JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
20 September 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark BADTORO — Earlier EU word and national figurative marks TORO — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Similarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑350/13,
Jordi Nogues, SL, established in Barcelona (Spain), represented by J. Fernández Castellanos, M.J. Sanmartín Sanmartín and E. López Parés, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by V. Melgar and J. Crespo Carrillo and subsequently by J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Grupo Osborne, SA, established in El Puerto de Santa María (Spain), represented by J.M. Iglesias Monravá, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 April 2013 (Case R 1446/2012-2) relating to opposition proceedings between Grupo Osborne and Jordi Nogues,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Ulloa Rubio and A. Marcoulli (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 2 July 2013,
having regard to the response of EUIPO lodged at the Court Registry on 24 September 2013,
having regard to the response of the intervener lodged at the Court Registry on 7 October 2013,
having regard to the order of 18 December 2013 staying the proceedings,
having regard to the letter of the Court of 1 March 2016 by which the parties were informed that the Court had become aware of the decision of EU trade mark court No 1, Alicante (Spain), and that the written phase of the proceedings had been closed,
having regard to the application, under Article 50(1) of the Rules of Procedure of the Court, to join the present case and Case T‑386/15 and the observations of the parties in that regard,
having regard to the decision of 13 May 2016 refusing to join the present case and Case T‑386/15,
further to the hearing on 15 December 2016,
having regard to the order of 15 February 2017 reopening the oral part of the procedure,
having regard to the observations of EUIPO and of the intervener lodged at the Court Registry on 1 and 6 March 2017, respectively,
gives the following
Judgment
Background to the dispute
1 On 1 December 2010, the applicant, Jordi Nogues, SL, submitted an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 25, 34 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 25: ‘Clothing, footwear, headgear’;
– Class 34: ‘Tobacco; Smokers’ articles; Matches’;
– Class 35: ‘Import services; Export; Commercial agencies; Selling in shops and via global computer networks of books and stationery, clothing, household or kitchen utensils and containers, decorative items, smokers’ articles and gifts; Advertising; Business management; Business administration; Office functions’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 9/2011 of 14 January 2011.
5 On 12 April 2011, the intervener, Grupo Osborne, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier trade marks:
– the earlier Spanish figurative mark reproduced below, filed on 15 July 2010 and registered on 13 December 2010 under No 2939631 in respect of ‘Lighters and smokers’ articles’ in Class 34:
– the earlier EU word mark TORO, which was filed on 13 September 2002 and registered on 5 August 2010 under No 2844264 in respect of ‘Clothing; Footwear; Headgear; Belts’ in Class 25:
– the earlier EU word mark TORO, which was filed on 23 June 2000 and registered on 3 January 2007 under No 1722362, in respect of ‘Advertising services; Management of business affairs; Commercial administration; Office work; Retailing of food and drink, none of which services and/or goods originates from or is related to bulls’ in Class 35;
– the earlier Spanish word mark EL TORO, which was filed on 17 June 1998 and registered on 8 October 2003 under No 2169043 in respect of ‘Men’s, women’s and children’s clothing and footwear (except for orthopaedic shoes); Headgear’ in Class 25;
– the earlier Spanish figurative mark reproduced below, filed on 16 March 2010 and registered on 22 June 2010 under No 2919417 in respect of ‘Retailing in shops and via the internet of all types of articles’ in Class 35:
7 The ground relied on in support of the opposition was the existence of a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009.
8 On 7 June 2012, the Opposition Division upheld the opposition in its entirety. It found that there was a likelihood of confusion in respect of all of the goods covered by the mark applied for with regard to the earlier EU word marks No 2844264 and No 1722362 and the earlier Spanish figurative mark No 2939631.
