JUDGMENT OF THE GENERAL COURT (Second Chamber)
5 February 2020 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark TC Touring Club — Earlier EU word mark TOURING CLUB ITALIANO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Article 47(2) of Regulation 2017/1001 — Additional evidence that was submitted for the first time before the Board of Appeal — Article 95(2) of Regulation 2017/1001 — Cross-claim)
In Case T‑44/19,
Globalia Corporación Empresarial, SA, established in Llucmajor (Spain), represented by A. Gómez López, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Kusturovic, J.F. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Touring Club Italiano, established in Milan (Italy), represented by G. Guglielmetti, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 9 November 2018 (Case R 448/2018-4), relating to opposition proceedings between Touring Club Italiano and Globalia Corporación Empresarial,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović (Rapporteur), President, F. Schalin and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 January 2019,
having regard to the response of EUIPO lodged at the Court Registry on 15 April 2019,
having regard to the response of the intervener lodged at the Court Registry on 12 April 2019,
having regard to the cross-claim of the intervener lodged at the Court Registry on 12 April 2019,
having regard to the response of the applicant to the cross-claim, lodged at the Court Registry on 14 June 2019,
having regard to the response of EUIPO to the cross-claim, lodged at the Court Registry on 19 June 2019,
having regard to the change in the composition of the Chambers of the General Court,
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
I. Background to the dispute
1 On 1 April 2016, the applicant, Globalia Corporación Empresarial, SA, filed 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are in Class 39 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 to the following description: ‘Travel agency’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 70/2016 of 15 April 2016.
5 On 14 July 2016, the intervener, Touring Club Italiano, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on, inter alia, the EU word mark TOURING CLUB ITALIANO, which was filed on 10 May 2000 and registered on 16 July 2001 under the number 1648005 in respect of goods and services in Classes 16, 35, 39 and 41 corresponding, with regard to some of the services in Class 39, to the following description: ‘Tourist offices and travel agencies, including tourist information and assistance, escorting of travellers, arranging of cruises, arranging of tours, travel arrangement, sightseeing [tourism]’.
7 The grounds relied on in support of the opposition were, inter alia, those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 At the request of the applicant, the intervener was asked, in accordance with Article 42(2) of Regulation No 207/2009 (now Article 47(1) of Regulation 2017/1001), to furnish proof of genuine use of the earlier mark in the European Union, during the five-year period preceding the publication of the application for registration of the mark applied for, in connection with the services in respect of which that earlier mark had been registered.
9 On 21 April 2017, the intervener submitted before the Opposition Division, as evidence of use of the earlier mark, 34 documents, numbered 2 to 35, consisting of, inter alia, statistics regarding the number of visits to the website www.touringclub.it (document No 2), extracts from the magazine Touring (document No 3) and statistics regarding the print run and circulation data of that magazine (document No 4), the brochures I Paradisi (documents Nos 5 and 6), Vacanze Studio (documents Nos 11 to 14), Aperti per Voi (documents Nos 22 to 29) and In Campania con il Touring (document No 33), promotional offers (documents Nos 7 and 9), extracts from the magazine i Viaggi del Club (documents Nos 15 and 16) and a licence agreement signed by Touring Servizi Srl, as licensor, and Naar Tour Operator SpA, as licensee, relating to, inter alia, the use of the earlier mark (document No 16).
10 On 12 January 2018, the Opposition Division rejected the opposition in its entirety. It found that, inter alia, the intervener had failed to prove genuine use of the earlier mark.
11 On 8 March 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
12 The intervener submitted before the Board of Appeal additional evidence comprising 19 documents, numbered from 36 to 54, consisting of, inter alia, a licence agreement between it and Touring Servizi (document No 36), invoices for the sale of tours and trips (documents Nos 37 to 39 and 41), a collaboration agreement between Touring Servizi and G40 Travel Group SPA (document No 40), an exclusivity agreement between Touring Servizi and Ttl Take the Lead Srl (documents Nos 43 and 44) and two booking confirmations on the websites Booking.com and Expedia (documents Nos 45 and 46).
13 By decision of 9 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision.
14 First of all, it allowed some of the evidence which the intervener had submitted belatedly following the Opposition Division’s decision, taking the view that it appeared to be genuinely relevant as supplementary evidence corroborating the initial evidence and that the stage of the proceedings did not preclude it from being taken into account.
15 Secondly, the Board of Appeal found that the evidence submitted by the intervener had proved genuine use of the earlier mark at least in connection with the following services: ‘Tourist offices and travel agencies, namely tourist information and assistance, arranging of tours, travel arrangement, sightseeing [tourism]’.
16 Thirdly, as regards the assessment of whether there was a likelihood of confusion, the Board of Appeal found that the services at issue were identical, that the signs at issue were visually similar to an average degree, phonetically similar to at least an average degree and very similar, if not identical, conceptually and that the degree of distinctive character of the earlier mark was lower than average. It concluded that there was a likelihood of confusion on the part of the Italian public in the European Union.
II. Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– dismiss the cross-claim;
– order EUIPO and the intervener to pay the costs.
18 EUIPO contends that the Court should:
– dismiss the main action;
– dismiss the cross-claim as inadmissible;
– in the alternative, dismiss the cross-claim as unfounded;
– order the applicant and the intervener to pay the costs.
19 The intervener contends that the Court should:
– dismiss the main action;
– uphold the cross-claim and alter the statement of reasons in the contested decision so far as concerns paragraphs 14, 49 and 70 of the contested decision, as referred to in the cross-claim;
– order the applicant to pay the costs of the present proceedings and the administrative proceedings before EUIPO and the Board of Appeal.
III. Law
A. Admissibility
1. The question as to whether some of the annexes are admissible
20 The intervener maintains that Annexes A 5, A 6 and A 9 to the application have been submitted for the first time before the Court and are therefore inadmissible.
21 In that regard, it must be pointed out that, under Article 188 of the Rules of Procedure of the General Court, the pleadings of the parties before the Court may not change the subject matter of the proceedings before the Board of Appeal. The task of the Court is to review the legality of decisions of the Boards of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Likewise, an applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener. Furthermore, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and of 15 March 2018, La Mafia Franchises v EUIPO — Italy (La Mafia SE SIENTA A LA MESA), T‑1/17, EU:T:2018:146, paragraph 16).
22 In the present case, as regards Annexes A 5 and A 6 to the application, it must be stated that they are communications from EUIPO to the intervener concerning the time limit for the submission of evidence of genuine use of the earlier mark, following the applicant’s request to that effect, and concerning the time limit for the submission of observations on the applicant’s observations regarding the evidence that had been filed for the purpose of proving genuine use of the earlier mark. In that regard, it is sufficient to point out that the documents submitted in Annexes A 5 and A 6 to the application are part of the administrative file before EUIPO and that they are, moreover, communications sent to the intervener, with the result that that evidence cannot be held to be new. Those documents must therefore be declared admissible.
23 As regards the documents contained in Annex A 9 to the application, it must be pointed out that those documents, although they were produced for the first time before the Court, are not, strictly speaking, evidence, within the meaning of, inter alia, Article 85 of the Rules of Procedure, but relate to the decision-making practice of EUIPO and of the national offices, to which, even if that practice is subsequent to the proceedings before EUIPO, a party has the right to refer for the first time before the Court (see, to that effect, judgment of 26 October 2017, Alpirsbacher Klosterbräu Glauner v EUIPO (Klosterstoff), T‑844/16, EU:T:2017:759, paragraph 57 and the case-law cited). Those documents must therefore also be declared admissible.
2. The question as to whether the cross-claim is admissible
24 In support of the cross-claim, the intervener relies on three pleas in law, the first of which alleges infringement of Rules 15 and 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) and of Articles 94 and 95 of Regulation 2017/1001, and the second and third of which allege infringement of Article 8(1)(b) of Regulation 2017/1001.
25 EUIPO disputes the admissibility of the cross-claim.
26 Article 72(4) of Regulation 2017/1001 provides that an action before the Court against a decision of a Board of Appeal of EUIPO is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
27 According to settled case-law, an applicant’s legal interest in bringing proceedings constitutes the essential prerequisite for any legal proceedings and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which that action will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM — Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited). It follows that, according to the case-law, in so far as a decision of a Board of Appeal upholds in their entirety the claims of the party concerned, that party does not have standing to bring an action before the Court (order of 14 July 2009, Hoo Hing v OHIM — Tresplain Investments (Golden Elephant Brand), T‑300/08, not published, EU:T:2009:275, paragraph 27).
28 In that regard, it has been held that a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board of Appeal, when it has granted the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even if it did not examine or rejected the other grounds or arguments raised by that party (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited; judgment of 17 January 2019, Turbo-K International v EUIPO — Turbo-K (TURBO-K), T‑671/17, not published, EU:T:2019:13, paragraph 91).
29 In the present case, it must be stated that the Board of Appeal upheld the intervener’s appeal against the decision of the Opposition Division, which had rejected the opposition brought against the registration of the mark applied for.
30 Consequently, the intervener’s opposition to registration of the trade mark applied for, based on Article 8(1)(b) of Regulation 2017/1001, was upheld in its entirety by the Board of Appeal. In that regard, it must be added that, despite the fact that the intervener does not agree with all of the Board of Appeal’s findings, the Board of Appeal upheld its claims in the present case.
31 It follows that, in view of the principles set out in paragraphs 27 and 28 above, the intervener cannot, in the present case, file a cross-claim against the contested decision, with the result that its cross-claim must be dismissed as inadmissible.
