JUDGMENT OF THE GENERAL COURT (Third Chamber)
7 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark BROOKS ENGLAND – Earlier EU word mark BROOKS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Genuine use of the earlier mark – Article 43(2) of Regulation No 40/94 (now Article 47(2) of Regulation 2017/1001)
In Case T‑63/22,
Brooks England Ltd, established in Smethwick (United Kingdom), represented by S. Feltrinelli and K. Manhaeve, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Brooks Sports, Inc., established in Seattle, Washington (United States), represented by C. Spintig and S. Pietzcker, lawyers,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl and G. Steinfatt (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 1 February 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Brooks England Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 November 2021 (Case R 2432/2020-4) (‘the contested decision’).
I. Background to the dispute
2 On 9 September 2003, the applicant filed an application for registration of an EU trade mark in respect of the following figurative sign:
3 The mark applied for covered goods in, inter alia, Classes 18 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 18: ‘Bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists’;
– Class 25: ‘Jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists; clothing accessories for cyclists including gloves, socks, shoes, caps’.
4 On 16 November 2004, the intervener, Brooks Sports, Inc., filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier EU word mark BROOKS, which covers goods in Class 25 corresponding to the following description: ‘athletically-related footwear’.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
7 The opposition proceedings were suspended several times between 2007 and 2018 owing to ongoing negotiations between the parties with a view to reaching an agreement.
8 Following a request made by the applicant on 19 December 2018, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark which had been relied on in support of the opposition. The intervener complied with that request within the time limit set.
9 On 19 October 2020, the Opposition Division partially upheld the opposition and refused registration of the mark applied for in respect of ‘clothing accessories for cyclists including gloves, socks, shoes, caps’ in Class 25.
10 On 18 December 2020, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division in so far as it had partially rejected the opposition.
11 By the contested decision, the Board of Appeal upheld the appeal. In essence, it found, in the first place, that the evidence submitted by the intervener proved that there had been genuine use of the earlier mark in connection with ‘athletically-related footwear’ in Class 25. In the second place, the Board of Appeal found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in respect of all of the goods at issue.
II. Forms of order sought
12 The applicant claims, in essence, that the Court should:
– annul the contested decision in its entirety and therefore declare that the mark applied for should be registered in respect of all the goods at issue;
– in the alternative, partially annul the contested decision in so far as it upheld the opposition in respect of the goods in Class 18;
– order EUIPO to pay the costs relating to the proceedings before the Board of Appeal and before the Court.
13 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
A. The applicable law ratione temporis
14 Given the date on which the application for registration at issue was filed, namely 9 September 2003, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
15 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision to Article 42(2) of Regulation No 207/2009, in its original version, and to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 43(2) and Article 8(1)(b) of Regulation No 40/94, which are substantively identical. That also applies to the references made by the applicant, in its written pleadings, to the provisions of Article 47(2) of Regulation 2017/1001.
16 In addition, under Article 80 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), Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) is to continue to apply to ongoing proceedings where Delegated Regulation 2018/625 does not apply in accordance with its Article 82, until such proceedings are concluded.
17 According to Article 82(2)(d) of Delegated Regulation 2018/625, Article 10 is not to apply to requests for proof of use made before 1 October 2017.
18 However, the applicant filed the request for proof of use on 19 December 2018, with the result that Article 10 of Delegated Regulation 2018/625 is applicable in the present case.
B. The issue of whether certain items of evidence and one of the applicant’s complaints are admissible
1. The issue of whether the evidence submitted for the first time before the Court is admissible
19 As was confirmed at the hearing, EUIPO and the intervener dispute the admissibility of Annex A.5 to the application and the data taken from websites which are set out in paragraph 28 of the application, on the ground that they have been submitted for the first time before the Court.
20 In that regard, it must be stated that neither Annex A.5 to the application, which consists of a Eurostat report relating to the footwear sector in the European Union with regard to the year 2006, nor the data in paragraph 28 of the application, which constitute extracts from websites containing descriptions of the footwear marketed by the intervener under the earlier mark, formed part of the administrative file which was submitted before the Board of Appeal.
21 That evidence, which has thus been submitted for the first time before the Court, cannot be taken into consideration. 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 documents produced for the first time before it. Accordingly, the abovementioned evidence must be excluded and there is no need to assess its probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
2. The issue of whether the applicant’s complaint alleging lack of genuine use of the earlier mark is admissible
22 The intervener submits that the applicant’s complaint that the earlier trade mark has not been put to genuine use within the meaning of Article 43(2) of Regulation No 40/94 is not part of the applicant’s single plea in law alleging infringement of Article 8(1)(b) of that regulation, with the result that that complaint must be rejected as inadmissible.
23 Pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and to Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain, inter alia, the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary without any further information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic factual and legal particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (see judgment of 8 July 2020, Dinamo v EUIPO (Favorit), T‑729/19, not published, EU:T:2020:314, paragraph 11 and the case-law cited).
24 Whilst it should be acknowledged that the statement of pleas in the application need not conform with the terminology and layout of the Rules of Procedure, and whilst those pleas may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity (see judgment of 8 July 2020, Favorit, T‑729/19, not published, EU:T:2020:314, paragraph 12 and the case-law cited).
25 In the present case, it is true that the applicant has formally put forward only a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. However, the fact remains that, in the context of that plea, the applicant has put forward a specific and substantiated first complaint, alleging lack of genuine use of the earlier mark. In so doing, it puts forward, in essence, a first plea in law, alleging infringement of Article 43(2) of Regulation No 40/94. Consequently, contrary to what the intervener submits, the fact that the complaint alleging lack of genuine use of the earlier mark has been put forward in the context of the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94, cannot entail its inadmissibility, but only its reclassification by the Court.
