JUDGMENT OF THE GENERAL COURT (First Chamber)
1 March 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark GREENWICH POLO CLUB GPC 2002 – Earlier EU figurative mark BEVERLY HILLS POLO CLUB – Relative ground for invalidity – No likelihood of confusion – No similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑217/22,
Lifestyle Equities CV, established in Amstelveen (Netherlands), represented by S. Terpstra, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Greenwich Polo Club, Inc., established in Greenwich, Connecticut (United States),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, V. Valančius and M. Brkan (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Lifestyle Equities CV, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 February 2022 (Case R 1063/2021‑4) (‘the contested decision’).
Background to the dispute
2 On 29 October 2002, the other party to the proceedings before the Board of Appeal of EUIPO, Greenwich Polo Club, Inc., filed an application for registration of an EU trade mark with 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), as amended, and 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)).
3 Registration as a mark was sought for the following figurative sign:
4 The mark applied for covered goods in Classes 16, 18 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
5 On 18 June 2018, the applicant filed, pursuant to Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, an application for a declaration of invalidity of the contested mark in respect of all the goods covered by that mark.
6 The application for a declaration of invalidity was based on, inter alia, the EU figurative mark, reproduced below, applied for on 15 October 1996 and registered on 27 November 1998, covering goods in Class 18 and corresponding to the following description: ‘Luggage’:
7 Following the request made by the other party to the proceedings before the Board of Appeal of EUIPO, the latter requested the applicant to furnish proof of genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. The applicant did so within the prescribed period.
8 Furthermore, by the final decision of the Cancellation Division of 20 February 2019 in parallel revocation proceedings, the contested mark was revoked in respect of all the goods covered by that mark, with the exception of the goods in Class 25 corresponding to the following description: ‘Men’s, women’s and children’s clothing’.
9 After informing the applicant of the revocation in part of the contested mark, and in the absence of any response from the applicant, EUIPO maintained the application for a declaration of invalidity of that mark in respect of the goods referred to in paragraph 8 above.
10 On 23 April 2021, the Cancellation Division rejected the application for a declaration of invalidity.
11 On 16 June 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
12 By the contested decision, the Board of Appeal dismissed the appeal. In essence, it found that, first, according to the online Collins Dictionary, the definition of ‘luggage’ covered by the earlier mark, covering ‘suitcases and bags you take with you when [travelling]’, did not include ‘handbags’. Secondly, ‘luggage’ was different in nature and purpose from the ‘men’s, women’s and children’s clothing’ covered by the contested mark and was normally made by different producers and sold through different distribution channels. Furthermore, the Board of Appeal found that there was no competition or aesthetic complementarity between the goods at issue, even though some distribution channels could also occasionally sell those two types of goods. To the extent that a necessary precondition for the application of Article 8(1)(b) of Regulation 2017/1001 was absent, since the goods at issue were different, the Board of Appeal found that there was no likelihood of confusion.
Forms of order sought
13 The applicant claims, in essence, that the Court should:
– annul the contested decision and the contested mark;
– in the alternative, annul the contested decision and remit the matter to EUIPO for reconsideration;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event of the parties being summoned to attend an oral hearing.
Law
Preliminary observations
15 Given the date on which the application for registration of the contested mark was filed, namely 29 October 2002, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94, as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
16 Consequently, in the present case, as regards the substantive rules, the references made by the parties in their written pleadings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 40/94, the terms of which are identical.
The admissibility of evidence adduced for the first time before the Court
17 EUIPO contends that the evidence adduced for the first time in the application is inadmissible.
18 In the present case, the applicant refers, first, in paragraphs 35 and 36 of the application, to examples of fashion brands, mainly luxury marks, with screenshots of the websites of those brands, which produce and sell both clothing and luggage items. Secondly, the applicant produces, in paragraphs 45 and 46 of the application, images of a trend according to which consumers often use their luggage items in combination with their clothing items or where the marks, luxury marks in this instance, market clothing and luggage items one matched with the other.
