JUDGMENT OF THE GENERAL COURT (First Chamber)
16 October 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark ZOO Sport – Earlier Community word mark ZOOT and earlier Community figurative mark SPORTS ZOOT SPORTS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑455/12,
Zoo Sport Ltd, established in Leeds (United Kingdom), represented by I. Rungg, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being
K-2 Corp., established in Seattle (United States of America), represented by M. Graf, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 9 August 2012 (Case R 1395/2011-4), relating to opposition proceedings between K-2 Corp. and Zoo Sport Ltd,
THE GENERAL COURT (First Chamber),
composed of S. Frimodt Nielsen, President (Rapporteur), M. Kancheva and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 12 October 2012,
having regard to OHIM’s response lodged at the Court Registry on 28 January 2013,
having regard to the intervener’s response lodged at the Court Registry on 22 January 2013,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from attending,
gives the following
Judgment
Background to the dispute
1 On 24 January 2010, the predecessor in law to the applicant, Zoo Sport Ltd, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the following figurative mark in black and white:
3 The goods and services in respect of which registration was sought fall within Classes 18, 25 and 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, in relation to each of those classes, to the following description:
– Class 18: ‘Sports bags’;
– Class 25: ‘Clothing; maillots; footwear; sports shoes’;
– Class 35: ‘Distribution of samples; advertising’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/057 of 29 March 2010.
5 On 29 June 2010, the intervener, K-2 Corp., filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.
6 The opposition was based on two earlier marks: Community word mark ZOOT, registered on 13 September 2007 under No 5233119 (‘the earlier word mark’), and Community figurative mark No 4719316 in black and white, registered on 8 June 2007 (‘the earlier figurative mark’), reproduced below:
7 The earlier word mark was registered for the following goods:
– Class 9: ‘Diving suits’;
– Class 25: ‘Articles of clothing namely swimwear, footwear and headgear’.
8 The earlier figurative mark was registered for the following goods and services:
– Class 25: ‘Clothing, footwear, headgear’;
– Class 35: ‘Retailing in the field of sports clothing and equipment’;
– Class 36: ‘Sponsoring of athletes during sports competitions and/or events’;
– Class 41: ‘Providing information relating to sports competitions and events via a global computer information network’.
9 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009.
10 On 13 May 2011, the Opposition Division upheld the opposition pursuant to Article 8(1)(b) of Regulation No 207/2009, in so far as it was based on the earlier figurative mark, for part of the contested goods, namely for all of the goods in Classes 18 and 25, and rejected the opposition as to the remainder of the goods and services concerned. The Opposition Division also rejected the opposition based on Article 8(5) of Regulation No 207/2009 on the ground that no evidence had been adduced to support the claim that the earlier marks had a reputation. Lastly, the Opposition Division rejected the opposition in so far as it was based on the earlier word mark.
11 On 7 July 2011, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
12 In its response to the statement of grounds for the appeal, the intervener filed a cross-appeal in which it sought to have the opposition upheld for the services in Class 35.
13 By decision of 9 August 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM allowed the applicant’s appeal for the goods ‘sports bags’ and dismissed the appeal as to the remainder.
14 The Board of Appeal also dismissed the intervener’s cross-appeal on the ground that it was inadmissible, since it did not meet the time-limit and fee requirements set out in Article 60 of Regulation No 207/2009. The Opposition Division’s decision to reject the opposition for the contested services in Class 35 therefore was res judicata in that respect. For the sake of completeness, the Board of Appeal nevertheless considered the cross-appeal and concluded that it was not well founded (paragraphs 10 to 14 of the contested decision).
15 As regards the ground of appeal alleging breach of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found, first, that the goods ‘sports bags’ in Class 18 were different from the goods in Class 25 and from the services in Classes 35, 36 and 41 covered by the earlier figurative mark, whereas the goods in Class 25 were identical (paragraphs 17 to 22 of the contested decision). The Board of Appeal also noted that the services in Class 35 covered by the mark applied for were different from all of the goods and services covered by the earlier figurative mark. According to the Board of Appeal, even if it were admissible, the cross-appeal brought by the other party would therefore be unfounded in any event (paragraphs 23 and 24 of the contested decision).
16 Next, the Board of Appeal noted that the signs at issue had an average degree of phonetic and visual similarity. Conceptually, those signs are different for the public, who understands the word ‘zoo’ as meaning an establishment for wild animals, and they are also similar in that they both include a reference to the term ‘sport’ (paragraphs 29 to 31 of the contested decision).