26 It follows that the intervener’s argument claiming that the applicant’s complaint alleging lack of genuine use of the earlier mark is inadmissible must be rejected as unfounded.
C. The merits of the pleas
27 In support of the action, the applicant puts forward, in essence, two pleas in law, alleging, first, infringement of Article 43(2) of Regulation No 40/94 and, secondly, infringement of Article 8(1)(b) of that regulation.
1. The first plea, alleging infringement of Article 43(2) of Regulation No 40/94
28 The applicant submits, in essence, that the Board of Appeal infringed Article 43(2) of Regulation No 40/94 in finding that the evidence submitted by the intervener sufficiently proved genuine use of the earlier mark.
29 EUIPO and the intervener dispute the applicant’s arguments.
30 Article 43(2) of Regulation No 40/94 provides that ‘if the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, … provided the earlier Community trade mark has at that date been registered for not less than five years’ and that ‘in the absence of proof to this effect, the opposition shall be rejected’.
31 In the present case, the Board of Appeal found that the period from 16 August 1999 to 15 August 2004 was the five-year period in respect of which the intervener was required to prove genuine use of the earlier mark, a finding which the parties do not dispute.
32 In interpreting the concept of ‘genuine use’, account should be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use is not to assess the commercial success of an undertaking or to review its economic strategy, nor is it to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 11 April 2019, Fomanu v EUIPO – Fujifilm Imaging Germany (Representation of a butterfly), T‑323/18, not published, EU:T:2019:243, paragraph 23 and the case-law cited).
33 According to settled case-law, 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 (judgment of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 38; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, 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 4 April 2019, Hesse and Wedl & Hofmann v EUIPO – (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 29 and the case-law cited).
34 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 in the course of trade 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 (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
35 Lastly, it is necessary to carry out an overall assessment which takes into account all the relevant factors of the particular case and entails a degree of interdependence between the factors taken into account (judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 35).
36 In that regard, it must be stated that, under Article 10(3) and (4) of Delegated Regulation 2018/625, the proof of use of a trade mark must concern the place, time, extent and nature of use of the mark and is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
37 In order to furnish proof of genuine use of the earlier mark, the intervener provided the following items of evidence:
– four distribution and licence agreements (exhibits Nos 1A-1E) and three agency agreements (exhibits Nos 1F‑1H);
– sixteen purchase orders in respect of footwear issued between 30 September 1999 and 8 July 2003 by the intervener’s distributor for the United Kingdom and Ireland (exhibit No 2);
– eighteen invoices in respect of footwear issued between 19 October 1999 and 28 August 2003 by the intervener’s distributor for the United Kingdom and Ireland to retailers in the United Kingdom (exhibit No 3);
– seven price lists in respect of BROOKS footwear for Germany, Spain, Italy, France and Austria for the period from 2001 to 2004 (exhibits Nos 4A-4G);
– customer turnover lists from the intervener’s distributor for the United Kingdom and Ireland for the period from 1999 to 2003 (exhibit No 5);
– an email, dated 24 June 2019, which was sent to the intervener’s representative by a representative of the intervener’s distributor for the United Kingdom and Ireland, entitled ‘Brooks Evidence 1999-2003’ (exhibit No 6);
– an extract from a presentation in German (exhibit No 7);
– extracts from presentations in English including data corresponding to 2003 and 2004, some of them concerning Germany, Austria, Spain, France and Italy (exhibits Nos 8A-8B);
– a presentation entitled ‘2003 International Sales Meeting – Fall 2002’ (exhibit No 9);
– a document entitled ‘History of Brooks Sports Inc.’ (exhibit No 10);
– a summary of the intervener’s history in English, which comes from its website (exhibit No 11);
– ten magazine reviews of BROOKS footwear taken from a website between 2000 and 2004, showing prices in pounds sterling (exhibits Nos 12A-12J);
– a presentation of the magazine Runner’s World, including subscribers, readership and circulation figures from 2007 to 2008 (exhibit No 13);
– an article from a German magazine, which includes a review of the running shoes Brooks Adrenaline GTS II (exhibit No 14);
– an extract from an online article, dated April 2003 (exhibit No 15);
– screenshots of several of the intervener’s websites obtained by means of the tool Wayback Machine (exhibits Nos 16A-16H);
– an affidavit by the intervener’s Corporate Responsibility and Legal Analyst dated 24 June 2019 (exhibit No 17).
(a) The place and time of use
38 In paragraphs 47 and 48 of the contested decision, the Board of Appeal stated, in essence, that the evidence showed use of the earlier mark at least in the United Kingdom during the relevant period.
39 In the present case, as regards the time of use, it must be stated that the vast majority of the evidence falls within the relevant period, with the exception only of the email dated 24 June 2019 (exhibit No 6), the two documents regarding the intervener’s history which were printed on 23 June 2019 (exhibits Nos 10 and 11), the presentation of the magazine Runner’s World, which concerns data from 2007 and 2008 (exhibit No 13), and the affidavit dated 24 June 2019 (Exhibit No 17).