9 On 1 August 2012, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 16 April 2013 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, it took the view that the goods referred to by the signs at issue were partly identical and partly similar. In addition, having regard to the average distinctive character of the earlier marks, even despite the fact that several registered Spanish marks contained the word ‘toro’, to the importance of the common element ‘toro’, which supported the existence of phonetic, conceptual and, to a lesser degree, visual similarity, and to the absence, in any event, of any established peaceful coexistence between the signs in question on the Spanish market, it held that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009. It is the applicant’s view that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue.
Preliminary observations
14 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
15 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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).
16 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs 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).
17 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
18 Moreover, 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 signs at issue by the consumer of the goods and services 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 No 207/2009 exists in part of the European Union (see, to that effect, 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).
19 In the present case, as regards the definition of the relevant public, the Board of Appeal held that the goods in Classes 25 and 34 were directed at the general public and that the services in Class 35 were directed both at the general public and at a specialised public. It inferred from this that, in order to assess whether there was a likelihood of confusion, account had to be taken of the perception of the signs by an average consumer both from the general public and from a specialised public, in particular a Spanish consumer inasmuch as the opposition was based on, in particular, Spanish marks.
20 That characterisation of the relevant public, which is, furthermore, not disputed by the applicant, must be endorsed for the same reasons as those set out in the contested decision.
21 As regards the comparison of the goods and services covered by the signs at issue, the parties agree, rightly, that the goods and services referred to in Classes 25 and 35 are identical and that the goods referred to in Class 34 are either identical or similar.
22 It is in the light of those considerations that it is necessary to examine, in view of the assessment set out by the Board of Appeal in the contested decision, the applicant’s submissions regarding infringement of Article 8(1)(b) of Regulation No 207/2009.
The comparison of the signs at issue
23 It is apparent from the case-law that the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of 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).
24 Moreover, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see, to that effect, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
25 In the present case, the Board of Appeal concluded that there was an overall impression of similarity between the signs in question due to their verbal and conceptual convergence owing to the presence of the word ‘toro’, which is easily recognisable within the mark applied for and which, first, is the sole component of the earlier EU word mark and the sole word element of the earlier Spanish figurative mark, second, is distinctive and, third, does not occupy a secondary position in the mark applied for. As regards the earlier purely word marks, the Board of Appeal held that the similarity was reinforced by the fact that the word ‘toro’ retained an independent distinctive role within the mark applied for.
The distinctive and dominant elements of the signs at issue
26 In the present case, it follows inter alia from paragraphs 31, 32 and 42 of the contested decision that, according to the Board of Appeal, none of the elements comprising the mark applied for dominates its visual impression, whereas the earlier Spanish figurative mark is dominated by the word element ‘toro’. As stated in paragraph 25 above, the Board of Appeal also found that the word element ‘toro’ occupied an independent distinctive role within the mark applied for.
27 The applicant takes issue with the Board of Appeal on the ground that it carried out an incomplete and incorrect comparison of the signs at issue. The applicant claims that the Board of Appeal thereby distorted the ‘imaginative whole’ of the mark applied for by wrongly finding that no element dominated its visual impression and that the word ‘toro’ did not occupy a secondary position despite that word appearing at the end of the sign and being preceded by a significantly larger original graphic element the importance of which could not be underestimated. It also submits that the Board of Appeal wrongly applied the case-law arising from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), although the facts of the present case differ radically, in particular in so far as the word ‘toro’ does not appear independently in the mark applied for. In so doing, it is submitted, the Board of Appeal failed to have regard for the principle that the comparison must be based on an overall impression.
28 EUIPO and the intervener dispute those arguments.
29 In the first place, it should be noted that, although, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter because the average consumer will more easily refer to the goods in question by quoting the name of the mark than by describing its figurative element, it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In the case of a composite mark, the figurative element may rank equally with the word element (judgment of 6 October 2015, Monster Energy v OHIM — Balaguer (icexpresso + energy coffee), T‑61/14, not published, EU:T:2015:750, paragraph 37). It is therefore appropriate to examine the intrinsic qualities of the figurative element and of the word element of the contested mark as well as the respective positions of those elements, in order to identify the dominant component (see, to that effect, judgment of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraph 49).
