforementioned goods for bicycles’;

–        Class 25: ‘Rain clothing for cyclists; gloves, headgear, caps, all the aforementioned goods for bicycles’ (‘the goods at issue’);

–        reject the opposition in its entirety or, in the alternative, refer the case back to EUIPO in order that it may adopt the necessary measures;

–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener contends that the Court should dismiss the action.

 Law

15      In support of its action, the applicant puts forward a single plea in law alleging, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001. This plea is divided into three parts, alleging, first, erroneous assessment of the degree of distinctive character of the earlier mark; secondly, incorrect assessment of the similarity of the goods at issue; and, thirdly, erroneous assessment of the impact of the distinctive character of the earlier mark in the overall assessment of the likelihood of confusion.

16      EUIPO and the intervener dispute the applicant’s arguments.

17      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

19      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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 and territory

20      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, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

21      In the present case, given the nature of the goods concerned, the Court must uphold the Board of Appeal’s findings in paragraphs 64 and 65 of the contested decision — which, moreover, are not disputed by the parties — that, with regard to the goods covered by the marks at issue in Classes 9, 12 and 25, the relevant public is the public at large as well as a specialised public with professional knowledge or expertise in the sector of cycles, and that the degree of attention displayed by the public at large may vary from average to high according to the price category of the vehicles concerned, namely ‘motorcycles’ covered by the earlier mark or ‘bicycles’ covered by the mark applied for.

22      On account of the fact that the earlier mark relied on in support of the opposition is an EU trade mark, the Court must uphold the finding that the relevant territory is the European Union. The parties do not dispute that finding either.

 The comparison of the goods

23      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. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see 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).

24      The applicant claims that the Board of Appeal erred in finding that the goods at issue were similar. The applicant argues that ‘bicycles’ and ‘motorcycles’ are not similar. In its view, those two means of transportation differ significantly in their nature, their overall concept and, especially, in the form, structure and material of the vehicle frames.

25      The applicant submits that the lack of similarity between ‘bicycles’ and ‘motorcycles’ implies that their respective parts and accessories, on the one hand, and other goods for which registration is sought, on the other hand, cannot be considered to be similar either.

26      EUIPO and the intervener dispute the applicant’s arguments.

27      With regard, first of all, to ‘bicycles’ and ‘motorcycles’ in Class 12, the Board of Appeal concluded that both types of goods were similar to a low degree.

28      The Board of Appeal was right in observing that both types of goods share a purpose of locomotion and in finding that the goods at issue can both be used for leisure and entertainment purposes. In addition, it correctly established that there is a market intersection in the segment for small motorcycles, which are often more similar to bicycles with a supplementary engine than to motorcycles with a large engine displacement. Lastly, it rightly noted that those goods can share the same origin, as, historically, many manufacturers of motorcycles, including the intervener, also produced bicycles, although that is less common nowadays than in the past.

29      That finding is not challenged by the applicant’s arguments that the form of those two types of products differs, inter alia, in that bicycles, including electric bicycles, have pedals which are used to get them moving, whereas motorcycles do not.

30      In that regard, like EUIPO and the intervener, the Court notes that, while it is recognised that differences generally exist in their form, in particular with regards to pedals, those goods nevertheless coincide greatly in other respects, in that, inter alia, they both usually have two wheels, a saddle or seat, and a handlebar. In addition, it must be pointed out that motorcycles with a very low engine displacement often have pedals. As observed in paragraph 28, it is precisely that segment that constitutes a market intersection with the segment for bicycles with a supplementary engine.

31      Moreover, the Board of Appeal’s finding is not challenged either by the applicant’s argument that those goods are used differently in terms of distances covered and speed and in so far as the use of motorcycles is reserved for people holding a specific driving licence and requires wearing a helmet.

32      Indeed, it must be stated that, even if those goods are different in terms of distances covered and speed, the fact remains that both types of goods are means of transportation used, usually, by a single person. Users of those two types of goods often wear helmets, even if that is not mandatory in all cases. While the use of certain motorcycles is reserved for people holding a driving licence under the national rules applicable, the relevant consumer does not differ, in so far as the public at large buys bicycles as well as motorcycles.

33      Lastly, even if, as the applicant argues, it is nowadays less common than in the past that a producer of bicycles also produces vehicles with engines, it is important to note that the fact remains that ‘bicycles’ and ‘motorcycles’ sometimes share the same origin.