B. The main action
32 In support of its action, the applicant relies on three pleas in law, alleging: (i) infringement of Article 95(1) and (2) of Regulation 2017/1001 and of Article 10(2) and (7) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1); (ii) infringement of Article 47(2) of Regulation 2017/1001; and (iii) infringement of Article 8(1)(b) of Regulation 2017/1001.
1. The first plea, alleging infringement of Article 95(1) and (2) of Regulation 2017/1001 and of Article 10(2) and (7) of Delegated Regulation 2018/625
33 By its first plea, the applicant claims that the Board of Appeal, by accepting the additional evidence of genuine use of the earlier mark submitted before it by the intervener, infringed Article 95(1) and (2) of Regulation 2017/1001 and Article 10(2) and (7) of Delegated Regulation 2018/625. According to the applicant, the Board of Appeal did not correctly exercise its discretion when it found that that additional evidence was admissible although it had been submitted by the intervener at a later stage, without there being any circumstances to justify the intervener’s delay in submitting that evidence.
34 EUIPO and the intervener dispute those claims on the part of the applicant.
35 It must be stated at the outset, as regards the application of Article 10 of Delegated Regulation 2018/625, on which the applicant relies, that, under Article 82(2)(d) of Delegated Regulation 2018/625, that article does not apply to requests for proof of use made before 1 October 2017. In the present case, the applicant submitted its request for proof of use of the earlier mark on 3 February 2017, with the result that Article 10(2) and (7) of Delegated Regulation 2018/625 is not applicable in the present case. Consequently, as EUIPO submits, it is the provisions of Regulation No 2868/95 that are applicable to the present case.
36 Article 95(2) of Regulation 2017/1001 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
37 It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 48 and the case-law cited).
38 In stating that EUIPO ‘may’ decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 49 and the case-law cited).
39 Likewise, it is apparent from the third subparagraph of Rule 50(1) of Regulation No 2868/95, which is applicable in the present case, that, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division, unless it considers that ‘additional’ or ‘supplementary’ facts and evidence must be taken into account pursuant to Article 95(2) of Regulation 2017/1001 (see judgment of 12 October 2017, Moravia Consulting v EUIPO — Citizen Systems Europe (SDC‑554S), T‑316/16, EU:T:2017:717, paragraph 49 and the case-law cited; see also, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 23).
40 With regard to proof of use of a mark, the Court of Justice has already stated that, when no proof thereof is submitted within the time limit set by EUIPO, the opposition must automatically be rejected by EUIPO. However, when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible (see judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 24 to 26 and the case-law cited; judgment of 21 June 2017, GP Joule PV v EUIPO — Green Power Technologies (GPTech), T‑235/16, EU:T:2017:413, paragraph 43).
41 According to settled case-law, where EUIPO is called upon to adjudicate in the context of opposition proceedings, the taking into account of facts or evidence submitted late is particularly likely to be justified where EUIPO considers, first, that the material which has been submitted late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).
42 It follows that, in the light of the abovementioned case-law, it must be assessed whether the evidence submitted for the first time before the Board of Appeal is to be categorised as ‘additional’ or ‘supplementary’ within the meaning of the third subparagraph of Rule 50(1) of Regulation No 2868/95, as interpreted by the case-law referred to in paragraphs 39 and 40 of the present judgment, and whether the Board of Appeal correctly exercised its discretion.
43 In the present case, the Board of Appeal found, first of all, that the Opposition Division had called into question the evidence provided by the intervener and had incorrectly considered that it was insufficient to establish the commercial volume, territorial scope, duration and frequency of use of the earlier mark. Next, it found that the additional evidence submitted before it, except for document No 42, appeared to be genuinely relevant as supplementary evidence corroborating the initial evidence and that the stage of the proceedings did not preclude it from being taken into account. Lastly, it concluded that it was justified to allow at least the evidence filed belatedly, as described in the preceding sentence, and to take it into account when assessing the use of the earlier mark.
44 First, as regards the question as to whether the evidence submitted for the first time before it could be considered to be ‘supplementary’, the Board of Appeal found, in essence, that that evidence, namely documents Nos 36 to 41 and 43 to 47, was supplementary in relation to the evidence submitted before the Opposition Division, since it corroborated the initial evidence. That assessment, which is correct and has not, moreover, been disputed by the applicant, must be upheld.
45 Secondly, as is apparent from paragraph 43 above, it must be pointed out that the Board of Appeal gave reasons for taking into account the documents that had been submitted for the first time before it by stating, first, that those documents appeared to be genuinely relevant as supplementary evidence corroborating the initial evidence and, secondly, that the stage of the proceedings did not preclude them from being taken into account. In so doing, the Board of Appeal exercised the discretion which the case-law referred to in paragraph 38 above recognises it as having.