19 In that regard, it should be recalled that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). In addition, the admission of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
20 Accordingly, the evidence set out in paragraphs 35, 36, 45 and 46 of the application and submitted for the first time before the Court, in respect of which it has not been shown or even argued that that evidence could not have been produced before the Board of Appeal, must be declared inadmissible.
Substance
21 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, in that the goods at issue are similar at least to a certain degree. In particular, the applicant puts forward two complaints by which it submits that the Board of Appeal erred in finding that the goods at issue were dissimilar as, in the first place, the definition of ‘luggage’ does not include ‘handbags’ and, in the second place, those goods are not complementary.
22 EUIPO disputes the applicant’s arguments.
23 Article 8(1)(b) of Regulation No 40/94 provides that, 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, the earlier trade mark and the identity or similarity of the goods or services covered by those 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 mark.
24 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. 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 identified (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).
25 For the purpose of applying Article 8(1)(b) of Regulation No 40/94, 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, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
26 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the ‘luggage’ in Class 18 covered by the earlier mark is different from the ‘men’s, women’s and children’s clothing’ in Class 25 covered by the contested mark, so that there can be no likelihood of confusion on the part of consumers, pursuant to Article 8(1)(b) of Regulation No 40/94.
The first complaint, relating to the definition of the term ‘luggage’
27 The Board of Appeal noted, referring to the definition given in the online Collins Dictionary, that the term ‘luggage’ was to be understood as ‘the suitcases and bags you take with you when [travelling]’. According to the Board of Appeal, it followed that ‘luggage’ had an essentially utilitarian function, namely that of containing items for the specific purpose of travelling, which included suitcases, travel bags and trunks. It therefore took the view that that term included neither ‘handbags’, which, according to that dictionary, are small bags used to carry things such as money and keys when going out, nor ‘purses’ or ‘wallets’, for the same reason.
28 The applicant does not dispute the definition to which the Board of Appeal referred, but submits that it does not exclude handbags. That, it submits, is confirmed by other dictionaries, such as the Cambridge Dictionary, which defines ‘luggage’ as ‘the bags, suitcases, etc. that contain your possessions and that you take with you when you are travelling’ and which further clarifies that ‘hand luggage [refers to] small bags that you take with you onto the plane’. The applicant therefore takes the view that the definition of ‘luggage’ includes handbags, as a form of hand luggage, whether or not they are used for travelling, in particular. According to the applicant, the Board of Appeal thus used too limited a definition, which wrongly led it to conclude that the goods at issue were dissimilar.
29 EUIPO disputes the applicant’s arguments.
30 First of all, it should be recalled that, under Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), applicable at the time, the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services.
31 Thus, every applicant for an EU trade mark must provide, for each of those goods and services, a description meeting the requirements of precision and clarity to enable the competent authorities and economic operators to determine, on that basis alone, the extent of the protection sought (see, to that effect, judgment of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 48 and the case-law cited).
32 In the absence of any restriction, even a subsequent restriction, of the goods or services in respect of which registration of a mark is applied for, EUIPO is not under any obligation to make an assessment of each subcategory coming within a broader category of goods or services covered by that mark, but must direct its examination to the category in question as such. In particular, in the absence of any subsequent restriction, complying with all the required formalities, of the goods in respect of which the mark in question was applied for, EUIPO is not able to split or dissect a broad category of goods into subcategories or individual items in order to examine them separately (see, to that effect, judgment of 23 November 2011, Pukka Luggage v OHIM – Azpiroz Arruti (PUKKA), T‑483/10, not published, EU:T:2011:692, paragraphs 37 and 38).
33 Thus, since the applicant has not specified the subcategories of bags or luggage to which it intended to refer by reference to the general category of ‘luggage’ covered by its earlier mark, that category must therefore be understood in accordance with the inherent meaning of the term ‘luggage’, since that term is already sufficiently clear and precise.
