JUDGMENT OF THE GENERAL COURT (First Chamber)
29 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Barbarian fashion – Earlier EU word mark BARBARIAN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑427/22,
Nataly Coljnar, residing in Maribor (Slovenia), represented by A. Šiška, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Barbarian Sports Wear Inc., established in Kitchener, Ontario (Canada),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni (Rapporteur) and T. Tóth, Judges,
Registrar: V. Di Bucci,
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 her action under Article 263 TFEU, the applicant, Ms Nataly Coljnar, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 May 2022 (Case R 1953/2021-4) (‘the contested decision’).
Background to the dispute
2 On 15 January 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Shoes; parts of clothing, footwear and headgear; hats; clothing’.
4 On 18 May 2020, Barbarian Sports Wear Inc. filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on, inter alia, the earlier EU word mark BARBARIAN, which was registered on 18 March 1998 under the number 67926 and covers goods in Class 25 corresponding to the following description: ‘Articles of clothing; headwear; footwear; sportswear’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of 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).
7 On 28 September 2021, the Opposition Division upheld the opposition.
8 On 23 November 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal. In particular, on the basis of the earlier EU word mark BARBARIAN, it found, in essence, that, taking into account the identity of the goods at issue, the below-average degree of visual similarity and the high degree of phonetic and conceptual similarity between the marks at issue, the normal inherent distinctiveness of the earlier mark and the normal level of attention of the relevant public, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the English-speaking part of that public.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision and the Opposition Division’s decision and reject the opposition;
– order EUIPO and Barbarian Sports Wear to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is scheduled.
Law
The issue of the intervention of Barbarian Sports Wear
12 It is apparent from Article 173(2) of the Rules of Procedure of the General Court that a party to the proceedings before the Board of Appeal other than the applicant becomes a party to the proceedings before the General Court, as intervener, if he or she lodges a procedural document before the expiry of the time limit prescribed for the lodging of a response. That provision also states that, if he or she fails to respond to the application in the manner and within the time limit prescribed, he or she loses the status of intervener before the General Court (order of 12 July 2022, Cipla Europe v EUIPO and Glaxo Group, C‑245/22 P(I), not published, EU:C:2022:549, paragraph 60).
13 It follows that a party to the proceedings before the Board of Appeal of EUIPO other than the applicant which, like Barbarian Sports Wear, lodged a procedural document before the expiry of the time limit prescribed for the lodging of a response to the application, but did not submit that response within the time limit laid down in that regard by Article 179 of the Rules of Procedure, does not have the status of a party before the General Court and cannot therefore submit observations in the course of the proceedings before it (see, to that effect, order of 12 July 2022, Cipla Europe v EUIPO and Glaxo Group, C‑245/22 P(I), not published, EU:C:2022:549, paragraph 61).
Substance
14 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15 In the context of that plea, the applicant puts forward three complaints with regard to the contested decision, alleging, in essence, first, an incorrect assessment of the similarity of the signs at issue, secondly, an error in the assessment of the distinctive character of the earlier mark and, thirdly, an incorrect assessment of the likelihood of confusion.
16 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.
17 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).
18 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).
19 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see judgment 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 76 and the case-law cited). Likewise, it is apparent from the case-law that a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see, to that effect, judgments of 10 November 2011, Esprit International v OHIM – Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraph 119, and of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited).
The relevant public and territory
20 In paragraphs 17 to 19 of the contested decision, the Board of Appeal found that the relevant public consisted of the general public, that its level of attention was average and that the relevant territory was that of the European Union. The Board of Appeal stated, in particular, that it would examine the opposition from the perspective of the English-speaking part of the relevant public.
21 The applicant does not dispute those assessments.
The comparison of the goods at issue
22 The Board of Appeal found, in paragraph 22 of the contested decision, that the goods in Class 25 covered by the mark applied for were identical to the goods in that class covered by the earlier mark.
23 The applicant does not dispute that assessment.
The comparison of the signs at issue
24 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. 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 that 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).