46 As regards, thirdly, the applicant’s argument that the intervener did not take the opportunity to provide additional evidence when it was given such an opportunity before the Opposition Division, it is sufficient to state, as observed by the intervener, that it is apparent from the case file that the Opposition Division did not request that the intervener submit additional evidence, but observations on the applicant’s observations. In any event, that argument is irrelevant, since EUIPO has a discretion to accept or reject belated evidence.
47 As regards the applicant’s argument that there were no circumstances to justify the intervener’s late submission of the additional evidence, it must be pointed out, as the Board of Appeal, in essence, found, that the stage of the proceedings at which that late submission took place and the circumstances surrounding it did not preclude that evidence from being taken into account. Those documents were submitted in conjunction with the statement of grounds for the appeal before the Board of Appeal, with the result that the applicant was able to submit observations on those documents before the Board of Appeal adopted its decision (see, to that effect, judgment of 4 October 2018, Blackmore v EUIPO — Paice (DEEP PURPLE), T‑344/16, not published, EU:T:2018:648, paragraph 55). Likewise, it must be pointed out that, in the present case, the submission, at the stage of the appeal, of additional evidence, is justified by the fact that the Opposition Division had called the initial evidence into question by considering it to be insufficient to establish the commercial volume, territorial scope, duration and frequency of use of the earlier mark. Furthermore, the Board of Appeal found that that finding on the part of the Opposition Division was incorrect.
48 In view of all of the foregoing, the first plea must be rejected, without there being any need to examine the intervener’s arguments that that plea is inadmissible.
2. The second plea, alleging infringement of Article 47(2) of Regulation 2017/1001
49 By its second plea, the applicant submits that genuine use of the earlier mark in connection with the services covered by that mark has not been proved. It maintains, first, that all use of the sign TOURING CLUB ITALIANO refers to the intervener’s trade name. Secondly, it claims that it is apparent from the vast majority of the evidence that the intervener’s company name has been used in connection with printed matter in Class 16. Thirdly, it submits that that evidence proves use of the sign TOURING and not of the mark applied for. Fourthly, it maintains that affidavits provided by the intervener, the probative value of which is, according to the case-law, limited, do not explain the nature of use of the earlier signs and do not specify the type of services. Fifthly, it claims that the earlier mark is used in a descriptive sense.
50 EUIPO and the intervener dispute the applicant’s arguments.
51 According to settled case-law, it is apparent from Article 47(2) and (3) of Regulation 2017/1001, read in the light of recital 24 of that regulation, and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 57 and the case-law cited).
52 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
53 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
54 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
55 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
56 Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
57 In addition, it must be noted that, under point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, in conjunction with Article 47(2) of that regulation, proof of genuine use of an earlier trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited; judgment of 16 January 2014, Aloe Vera of America v OHIM — Detimos (FOREVER), T‑528/11, EU:T:2014:10, paragraph 30).
58 In the present case, the Board of Appeal found that the intervener had provided sufficient and conclusive evidence about the time, place, extent and nature of use of the earlier mark during the relevant period in the relevant territory, at least in connection with the services ‘Tourist offices and travel agencies, namely tourist information and assistance, arranging of tours, travel arrangement, sightseeing [tourism]’.
59 As regards, in particular, the nature of use, the Board of Appeal, first, found that the earlier mark had been used by the intervener, or with its consent, as a trade mark and in accordance with its essential function. Secondly, it pointed out that, in the documents provided, the earlier mark usually appeared in combination with figurative elements, but that that did not alter its distinctive character. Consequently, it found that that use had been proved with regard to the services covered by the earlier mark.
60 First, as is apparent from paragraph 38 of the contested decision, the Board of Appeal pointed out that the earlier mark usually appeared in combination with figurative elements, in the following manner:
61 It took the view that those representations did not, however, affect the distinctive character of the word sign as such, since the Italian flag illustrated the element ‘italiano’, the abbreviation ‘tci’ referred to the first letters of the earlier mark and the element ‘120 anni’ was even less distinctive. The Board of Appeal also pointed out, in that regard, that it was apparent from the case-law that two or more marks could be used jointly and autonomously, in such a way that the distinctive character of the registered signs was not altered (judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 7 October 2015, Atlantic Multipower Germany v OHIM — Nutrichem Diät + Pharma (NOxtreme), T‑186/14, not published, EU:T:2015:754, paragraph 22).
62 Those findings must be upheld. The addition of the figurative element does not alter the distinctive character of the earlier mark for the reasons set out in paragraph 61 above.
63 As regards, secondly, the applicant’s claim that the sign TOURING CLUB ITALIANO refers to the intervener’s company name and not to the earlier mark, it must be borne in mind that, when a word mark, as in the present case, is also a company name, it is possible for the company name to be used as a trade mark (see, to that effect, judgment of 15 July 2015, Cactus v OHIM — Del Rio Rodríguez (CACTUS OF PEACE CACTUS DE LA PAZ), T‑24/13, not published, EU:T:2015:494, paragraph 62 and the case-law cited). However, it is apparent from the case-law that the purpose of a company name is to identify a company and not, in itself, to distinguish goods or services. Accordingly, there is use in relation to goods or services where a third party affixes the sign constituting its company name to the goods which it markets, or where, even if the sign is not affixed, the third party uses that sign in such a way that a link is established between the sign which constitutes the company name and the goods marketed or the services provided by the third party (see, to that effect, judgment of 11 September 2007, Céline, C‑17/06, EU:C:2007:497, paragraphs 21 to 23).