40 As regards the place of use, it must be noted, in particular, that the agency agreements concluded by the intervener (exhibits Nos 1F‑1H) and the price lists (exhibits Nos 4A-4G) indicate that BROOKS running shoes were marketed in, inter alia, Spain, Italy and France. Likewise, the distribution and licence agreements concluded by the intervener refer to the distribution and licensing of athletic, sports and outdoor shoes under the earlier mark in a number of EU Member States, including the United Kingdom (exhibit No 1E). Furthermore, the purchase orders (exhibit No 2) and the invoices (exhibit No 3), which were all issued by the intervener’s distributor for the United Kingdom and Ireland with which it had concluded a distribution and licence agreement (exhibit No 1E), and the magazine reviews (exhibits Nos 12A-12J), which present the intervener’s footwear and the prices of that footwear in pounds sterling, confirm that the intervener’s footwear has been marketed in the United Kingdom under the earlier mark. Consequently, since the United Kingdom of Great Britain and Northern Ireland was still a member of the European Union during the period which is relevant for the purpose of proving genuine use of the earlier mark, that territory must be taken into account in order to determine the place of use of that mark (judgment of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 84 (not published)).
41 It must therefore be held, as the Board of Appeal found, that the earlier mark was put to use in the European Union and, at the very least, in the United Kingdom during the relevant period. The applicant has not, moreover, put forward any argument which is capable of calling that finding into question.
(b) The nature of use
42 In paragraph 49 of the contested decision, the Board of Appeal first of all found, in essence, that the evidence showed use of the earlier word mark BROOKS, but also of the figurative signs 
, 
and 
, which did not alter the distinctive character of the earlier mark as registered. The applicant does not call that assessment into question.
43 In paragraphs 50 to 54 of the contested decision, the Board of Appeal then stated, in essence, that the evidence showed use in connection with running shoes and racing shoes and that those sports shoes could be used not only for running or racing, but also for any other activity, including for work or other everyday activities, depending on personal preferences. It thus found that use of the earlier mark had to be acknowledged in connection with ‘athletically-related footwear’, which constituted a sufficiently narrowly defined category of goods.
44 In the first place, the applicant submits, in essence, that the intervener has proved limited use of the earlier mark only in connection with running shoes.
45 In that regard, it must be stated that the agency agreements and the distribution and licence agreements (exhibits Nos 1A-1H) and one of the screenshots of the intervener’s website (exhibit No 16G) state that the intervener produces and markets running shoes and footwear referred to as athletic, sports and outdoor footwear under the earlier mark. Furthermore, the names of the goods in the purchase orders and invoices issued by the intervener’s distributor for the United Kingdom and Ireland (exhibits Nos 2 and 3), when they are linked with the various names and types of footwear marketed by the intervener which appear in the price lists (exhibits Nos 4A-4G), show that the earlier mark is used, in particular, in connection with running shoes and racing shoes (‘running’, ‘trail/outdoor running’ and ‘racing’). In addition, numerous images of shoes in the presentation entitled ‘2003 International Sales Meeting – Fall 2002’ (exhibit No 9) show that that mark was affixed to those goods. Lastly, the magazine articles (exhibits Nos 12A-12J, 14 and 15) refer to the earlier mark in each of the names of the intervener’s shoes which are presented in those articles.
46 It follows that the evidence provided by the intervener shows use of the earlier mark both in connection with running shoes and in connection with racing shoes, as the Board of Appeal correctly pointed out in paragraphs 51 and 52 of the contested decision.
47 In the second place, the applicant criticises the Board of Appeal for having found, in paragraph 54 of the contested decision, that the sports shoes referred to by the evidence of use of the earlier mark could be used not only for running or racing, but also for any other activity, with the result that that use had to be acknowledged in connection with ‘athletically-related footwear’, which constituted a sufficiently narrowly defined category of goods. First, it observes that the Board of Appeal erred in conferring a broad meaning on ‘athletically-related footwear’ by equating it with sports shoes. It submits that, although sports shoes are capable of being used both for sports activities and for everyday activities, that is not the case with regard to ‘athletically-related footwear’, which is used solely for athletic activities. Secondly, it stated, in response to a question put by the Court at the hearing, that, contrary to what the Board of Appeal found, running shoes constituted an independent subcategory within the more general category of ‘athletically-related footwear’.
48 In that regard, it must be borne in mind that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (see judgment of 2 March 2022, Apologistics v EUIPO – Kerckhoff (apo-discounter.de), T‑140/21, not published, EU:T:2022:110, paragraph 21 and the case-law cited).
49 With regard to goods or services within a broad category, which is capable of being subdivided into a number of independent subcategories, it is necessary to require the proprietor of the earlier mark to furnish proof of genuine use of that mark in connection with each of those independent subcategories. In that connection, the breadth of the categories of goods or services in respect of which the earlier mark was registered is a decisive factor as regards the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the earlier mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services (judgment of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraphs 39 and 43).
50 It is also clear from the case-law that the criterion of the purpose or intended use is of fundamental importance in the definition of a subcategory of goods or services since consumers are searching primarily for a product or service which can meet their specific needs (see judgment of 2 March 2022, apo-discounter.de, T‑140/21, not published, EU:T:2022:110, paragraph 23 and the case-law cited).
51 However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category (see judgment of 2 March 2022, apo-discounter.de, T‑140/21, not published, EU:T:2022:110, paragraph 24 and the case-law cited).
52 Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of that earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he or she has succeeded in proving genuine use, are not, in essence, different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must be observed in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (see judgment of 18 October 2016, August Storck v EUIPO – Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 29 and the case-law cited).