34 In that regard, the Board of Appeal correctly took account of the definition of the term ‘luggage’ as it appears in the Collins Dictionary, and which states that this relates to ‘the suitcases and bags you take with you when [travelling]’, a definition which, moreover, the applicant does not dispute. That definition is also confirmed by the definition referred to by the applicant and set out in the Cambridge Dictionary, which states that the term relates to the ‘bags, suitcases, etc. that contain your possessions and that you take with you when you are travelling’.
35 It follows from those definitions that ‘luggage’ has an essentially utilitarian function designed to transport goods for the specific purpose of travel. Therefore, the Board of Appeal was also right in describing ‘travel bags’, ‘suitcases’ and ‘trunks’ as luggage, a description, moreover, which the applicant does not dispute.
36 However, contrary to what the applicant claims, that concept cannot extend to ‘handbags’.
37 As the Board of Appeal states, ‘handbags’ are defined, by the Collins Dictionary, as being ‘small bags used to carry things such as money and keys when going out’. Therefore, even though it is apparent from that definition that ‘handbags’ have an essentially utilitarian function, being designed to carry items in the same way as ‘luggage’, handbags are distinguished by the fact that they also constitute a fashion accessory with an additional aesthetic function, contributing to the external image (‘look’) of consumers. The latter will thus pay different attention when buying ‘luggage’, in respect of which they will seek, inter alia, to ensure that it is resistant over the long term and of a sufficient size to be able to carry larger or smaller goods when travelling, whereas, when purchasing a ‘handbag’, consumers will make a choice based more on their personal taste as to the colour, shape, size or material of that bag, enabling them to carry, on a daily basis and interchangeably, small objects such as keys, telephones, wallets, glasses, cosmetics, medication and so forth. Therefore, ‘luggage’ and ‘handbags’ have different functions and meet different needs of consumers.
38 The applicant’s argument as to the definition of ‘hand luggage’ in the Cambridge Dictionary must also be rejected. The term ‘hand luggage’ is used in particular for air travel and, as the applicant states, covers all small bags that can be taken by a passenger into a plane’s cabin. However, it is now common ground that, during a flight, passengers are able to carry a piece of ‘hand luggage’ in the cabin, that is to say, a travel bag or luggage on wheels of a limited size, to be placed in the luggage compartment intended for that purpose. Passengers can also take an ‘accessory or personal effect’ with them, generally defined as a ‘handbag’. It follows that ‘handbags’ are not, in principle, regarded as ‘hand luggage’ during flights.
39 Consequently, it is necessary to reject the applicant’s first complaint that the ‘luggage’ covered by the earlier mark includes ‘handbags’.
The second complaint, relating to the assessment of the similarity of the goods at issue
40 Having regard to the definition of ‘luggage’, the Board of Appeal found, first of all, that this had a different nature and purpose from those of the goods in Class 25, given that ‘clothing’ is used to cover, protect and dress the human body, whereas the goods in Class 18 serve to carry objects and, in particular, ‘luggage’, for the purpose of travelling. Therefore, the manufacturers and distribution channels are normally different.
41 Next, the Board of Appeal found that there was no aesthetic complementarity between the goods at issue, in the sense that one is indispensable for the use or purchase of the other, and vice versa. Furthermore, after dismissing the case-law cited by the applicant, the Board of Appeal noted that the screenshots produced before it were not capable of demonstrating that the goods at issue coincided in their nature, purpose and methods of use. According to the Board of Appeal, even though some clothing distribution channels might occasionally sell both types of goods, that was not sufficient to render them complementary or indispensable for the manufacture or the use of the other.
42 Lastly, the Board of Appeal found that consumers were not likely to think that the same undertaking was responsible for the manufacture of the goods at issue and that, therefore, the goods at issue were different.
43 The applicant submits, in essence, that the Board of Appeal erred in finding that the goods at issue would not be perceived as complementary or indispensable to each other and that they did not necessarily share the same distribution channels and manufacturers. The applicant maintains that ‘luggage’, such as ‘handbags’, and ‘clothing’ have the same distribution channels, target the same consumers, are sold in the same sales outlets and commonly originate from the same undertaking, with the result that the Board of Appeal should have found that the goods at issue are similar to a certain degree.