17 The Board of Appeal found that the goods covered by the marks at issue were aimed at the general public and that the consumer’s level of attention would be average and would not increase in accordance with the price of those goods (paragraph 35 of the contested decision).
18 For the Board of Appeal, the inherent distinctive character of the earlier figurative mark was normal (paragraph 36 of the contested decision).
19 Consequently, given the identical nature of the goods covered by the signs at issue, the average visual and phonetic similarity of those signs, the normal distinctive character of the earlier figurative mark and the normal level of attention of the relevant consumer, the Board of Appeal found a likelihood of confusion on the part of the relevant public as regards the goods in Class 25. The opposition was rejected for the other goods and services, which were different from those covered by the earlier figurative mark (paragraph 37 of the contested decision).
20 The Board of Appeal also considered that the outcome of the case would remain the same if the opposition were examined in the light of the earlier word mark (paragraph 39 of the contested decision).
21 As regards the ground of appeal alleging breach of Article 8(5) of Regulation No 207/2009, the Board of Appeal noted that the intervener had not, at any stage of the proceedings, submitted evidence that the earlier marks had a reputation or adduced evidence or made submissions showing that the use of the mark applied for would take unfair advantage of the distinctive character or reputation of the earlier marks. The opposition had therefore to be rejected in this respect (paragraph 42 of the contested decision). That point does not form part of this action.
Forms of order sought
22 The applicant claims that the Court should:
– alter the contested decision and reject the opposition in its entirety;
– order OHIM to pay the costs.
23 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
24 The applicant raises a single plea in law alleging breach of Article 8(1)(b) of Regulation No 207/2009. In essence, the applicant claims that the Board of Appeal contravened that provision in so far as it should have found that the signs at issue, as a whole, were different and that there was therefore no likelihood of confusion.
25 OHIM and the intervener dispute the applicant’s arguments.
26 As a preliminary point, the Court recalls that Article 8(1)(b) of Regulation No 207/2009 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 an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) of that regulation, earlier trade marks means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
27 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
28 In the present case, it must be noted that the goods which form the subject-matter of this dispute are those in Class 25 covered by the mark applied for, namely ‘Clothing; maillots; footwear; sports shoes’, which the Board of Appeal, like the Opposition Division, found to be identical to the goods in Class 25 covered by the earlier figurative mark, namely ‘Clothing, footwear, headgear’, and for which the opposition was upheld (‘the goods at issue’).
Relevant public
29 In the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of products 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
30 In this respect, the Board of Appeal stated that the goods at issue are aimed at the general public and are everyday consumer goods. It also noted that the level of attention of the consumer will be average and will not increase even if, as the applicant claimed before it, its goods are more expensive than those produced by others (paragraph 35 of the contested decision).
31 The applicant disputes that definition of the relevant public and of its level of attention. It claims that the average consumer does not practise sport on a daily basis and cites in this respect the results of a survey entitled ‘Austrian Health Survey 2006/07’, which shows that 50% of the people questioned state that they do not practise sport and that only 25% of the people questioned who practise sport do so more than three times per week. It also relies on a Eurobarometer Survey from 2009 on Sport and Physical Activity, which shows that only 9% of the persons questioned state that they practise a sport regularly, that is to say at least five times per week. Therefore a large majority of the relevant public do not practise sport regularly.
32 Therefore, the applicant submits, the average consumer does not regularly purchase maillots or sports shoes. Such goods cannot be considered to be everyday consumer items. In the course of infrequent purchases, the public usually displays a high level of attention and often seeks professional assistance or advice. Thus, maillots are not purchased by the general public but mainly by sports clubs that wish to supply their teams. Such purchasers have an increased knowledge of the companies that offer those goods. Similarly, purchasers of sports shoes display a high level of attention and ‘sophistication’ when they purchase those items, since that purchase is always made for a specific purpose, such as, hiking, tennis or soccer. That high level of attention excludes all likelihood of confusion.
33 The applicant also maintains that the earlier figurative mark is used to label very specific sportswear which is sold in very few places. It includes equipment designed for athletes and not for the average consumer with an interest in sport. Those athletes have an in-depth knowledge of sports goods and clearly do not represent the public as a whole. Furthermore, the intervener’s goods are very expensive compared to goods from other manufacturers. The cost of those goods gives rise to a high level of attention on the part of the consumer. Contrary to OHIM’s finding, all those facts therefore absolutely exclude all likelihood of confusion between the marks at issue.