25 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).
The distinctive and dominant elements of the mark applied for
26 The applicant submits, in essence, that the mark applied for is a relatively complex mark, that is to say, a composite mark comprising, in addition to word elements, prominent figurative elements, which are situated in the centre and cover more than two thirds of the mark. According to the applicant, the figurative element ‘B+B’ is the dominant element in that mark, on account of, inter alia, its position and size.
27 EUIPO disputes the applicant’s arguments.
28 According to the case-law, in order to determine the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).
29 For the purposes of assessing whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58 and the case-law cited).
30 It is in the light of those considerations that it must be assessed whether there are any distinctive and dominant elements in the mark applied for.
31 The Board of Appeal found, in paragraphs 26 to 28 of the contested decision, that, within the mark applied for, the figurative element, which could be described as a complex mixture of a ‘+’ sign and two stylised capital letters ‘B’, played a dominant role on account of its size and its positioning. However, it pointed out that, in general, according to settled case-law, where a trade mark was composed of word and figurative elements, the former were, in principle, more distinctive than the latter, because the average consumer would more readily refer to the goods in question by quoting the name of the mark in question than by describing the figurative element. Consequently, according to the Board of Appeal, the word ‘barbarian’, as part of the word element ‘barbarian fashion’, in which the word ‘fashion’ was non-distinctive, played an independent and distinctive role within the sign applied for.
32 Those findings on the part of the Board of Appeal must be upheld.
33 Although it is indeed true that the figurative element of the mark applied for, representing two stylised capital letters ‘B’ and a ‘+’ sign, will not, on account of its size and positioning, which highlight it within the mark applied for, go unnoticed by the relevant public, the fact remains that, as the Board of Appeal correctly stated, in principle, the figurative elements included in signs have a less significant impact on the overall impression created by those signs than the word elements in those signs, because the public tends to assimilate and remember marks as a result of their word elements rather than by describing their figurative elements (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
34 As regards the word element of the sign applied for, ‘barbarian fashion’, it must be pointed out, as observed by the Board of Appeal, first, that the English word ‘fashion’, which is associated with ‘the area of activity that involves styles of clothing and appearance’ (Collins Dictionary), is non-distinctive with regard to the goods in question, in the light of the fact that those goods are fashion items and accessories (such as ‘shoes; parts of clothing, footwear and headgear; hats; clothing’). Secondly, it must be stated that the word ‘barbarian’, which may be defined, as it was by the Board of Appeal, as ‘a member of a primitive or uncivilised people; a coarse, insensitive, or uncultured person’ (Collins Dictionary), is distinctive in relation to the goods in Class 25 since that term is unrelated to the intrinsic qualities of the goods in question.
35 It follows that the Board of Appeal was right in stating that the word ‘barbarian’, as part of the word element ‘barbarian fashion’, played an independent and distinctive role within the sign applied for.
The visual similarity
36 The applicant submits that the Board of Appeal erred in finding that there was a below-average degree of visual similarity between the signs at issue. According to the applicant, although the signs at issue have the word element ‘barbarian’ in common, those signs, taken as a whole, create a different visual impression. The applicant argues that the visual similarity resulting from the element in common, ‘barbarian’, is offset by, inter alia, the different lengths, arrangements and sizes of the signs in general. In particular she contends that the figurative elements ‘B+B’ in the mark applied for, which are situated in the centre and cover more than two thirds of the mark, will attract the relevant public’s attention to a greater extent.
37 EUIPO disputes the applicant’s arguments.
38 In paragraph 29 of the contested decision, the Board of Appeal stated that, visually, the only element of which the earlier word mark was composed, namely the word ‘barbarian’, was identically reproduced within the mark applied for, in which the word ‘barbarian’ played an independent and distinctive role. It found that the signs differed in the additional word ‘fashion’ in the sign applied for, which, however, played a secondary role on account of its descriptiveness. Lastly, it stated that the signs also differed in the dominant figurative part of the sign applied for. Consequently, it concluded that the signs at issue were visually similar to a below-average degree.