44 EUIPO disputes the applicant’s arguments.
45 In order to assess whether there is similarity between the goods or services at issue, all the relevant factors relating to the link between 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, or the fact that the goods are often sold in the same specialised sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (see judgments of 2 October 2015, The Tea Board v OHIM – Delta Lingerie (Darjeeling), T‑627/13, not published, EU:T:2015:740, paragraph 37 and the case-law cited, and of 12 December 2019, Super bock group v EUIPO – Agus (Crystal), T‑648/18, not published, EU:T:2019:857, paragraph 24 and the case-law cited).
46 It must also be recalled that goods or services which are complementary are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
47 Furthermore, in accordance with the case-law, aesthetic complementarity between goods may give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 40/94. Such an aesthetically complementary nature must involve a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use those products together. That aesthetic complementarity is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise (see, to that effect, judgments of 11 July 2007, Mülhens v OHIM – Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraph 36, and of 27 September 2012, Pucci International v OHIM – El Corte Inglés (Emidio Tucci), T‑357/09, not published, EU:T:2012:499, paragraph 51 and the case-law cited).
48 However, it is important to point out that the existence of aesthetic complementarity between the goods is not, by itself, sufficient to conclude that there is a similarity between them. For that, consumers must consider it usual that the goods are sold under the same trade mark, which normally implies that a large number of the producers or distributors of those goods are the same (see, to that effect, judgments of 11 July 2007, TOSCA BLU, T‑150/04, EU:T:2007:214, paragraph 37, and of 27 September 2012, Emidio Tucci, T‑357/09, not published, EU:T:2012:499, paragraph 52 and the case-law cited).
49 It is necessary to assess the applicant’s arguments in the light of those principles.
50 In the first place, the applicant asserts, as a matter of common knowledge and on the basis of the evidence submitted before the Board of Appeal, that it is common commercial practice in the clothing sector for undertakings to sell and produce under the same mark both ‘luggage’, including ‘handbags’, and ‘clothing’, since that practice is no longer limited to luxury marks. Thus, the goods at issue share the same distribution channels and the same retail outlets. The applicant also notes that both it and the other party to the proceedings before the Board of Appeal of EUIPO apply the same business rationale, given that they both sell clothing items as well as luggage items.
51 In that regard, first, it must be stated that it is settled case-law that ‘handbags’ in Class 18 are similar to ‘clothing’ in Class 25, on the grounds that consumers often combine those goods, with the result that ‘handbags’ may, in addition to their basic function, have a common aesthetic function by contributing with ‘clothing’ to the external image (‘look’) of those consumers, and that those goods are often sold in the same sales outlets (see, to that effect, judgments of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraphs 49 and 50; of 27 September 2012, El Corte Inglés v OHIM – Pucci International (PUCCI), T‑39/10, not published, EU:T:2012:502, paragraph 76; and of 17 November 2021, Soapland v EUIPO – Norma (Manòu), T‑504/20, not published, EU:T:2021:789, paragraph 49).
52 However, as has been established in paragraph 39 above, ‘handbags’ are not included in the definition of ‘luggage’ covered by the earlier mark, with the result that the findings of that case-law cited above, to which the applicant refers several times (paragraphs 34, 41 and 44 of the application), cannot relate to ‘luggage’ in Class 18.
53 Secondly, it must be recalled, as is apparent from paragraphs 34 and 35 above, that the Board of Appeal correctly defined the ‘luggage’ covered by the earlier mark, in particular by stating that this included ‘travel bags’, ‘suitcases’ and ‘trunks’.
54 In that regard, it is apparent from the case-law that ‘suitcases’ and ‘trunks’ are offered not only by manufacturers of travel goods, but also by manufacturers of fashion items and clothing accessories and that their aesthetic function is therefore, from the point of view of the consumer, not negligible. They must therefore also be regarded as part of the fashion sector in the broad sense of the term (judgment of 6 November 2014, Vans v OHIM (Representation of a wavy line), T‑53/13, EU:T:2014:932, paragraph 57 (not published)).