34 OHIM, supported by the intervener, takes the view that the level of attention of the relevant public which the Board of Appeal found is justified. It also submits that the documents produced by the applicant and referred to in paragraph 31 above are inadmissible at this stage of the proceedings.
35 In this respect, the Court notes that it is not sufficient for an applicant to state that, in a given sector, consumers are particularly attentive to marks, and that it must substantiate that claim with facts or evidence (see, to that effect, judgment of 13 April 2005 in Case T‑286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 21).
36 In the present case, since the earlier figurative mark is a Community mark, the relevant public consists of consumers throughout the European Union. Furthermore, as the Board of Appeal correctly found at paragraph 35 of the contested decision, the goods at issue are aimed at the general public and the level of attention of the average consumer must therefore be considered normal when they purchase them. It is apparent that the goods at issue may be purchased both by consumers who regularly practise a sport and by those who do not practise a sport or do not do so regularly. It is therefore not correct to state, as the applicant did, that the goods at issue are not everyday consumer items (see, to that effect, judgment of 20 October 2009 in Case T‑307/08 Aldi Einkauk v OHIM – Goya Importaciones y Distribuciones (4 OUT Living), not published in the ECR, paragraph 21).
37 In that respect, it is immaterial to know what percentage of the European Union population regularly practises a sport and the documents submitted by the applicant to that effect have no bearing on the result of the case, whether they are admissible or not at this stage of the proceedings.
38 Furthermore, the claim that maillots are not purchased by the general public but mainly by sports clubs is unsubstantiated. On the contrary, it appears, as OHIM contends, that they are frequently offered for sale to individuals in sports shops. Nothing in the documents before the Court supports the conclusion that the public targeted by those goods consists exclusively, or even mainly, of professional intermediaries working with sports clubs.
39 Similarly, the claim that sports shoes cannot be considered to be everyday consumer items is not substantiated to the requisite legal standard. Such a claim does not contradict the findings that in practice such goods are (i) sold as everyday consumer items by various shops offering this type of product, whether they specialise in the sale of sports items, shoes or, more generally, clothing, – and indeed, if the area of the shop allows, in the sale of the main everyday consumer goods – and (ii) used in everyday life by numerous purchasers.
40 Lastly, as regards the applicant’s claims concerning the specificity, the price and the method of distribution of the intervener’s goods, it must be noted that such claims are not based on the list of goods covered by the earlier figurative mark, namely, as regards Class 25, clothing, footwear, headgear, but on the particular circumstances, which are specific to the intervener and are likely to change over time. Since the applicant has not demanded that proof of use of the earlier word mark be shown by the intervener, the likelihood of confusion must be assessed solely on the basis of the goods and services covered by those marks, regardless of the actual use made of them on the market (see, to that effect, judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 107, and judgment of 22 April 2008 in Case T‑233/06 Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), not published in the ECR, paragraphs 25 to 27).
41 In the light of the data submitted by the intervener, it appears in any event that the applicant’s claims have no factual basis since that data shows that the goods at issue are available on online marketing sites which are open to the general public and that those goods are being distributed more extensively than alleged by the applicant.
42 It follows that it is not appropriate to find a high degree of attention of the average consumers throughout the European Union, whether the goods at issue are specifically directed at sports activities or not. Therefore, the Board of Appeal did not err in finding, at paragraph 35 of the contested decision, that those goods are aimed at the general public in the European Union and that the level of attention of the relevant consumer would be average and would not increase in accordance with price.
Comparison of the goods
43 In assessing the similarity between the goods and the services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
44 In the present case, the Board of Appeal held that the Opposition Division was correct to find that the goods at issue in Class 25 are identical given that the marks at issue cover clothing and footwear, and that maillots are included in the category of clothing covered by the earlier figurative mark, just as sports shoes are included in the category of footwear covered by the earlier figurative mark (paragraph 17 of the contested decision).
45 That analysis of the comparison of the goods is not disputed by the applicant and, in the light of the considerations set out in the contested decision in this regard, the Court confirms such analysis in the present case.