39 The applicant has not succeeded in calling those findings into question.
40 In that regard, it must be borne in mind, as has been stated in paragraphs 33 to 35 above, in the first place, that, even though the figurative element of the mark applied for will not, on account of its size and positioning, go unnoticed by the relevant public, the fact remains that, according to the case-law cited above, the figurative elements included in signs have a less significant impact on the overall impression created by those signs than the word elements in those signs, on account of the fact that the public tends to assimilate and remember marks as a result of their word elements rather than by describing their figurative elements. In the second place, it has been stated that the English word ‘fashion’ is non-distinctive with regard to the goods at issue, in the light of the fact that those goods are fashion items and accessories. In the third place, it has been stated that the word ‘barbarian’ is distinctive in relation to the goods in Class 25.
41 It follows that the coincidence in the word ‘barbarian’, which, on the one hand, constitutes the earlier mark and, on the other hand, is identically reproduced in the mark applied for as a separately recognisable element, gives rise to a visual similarity between the signs at issue. However, as EUIPO correctly points out, it is the visual importance of the figurative element of the mark applied for which prevented the Board of Appeal from finding that there was a higher degree of visual similarity between those signs.
42 In those circumstances, it must be confirmed that the Board of Appeal was right in finding that there was a below-average degree of visual similarity between the signs at issue.
The phonetic similarity
43 The applicant submits, first, that the elements ‘B+B’ are the dominant elements of the sign at issue, because, on account of their position and size, they are the most striking elements. She argues that, consequently, those elements will be recognised and pronounced by the relevant public. Secondly, she takes the view that the finding that the word ‘fashion’ is not distinctive is incorrect, because the word ‘fashion’ or ‘moda’ designates much more than merely clothing or goods in Class 25 and, consequently, it cannot be disregarded. Thirdly, she contends that the Board of Appeal did not compare the signs as a whole and limited the comparison to a single element, namely ‘barbarian’. The applicant concludes that the degree of phonetic similarity is low and of limited significance.
44 EUIPO disputes the applicant’s arguments.
45 In the present case, the Board of Appeal pointed out that the figurative part of the mark applied for was a mixture of elements composed in such a way that they would not be pronounced. Next, it stated that the sign applied for would be pronounced as ‘barbarian fashion’, despite the fact that those words appeared vertically. Taking into account the secondary role of the element ‘fashion’ in the overall impression created by the sign applied for, it concluded that the signs at issue were phonetically similar to a high degree. That finding was, according to the Board of Appeal, valid irrespective of whether or not the figurative part would be perceived as a reference to the initial or fourth letter, ‘b’, in the word ‘Barbarian’.
46 In that regard, it must, first of all, be pointed out, as observed by EUIPO, that, according to the Board of Appeal, the figurative elements of the mark applied for are not, as such, unpronounceable. Rather, the Board of Appeal noted that they would not be pronounced by consumers, despite being a dominant element, on account of their specific figurative arrangement and positioning within the sign applied for, and in view of the fact that there were two easily pronounceable word elements in the sign applied for, namely ‘barbarian’ and ‘fashion’.
47 Furthermore, it must be borne in mind that, when consumers name composite signs consisting of word and figurative elements, they generally refer only to the word elements and consequently normally disregard the figurative elements, which cannot therefore play a part in the context of the phonetic assessment (see, to that effect, judgment of 14 February 2008, Orsay v OHIM – Jiménez Arellano (O orsay), T‑39/04, not published, EU:T:2008:36, paragraph 49).
48 As regards the distinctive character of the English word ‘fashion’, it has already been stated in paragraph 34 above that, since it is associated with ‘the area of activity that involves styles of clothing and appearance’, it is non-distinctive with regard to the goods in question, in the light of the fact that those goods are fashion items and accessories. Consequently, although that element cannot, in principle, be disregarded, it will have a minor impact in the assessment of the phonetic similarity, even though it is pronounced (see, to that effect, judgment of 25 June 2008, Otto v OHIM – L’Altra Moda (l’Altra Moda), T‑224/06, not published, EU:T:2008:221, paragraph 43).