64 Where that condition is satisfied, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (see judgment of 30 November 2009, Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, not published, EU:T:2009:475, paragraph 38 and the case-law cited; judgment of 18 July 2017, Savant Systems v EUIPO — Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 26).
65 In the present case, the applicant claims, in essence, that the use of the intervener’s company name cannot be regarded as use of a trade mark since it is, in particular, used together with other information about the company, such as a reference to its president, vice-president and managing director.
66 In that regard, it is sufficient to state that, although the earlier mark appears in some periodicals and magazines provided by the intervener together with other information like the intervener’s address or the name of its president, as is shown by the examples given by the applicant, those periodicals and magazines also prove use of the earlier sign as a trade mark, in particular where that sign appears on the cover of those periodicals and magazines.
67 As regards, thirdly, the applicant’s argument that use of the earlier mark has been shown in connection with printed matter and other goods in Class 16 and not in connection with the services at issue, it must be borne in mind that, according to the case-law, the appearance of a trade mark in a magazine, periodical, review, journal or catalogue is, in principle, capable of constituting ‘valid use of the sign’ as a trade mark in connection with the goods and services covered by that mark, if the content of those publications confirms that the sign is used in connection with the goods and services covered by that trade mark (see judgment of 8 April 2016, Frinsa del Noroeste v EUIPO — Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraph 53 and the case-law cited).
68 In the present case, as the Board of Appeal rightly found in paragraph 42 of the contested decision, the brochures, magazines and promotional offers provided by the intervener, in conjunction with the licence and collaboration agreements, invoices and booking confirmations, prove, as a whole, use of the earlier mark, at least in connection with holiday travel, sightseeing tours, language stays and providing tourist information, as they are organised under the mark TOURING CLUB ITALIANO. As for the brochures and magazines, they prove use of the earlier mark with regard to tourist information and assistance.
69 The brochures, magazines and promotional offers provided by the intervener offer various services, in particular holiday travel as proved by the brochures I Paradisi, language stays, as proved by the brochures Vacanze Studio, and tours, as proved by, inter alia, the magazines Viaggi del Club and the brochures In Campania con il Touring. As for the magazines Touring and the brochures Aperti per Voi, they prove use of the earlier mark with regard to tourist information and assistance.
70 As regards, fourthly, the sign TOURING, which the applicant submits that the intervener uses instead of the earlier mark, it must be stated that that sign appears only on the magazines Touring which were submitted as document No 3 before the Opposition Division. In that regard, it must also be pointed out that, on the cover of all the copies of those magazines submitted by the intervener, with the exception of that of December 2014, the earlier mark, which is not, moreover, used either as a company name or in a descriptive sense, but is indeed used to indicate the commercial origin of the magazines Touring, appears next to the sign TOURING.
71 As regards, fifthly, the applicant’s claim that the earlier mark has been used in a descriptive manner, it must be pointed out, as observed by EUIPO, that, as is apparent from the evidence to which the applicant refers, the earlier mark appears on the cover of the brochures I Paradisi. Likewise, the earlier mark, when it appears in the title ‘In vacanza con la natura. I paradisi del Touring Club Italiano’ on the cover of the brochure I Paradisi, is not used in a descriptive sense but is indeed used as an indication of the commercial origin of the services covered by that mark.
72 In that regard, it must be borne in mind that, according to settled case-law, there is no rule in the EU trade mark system that requires use of the earlier mark on its own, independently of any other mark or sign, to be proved. Consequently, two or more marks could be used jointly and autonomously, with or without the name of the manufacturer’s company (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraphs 33 and 34; of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100, and of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43).
73 As regards, sixthly, the applicant’s claim that the affidavits provided by the intervener do not clearly identify the intervener’s different earlier rights, do not explain the nature of the use that may have been made of the different earlier signs and do not specify the type of goods or services each of the companies involved provides, it must be pointed out that the intervener provided other evidence that proves to the requisite legal standard the nature of use of the earlier mark and bears out the content of those affidavits.
74 It follows from the foregoing that the applicant has not managed to call into question the Board of Appeal’s findings, which are correct, with the result that the second plea must be rejected.
3. The third plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
75 In the context of its third plea, the applicant disputes the Board of Appeal’s finding that there is a likelihood of confusion in the present case. In particular, it disputes the Board of Appeal’s assessments relating to the relevant public, the dominant and distinctive elements of the signs at issue and the comparison of those signs.