Comparison of the signs
46 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In addition, account must be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited, and GIORGIO BEVERLY HILLS, paragraph 27 above, paragraph 32 and the case-law cited).
47 In the present case, the Board of Appeal stated, first, that the earlier figurative mark consists of the element ‘zoot’ or ‘zooz’ written in a special typeface with the words ‘sports’ reproduced in smaller letters underneath it, whilst also being reproduced above it but this time written upside down. It also notes that the element ‘zoot’ or ‘zooz’ has no meaning in relation to the goods or services covered by the earlier figurative mark, whereas the word ‘sports’, with the universal meaning ‘activities involving physical exertion and skill in which an individual or team competes against another or others for entertainment’, is not very distinctive for those goods and services. Therefore, the Board of Appeal found that the element ‘zoot’ or ‘zooz’ has a dominant position in the earlier figurative mark and that the position of the words ‘sports’ is secondary (paragraph 27 of the contested decision).
48 Furthermore, as regards the mark applied for, the Board of Appeal noted that the word ‘zoo’, written in a special typeface, would be perceived as an element of the words ‘zoo sport’. It also found that the element ‘zoo’, placed first, has no meaning in relation to the relevant goods, whereas the element ‘sport’ is weakly distinctive for those goods (paragraph 28 of the contested decision).
49 The Court will examine, in the light of those considerations, the analysis carried out by the Board of Appeal concerning (i) the visual, phonetic and conceptual comparison of the signs set out at paragraphs 29 to 31 of the contested decision and (ii) the global assessment of the likelihood of confusion set out at paragraphs 32 to 37 of that decision.
Visual comparison of the signs
50 Visually, the Board of Appeal noted that the first three letters of the dominant and most distinctive element of the earlier figurative mark, ‘zoot’ or ‘zooz’, are the same as the element ‘zoo’ which is at the beginning of the mark applied for and its most dominant element. The marks also have the element ‘sport’ in common. However, they differ in the letter ‘t’ or ‘z’ placed at the end of the letter combination ‘zoo’ in the earlier figurative mark, the letter ‘s’ at the end of the word ‘sports’ in the earlier figurative mark, the positioning of the elements ‘zoo’, ‘zoot’ or ‘zooz’, ‘sport’ and ‘sports’ in those marks, the fact that the word ‘sports’ appears twice in the earlier figurative mark and the special letter type in which the element ‘zoot’ or ‘zooz’ is written. For the Board of Appeal, those differences are all minor, which made it possible for it to find that the marks at issue have an average degree of visual similarity (paragraph 29 of the contested decision).
51 The applicant disputes that assessment.
52 First of all, the applicant correctly points out that, when assessing the similarity of the signs, they should, in principle, be compared in the form in which they enjoy protection. Therefore, the earlier registered figurative mark and the mark applied for must be assessed in the form used in the registration or application.
53 In that respect, it should be noted that the Board of Appeal satisfied that principle by setting out the two marks to be compared at paragraph 26 of the contested decision.
54 In the present case, the applicant asserts that there are three significant differences between the signs at issue. First, the mark applied for consists of just one element, ‘zoosport’, whereas the earlier figurative mark contains three, ‘sports’ ‘zoot’ and ‘sports’. The marks at issue therefore differ as regards the number of words and the sequence of their letters. Second, the figurative element ‘zoot’ of the earlier figurative mark is distinctive due to the double ‘o’ linked by a distinctive horizontal line connecting the letters ‘z’ and ‘t’. Third, the element ‘sports zoot sports’ is characterised visually by the presence of the word ‘sports’ above and below the sign, which looks the same when turned 180 degrees. It is an ‘ambigram’, a sign of creativity the objective of which is to guarantee high recognition, which, consequently, excludes any likelihood of confusion with other trade marks. OHIM did not take account of the unique character of that ‘ambigram’, given that, in comparison, the mark applied for can only be read from one angle.
55 Furthermore, according to the applicant, the special and distinctive design of the element ‘zoo’ in the mark applied for should have been taken into account. That element is characterised by the letter ‘z’ followed by the mathematical symbol for infinity. The relevant public thus has to interpret the infinity sign as a double ‘o’ to see ‘zoo sport’. A certain degree of interpretation is required, which reflects the unique and distinctive character of the mark applied for and excludes any likelihood of confusion with the earlier figurative mark. The ‘distinctive design’ of the mark applied for must also be noted, since that mark is depicted in the typeface Memphis Light, which is inspired by Egyptian typography and used for display.