34      On the basis of those considerations, the Board of Appeal was right to find a low degree of similarity between ‘bicycles’ in Class 12, covered by the mark applied for, and ‘motorcycles’ in Class 12, covered by the earlier mark.

35      The finding that ‘bicycles’ and ‘motorcycles’ are similar to a low degree is further supported by the Court’s decision in its judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK) (T‑158/05, not published, EU:T:2007:143), in which the Court upheld a decision of the Fourth Board of Appeal of EUIPO establishing a low similarity between ‘bicycles’ and ‘motor cars and parts thereof’ (judgment of 16 May 2007, ALLTREK, T‑158/05, not published, EU:T:2007:143, paragraph 53 to 56). Since the category ‘motorcycles’, at issue in the present case, is both narrower than that of ‘motor cars and parts thereof’ and closer to ‘bicycles’, the low similarity found by the Court in that judgment is all the more applicable in the present case.

36      In the light of the foregoing, the Court should also reject the applicant’s argument that the lack of similarity between the parts and accessories of bicycles and the parts and accessories of motorcycles follows from the lack of similarity between bicycles and motorcycles. Indeed, since the premiss formulated by the applicant has been invalidated, the Court must also reject the conclusion the applicant draws from it.

37      In those circumstances, the Court agrees, first, with the Opposition Division’s finding, followed in essence by the Board of Appeal, that ‘parts ... and ... accessories, namely frames, handles, stems, gear systems, pedals, saddles, seats, chains, rims, mud guards, anti-theft devices, luggage carriers, pumps, wire baskets, all of aforementioned goods for bicycles’ in Class 12, covered by the mark applied for, are similar to a low degree to ‘parts, accessories and fittings [of motorcycles]’ in Class 12, covered by the earlier mark.

38      The goods mentioned in paragraph 37 may be produced by the same manufacturers and may have the same distribution channels and be aimed at the same consumers. Moreover, those goods, which are ancillary to ‘bicycles’, on the one hand, and ‘motorcycles’, on the other hand, share the low similarity that exists between those two categories.

39      It should be noted, in that regard, that in paragraph 75 of the contested decision, which concerns those goods, the Board of Appeal only refers to the (low) similarity between ‘parts and accessories’ in Class 12, covered by the mark applied for, and ‘motorcycles’ in Class 12, covered by the earlier mark — and not ‘parts, accessories and fittings’ of motorcycles. However, given the fact that, at the same time, the Board of Appeal expressly supports the Opposition Division’s findings, this is a clerical error that does not affect the legality of the contested decision. The relevant passage, on page 11 of the Opposition Division’s decision, clearly refers to ‘parts, accessories and fittings’ of motorcycles.

40      Secondly, the Court agrees with the Board of Appeal’s finding that ‘bicycle milometers’ in Class 9, covered by the mark applied for, are similar to ‘tachometers’ in Class 9, covered by the earlier mark, and that ‘bicycle computers’ in Class 9, covered by the mark applied for, are similar to a low degree to ‘speedometers’ in Class 9, covered by the earlier mark. Those goods share the same nature, the same method of use and the same intended purpose.

41      Thirdly, the Court endorses the Board of Appeal’s finding that there is a low degree of similarity between ‘bicycle sports helmets’ in Class 9, covered by the mark applied for, and ‘protective clothing for motorcyclists’ in Class 9, covered by the earlier mark. Those goods share the same method of use and the same intended purpose, given the fact that they are worn by their users, either over the head or over various parts of the body, in order to protect them physically in case of an accident.

42      Fourthly, the Court endorses the Board of Appeal’s finding that there is a low degree of similarity between ‘rain clothing for cyclists; gloves, headgear, caps, all of aforementioned goods for bicycles’ in Class 25, covered by the mark applied for, and ‘protective clothing for motorcyclists’ in Class 9, covered by the earlier mark. Given that they consist of wearable fabric covering the user’s body, they share the same nature and method of use.

43      It follows that the Board of Appeal’s finding that, in essence, the goods covered by the marks at issue — except ‘fixed training bicycles’ in Class 28, covered by the mark applied for — are similar at least to a low degree must be upheld in its entirety.