76 EUIPO and the intervener dispute the applicant’s claims.
77 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.
78 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).
79 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).
80 It is in the light of the abovementioned principles that the present plea must be examined.
(a) The relevant public
81 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).
82 In the present case, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory was that of the European Union. However, for reasons of procedural economy, it focused on the Italian public, since use of the earlier mark had been proved in Italy. As regards the composition of the public and its level of attention, the Board of Appeal found that that public consisted both of the general public and of professionals and that, in view of the nature of the services at issue, the relevant public as a whole displayed a higher than average level of attention.
83 The applicant submits that, since the earlier mark is an EU trade mark, the Board of Appeal should have taken into consideration the perception of the marks at issue by the relevant public throughout the European Union.
84 In that regard, 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, 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). Accordingly, where there is a likelihood of confusion between two EU trade marks in one Member State, this is sufficient for registration of the later mark to be refused (see, to that effect, order of 16 September 2010, Dominio de la Vega v OHIM, C‑459/09 P, not published, EU:C:2010:533, paragraph 31).
85 Consequently, the Board of Appeal was justified in focusing its assessment on the Italian part of the relevant public.
86 As regards that public’s level of attention, the Board of Appeal found, in paragraph 49 of the contested decision, that, like the professional public with regard to the services at issue, the general public with regard to those services displayed a higher than average level of attention when purchasing services connected with travel arrangements. It stated that such a purchase involved, even on the part of the general public, more in-depth consideration than that given to everyday consumer goods or services.
87 It must be pointed out that the applicant does not call that assessment into question. However, the Court has, on several occasions, held that the general public’s level of attention with regard to services connected with travel arrangements was average or confirmed such findings on the part of the Boards of Appeal (see, to that effect, judgments of 9 September 2011, Deutsche Bahn v OHIM — DSB (IC4), T‑274/09, not published, EU:T:2011:451, paragraph 50; of 30 November 2017, FTI Touristik v EUIPO — Prantner and Giersch (Fl), T‑475/16, not published, EU:T:2017:856, paragraph 23, and of 13 March 2018, Hotelbeds Spain v EUIPO — Guidigo Europe (Guidego what to do next), T‑346/17, not published, EU:T:2018:134, paragraph 23).
88 It must be borne in mind that, where it is called upon to assess the legality of a decision of a Board of Appeal, the General Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48, and of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO — Gianni Versace (VERSACCINO), T‑337/16, not published, EU:T:2017:692, paragraph 68).
89 Consequently, it must be held that the general public’s level of attention is average in the present case.
(b) The comparison of the services
90 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
91 It must be borne in mind that, as is apparent from settled case-law, where the goods or services covered by an earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). The same is true where the goods or services covered by the earlier mark are included in a more general category covered by the mark applied for (see, to that effect, judgments of 23 October 2002, Institut für Lernsysteme v OHIM — Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53, and of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
92 In the present case, the Board of Appeal, referring to, inter alia, the case-law referred to in paragraph 91 above, found, in paragraph 52 of the contested decision, that the ‘travel agency’ services covered by the mark applied for included all the services covered by the earlier mark for which use had been proved, namely ‘tourist information and assistance, arranging of tours, travel arrangement [and] sightseeing [tourism]’.
93 That finding, which is not, moreover, disputed by the parties, is correct and must be upheld.
(c) The comparison of the signs
94 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 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 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).
95 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
96 In the present case, as the Board of Appeal rightly pointed out in paragraph 56 of the contested decision, the mark applied for is a figurative mark consisting of the word element ‘touring club’ in bold red characters, accompanied on its left by a figurative element in white with grey contours, which may, by a very limited part of the public, be perceived as the stylised letters ‘t’ and ‘c’.
(1) The dominant and distinctive elements of the signs at issue
97 As regards the dominant and distinctive elements of the signs at issue, the Board of Appeal, first of all, found that the word element ‘touring club’ had a weak distinctive character as it was likely to be understood as meaning ‘club for tours’ and thus as referring to the nature of the services at issue. Next, it took the view that the element ‘italiano’ in the earlier mark was devoid of any distinctive character because it was purely descriptive. Lastly, it found that the figurative element of the mark applied for was small in size and difficult to remember or decipher. It concluded that the overall impression of the mark applied for was dominated by the element ‘touring club’, whereas the other elements were negligible.
98 The applicant submits that the element ‘touring club’, which is common to the marks at issue, is descriptive of the services at issue and consequently devoid of any distinctive character, like the element ‘italiano’ in the earlier mark. It adds that the lack of distinctive character of the element ‘touring club’ has been acknowledged by numerous national intellectual property offices and that it cannot be considered to be the dominant element in the present case. It maintains that the word elements of the signs at issue should not be regarded as dominant or negligible and that, as regards the mark applied for, the assessment as to whether those signs are similar should be carried out solely on the basis of the figurative element.