56 It must be noted that, as a result of its visual comparison of the signs, the Board of Appeal came to the conclusion that they were visually similar to an average degree.
57 Apart from the factual findings of the Board of Appeal in the first three sentences of paragraph 29 of the contested decision, summarised at paragraph 50 above, the examination of the signs at issue also leads to the following findings.
58 The mark applied for consists of two elements, ‘zoo’ and ‘sport’, and not one as the applicant asserts. Those two elements are separated by a visible space and the first element, written in bold, is highlighted as against the second element. The word ‘zoo’, which is placed first, is all the more dominant because the second element, ‘sport’, broadly alludes to the intended purpose of the items of clothing in Class 25. It is not disputed that the word ‘sport’ is likely to be understood in all Member States, either because that word exists in an identical or similar form in the language concerned, or because that word is part of everyday vocabulary.
59 The earlier figurative mark is comprised of the word element ‘zoot’, which may also be perceived as the word element ‘zooz’, written in bold letters, and the element ‘sports’, written in smaller letters below and, upside down, above that element.
60 In this respect, it can be noted that, in the context of the opposition proceedings before OHIM, the intervener stated that its mark consists of three elements, namely ‘sports’, ‘zoot’ and ‘sports’, in a figurative form. The intervener is also proprietor of the earlier word mark ZOOT. The word element ‘zoot’ should thus be preferred as the most probable meaning of the central element of the earlier figurative mark, as the examination of the sign reproduced in the contested decision also confirms (see paragraph 6 above), from which it is apparent that the dash at the bottom right is thinner than the dash at the top left which reinforces the impression that the last letter of that element is a ‘t’ rather than a ‘z’.
61 As regards the earlier figurative mark, it also must be noted that the applicant does not dispute the Board of Appeal’s assessment, which was correct, that the dominant and most distinctive element is the element ‘zoot’. The applicant emphasises the fact that that element is clearly distinctive because of the double ‘o’ linked by a distinctive horizontal line connecting the letters ‘z’ and ‘t’. That characteristic, like the size of the element ‘zoot’ and its positioning in the sign, actually makes it the central and most important element.
62 The earlier figurative mark has another important characteristic. It is an ‘ambigram’, that is to say a sign the configuration and reading of which are identical when it is upside down. In the light of that ‘ambigram’, in view of inter alia the graphic features of the element ‘zoot’ and because of the typeface and the size of the letters used to represent the element ‘sports’, that latter element will certainly be perceived as a secondary element which completes the dominant element by being set out below it and, upside down, above it.
63 The presentation of that ‘ambigram’ affects its visual perception. Although the earlier figurative mark consists of three elements, as the applicant states, only two of those elements are likely to be perceived by the public. Firstly, and principally, it will be the element ‘zoot’, and, of its four letters, the fourth is likely not to be immediately understood as the letter ‘t’ but merely as the continuation of the dash which starts at the beginning of the element. Secondly, and ancillary and complementary to the first element, it will be the word ‘sports’ which surrounds the first element and facilitates the recognition of the sign as an ‘ambigram’.
64 In that respect, the visual comparison of the signs at issue is made primarily through consideration of the dominant elements of each of those signs, namely, first, the element ‘zoo’ and, second, the element ‘zoot’, it being pointed out that the latter may not be immediately perceived as such, but rather as a styled graphical presentation of the element ‘zoo’ more easily distinguished at first glance. For each of the signs, the dominant element contains three or four letters respectively and shares the letter sequence ‘z’ ‘o’ ‘o’, which is visually striking in all languages of the European Union. Similarly, the two signs have the same construction, in that the dominant element is juxtaposed with the evocative word ‘sport’ or ‘sports’ which occupies a secondary position in relation to the other element.
65 Consequently, in view of the considerations set out by the Board of Appeal in the contested decision and the observations made above, it must be held that, although it is true that the symmetrical effect which characterises the earlier figurative mark is not found in the mark applied for and that the typefaces used to write the elements making up those marks differ, those facts are not however sufficient for the rejection of the Board of Appeal’s finding that the signs at issue have an average degree of visual similarity.