 The comparison of the signs

44      The Court upholds the Board of Appeal’s finding — which, moreover, is not disputed by the parties — that the signs at issue are identical.

 The likelihood of confusion

45      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

46      The relevant factors mentioned in paragraph 45 also include the distinctive character of the earlier mark, whether it derives from the inherent qualities of that mark or its reputation (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

47      The Board of Appeal considered that a likelihood of confusion existed on the part of the relevant public, no matter its level of attention, for the contested goods in Classes 9, 12 and 25, given that the goods at issue are similar at least to a low degree, the signs are identical, the earlier mark enjoys an enhanced level of distinctiveness and the level of attention of the relevant public varies from average to high.

48      The applicant submits that the Board of Appeal should have found no likelihood of confusion, given that the earlier mark has a weak distinctive character and the goods at issue are, if at all, only slightly similar, notwithstanding the fact that the signs are identical. In the alternative, the applicant claims that, even if it was to be assumed that the earlier mark has an enhanced distinctive character, broader protection of the earlier mark can only be assumed for those goods for which extensive use has been proven.

49      EUIPO and the intervener dispute the applicant’s arguments.

 The distinctive character of the earlier mark

50      In paragraphs 81 and 82 of the contested decision, the Board of Appeal considered that the earlier mark was inherently distinctive. In paragraph 85 of the contested decision, it also found that, based on the evidence produced by the applicant to prove genuine use of the earlier mark, the distinctiveness of the earlier mark must be considered to be high for all the goods for which its genuine use has been recognised.

51      The applicant maintains that the Board of Appeal should have concluded that the earlier mark has a weak distinctive character. It claims, first, that the word ‘triumph’ is laudatory and that the relevant public perceives it as just a statement rather than a reference to the origin of the goods.

52      Secondly, the applicant submits that it is not possible to state in general terms that a mark has a strong distinctive character by referring to evidence of genuine use of the goods. It claims that the Board of Appeal should have examined all the relevant facts and circumstances in more detail. In particular, the applicant states that the intervener has not submitted any proof of market share, promotional investments or percentages relating to the degree of recognition attained by the earlier mark within the relevant section of the public. It adds that extensive use must be proven as at the time of lodging the application for the subsequent trade mark, thus on 3 March 2008. However, according to the applicant, most documents do not relate specifically to individual goods or territories or to the abovementioned relevant period of time.

53      EUIPO and the intervener dispute the applicant’s arguments.

54      As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater the likelihood of confusion will be, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

55      It must be recalled that, in determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been 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 mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. It follows that it is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 22 to 24; and of 7 June 2018, MIP Metro v EUIPO — AFNOR (N & NF TRADING), T‑807/16, not published, EU:T:2018:337, paragraph 61).

–       The inherent distinctiveness of the earlier mark

56      It must be held that, contrary to the Board of Appeal’s findings in paragraphs 81 and 82 of the contested decision, for the English-speaking section of the relevant public, as well as for the section speaking a language in which the word ‘triumph’ or a word close to it is used to refer to the same notion, that word has the meaning of ‘victory’. As the applicant submits, it must be assumed that that meaning will invoke, on the part of that section of the relevant public, the notion of high performance, allowing one to be successful/victorious, which will be associated to the goods covered by the earlier mark. It follows that the word ‘triumph’ is a laudatory term at the very least for a section of the relevant public.

57      However, while it is true that the allusive or laudatory nature of a mark is capable of weakening its distinctive character, that does not mean that the mark would thereby be entirely devoid of distinctive character.

58      The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark may be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45, and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 30).

59      It should also be noted that the applicant itself has not claimed that the word ‘triumph’ was entirely devoid of distinctive character, but confined itself to stating that it has a weak or, in any event, less than normal inherent distinctive character. The Court must endorse that assessment.

60      In addition, given that the notion of ‘triumph’ is not descriptive of any of the goods at issue, the Board of Appeal did not err in finding that that term has no meaning for any of those goods from the perspective of the relevant public.

–       Acquired distinctiveness through use of the earlier mark

61      With regard to acquired distinctiveness through use of the earlier mark, it must be recalled that the existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation 2017/1001. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).