53 In the present case, it must be borne in mind that the earlier mark has been registered in respect of ‘athletically-related footwear’ in Class 25 and that the evidence of use of that mark concerns running shoes and racing shoes (see paragraph 46 above). It is therefore necessary to examine whether running and racing shoes constitute a coherent subcategory which is capable of being viewed independently in relation to ‘athletically-related footwear’ or whether those goods are part of the same group of goods designated by the term ‘athletically-related footwear’, the division of which into subcategories would be arbitrary.
54 In that regard, according to the definition in the online dictionary Oxford Learner’s Dictionaries provided by the applicant, the adverb ‘athletically’ means ‘in a way that is connected with sports such as running, jumping and throwing’. It is thus clear from that definition that the term ‘athletic’ refers to sport in general, given that the specific sports mentioned in that definition are introduced by the words ‘such as’, thus indicating that that definition is not limited to the sports which are expressly mentioned, as EUIPO correctly submits. It must therefore be concluded that ‘athletically-related footwear’ corresponds to footwear which is designed for engaging in sport in general. Furthermore, it is common knowledge that running shoes or racing shoes can be used not only for running, which is, moreover, an athletic activity according to the definition provided by the applicant, but also for any other activity, in particular other sports activities, as EUIPO has also correctly pointed out.
55 It follows that running shoes and racing shoes have the same intended use and purpose as ‘athletically-related footwear’. Consequently, contrary to what the applicant claims, it cannot be held that running or racing shoes constitute an independent subcategory, for the purposes of the case-law cited in paragraph 49 above, in relation to ‘athletically-related footwear’, since such a division of the latter category would be arbitrary.
56 In those circumstances and in the light of the case-law referred to in paragraphs 51 and 52 above, the Board of Appeal did not err in finding that use of the earlier mark had to be acknowledged in connection with ‘athletically-related footwear’ in Class 25, which constitutes a sufficiently narrowly defined category.
57 That finding cannot be called into question by the applicant’s argument that, in essence, ‘athletically-related footwear’ is not equivalent to sports shoes. As has been pointed out in paragraph 54 above, the term ‘athletic’ refers to sport and, inter alia, to running. In those circumstances, the Board of Appeal was entitled to find, in paragraph 54 of the contested decision, that the running shoes and racing shoes referred to in the evidence of use of the earlier mark constituted sports shoes and, consequently, ‘athletically-related footwear’.
58 Likewise, in so far as the applicant submits, in essence, that some athletic shoes, such as cycling shoes or football boots, are not capable of being used for any other activity on account of their specific soles, it is sufficient to point out that the evidence of use of the earlier mark relates only to running shoes and racing shoes, with the result that it is not necessary to ascertain, in the present case, whether cycling shoes or football boots constitute a coherent subcategory which is capable of being viewed independently within the more general category of ‘athletically-related footwear’.
(c) The extent of use
59 In paragraph 55 of the contested decision, the Board of Appeal found, in essence, that an overall assessment of the intervener’s evidence, in particular the purchase orders (exhibit No 2), the invoices (exhibit No 3) and the sales information in the email of 24 June 2019 (exhibit No 6) and in the affidavit (exhibit No 17), indicated that the earlier mark had been put to sufficiently extensive use in the United Kingdom.
60 The applicant submits that the number of pairs of shoes which the intervener allegedly sold in the United Kingdom is not, in view of the volume of sales of footwear in the whole of the territory of the European Union, which the Board of Appeal should have taken into account, sufficient to prove genuine use of the earlier mark.
61 As regards the extent of use, 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. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods or services marketed under the trade mark may be compensated for by a high intensity of use or a certain regularity of use of that trade mark or vice versa. However, the smaller the commercial volume of the use of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraphs 28 and 29 and the case-law cited).
62 It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether the use is genuine or not. A de minimis rule, which would not allow EUIPO or, following the bringing of an action, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited).
63 In the present case, first, it must be pointed out that, in particular, the sixteen purchase orders in respect of running shoes and racing shoes issued between 30 September 1999 and 8 July 2003 by the intervener’s distributor for the United Kingdom and Ireland (exhibit No 2), the eighteen invoices issued by that distributor between 19 October 1999 and 28 August 2003 to various retailers established in a number of towns and cities in the United Kingdom (exhibit No 3) and the seven price lists for the period from 2001 to 2004 in respect of footwear of the intervener which was marketed in Germany, Spain, Italy, France and Austria (exhibits Nos 4A-4G) show that the earlier mark was used publicly and outwardly on a number of occasions during the relevant period. The use of the mark of a production company by a distribution company which is economically linked to it is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 15(3) of Regulation No 40/94 (see judgment of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 32 and the case-law cited), as the Board of Appeal correctly pointed out in paragraph 48 of the contested decision.
64 Secondly, the evidence, such as the purchase orders (exhibit No 2), the invoices (exhibit No 3), the magazine articles (exhibits Nos 12A-12J, 14 and 15) and the screenshots of the intervener’s websites (exhibits Nos 16A-16H), shows that the earlier mark was used regularly throughout the relevant period, namely between 1999 and 2004.
65 Thirdly, it is apparent from the email of 24 June 2019 which was sent by a former sales representative of the intervener’s distributor for the United Kingdom and Ireland (exhibit No 6) and from the affidavit of a representative of the intervener (exhibit No 17), that 155 558 units of athletically-related footwear and clothing were sold between 1999 and 2003 in the United Kingdom and Ireland for a total turnover of 3 304 877 pounds sterling (GBP), of which GBP 3 134 957 was achieved through the sale of athletically-related footwear (that is to say, almost 95% of the total turnover).