66 That finding cannot be called in question by the applicant’s claims regarding the typeface used to write the words ‘zoo’ and ‘sport’ and specifically by the special presentation of the word ‘zoo’. As OHIM correctly contends, that typeface, called Memphis light, is commonly used. Furthermore, contrary to what the applicant claims, the fact that the two letters ‘o’ are interlaced is not sufficient in the present case to give the impression that it is a representation of the mathematical symbol for infinity, namely ‘∞’. The elliptical shape of that symbol is more elongated than that of the double ‘o’ used in the mark applied for. By the presence of those two letters just after the letter ‘z’ of the first element ‘zoo’ and close to the second element ‘sport’, the applicant does not show that the relevant public needs time for reflection or interpretation to see the first element of the mark applied for as ‘zoo’ and not as the letter ‘z’ followed by the symbol ‘∞’.
67 Similarly, the finding at paragraph 65 above is not called into question by the applicant when it states that as regards the global assessment of the similarity of the signs so far as concerns clothing, the visual comparison generally has a greater importance because those goods are bought ‘on sight’ and are normally only chosen after a detailed examination of their appearance.
68 In clothes shops, customers can either choose the clothes themselves or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (see, to that effect, Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 50).
69 However, although that case-law was not referred to by the Board of Appeal in the contested decision, that alone is not sufficient to alter the finding outlined at paragraph 65 above.
70 In view, in particular, of the degree of visual similarity found, the case-law cited in paragraph 68 above, rightly noted by the applicant, to the effect that the visual aspect of the signs at issue is, generally, more important in the case of signs affixed to items of clothing in Class 25, as is the case for the goods at issue, will have to be taken into account at the stage of the global assessment of the likelihood of confusion.
Phonetic comparison of the signs
71 Phonetically, the Board of Appeal held that the mark applied for will be pronounced as ‘zoo-sport’ and the earlier figurative mark most likely as ‘zoot-sports’ or ‘zooz-sports’ but possibly also as ‘sports-zoot-sports’ or ‘sports-zooz-sports’. In all those situations, the Board of Appeal found that the marks at issue are phonetically similar to an average degree (paragraph 30 of the contested decision).
72 The applicant claims that that assessment is incorrect. It notes that the overall phonetic impression produced by a sign is particularly influenced by the number and sequence of its syllables, its ‘common rhythm’ and ‘intonation’. In addition, the first part of the mark is generally the part which primarily catches the consumer’s attention and therefore that which he will remember most clearly.
73 Furthermore, according to the applicant, the marks must be compared in the form in which they enjoy protection, that is to say the form used in the registration or the application. Their possible use in another form is irrelevant in the context of the phonetic comparison of the signs. Consequently, the earlier figurative mark must be pronounced in its registered form, which is ‘sports-zoot-sports’. Given the ‘intonation’ and ‘common rhythm’ of the signs at issue, there is no doubt that those marks are totally different phonetically.
74 In addition, the letter ‘t’ of the earlier figurative mark ‘sports-zoot-sports’ must be pronounced in all languages of the Member States of the European Union in order to correctly pronounce the earlier figurative mark. That additional letter of the earlier figurative mark also creates a significant phonetic difference.
75 The Court finds that those observations do not call into question the Board of Appeal’s assessment in the contested decision.
76 As regards the earlier figurative mark, it is unlikely that the word ‘sports’ would be pronounced twice. The graphic configuration of the earlier figurative mark creates a mirror effect along the horizontal line running through the middle of the sign. The sign ‘zoot sports’, or possibly ‘zooz sports’, may be read regardless of how it is oriented. In the public’s perception, that sign, presented in the graphic form of an ‘ambigram’, is thus ‘zoot sports’, or possibly ‘zooz sports’ and not ‘sports-zoot-sports’. In addition, as OHIM correctly contends in its response, it is unlikely that a repetition of the words in a mark would be pronounced, a fortiori where the repeated word is evocative, as is the case here for the word ‘sports’.
77 Consequently, in the light of the considerations set out by the Board of Appeal in the contested decision and of the observations made above, it must be held that, although it is true that the signs at issue are distinguished in particular by the fact that the letter ‘t’, or possibly ‘z’, of the earlier figurative mark must be pronounced, which will not be the case for the mark applied for, that difference is not however sufficient to reject the finding reached by the Board of Appeal that the signs at issue are phonetically similar to an average degree. The phonetic impact of the last letter ‘t’ or ‘z’ does not offset the global similarities resulting from pronunciation of their common element ‘zoo’.