99 In that regard, it must be borne in mind that, in the light of the case-law referred to in paragraph 95 above, the assessment as to whether the signs at issue are similar could be carried out solely on the basis of the figurative element of the mark applied for only if all the other elements were negligible. However, as the applicant, moreover, admits, that is not so in the present case. The element ‘touring club’, which is common to the marks at issue, is not negligible, with the result that, contrary to what the applicant argues, the comparison of the signs cannot be carried out solely on the basis of the figurative element of the mark applied for. If, as the applicant submits in the present case, the element ‘touring club’ is not dominant in the mark applied for, although it is not, however, capable of being categorised as negligible, it is the overall impression of the mark applied for which will have to be taken into account for the purposes of the assessment as to whether the signs are similar.
100 As regards the importance of the figurative element in the mark applied for, it is true that the Board of Appeal categorised it as negligible in paragraph 63 of the contested decision. However, as is apparent from paragraphs 64 and 66 of that decision, the Board of Appeal did indeed take that element into account when assessing whether the signs at issue were visually and phonetically similar, with the result that the applicant cannot effectively complain that the Board of Appeal did not take the signs at issue as a whole into account.
101 As regards the distinctive character of the element ‘touring club’ in the marks at issue and of the element ‘italiano’ in the earlier mark, it must be pointed out, as observed by the Board of Appeal, that the element ‘touring club’ is weakly distinctive with regard to the services at issue, since it refers to the nature of those services, and that the element ‘italiano’ is directly descriptive of the Italian origin of those services. As the Board of Appeal found in paragraph 60 of the contested decision, the Italian-speaking public is likely to understand, or, at least, to guess the meaning of the element ‘touring club’, which is common to the marks at issue, due to the widespread use of the basic English words ‘tour’ and ‘club’ or of close national equivalents.
102 As regards the distinctive character of the element ‘touring club’, which is common to the marks at issue, a distinctive character which the Board of Appeal categorised as weak, it must be borne in mind that, although it is indeed true that, according to settled case-law, the public will not, as a general rule, consider a descriptive element forming part of a composite mark to be the dominant element of that mark, specific circumstances may justify a descriptive element having a dominant character (see judgment of 15 December 2016, Aldi v EUIPO — Miquel Alimentació Grup (Gourmet), T‑212/15, not published, EU:T:2016:746, paragraph 61 and the case-law cited; see also, to that effect, judgment of 19 March 2015, MEGA Brands International v OHIM, C‑182/14 P, EU:C:2015:187, paragraph 34 and the case-law cited). In the present case, in view of the particular arrangement of the mark applied for, the Board of Appeal did not make an error of assessment in finding that the element ‘touring club’ was dominant in the overall impression created by that sign.
103 As regards the decisions of national offices relied on by the applicant, it must be borne in mind that, according to the case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Neither the Board of Appeal nor, as the case may be, the EU judicature are therefore bound — even though they may take them into consideration — by decisions adopted in a Member State or in a State that is not a member of the European Union (judgment of 10 July 2014, Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059, paragraph 55; see also, judgment of 24 March 2010, 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 52 and the case-law cited).
104 It follows that the Board of Appeal was right in finding that the element ‘touring club’ was dominant in the signs at issue in spite of its weak distinctive character.
(2) The visual, phonetic and conceptual comparison
105 As regards, first, the visual comparison of the signs, the Board of Appeal found that those signs were similar to an average degree. In particular, it pointed out that the signs at issue coincided in the word element ‘touring club’, but differed in the word element ‘italiano’ in the earlier mark and the figurative element in the mark applied for, a figurative element which, in its view, played a secondary role.
106 The applicant submits that the signs are not visually similar or are similar only to a very low or irrelevant degree.
107 In that regard, it must be pointed out that that argument is the result of the applicant’s view that the comparison of the signs should be carried out solely on the basis of the figurative element of the mark applied for. However, as is clear from paragraph 99 above, that argument has been rejected, with the result that the signs must be compared as a whole. Furthermore, it has also been pointed out that the Board of Appeal did not make an error of assessment in finding that the element ‘touring club’ was dominant in the two signs at issue (see paragraph 102 above).
108 Consequently, it must be held, as the Board of Appeal found, that, since the signs at issue have the element ‘touring club’ in common, the degree of visual similarity between them must be categorised as average, in spite of the existence of additional elements and the weak distinctive character of the element in common.
109 As regards, secondly, the phonetic comparison of the signs, the Board of Appeal pointed out that those signs were similar to at least an average degree, since they coincided in the element ‘touring club’ and differed in the pronunciation of the element ‘italiano’ in the earlier mark and, arguably and if at all perceived by the relevant public, of the figurative element of the mark applied for, a figurative element that consisted of two letters.
110 Regarding that aspect, the applicant submits that the signs at issue are not similar. It maintains that the differences, arising from the fact that the earlier mark consists of three words and is pronounced as seven syllables, whereas the mark applied for consists of two words and is pronounced as three syllables, outweigh the slight similarity that could possibly be derived from the element in common, which has a weak distinctive character.