66 It is true that it is apparent from the case-law that statements from a person who has close ties with the party concerned, such as those referred to in paragraph 65 above, are of less evidential value than those from third parties and that they cannot therefore, on their own, constitute sufficient proof of use of the mark (see, to that effect, judgments of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 61, and of 5 March 2020, Dekoback v EUIPO – DecoPac (DECOPAC), T‑80/19, not published, EU:T:2020:81, paragraph 55).
67 However, the email of 24 June 2019 (exhibit No 6) and the affidavit (exhibit No 17) are borne out, in particular, by the sixteen purchase orders (exhibit No 2), which indicate that between 140 and 1 596 pairs of shoes were ordered by the intervener’s distributor in the United Kingdom between 30 September 1999 and 8 July 2003 for amounts ranging from 4 256 to 33 516 United States dollars (USD), and by the eighteen invoices (exhibit No 3), which indicate that between 3 and 190 pairs of shoes were, at the very least, sold between 19 October 1999 and 28 August 2003 to various customers in the United Kingdom for amounts ranging from GBP 121 to 7 517.
68 Consequently, although the volume of sales of the intervener’s footwear during the relevant period does not appear to be particularly high, without, however, being capable of being categorised as low, it is, nevertheless, necessary to take into account the fact that, inter alia, the evidence shows regular use of the earlier mark which took place throughout the relevant period (see paragraph 64 above), that the number of shoes marketed which appears in the evidence relates only to the United Kingdom and Ireland and that the market for athletically-related footwear is competitive, as the Board of Appeal correctly pointed out.
69 In those circumstances, the Board of Appeal was right in finding that the earlier mark had been used in a serious attempt to create and preserve an outlet for the relevant goods, with the result that the use of that mark could be regarded as sufficiently extensive.
70 That finding cannot be called into question by the applicant’s argument that the Board of Appeal should have compared the volume of sales of the intervener’s footwear with the volume of the market for footwear throughout the European Union. Such a comparison would tend to underestimate the relative scale of the applicant’s sales, without providing any specific justification as to the necessity of assessing the genuine use of the earlier mark in relation to all sales of footwear in the European Union (see, to that effect, judgment of 18 October 2016, Fruitfuls, T‑367/14, not published, EU:T:2016:615, paragraphs 45 to 48).
71 It thus follows from all of the foregoing considerations that the Board of Appeal did not err in finding, in paragraph 56 of the contested decision, that there had been genuine use of the earlier mark in connection with ‘athletically-related footwear’ in Class 25. The first plea must therefore be rejected as unfounded.
2. The second plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94
72 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94 in finding that there was a likelihood of confusion between the signs at issue.
73 Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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.
74 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).
75 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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).
76 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, 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 40/94 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). Likewise, it is apparent from the case-law that a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited).
(a) The relevant public
77 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).
78 In paragraph 58 of the contested decision, the Board of Appeal first of all observed that, since the earlier mark was an EU trade mark, the relevant territory for the purpose of assessing the likelihood of confusion was that of the European Union. However, since it is sufficient that a relative ground for refusal exists in part of the European Union or for a non-negligible part of the relevant public (see paragraph 76 above), it focused on the English-speaking public. The applicant does not dispute that assessment.
79 In paragraph 59 of the contested decision, the Board of Appeal then found that the goods in Classes 18 and 25 covered by the mark applied for and the goods in Class 25 covered by the earlier mark, albeit partly directed at sports activities, were aimed at the general public, the level of attention of which was average.
80 In that regard, the applicant submits, in essence, that the goods at issue are not partly but wholly directed at sports activities and that the relevant public consists not only of the general public, but also of traders with specific technical knowledge. Furthermore, it argues that the level of attention of the relevant public is high given that, first, the purchase of sports shoes and of cycling clothing and cycling bags requires prior research regarding the technical features, recent technologies and other consumers’ opinions, and, secondly, the price level of those goods is generally higher on account of their technical features, with the result that they do not lend themselves to everyday or frequent purchase.
81 EUIPO and the intervener dispute the applicant’s arguments.
82 In that regard, it must be stated that the goods covered by the mark applied for, namely, in essence, clothing and bags for cyclists, and the athletically-related footwear covered by the earlier mark are everyday consumer goods and may be purchased both by consumers who regularly engage in sport or cycle and by those who do so only occasionally. It follows that the goods covered by the signs at issue are aimed at the general public, irrespective of whether or not they may be intended exclusively for sports activities. Contrary to what the applicant submits, the goods at issue are frequently purchased and used by consumers in the European Union, they are not expensive or rare, their acquisition and use does not require specific knowledge and they do not have a serious impact on the health, budget or life of consumers (see, to that effect, judgments of 16 October 2013, Zoo Sport v OHIM – K-2 (zoo sport), T‑455/12, not published, EU:T:2013:531, paragraphs 36, 39 and 42; of 19 October 2017, Leopard v EUIPO – Smart Market (LEOPARD true racing), T‑7/15, not published, EU:T:2017:731, paragraphs 14, 15 and 32; and of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 107 and the case-law cited).
83 The Board of Appeal was therefore right in finding that the goods covered by the signs at issue were aimed at the general public, the level of attention of which was average.
(b) The comparison of the goods
84 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 or the fact that those goods or services are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods or the provision of those services (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23; see also, judgment of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraphs 44 and 45 and the case-law cited).