Conceptual comparison of the signs
78 Conceptually, the Board of Appeal stated that, as a whole, neither of the signs at issue has a meaning. However, it noted that the element ‘zoo’ of the mark applied for may be understood by the relevant public in its English meaning of ‘an establishment which maintains a collection of wild animals, typically in a park or gardens, for study, conservation, or display to the public’. The element ‘zoot’ or ‘zooz’ has no meaning in any of the relevant languages although the element ‘zooz’ may be understood as the plural of the English word ‘zoo’. The marks have the meaning of the words ‘sport’ and ‘sports’ in common. For the Board of Appeal, it is apparent from those observations that, conceptually, the signs at issue are different for the public which understands the word ‘zoo’ in the meaning of an establishment for wild animals and similar in so far as they both include a reference to the concept of ‘sport’ (paragraph 31 of the contested decision).
79 The applicant criticises that part of the Board of Appeal’s reasoning and states that, even though the two signs contain the non-distinctive word ‘sport’, the predominant element of the two marks is the element ‘zoot’ and the term ‘zoo’, which have different meanings and nothing in common. The association that the public might make between the two marks as a result of their similar semantic content with respect to the word ‘sport’ is not a sufficient ground for concluding that there is a likelihood of confusion.
80 The element ‘zoot’ of the earlier figurative mark is a creative syntax of the English word ‘suit’. The presentation of the intervener’s goods on its internet website shows that that word is used in this way for the goods designated: ‘Prophet WetZoot’, ‘Fuzion FS WetZoot’ or ‘Conduit WetZoot’, all of which describe suits for specific sporting activities. That element also refers to the term ‘zoot suit’, which designates a man’s suit with high-waisted, wide-legged trousers narrow at the ankles and a long coat with wide lapels and padded shoulders. This style of clothing was popular in the Chicano and African-American community during the 1940’s, when the amount of material and tailoring required made them luxury items. It is therefore wrong to find that the word ‘zoot’ has no meaning. The relevant public therefore associates stylish, high-quality and modern clothes, that is to say exactly the type of clothes and sportswear that the intervener sells under the earlier figurative mark, with the word ‘suit’. That ‘creative syntax’ of the word ‘suit’ combined with an ‘ambigram’ guarantees high brand recognition of the intervener’s mark.
81 By contrast, according to the applicant, the element ‘zoo’ of the mark applied for is an abbreviation of the expression ‘zoological garden’ and refers to a place in which animals are confined within enclosures and displayed to the public. OHIM’s finding that only the relevant English-speaking public will understand that that word is such an abbreviation is not correct since the word ‘zoo’ is used in numerous languages as a common abbreviation of the expression ‘zoological garden’ (see annexes 11 to 14 to the application).
82 Furthermore, for the applicant, the infinity symbol used in the mark applied for refers conceptually to a quantity without limit. That symbol represents the unlimited choice that the mark applied for offers in design and service. It signifies that all of the goods referred to are of the highest quality.
83 In essence, the applicant asserts that the two words which dominate the signs at issue, namely ‘zoo’ and ‘zoot’, have a meaning, the second word referring to a type of suit in English. That difference is sufficient to radically distinguish the signs conceptually.
84 In this respect, the Court notes first that OHIM admits that in the majority of languages of the European Union, both the word ‘zoo’ and the expression ‘zoo sport’ allude to a zoological garden.
85 As OHIM notes in its response, it is enough that at least one of the signs has, from the point of view of the relevant public, a clear and specific meaning for those signs to be considered conceptually dissimilar (see Case C‑16/06 P Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 98).
86 None the less, although it can be stated, as the Board of Appeal did in the contested decision, that the element ‘zoo’ of the mark applied for is understood by the relevant public in its meaning of zoological garden, it can not be considered, as OHIM does, that that is also the case for the element ‘zoosport’ taken as a whole. In such a case, there is a conflict between two meanings, that of zoological gardens and that of sporting activity, and neither element leads a priori to the choice of one meaning rather than the other.
87 Next, the applicant’s argument seeking to establish the relevant public’s knowledge of the meaning of the element ‘zoot’ of the earlier figurative mark does not appear convincing. The public would instead perceive that element as a fanciful word. Even if the meaning of the expression ‘zoot suit’ were that set out by the applicant, the fact remains that it cannot be considered to be generally known by the relevant public. In contrast to the word ‘zoo’, the expression ‘zoot suit’ is not part of common vocabulary, but rather requires extensive knowledge of the history of the United States of America.