30 In the present case, the figurative element of the mark applied for is a fanciful drawing of a bull with big horns and angry eyes. In that regard, first, its protuberant size in the mark applied for far exceeds that of the word element. Second, the figurative element is positioned above the word element. Third, the depicted bull is sturdy, black and particularly original. In those circumstances, it must be held that the fancifulness and the size of the figurative element are capable of diverting the attention of the relevant public away from the word element, positioned below. The applicant’s submission that the Board of Appeal wrongly held, in paragraph 31 of the contested decision, that none of the combined elements of the mark applied for dominated the visual impression is therefore well founded. Consequently, the word element of the mark applied for, including the word ‘toro’, occupies a secondary position in the mark applied for.
31 However, as the Board of Appeal noted in paragraph 31 of the contested decision, the word element is written in capital letters. Despite the large size of the figurative element, the word element is clearly visible. In those circumstances, the dominant character of the figurative element of the mark applied for cannot have the effect of rendering the word element ‘badtoro’ negligible in the overall impression created by the mark (see, by analogy, judgments of 8 September 2010, Kido v OHIM — Amberes (SCORPIONEXO), T‑152/08, not published, EU:T:2010:357, paragraph 66, and of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraphs 53 and 54).
32 In the second place, as regards the application by the Board of Appeal of the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), it should be noted that, according to the case-law resulting from that judgment, even if an element common to the signs at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those signs, to the extent that it constitutes in itself the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element still has an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38).
33 The purpose of examining whether any of the components of a composite sign has an independent distinctive role is thus to determine which of those components will be perceived by the relevant public (see judgment of 28 January 2016, Novomatic v OHIM– Simba Toys (African SIMBA), T‑687/14, not published, EU:T:2016:37, paragraph 135 and the case-law cited).
34 In that connection, the Court of Justice has stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25).
35 It should also be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, that consumer will break it down into elements which, for him, have a concrete meaning or which resemble words known to him (see, to that effect, judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57, and of 13 February 2008, Sanofi-Aventis v OHIM– GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 58).
36 In the present case, as the Board of Appeal noted in paragraph 35 of the contested decision, the Spanish-speaking public and the section of the EU public which understands the meaning of the word ‘toro’ will identify that word within the word element. That word is the sole component or sole word element of the earlier marks in opposition.
37 In that regard, it must be recalled, first, that the word element of the mark applied for occupies, contrary to the findings of the Board of Appeal, a secondary position in the sign.
38 Furthermore, the Court points out that the word ‘toro’ is positioned at the end of the sign and is preceded by the word ‘bad’. In that regard, it may be noted that consumers normally attach more importance to the beginnings of words (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65).
39 In addition, the mark applied for contains a single word element, namely the word ‘badtoro’, created by the juxtaposition of the words ‘bad’ and ‘toro’. The fact that there is no space between the two words reinforces the unitary perception of the word element, which will be understood, at least by part of the Spanish-speaking public and of the public understanding the word ‘toro’, as meaning ‘angry or bad bull’ (see, by analogy, judgment of 29 September 2011, Procter & Gamble Manufacturing Cologne v OHIM — Natura Cosméticos (NATURAVIVA), T‑107/10, not published, EU:T:2011:551, paragraph 34). To that effect, the word element refers specifically to the fanciful representation of a bull which, given its predominance in the mark applied for and its originality, as is stated in paragraph 30 above, will probably be the element that the relevant public will tend to recognise and remember more than the animal itself. It follows that the word element ‘badtoro’ will be considered in conjunction with the figurative element, the whole forming a logical unit going beyond the mere name of the animal reproduced in the earlier marks.