55 Nevertheless, it has been held on several occasions that goods such as the ‘suitcases’ or the ‘trunks’ in Class 18 have a different nature and purpose from those of ‘clothing’ in Class 25. The latter goods are used to cover and dress the human body, whereas the goods in Class 18 are used to carry objects. They are normally made by different producers and sold through different distribution channels. The fact that goods such as ‘suitcases’ and ‘trunks’, on the one hand, and ‘clothing’, on the other, may be sold in the same commercial establishments, such as large shops or supermarkets, is not particularly significant in this regard since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see, to that effect, judgments of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI), T‑8/03, EU:T:2004:358, paragraph 43, and of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 44).
56 The Court has also recently held that ‘travel bags’ are not directly comparable to fashion accessories such as ‘handbags’ or ‘backpacks’, by their nature, intended use or aesthetic function. They are generally sold in specialised sales outlets which, in general, do not offer ‘clothing’ (judgment of 17 November 2021, Manòu, T‑504/20, not published, EU:T:2021:789, paragraph 51). The same is true of ‘luggage’ in Class 18 in relation to ‘clothing’ in Class 25.
57 In the present case, the assertion that certain undertakings manufacture not only ‘clothing’ but also ‘luggage’ and use the same distribution channels to sell their goods is not sufficient to establish that that is thus the case in general (see, by analogy, judgment of 27 June 2019, Aldi v EUIPO – Crone (CRONE), T‑385/18, not published, EU:T:2019:449, paragraph 40).
58 As is apparent from the case-law cited in paragraphs 55 and 56 above, ‘travel bags’, ‘suitcases’ or ‘trunks’, and therefore ‘luggage’, are generally sold in specialised sales outlets, which do not offer ‘clothing’. If that is the case and they are sold together in more general retail establishments, that fact is not particularly significant, since those sales outlets may bring together goods of a very diverse nature, without consumers ascribing the same origin to them.
59 Thirdly, the evidence submitted by the applicant before the Board of Appeal is irrelevant in the present case, as it does not show fashion marks selling clothing items in conjunction with ‘luggage’, ‘suitcases’, ‘travel bags’ or ‘trunks’, but with fashion accessories such as ‘handbags’ or ‘rucksacks’.
60 Furthermore, it must be recalled that the new evidence, contained in paragraphs 35 and 36 of the application, which includes screenshots and links to websites of marks, in particular luxury marks, selling both ‘clothing’ and ‘luggage’, ‘suitcases’ and ‘travel bags’, has been rejected as inadmissible in paragraph 20 above.
61 Fourthly, so far as concerns the applicant’s claim that both it and the other party before the Board of Appeal of EUIPO apply the same business rationale by selling both ‘luggage’ and ‘clothing’ under their respective marks, it is apparent from the case-law that, in invalidity proceedings, EUIPO may take account only of the list of goods as it appears in the registration document of the EU trade mark, subject solely to any subsequent amendments to that list. Therefore, the comparison of the goods required by Article 8(1)(b) of Regulation No 40/94 must relate to the description of the goods covered by the marks and not to the goods for which those marks are actually used (see, to that effect, judgments of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraphs 31 and 32 and the case-law cited, and of 1 July 2009, Perfetti Van Melle v OHIM – Cloetta Fazer (CENTER SHOCK), T‑16/08, not published, EU:T:2009:240, paragraphs 32 and 34).
62 In that regard, it should be noted that, in the present case, the earlier mark was registered only for ‘luggage’ in Class 18, whereas the contested mark was registered only for ‘men’s, women’s and children’s clothing’ in Class 25, and not each for both types of goods. It is therefore irrelevant whether the undertakings holding the marks at issue also market ‘luggage’ and ‘clothing’, as the case may be, under other marks. The applicant’s claim in that regard must therefore be rejected as ineffective.