88 Finally, and in any event, it must be noted, as did the Board of Appeal in the contested decision, that the signs at issue have the word ‘sport’ or ‘sports’ in common, which supports the view that there is some conceptual similarity between the signs. Although that conceptual similarity cannot totally neutralise the conceptual difference which exists between ‘zoo’ and ‘zoot’, or possibly ‘zooz’, it can however be noted.
89 Consequently, in view of the considerations set out by the Board of Appeal in the contested decision and the observations made above, it must be found that the signs at issue display, first, a conceptual difference owing to the use of the elements ‘zoo’ and ‘zoot’ and, second, a low degree of conceptual similarity since both signs include the word ‘sport’ or ‘sports’.
90 That finding is not called in question by the applicant’s argument that the use of the infinity symbol highlights the conceptual difference between the signs at issue. As stated at paragraph 66 above, the applicant does not show that the relevant public needs time for reflection or interpretation to understand the first element of the mark applied for as ‘zoo’. Furthermore, the mathematical symbol for infinity has no connection with zoological gardens. For those reasons, it seems more likely that the relevant public will interpret the first element of the mark applied for as ‘zoo’ and not as ‘z’ followed by the symbol ‘∞’; the interlaced letters ‘o’ must instead be perceived as a decorative point of element.
91 In the light of the foregoing, the Board of Appeal was correct to find that the signs at issue are visually and phonetically similar to an average degree and that, conceptually, a comparison of the signs does not reveal a significant difference between them.
Likelihood of confusion
92 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74). Furthermore, it is apparent from recital 8 in the preamble to Regulation No 207/2009 that the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. Since the more distinctive the mark the greater the likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24; Canon, paragraph 18; and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
93 On that point, the Board of Appeal found, first, that, for the purposes of its global assessment of the likelihood of confusion, the average consumer of the category of goods concerned was deemed to be reasonably well-informed and reasonably observant and circumspect and that, as the goods in question are aimed at the general public and are everyday consumer items, the consumer’s level of attention would be average and would not increase, even if the applicant’s goods were more expensive than those produced by others (paragraphs 34 and 35 of the contested decision).
94 It is apparent from the foregoing that those assessments, held to be well founded by the Court, are not called in question by the applicant’s arguments in this regard.
95 It is also apparent from the foregoing that the applicant does not dispute the identical nature of the goods at issue, nor does it call in question the normal distinctive character of the earlier figurative mark.
96 Moreover, the Board of Appeal found that, in view of the identical nature of the goods at issue, the average visual and phonetic similarity of the signs, the normal distinctive character of the earlier figurative mark and the normal level of attention of the relevant consumer, there is a likelihood of confusion on the part of the relevant public for the contested goods in Class 25 (points 35 and 36 of the contested decision).
97 In its global assessment of the likelihood of confusion, the Board of Appeal did not refer to the result of its conceptual analysis of the signs at issue. That is explained by the fact that, for the Board of Appeal, it was apparent from those observations that, conceptually, the signs at issue are different for the relevant public, which would understand the word ‘zoo’ as meaning an establishment for wild animals, and similar in that they both include a reference to the term ‘sport’ (paragraph 31 of the contested decision). The conceptual aspect was thus considered to be neutral in the global assessment of the likelihood of confusion.
98 In conclusion, due to the identical nature of the goods at issue and taking account of the average visual and phonetic similarity of the signs at issue and the fact that, conceptually, the comparison of the signs does not establish a significant difference between them, it must be held that the Board of Appeal was correct to conclude that in the present case there is a likelihood of confusion on the part of the relevant public between the mark applied for and the earlier figurative mark for the goods at issue. That conclusion is not called in question by the fact that the aforementioned goods are items of clothing, the visual aspect of which generally plays a greater role in the global assessment of the likelihood of confusion than other aspects.
99 In view of that conclusion, there is no need to consider whether there is a likelihood of confusion between the mark applied for and the earlier word mark.
100 It follows from all the foregoing that the action must be dismissed in its entirety.
Costs
101 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
102 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Zoo Sport Ltd to pay the costs.
Frimodt Nielsen | Kancheva | Buttigieg |
Delivered in open court in Luxembourg on 16 October 2013.
[Signatures]