40 Consequently, it being borne in mind that the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, it must be held that, generally, the consumer will not perceive the word ‘toro’ independently or remember it in the mark applied for unless it has a sufficiently engaging power (see, by analogy, judgment of 24 May 2012, Grupo Osbornev OHIM– Industria Licorera Quezalteca (TORO XL), T‑169/10, not published, EU:T:2012:261, paragraph 42). It follows that the applicant’s submission that the Board of Appeal erred in holding that the word ‘toro’ retained an independent distinctive role within the mark applied for is well founded.
41 The assessment of the similarity of the signs at issue must be carried out in the light of those considerations.
Visual similarity
42 The applicant submits that, contrary to the findings of the Board of Appeal, the signs at issue are not visually similar.
43 EUIPO and the intervener dispute the applicant’s arguments.
44 In the present case, the Board of Appeal found that, due to the convergence of the word element ‘toro’, there was a certain degree of similarity between the signs at issue, although it was low, having regard to the presence in the mark applied for of the word element ‘bad’, placed before the word element ‘toro’, and either to the existence of differences between their figurative elements or to the absence of any figurative element in the earlier marks.
45 In this regard, it should be noted that the Board of Appeal proceeded on the erroneous assumption that the word ‘toro’ did not occupy a secondary position. In that context, it attached particular importance to the convergence of the word ‘toro’ in the signs at issue, without first considering whether the relevant public would be liable to memorise independently the word ‘toro’ within the mark applied for.
46 Although the signs at issue have the word ‘toro’ in common, there are many differences between them. Thus, so far as concerns the earlier EU word marks TORO, the mark applied for has a very different structure. It has a dominant figurative element depicting a fanciful and original bull with, at its feet, a word element consisting of the word ‘toro’ preceded by the letter group ‘bad’, the whole of which forms a single word element.
47 As regards the earlier Spanish figurative mark, the structure of the mark applied for is also clearly different, since that earlier mark consists of a figurative element and a dominant word element placed on one side. By contrast, the mark applied for consists of a dominant figurative element and a secondary word element placed beneath. Furthermore, although the two figurative elements depict a bull, they differ substantially. The earlier Spanish mark depicts a classic and complete black silhouette of a bull viewed from the side. By contrast, the figurative element of the mark applied for is a fanciful black bull viewed from the front. It has three legs and protuberant horns and prominent white eyes. Lastly, the signs at issue differ partially in terms of their word element.
48 In those circumstances, the fact that the earlier marks and the mark applied for include the word ‘toro’ has very little impact on their overall comparison, whereas, as has been stated in paragraph 40 above, that word does not retain an independent distinctive role within the mark applied for, contrary to the findings of the Board of Appeal. On that matter, it must be observed that the visual impression given by two marks which share a common element may be different, in particular where the comparison concerns, on the one hand, a word mark, such as the earlier EU marks, and, on the other hand, a composite mark, such as the mark applied for, consisting of a strong figurative element and a partially different word element, which create a visual impression that is distinct from the single element ‘toro’ (see, to that effect, judgments of 8 December 2011, Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 33, and of 17 May 2013, Rocket Dog Brands v OHIM — Julius-K9 (JULIUS K9), T‑231/12, not published, EU:T:2013:264, paragraph 34).
49 In those circumstances, having regard to the differences set out in detail above between the signs at issue and taking into account the weight of their respective elements and the absence of an independent distinctive position of the word ‘toro’, the Court finds that, overall, they are, at most, visually similar to a very low degree.
Phonetic similarity
50 The applicant submits that, given the presence of the word ‘bad’, placed before the word element ‘toro’, the Board of Appeal erred in finding that the signs at issue were phonetically similar. The applicant claims that those signs contain a different number of letters, that their structure leads to a different cadence and succession of sounds and that the term ‘badtoro’ contains foreign and novel sounds for Spanish consumers.
51 Those arguments are disputed by EUIPO and the intervener.
52 On that point, it should be noted that the signs at issue differ, from a phonetic point of view, in terms of the additional syllable ‘bad’, but have the two syllables ‘to’ and ‘ro’ in common. In that context, the sequence of letters ‘d’ and ‘t’, which is foreign to the Spanish public, is not sufficient to prevent the overall phonetic impression given by the signs at issue, taking into account the similarity of the word ‘toro’, from having a relationship of similarity to an average degree, as the Board of Appeal properly found.