63 Consequently, the applicant does not demonstrate that the relevant public is accustomed to marketing of the goods in question under the same mark and in the same retail outlets, and that the relevant public will perceive a close link between those goods likely to lead that public to think that the same undertaking is responsible for their manufacture, within the meaning of the case-law cited in paragraph 45 above.
64 In the second place, the applicant submits that the goods at issue are complementary, given that it is usual to use them together, since consumers often combine their luggage with their clothing in order to convey a style, and that the luggage is principally designed to carry clothing. Thus, it asserts that luggage does indeed have an aesthetic function, as it jointly contributes to the consumer’s external image (‘look’).
65 In that regard, first, it should be noted that, unlike ‘clothing’ in Class 25, ‘luggage’ in Class 18, which includes ‘travel bags’, ‘suitcases’ and ‘trunks’, has an essentially utilitarian function, and not an essentially aesthetic function. There is no reason for consumers to coordinate luggage with ‘clothing’ in Class 25, in contrast to ‘handbags’ in Class 18, because luggage does not contribute to the external image of consumers. Consumers will purchase ‘luggage’ in Class 18 without worrying about the concomitant possession or purchase of ‘clothing’ and, conversely, the decision to buy ‘clothing’ is generally not influenced by, or subject to, the purchase or possession of ‘luggage’ in Class 18 (see, by analogy, judgment of 29 April 2014, Asos v OHIM – Maier (ASOS), T‑647/11, not published, EU:T:2014:230, paragraphs 48 and 49).
66 Secondly, the fact that ‘luggage’ can be used to carry ‘clothing’ during a journey does not allow the conclusion that the use or purchase of ‘clothing’ is indispensable for the use of ‘luggage’ and conversely, since ‘luggage’ may also be used to carry any kind of items necessary for consumers during their journey. In any event, that factor is not sufficient on its own for the conclusion that there is a similarity between the goods at issue, in accordance with the case-law cited in paragraph 48 above.
67 Thirdly, it must be stated that the only evidence in which there is a combination of ‘clothing’ and ‘luggage’ or ‘travel bags’ of the same mark, in this case luxury bags, is that contained in paragraphs 45 and 46 of the application and which was declared inadmissible in paragraph 20 above.
68 Therefore, the applicant does not demonstrate that there is aesthetic complementarity between ‘luggage’ in Class 18 and ‘clothing’ in Class 25, such that consumers consider it to be ordinary and natural as a genuine aesthetic necessity to use the goods at issue together to confer a style, one being indispensable for the use or purchase of the other, within the meaning of the case-law cited in paragraphs 46 to 48 above.
69 In the third place, the applicant maintains that it is well known that the goods in question are often promoted in the same magazines, brochures and marketing media, strengthening the close connection between those goods and the impression that the same undertaking is responsible for their production.
70 In that regard, it must be stated that such a fact is not well known and that the applicant has not adduced any evidence capable of supporting that argument.
71 The judgment of 13 February 2014, Demon International v OHIM – Big Line (DEMON) (T‑380/12, not published, EU:T:2014:76, paragraph 42), relied on by the applicant, cannot be applied in the present case, since, in that case, a comparison was made between ‘snowboards’, ‘ski masks’ and ‘snowboard masks’, which were promoted in the same specialised magazines. As EUIPO contends, there is nothing to suggest that the promotion of ‘luggage’ and ‘clothing’ is frequently carried out in the same specialised magazines. Therefore, the argument regarding the close link between the goods at issue because of the use of the same marketing media must accordingly be rejected as unfounded.
72 In the fourth place, the applicant states that the goods at issue are in principle made from the same materials, such as leather, imitation leather, nylon, cotton, suede and so forth, further strengthening their close connection.