49 Lastly, as regards the applicant’s argument that the Board of Appeal did not compare the signs as a whole and limited the comparison to a single element, it is sufficient to state that the Board of Appeal, contrary to what the applicant claims, did not limit its analysis to one element alone, but rather took account of the distinctive and dominant elements and their weight in the overall impression created by the signs at issue.
50 It follows from the foregoing that the Board of Appeal was right in finding that there was a high degree of phonetic similarity between the earlier mark and the mark applied for.
The conceptual similarity
51 The applicant submits that, since the word ‘barbarian’ has several meanings and the signs at issue are focused on different types of clothing, they are not conceptually similar. She argues that, while the earlier mark is clearly focussed on sportswear, the mark applied for emphasises fashion, trends, elegance and women’s clothing.
52 EUIPO disputes the applicant’s arguments.
53 In the present case, it must be pointed out that the Board of Appeal found in paragraph 31 of the contested decision that the conceptual similarity between the signs at issue was high. It stated that the marks conveyed the identical concept of the word ‘barbarian’, the meaning of which had been provided previously, that the figurative part did not convey a clear concept and that the presence of the word ‘fashion’ within the mark applied for had no relevant impact on the conceptual comparison on account of its descriptiveness.
54 The applicant has not succeeded in calling into question those findings of the Board of Appeal.
55 It must be pointed out that, in the present case, as observed by the Board of Appeal, the average consumer in the relevant public will associate both the earlier mark and the mark applied for with a barbarian, ‘a member of a primitive or uncivilised people; a coarse, insensitive, or uncultured person’, since they contain the word element ‘barbarian’, which has a specific and direct meaning for that public, which is English-speaking. The argument that the relevant public may also associate the earlier mark with other concepts is not capable of calling into question the finding that, with regard to at least one of its specific and immediately comprehensible meanings, that mark evokes a barbarian in the mind of the relevant public.
56 Furthermore, it must be stated, as observed by the Board of Appeal, first, that the figurative element of the mark applied for does not express a clear concept and, consequently, it is unlikely that consumers will attribute a certain conceptual meaning to the mark applied for on the basis of its figurative element and, secondly, that the presence of the word ‘fashion’ within the mark applied for has no relevant impact on the conceptual comparison on account of its descriptiveness.
57 As regards, lastly, the argument that the marks at issue cover different types of clothing in Class 25, it must be pointed out that, according to the case-law, as particular marketing strategies for the goods and services covered by marks may vary over time depending on the wishes of the proprietors of those marks, an analysis of whether there will be a likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, to that effect, judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 63). Thus, the use which the applicant intends to make of the trade mark sought is irrelevant in this context. In opposition proceedings, EUIPO may only take account of the list of goods applied for as it appears in the trade mark application, subject to any amendments thereto (see, to that effect, judgment of 22 March 2007, Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 89).
58 It follows that the Board of Appeal was right in finding that the conceptual similarity between the signs at issue was high.
The distinctive character of the earlier mark
59 The applicant submits that the word ‘barbarian’ has a meaning in relation to the relevant goods and submits that it has ‘no specific distinctive character on the market in question’. She contends that she has shown that there are several marks in the European Union for goods in Class 25 containing the word ‘barbarian’. Consequently, she submits that the Board of Appeal’s finding that the answer to the question of when, where and to what extent the word ‘barbarian’ is used on the clothing market is not apparent from the evidence produced is unfounded.
60 EUIPO disputes the applicant’s arguments.
61 In the present case, it must be pointed out that the Board of Appeal stated, in paragraph 32 of the contested decision, that the word ‘barbarian’, of which the earlier mark was composed, had no meaning in relation to the relevant goods and, consequently, that the inherent distinctiveness of the earlier mark was normal.