Conceptual similarity
53 With regard to the issue of conceptual similarity, the applicant criticises the Board of Appeal for not having taken account of the fact that, unlike the earlier marks, in which the word ‘toro’ referred to an animal, the mark applied for conveyed a ‘complex’ idea including a mascot addressing to the public a universal message of defiance and rebellion as well as its name, constituted by the neologism ‘badtoro’. According to the applicant, the words ‘bad’ and ‘toro’ are therefore inextricably linked.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 As a preliminary matter, it should be noted that, in accordance with the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraph 63).
56 In the present case, it is apparent from the contested decision that the Board of Appeal relied, principally, on the presence in the signs at issue of the word ‘toro’. It held, on that basis, that the signs were conceptually identical in part as far as concerns the public which understood the meaning of the word ‘toro’, irrespective of whether or not that public understood the word ‘bad’. It found, for the sake of completeness, that the mark applied for also converged with the earlier Spanish figurative mark on the basis of its graphic design depicting a bull. The Board of Appeal inferred from this that, as far as concerns the relevant public which understood the meaning of the word ‘toro’, the signs at issue presented strong similarities. By contrast, the Board of Appeal held that the public which did not understand the meaning of the word ‘toro’ would perceive the signs at issue as not being similar, or even as being different if they understood the meaning of the word ‘bad’.
57 It must first be borne in mind that those findings are based on the erroneous assumption that the word ‘toro’ is of a non-secondary nature in the mark applied for. The fact that the Board of Appeal held that, for the public that does not understand the word ‘toro’, the mark applied for and the earlier Spanish figurative mark would be perceived as dissimilar although they each contain the depiction of a bull demonstrates the particular importance attributed to the convergence of the word ‘toro’ in the two signs.
58 In that context, it is, first of all, appropriate to note, as did the Board of Appeal, that, for the public which does not understand the meaning of the word ‘toro’, the mark applied for is in no way conceptually similar to the earlier EU word marks TORO.
59 As for the Spanish public or for the public which understands the meaning of the word ‘toro’, as has been stated in paragraph 36 above, that public will identify the word element of the mark applied for as consisting, first, of the word or the group of letters ‘bad’ and, second, of the word ‘toro’, that is to say, the precise name of the animal in Spanish. That latter word will thus be perceived by that public as referring to the animal mentioned and, depending on the circumstances, depicted in the earlier marks, a fact which is capable of bringing the signs at issue closer together conceptually.
60 However, although that common reference to the concept of a bull is evident from the signs at issue, the bull depicted in the mark applied for is more akin, as the applicant claims, to a mascot or a character differing from the animal merely referred to or depicted in the earlier marks. Thus, contrary to the name ‘toro’ and to the classic silhouette of a bull depicted in the earlier figurative mark, the bull featuring in the mark applied for is personified, inter alia through its eyes, which, as the applicant claims, convey a malevolent or defiant character. Furthermore, the animal is very fancifully depicted, with disproportionally sized horns and only three legs. In the light of the expression of the bull thus depicted, the word element ‘badtoro’ could be perceived as the name of that character.
61 In those circumstances, it must be held that, taken together, the figurative element and the word element of the mark applied for convey a concept which differs from the classic concept of a bull as an animal. The conceptual similarity between the marks at issue must thus be relativised, and that similarity should be regarded, at the most, as average and not as significant, as the Board of Appeal incorrectly found.
62 It follows from all of the foregoing that the Board of Appeal based its analysis of the similarity of the signs at issue on the erroneous finding that the figurative element of the mark applied for was not dominant by overestimating the impact, on the public, of the presence of the word ‘toro’ in the two signs. In that context, in the light of the fact, first, that the figurative element, given its predominance and its originality, is the element which will attract the attention of the relevant public and, second, that the word ‘toro’ does not retain an independent distinctive position within the mark applied for, the Court finds that the signs at issue are visually similar to a very low degree, phonetically similar to an average degree and conceptually similar to some degree. Consequently, the overall similarity between the signs at issue is weak (see, by analogy, judgment of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 38).