73 It has already been held in this regard that that fact may be taken into account in assessing the similarity of goods. However, given the wide variety of goods which can be made of the same materials, that factor alone is not sufficient to establish that the goods are similar. The same material can be used to manufacture a wide range of totally different goods (see, to that effect and by analogy, judgments of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 55, and of 12 March 2019, Xiaomi v EUIPO – Dudingen Develops (MI), T‑799/16, not published, EU:T:2019:158, paragraph 28 and the case-law cited). That argument must therefore also be rejected.
74 In the fifth and last place, the applicant relies on a number of references to case-law, including the judgment of 23 November 2011, PUKKA (T‑483/10, not published, EU:T:2011:692), seeking to bear out its line of argument that the goods at issue are similar to at least a certain degree.
75 First of all, it should be noted that the finding in paragraph 26 of the judgment of 23 November 2011, PUKKA (T‑483/10, not published, EU:T:2011:692), that ‘the luggage and travel bags in Class 18 show a degree of similarity – which cannot be classified as slight – with the clothing in Class 25, including belts’ is not inconsistent with the case-law cited in paragraphs 54 to 56 and 65 above. It consistently follows from that case-law that ‘travel bags’, ‘suitcases’ or ‘trunks’, and therefore ‘luggage’ in Class 18, are neither complementary nor similar to the ‘clothing’ in Class 25, given that they do not share the same function, or frequently the same producers, the same distribution channels and the same sales outlets.
76 It must be noted that, notwithstanding the reference to ‘clothing’ in paragraph 26 of the judgment of 23 November 2011, PUKKA (T‑483/10, not published, EU:T:2011:692), paragraphs 25 and 26 of that judgment, to which the applicant expressly refers, concern the comparison of ‘luggage’ in Class 18, not with ‘clothing’, but with ‘belts’ in Class 25. In that case, the Board of Appeal found it necessary to compare various goods in Class 18 covered by the contested mark, including ‘luggage’ and ‘travel bags’, with ‘clothing’ and ‘belts’ in Class 25 covered by the earlier mark. According to the Court, the Board of Appeal was correct in finding, first, that ‘belts’ in Class 18 (belts for luggage) were very similar to ‘belts’ in Class 25 (belts for trousers) and that the latter were, like the contested goods comprising luggage and travel bags, produced using the same materials, used as accessories by consumers, designed by the same specialised manufacturers and sold under the same marks, resulting in an average degree of similarity between the goods at issue (judgment of 23 November 2011, PUKKA, T‑483/10, not published, EU:T:2011:692, paragraphs 23 to 26). Secondly, the Board of Appeal had found that the contested goods in Class 18 other than ‘belts’, that is to say, in particular, ‘luggage’ and ‘travel bags’, bore no resemblance to the ‘clothing’ in Class 25, a finding which the Court did not call into question (judgment of 23 November 2011, PUKKA, T‑483/10, not published, EU:T:2011:692, paragraphs 20 and 21).
77 Consequently, the applicant’s assertion that ‘luggage’ and ‘travel bags’ in Class 18 are similar to at least a certain degree to the ‘clothing’ in Class 25 stems from a misreading of the judgment of 23 November 2011, PUKKA (T‑483/10, not published, EU:T:2011:692).
78 It therefore follows from the foregoing that the applicant has not established that the Board of Appeal made an error of assessment in finding that, even if it could not be ruled out that some consumers choose ‘luggage’ on the basis of their taste in clothing, there was no aesthetic complementarity between ‘luggage’ in Class 18 and ‘clothing’ in Class 25 and that those goods had a different nature and purpose and did not necessarily share the same distribution channels and the same manufacturers. Accordingly, the applicant’s second complaint must be rejected as unfounded.
79 In view of all of the foregoing considerations, since the single plea on which the applicant relies in support of the form of order which it seeks cannot be upheld, the action must be dismissed in its entirety, without it being necessary to rule on whether the second parts of the first and second heads of claim are admissible.
Costs
80 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.
81 In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event of a summons to attend an oral hearing. Since no such hearing was held in the present case, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Lifestyle Equities CV and the European Union Intellectual Property Office (EUIPO) to bear their own respective costs.
Delivered in open court in Luxembourg on 1 March 2023.