85 In paragraph 62 of the contested decision, the Board of Appeal first of all stated, as a preliminary point, that clothing and bags designed for cycling were not only aimed at professional cyclists and enthusiasts, but also at the average consumer using a bicycle. It pointed out that it was also common for the vast majority of clothing and accessories designed for cycling or for sport in general to be worn instead of ordinary clothing and accessories for other casual, everyday activities. Furthermore, it stated that clothing and accessories tailored for cyclists were provided not only in specialist cycling shops, but also in sports shops in general.
86 In paragraphs 63 to 66 of the contested decision, the Board of Appeal then found, in essence, that the ‘bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists’ in Class 18 covered by the mark applied for were similar to at least a low degree to the ‘athletically-related footwear’ in Class 25 covered by the earlier mark, whereas the ‘jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists’ in Class 25 covered by the mark applied for were similar to an average degree to the ‘athletically-related footwear’ in the same class covered by the earlier mark.
87 The applicant submits, in essence, that there is no similarity between the goods in Classes 18 and 25 covered by the mark applied for and the ‘athletically-related footwear’ in Class 25 covered by the earlier mark.
88 EUIPO and the intervener dispute the applicant’s arguments.
(1) The comparison of the goods in Class 18 covered by the mark applied for with the goods in Class 25 covered by the earlier mark
89 In paragraphs 63 and 64 of the contested decision, the Board of Appeal found, in essence, that the goods concerned were similar to at least a low degree, in so far as, first, the ‘bags, handbags, rucksacks, small rucksacks, bumbags, all for cyclists’ in Class 18 could be used by professional cyclists as well as by any person riding a bicycle or engaged in other activities, while the ‘athletically-related footwear’ in Class 25 included sports shoes in general, including those for cyclists, and, secondly, the goods at issue could all be sold in the same establishments, target the same consumers, could originate from the same manufacturers and use the same distribution channels.
90 The applicant submits, in essence, that there is no similarity between the goods concerned, since they do not have the same purpose, are neither in competition nor complementary, are manufactured by different undertakings and are sold through different distribution channels.
91 In that regard, it must be stated that the goods in Class 18 covered by the mark applied for, namely, in essence, bags for cyclists, are containers for various objects, whereas the ‘athletically-related footwear’ in Class 25 covered by the earlier mark are clothing goods, with the result that they do not have the same nature. Furthermore, as the applicant correctly submits, the goods at issue also do not have the same intended purpose, since bags for cyclists are essentially used to carry objects, whereas athletically-related footwear has the primary function of covering, concealing, adorning and protecting the human body. It follows that the goods in question are not substitutable and are not, therefore, in competition with each other (see, to that effect, judgment of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 57).
92 However, it must be pointed out, as the Board of Appeal, in essence, observed, that bags for cyclists may be used not only by experienced cyclists or amateurs, but also by persons engaged in, inter alia, other sports activities. There is nothing to preclude the bags covered by the mark applied for from being used for activities other than cycling, since they serve to carry all kinds of objects, such as clothing and sports shoes (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 72). Likewise, contrary to what the applicant claims, ‘athletically-related footwear’ may be used to engage in all kinds of sports activities and includes sports shoes in general, including shoes for cyclists. It follows that the goods concerned may be manufactured by the same undertakings and sold in the same sales outlets, in particular in sports shops, which may offer both the goods covered by the mark applied for and the goods covered by the earlier mark. The Board of Appeal was therefore fully entitled to find that the goods concerned are similar to at least a low degree.
93 That finding cannot be called into question by the applicant’s other arguments.
94 First, the applicant claims that the Board of Appeal did not explain why the fact that the goods in Class 18 may be used for purposes other than cycling is relevant for the purposes of concluding that they are similar to ‘athletically-related footwear’. Likewise, it submits that the Board of Appeal also did not clarify why it was for the applicant to prove that bags for cyclists could not be used for other activities and how that could have altered the finding that the goods concerned are similar. However, as has already been pointed out in paragraph 92 above and as is apparent from paragraph 64 of the contested decision, the fact that the bags for cyclists covered by the mark applied for and the athletically-related footwear covered by the earlier mark are all capable of being used when engaging in sports activities in general shows that they may be sold in the same sales outlets, in particular sports shops, and therefore share the same distribution channels, which constitutes a point of similarity, in accordance with the case-law which has been referred to in paragraph 84 above. Furthermore, it is also apparent from that that the Board of Appeal was right in finding that the goods at issue were frequently produced by the same manufacturers.
95 Secondly, the applicant claims that the judgment of 29 April 2014, Asos v OHIM – Maier (ASOS) (T‑647/11, not published, EU:T:2014:230, paragraphs 48 to 52), shows that the goods concerned are not similar. However, it is sufficient to state that the goods compared in the case which gave rise to that judgment differ in certain respects from the goods covered by the mark applied for and from the athletically-related footwear covered by the earlier mark, with the result that the case-law relied on by the applicant does not serve to show that the goods concerned are not similar.
(2) The comparison of the goods in Class 25 covered by the mark applied for with the goods in the same class covered by the earlier mark
96 In paragraphs 65 and 66 of the contested decision, the Board of Appeal found, in essence, that ‘jackets, shorts, trousers, jerseys, dungarees, tops, bodysuits, all for cyclists’ were similar to an average degree to ‘athletically-related footwear’ in so far as, first, the clothing covered by the mark applied for could be worn for cycling as a sporting activity, but also by any person riding a bicycle or for other activities, while the athletically-related footwear covered by the earlier mark included sports shoes in general, including those for cyclists. Furthermore, it found that the goods in question had the same purpose, namely that of covering and protecting parts of the human body against external conditions, could be made of the same materials, were aimed at the same end users and could be produced by the same manufacturers and marketed through the same distribution channels.