62 As regards the applicant’s argument that the distinctiveness of the earlier mark was weakened on account of the fact there were three other marks registered in the European Union which included the word ‘barbarian’, the Board of Appeal found that, apart from that very limited number, the mere fact that other marks were registered or applied for could not prove use of those marks and that the relevant consumer was exposed to those marks on the market. It concluded that that argument was therefore not sufficient to find that there was a possible weakness as regards the distinctive character of the earlier mark.
63 Those findings, which are not, moreover, called into question by the applicant’s arguments, must be upheld. As regards the other marks registered in the European Union which include the word ‘barbarian’, it is sufficient to state that that fact does not show that the relevant public has been exposed to widespread use of marks including the word ‘barbarian’ and considers that word to be descriptive of the goods in question in Class 25.
64 Furthermore, it must be pointed out, as observed by EUIPO, first, that the word mark BARBARIAN is a registered mark, which thus enjoys a presumption of validity and cannot be regarded, contrary to what the applicant claims, as devoid of distinctive character in the context of opposition proceedings (see, to that effect and by analogy, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 40 to 47).
65 Secondly, as regards the applicant’s arguments that the word ‘barbarian’ is non-distinctive with regard to present-day clothing on account of the fact that ‘Barbarians’ wore specific clothing which attested to the way of life and culture of the time, it is sufficient to state that those considerations are not sufficient to establish that the word ‘barbarian’ is descriptive of the characteristics of the clothing or goods in question in Class 25.
66 It follows that the Board of Appeal was right in finding that the inherent distinctiveness of the earlier mark was normal.
The likelihood of confusion
67 The applicant disputes that there is a likelihood of confusion on the part of the relevant public. She submits, in essence, that, nowadays, consumers are much more attentive, circumspect and educated than they were at the time when the decades-old case-law on which the contested decision was based was adopted. Furthermore, she reiterates, in essence, the arguments by which she has disputed the Board of Appeal’s comparison of the signs at issue.
68 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
69 It is apparent from paragraphs 39 and 40 of the contested decision that the Board of Appeal assessed whether there was a likelihood of confusion on the part of the English-speaking part of the relevant public by taking into account the below-average degree of visual similarity and the high degree of phonetic and conceptual similarity between the signs at issue, the identity of the goods at issue, the normal inherent distinctiveness of the earlier mark and the normal level of attention of the relevant public.
70 The Board of Appeal also pointed out that, although it was true that, with regard to the goods at issue in Class 25, the visual similarity played a greater role in the assessment of the likelihood of confusion, the paying of particular attention to the visual perception did not, however, mean that the phonetic and conceptual impression could be overlooked. In the present case, it found, in essence, that the below-average degree of visual similarity between the signs at issue was offset by the high degree of phonetic and conceptual similarity between them.
71 As is apparent from the grounds of the present judgment, those assessments are not vitiated by error.
72 It follows that the Board of Appeal’s assessment as regards the existence of a likelihood of confusion between the signs at issue is not vitiated by error.
73 In view of all of the foregoing considerations, the single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected.
74 The action must therefore be dismissed in its entirety.
Costs
75 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.
76 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is arranged. Since no hearing has been arranged, it is appropriate to order the applicant and EUIPO each to bear their own costs.
77 Under Article 173(2) of the Rules of Procedure, a party to the proceedings before the Board of Appeal other than the applicant, who has lost his or her status as intervener before the Court in that he or she has failed to respond to the application in the manner and within the time limit prescribed, is to bear his or her own costs in relation to the procedural documents lodged by him or her.
78 Since Barbarian Sports Wear has lost its status as intervener before the Court, it must be ordered to bear its own costs in relation to the procedural documents which it has lodged.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Ms Nataly Coljnar and the European Union Intellectual Property Office (EUIPO) each to bear their own costs;
3. Orders Barbarian Sports Wear Inc. to bear its own costs in relation to the procedural documents which it has lodged.
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci | | S. Papasavvas |