62      In that regard, it must be noted that, contrary to what the applicant seems to assert, there is no requirement that the evidence submitted in order to prove acquired distinctiveness through use must relate directly to the market share held by the mark or the proportion of the relevant section of the public which identifies the goods or services as originating from a particular undertaking, but it is sufficient for that evidence to enable conclusions to be drawn on that market share or proportion.

63      In the present case, it must be pointed out that, even though a majority of the items of evidence produced by the intervener were not included in the relevant period, namely the period before 3 March 2008, the date on which the application for registration of the mark applied for was lodged, those items included evidence from that period, including annual turnover figures drawn up by the intervener concerning business records of the brand ‘Triumph’ for the period between 2003 and 2008, showing substantial turnover figures generated in the territory of the European Union; two catalogues for 2006 and 2007 containing information about the intervener’s clothing range and other products sold under the mark ‘Triumph’ and containing also information about the intervener’s outlets, offices or distributors, in particular in 18 Member States of the European Union; one catalogue for 2007 containing information about the intervener’s motorcycles and information about its distributors in 18 Member States of the European Union; and trade mark usage reviews regarding the sales of the intervener’s goods bearing the mark ‘Triumph’, accompanied by copies of invoices dated between 2006 and 2011, 21 of which, issued between 10 July 2006 and 3 March 2008, concerned the relevant period.

64      It must be noted that all those documents demonstrate a sizeable market share of the earlier mark in the market of the goods at issue and show a long-term high intensity of use of the mark in a substantial part of the territory of the European Union. It is apparent that the intervener had distributors, outlets or offices in a vast majority of the European Union, and that it had made extensive use of its mark by selling a great variety and quantity of goods, and this constantly during the last two years before the date of the application for registration of the mark applied for. This leads to the conclusion that a large proportion of the consumers of the goods at issue identify the goods covered by the mark ‘Triumph’ as originating from the intervener, because of the mark, with the result that the criteria laid down in the case-law in VITACOAT, referred to in paragraph 61, are satisfied.

65      In those circumstances, the Court must agree with the Board of Appeal’s findings in paragraph 84 of the contested decision that the earlier mark enjoys an enhanced distinctiveness acquired through use.

66      Accordingly, it must be held that, in the context of its global assessment of the greater or lesser capacity of the earlier mark to identify the goods at issue as originating from a particular undertaking, the Board of Appeal did not err in concluding that the distinctiveness of that mark must be considered to be high for all the goods for which its genuine use has been recognised.

 Global assessment of the likelihood of confusion

67      In the present case, it should be recalled that the marks at issue are identical. Given the interdependence between the factors to be taken into account, it follows that the low degree of similarity between the goods at issue is offset by the identity of the two signs.

68      In particular, since the Board of Appeal’s finding that the earlier mark has a highly distinctive character was upheld in paragraphs 63 to 66 above, it must be pointed out that, in view of the case-law referred to in paragraph 54 above, the likelihood of confusion is therefore greater.

69      That conclusion is not challenged by the applicant’s argument, put forward in the alternative, that, should the earlier mark have an enhanced distinctive character, broader protection may only be assumed for those goods for which use has been proven.

70      In that regard, it must be pointed out, first, that the goods taken into account in the present case are, in any event, only those for which genuine use has been established. Secondly, the case-law of the EU courts has not introduced such a limitation on the scope of protection enjoyed by a mark with a highly distinctive character. Moreover, in so far as the applicant relies, in support of its line of argument, on decisions of the Bundesgerichtshof (Federal Court of Justice, Germany), its argument is ineffective. It should be recalled that, according to the case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system. Neither the Board of Appeal nor, as the case may be, the EU judicature are therefore bound by — even if they may take them into consideration — decisions adopted in a Member State of or in a country outside the European Union (judgment of 10 July 2014, Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059, paragraph 55; see, also, judgment of 24 March 2010, 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 52 and the case-law cited).

71      In the light of the foregoing, all three parts of the applicant’s single plea in law must be rejected and the action dismissed in its entirety.

 Costs

72      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO, in accordance with the form of order sought by the latter. As the intervener has not applied for costs, it will bear its own costs.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Zweirad-Center Stadler GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

3.      Orders Triumph Designs Ltd to bear its own costs.


Pelikánová

Nihoul

Svenningsen

Delivered in open court in Luxembourg on 14 May 2019.


E. Coulon

 

S. Frimodt Nielsen

Registrar

 

President


*      Language of the case: English.