97 The applicant submits that the goods concerned are not similar given that, first, athletics and cycling are different segments of the sports sector and, secondly, running shoes and cycling clothing and shoes have their own specific technical characteristics which contribute towards making them very different in the eyes of consumers. It argues that the goods in question are therefore different in their nature, purpose and method of use and are not complementary or substitutable.
98 In that regard, it must be pointed out that the clothing for cyclists covered by the mark applied for has the same nature as the ‘athletically-related footwear’ covered by the earlier mark, since they are all clothing goods. They also have the same intended purpose since they serve to cover, conceal, adorn and protect the human body, although footwear relates to the feet, whereas clothing relates to the other parts of the human body.
99 Furthermore, since the goods concerned are clothing goods which have been designed to be used, in particular, in a sports activity, they may be manufactured by the same undertakings and sold in the same sales outlets, inter alia, sports shops, which may offer both the clothing covered by the mark applied for and the footwear covered by the earlier mark (see, to that effect, judgment of 10 September 2008, Tsakiris-Mallas v OHIM – Late Editions (exē), T‑96/06, not published, EU:T:2008:330, paragraphs 30 and 31).
100 It follows that, even though the applicant is right in submitting that at least some of the clothing which has been specially designed for cycling is not suitable for everyday activities or for other sports activities, the Board of Appeal was right in finding that the goods concerned were similar to an average degree.
101 That finding cannot be called into question by the applicant’s argument that athletics and cycling are different segments of the sports sector, since the term ‘athletic’ refers to sport in general. According to the online Collins English Dictionary, the term ‘athletic’ is a synonym for ‘sports’. Consequently, the term ‘athletics’ includes cycling, which is a sporting discipline. Likewise, although it is true that the ‘athletically-related footwear’ covered by the earlier mark and the cycling clothing covered by the mark applied for could have their own specific technical characteristics, as the applicant claims, that cannot, however, call into question the fact that they have the same nature and intended purpose, as has been stated in paragraph 98 above, with the result that the consumer will consider those goods to be similar.
(c) The comparison of the signs
102 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited). In that regard, it is apparent from the case-law that the fact that a mark that is applied for consists exclusively of the earlier mark, to which another word has been added, is an indication that those two trade marks are similar (judgments of 21 March 2011, Visti Beheer v OHIM – Meister (GOLD MEISTER), T‑372/09, not published, EU:T:2011:97, paragraph 27, and of 7 March 2013, FairWild Foundation v OHIM – Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31).
103 Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
104 In the present case, it must be stated, as the Board of Appeal observed in paragraphs 68 and 69 of the contested decision, that the earlier mark consists solely of the word element ‘brooks’, whereas the mark applied for comprises, first, the larger word element ‘brooks’, which is written in black capital letters and in which the letters ‘o’ are intertwined, and, secondly, the smaller word element ‘england’, which is also written in black capital letters and is placed below the word element ‘brooks’.
105 As regards the distinctive and dominant element of the mark applied for, the Board of Appeal found, in essence, in paragraph 70 of the contested decision, that the word element ‘brooks’ had a meaning for the English-speaking public in the European Union, but that it remained distinctive in relation to the goods covered by the mark applied for. By contrast, it found that the smaller word element ‘england’ would be understood by the whole of the public in the European Union and conveyed obvious and direct information regarding the geographical origin of the goods covered by the mark applied for. Furthermore, it stated that the stylisation of that mark played a secondary role. The Board of Appeal thus concluded that the word element ‘brooks’, on account also of its position and size, formed the dominant and most distinctive part of the mark applied for.
106 In that regard, the applicant merely submits that the fact that the word ‘england’ corresponds to a geographical location does not, however, mean that it conveys obvious information regarding the geographical origin of the goods at issue. It argues that, according to the judgment of 4 May 1999, Windsurfing Chiemsee (C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 32 and 37), the factors which should be taken into account in establishing whether an association exists correspond to the relevant class of persons’ degree of familiarity with the geographical name, the characteristics of the place designated and the category of goods or services concerned. It contends that the term ‘england’ is not associated with the goods covered by the mark applied for, that there is no widespread recognition and renown as regards the high quality of those goods in England and that it cannot reasonably be assumed that that country will be associated with the quality and renown of those goods in the future, with the result that the role played by that term in the comparison of the signs at issue cannot be non-existent.
107 In that respect, it must be held, as the Board of Appeal found, that the word element ‘brooks’ in the mark applied for is distinctive, in view of the fact that it means ‘small streams’ in English, and that it is therefore not descriptive of the goods in Classes 18 and 25 covered by the mark applied for. By contrast, although it is true that it is not apparent from the information in the case file that the word element ‘england’ is associated with the goods covered by the mark applied for, the fact, however, remains that it does not play a decisive role in the appearance of that mark and is not very distinctive, since it refers only to a geographical location (see, to that effect, judgments of 28 March 2017, Regent University v EUIPO – Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 53, and of 10 March 2021, Hauz 1929 v EUIPO – Houzz (HAUZ LONDON), T‑66/20, not published, EU:T:2021:125, paragraph 35), is only small in relation to the word element ‘brooks’ and is placed below that word element. In those circumstances, the Board of Appeal was right in finding that the word element ‘brooks’ constituted the dominant and most distinctive element in the mark applied for.