111 In that regard, it must be stated that both signs have in common the element ‘touring club’, which is admittedly weakly distinctive with regard to the services at issue. However, the similarities arising from that element in common are greater than the differences resulting from the element ‘italiano’ in the earlier mark and the figurative element in the mark applied for, as the former is descriptive and the relevant public may not understand the latter as consisting of the letters ‘t’ and ‘c’.
112 It follows that the Board of Appeal was right in finding that the degree of phonetic similarity was at least average in the present case.
113 As regards, thirdly, the conceptual comparison of the signs, the Board of Appeal found that those signs were similar to a high degree, if not identical. It found that they referred to the same concept of a ‘club for tours’, which would also be understood by part of the Italian-speaking public due to the widespread direct use of the basic English words ‘tour’ and ‘club’ or of close national equivalents, as has already been pointed out in paragraph 101 above. As regards the element ‘italiano’, the Board of Appeal took the view that that element should be ignored because it was purely descriptive.
114 The Board of Appeal’s assessment must be upheld. Conceptually, both signs have in common the idea of a ‘club for tours’, which arises from the element in common ‘touring club’, an element which will be understood by at least part of the Italian-speaking public. The element ‘italiano’ in the earlier mark is purely descriptive of the Italian origin of the services at issue, as the Board of Appeal correctly found in paragraph 61 of the contested decision, with the result that the relevant public in the present case might disregard it, as the Board of Appeal in essence found.
115 Consequently, the degree of conceptual similarity must be categorised as high, even though that similarity is the result of a weakly distinctive element.
(d) The question as to whether there is a likelihood of confusion
116 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).
117 In the present case, the services at issue are identical (see paragraph 93 above) and the signs are visually similar to an average degree, phonetically similar to at least an average degree and conceptually similar to a high degree (see paragraphs 108, 112 and 115 above).
118 As regards the distinctiveness of the earlier mark, the Board of Appeal found, first of all, that it had not been established that the earlier mark was particularly distinctive by virtue of its intensive use or reputation, with the result that its distinctiveness rested on its distinctiveness per se. Secondly, it found that its degree of inherent distinctive character was lower than average because it consisted only of weakly distinctive elements.
119 That assessment on the part of the Board of Appeal must be upheld. As is apparent from the present judgment (see paragraph 111 above), the earlier mark consists of the element ‘touring club’, which is weakly distinctive with regard to the services at issue, and of the element ‘italiano’, which is directly descriptive with regard to those services. In those circumstances, the distinctive character of the earlier mark must be categorised as weak.
120 However, it must be borne in mind that a finding that the earlier mark has a weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 65 and the case-law cited).
121 In those circumstances, it must be held that the Board of Appeal was right in finding that there is, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It is true that the Board of Appeal took the view that such a likelihood of confusion existed ‘even if the relevant public display[ed] a higher than average level of attention’.
122 As has, however, been held in paragraph 89 of the present judgment, the general public’s level of attention is average in the present case. Nonetheless, it must be stated that the Board of Appeal’s error regarding the relevant public’s level of attention is not capable of calling into question the finding that there is a likelihood of confusion between the marks at issue, and thus of resulting in the annulment of the contested decision. The part of the public displaying a lower level of attention is more prone to confusion that the part of the public displaying a high level of attention (see, to that effect, judgment of 26 March 2019, Deray v EUIPO — Charles Claire (LILI LA TIGRESSE), T‑105/18, not published, EU:T:2019:194, paragraph 39).
123 It follows that the third plea must be rejected and that the action must therefore be dismissed in its entirety.
IV. Costs
124 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. Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.
125 In the present case, since the applicant has been unsuccessful in the main action, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. Those costs also include the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal.
126 By contrast, as is apparent from the case-law, the costs incurred in the proceedings before the Opposition Division cannot be regarded as recoverable costs (see judgment of 8 May 2014, Pyrox v OHIM — Köb Holzheizsysteme (PYROX), T‑575/12, not published, EU:T:2014:242, paragraph 15 and the case-law cited). Consequently, the intervener’s claim to that effect must be rejected.
127 Since the intervener has been unsuccessful in the cross-claim, it must be ordered to bear its own costs and to pay the costs incurred by the applicant and by EUIPO, in accordance with the forms of order sought by the applicant and EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Dismisses the cross-claim as inadmissible;
3. With regard to the main action, orders Globalia Corporación Empresarial, SA, to pay the costs, including those incurred by Touring Club Italiano for the purposes of the proceedings before the Board of Appeal;
4. With regard to the cross-claim, orders Touring Club Italiano to bear its own costs and to pay the costs incurred by Globalia Corporación Empresarial and by EUIPO.
Delivered in open court in Luxembourg on 5 February 2020.