63 The Board of Appeal therefore erred in finding that the signs at issue were similar overall.
Likelihood of confusion
64 It should be noted that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 45, and of 11 January 2013, Kokomarina v OHIM — Euro Shoe Group (interdit de me gronder IDMG), T‑568/11, not published, EU:T:2013:5, paragraph 48).
65 It should also be noted that, according to the case-law, the average consumer of the category of goods concerned only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
66 In the present case, the applicant disputes the findings of the Board of Appeal as to the existence of a likelihood of confusion by claiming that the Board of Appeal failed to take into account the limited distinctive character of the earlier marks despite the fact that the word ‘toro’ referred to the animal thereby depicted, in particular in Spain where the bull is a national symbol and incapable of forming the subject matter of an exclusive right granted to a single operator. In addition, the applicant claims that the Board of Appeal did not take account of the ‘highly distinctive intrinsic’ character of the mark applied for, given its originality and the fact, which may be regarded as well known, that both the graphic depiction and the name of the character invented by the applicant are the subject of intellectual protection. Furthermore, according to the applicant, the Board of Appeal did not take into consideration the well-known purchasing habits of the relevant public. Lastly, the applicant relies on judgments delivered by the Spanish EU trade mark courts, the latest of which being the judgment delivered on 18 January 2017 by the Tribunal Supremo (Supreme Court, Spain).
67 In that regard, the Board of Appeal held, in paragraph 57 of the contested decision, that, in view of the overall impression of similarity between the signs at issue and of the identity of the goods and services covered by those signs, and having regard to the principle of the interdependence of the factors in the assessment of the likelihood of confusion, a likelihood of confusion, including a likelihood of association, was inevitable.
68 On that matter, the Court recalls that the goods and services in question are either identical or similar, but that, contrary to the findings of the Board of Appeal, the signs at issue have only a low degree of overall similarity.
69 In connection with an overall assessment of the signs at issue, the visual, phonetic and conceptual differences between them, arising from the predominance and fanciful nature of the bull depicted and from the word ‘bad’, which precedes the word ‘toro’ in the mark applied for, as well as the logical unit formed by the word and figurative elements considered as a whole, are sufficient for the finding that, when faced with those signs, the relevant public will not make a connection between them, since neither the dominant figurative element nor the word element of the mark applied for converges with the single element, or one of the elements, of the earlier marks. In those circumstances, despite the identity or similarity of the goods and services covered, it is highly unlikely that those goods and services, bearing the mark applied for, will appear in the eyes of consumers as originating from the undertaking holding the earlier marks or from an undertaking economically linked to that undertaking (see, to that effect and by analogy, judgment of 18 December 2008, Torres v OHIM — Bodegas Peñalba López (Torre Albéniz), T‑287/06, EU:T:2008:602, paragraph 74).
70 Consequently, and without it being necessary to rule on the other arguments relied on by the applicant, the plea that, by recognising the existence of a likelihood of confusion between the signs at issue, EUIPO disregarded Article 8(1)(b) of Regulation No 207/2009 must be upheld and the contested decision must therefore be annulled.
Costs
71 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
72 In the present case, since EUIPO has been unsuccessful and the applicant has not applied for costs against the intervener, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
73 Furthermore, the intervener, which has been unsuccessful, must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 April 2013 (Case R 1446/2012-2);
2. Orders EUIPO to bear its own costs and to pay those incurred by Jordi Nogues, SL;
3. Orders Grupo Osborne, SA to bear its own costs.
Van der Woude | Ulloa Rubio | Marcoulli |
Delivered in open court in Luxembourg on 20 September 2017.
[Signatures]