108 As regards the visual, phonetic and conceptual comparison of the signs, the Board of Appeal first of all found, in paragraph 71 of the contested decision, that there was a high degree of visual similarity, since the signs at issue had in common the distinctive element ‘brooks’, which was the dominant element in the mark applied for and the only element in the earlier mark, and differed only in the word element ‘england’ in the mark applied for, which was descriptive and secondary, and in the figurative aspects of the mark applied for, which were rather decorative and had less impact on the visual impression. Next, it found, in paragraph 72 of the contested decision, that there was also a high degree of phonetic similarity, in the light of the fact that those signs coincided in the sound produced by the element in common ‘brooks’, that they differed only in the secondary element ‘england’ in the mark applied for, if that element were pronounced, and that the figurative aspects of the mark applied for had no bearing on the phonetic comparison. Lastly, the Board of Appeal found, in essence, in paragraph 73 of the contested decision, that there was a high degree of conceptual similarity for the part of the public which understood the meaning of the English term ‘brooks’, in relation to which it had limited its examination (see paragraph 78 above).
109 The applicant has not put forward any specific argument against the Board of Appeal’s assessments regarding the visual, phonetic and conceptual similarity of the signs. In any event, there is nothing in the case file which calls those assessments into question.
110 In those circumstances, it must be held that the Board of Appeal was right in finding that the signs at issue were highly similar visually, phonetically and conceptually for the English-speaking part of the relevant public.
(d) The likelihood of confusion
111 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, 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 74).
112 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
113 After pointing out, in essence, in paragraph 74 of the contested decision, that the inherent distinctive character of the earlier mark had to be considered to be average, the Board of Appeal found, in essence, in paragraphs 77 and 78 of the contested decision, that there was a likelihood of confusion for the English-speaking part of the relevant public displaying an average level of attention, in the light of the fact that, in particular, the goods in Class 25 covered by the signs at issue were similar to an average degree, the goods in Class 18 covered by the mark applied for were similar to at least a low degree to the goods in Class 25 covered by the earlier mark and the signs at issue were highly similar visually, phonetically and conceptually.
114 The applicant submits, in essence, that the sign which is the subject of the mark applied for has existed for a long time and is recognised and associated with the applicant as regards, inter alia, bags, clothing and accessories for bicycles, in Germany and the United Kingdom. It contends that, in that context, the stylised letters ‘o’ in the word element ‘brooks’ and the additional word element ‘england’ in the mark applied for make it possible to rule out any likelihood of confusion between the signs at issue.
115 EUIPO and the intervener dispute the applicant’s arguments.
116 In that regard, it must be borne in mind that the Board of Appeal did not make any error of assessment in finding that the relevant public’s level of attention was average (see paragraphs 82 and 83 above), that the goods in Class 18 covered by the mark applied for were similar to at least a low degree to the ‘athletically-related footwear’ in Class 25 covered by the earlier mark, whereas the goods in Class 25 covered by the signs at issue were similar to an average degree (see paragraphs 92 and 100 above), and that the signs at issue were visually, phonetically and conceptually similar to a high degree for the English-speaking part of the relevant public (see paragraphs 109 and 110 above).
117 Furthermore, since the term ‘brooks’, which means ‘small streams’ in English, is neither descriptive nor evocative of the ‘athletically related-footwear’ in Class 25 covered by the earlier mark, the Board of Appeal also did not make any error of assessment in finding, in paragraph 74 of the contested decision, that the earlier mark had an average degree of inherent distinctiveness. That has not, moreover, been disputed by the applicant.
118 In those circumstances, and in the light of the case-law which has been referred to in paragraph 111 above, the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
119 That finding cannot be called into question by the applicant’s argument that it has been using the sign constituting the mark applied for for many years and that that sign is renowned in Germany and the United Kingdom. First, as EUIPO has correctly pointed out, circumstances relating to the use of the mark applied for prior to the filing of the application for registration of that mark as an EU trade mark are irrelevant for the purposes of the present opposition proceedings. It is the date on which that application was filed which is, in the context of such proceedings, relevant with regard to the assessment of the likelihood of confusion (see, to that effect, judgment of 26 January 2022, Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING), T‑498/20, not published, EU:T:2022:26, paragraph 109). Secondly, only the reputation of the earlier mark may be taken into account when assessing the likelihood of confusion (see, to that effect, judgment of 13 December 2012, Natura Selection v OHIM – Ménard (natura), T‑461/11, not published, EU:T:2012:693, paragraph 62 and the case-law cited).
120 Likewise, neither the additional word element ‘england’ nor the stylisation of the letters ‘o’ in the word element ‘brooks’ in the mark applied for make it possible to call into question the existence of a likelihood of confusion between the signs at issue, in the light of the fact that the word element ‘england’ is weakly distinctive (see paragraph 107 above) and the stylisation of the letters ‘o’ in the word element ‘brooks’ is purely decorative, as the Board of Appeal correctly pointed out in paragraphs 70 and 71 of the contested decision.
121 It follows from all of the foregoing that the first part of the first head of claim and the second head of claim, seeking to have the contested decision annulled in whole or in part respectively, must be rejected, without it being necessary to rule on the admissibility of the second part of the applicant’s first head of claim, seeking a declaration that the mark applied for should be registered.
122 The action must therefore be dismissed in its entirety.
Costs
123 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.
124 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Brooks England Ltd to pay the costs.
Schalin | Škvařilová-Pelzl | Steinfatt |
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci | | M. van der Woude |