JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
10 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark Mushie – Earlier EU word mark KUSHIES – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Professional representation – Article 120(1) of Regulation 2017/1001)
In Case T‑262/23,
Mushie & Co, LLC, established in Houston, Texas (United States), represented by S. Vasegård Andreasen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, E. Markakis and K. Zajfert, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Diana Dolls Fashions Inc., established in Stoney Creek (Canada),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere and K. Kecsmár (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Mushie & Co, LLC, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 March 2023 (Case R 2062/2022-4) (‘the contested decision’).
Background to the dispute
2 On 22 January 2021, the applicant, Mushie & Co, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign Mushie.
3 The mark applied for covered goods in Classes 10, 16, 21, 24 and 28 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 10: ‘Pouches specially adapted for holding pacifiers; teething rings’;
– Class 16: ‘Posters; gift cards’;
– Class 21: ‘Dinnerware; finger toothbrushes for babies; baby finger toothbrushes; silicone tableware; placemats; plastic tableware; silicone placemats’;
– Class 24: ‘ Crib sheets; swaddling blankets; burp cloths’;
– Class 28: ‘Matryoshka dolls; stacking toys; toys for babies; teethers’.
4 On 14 May 2021, the opponent, Diana Dolls Fashion 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 KUSHIES, which was filed on 4 March 2002 and registered on 27 August 2003 under the number 2599660 in respect of goods in Classes 16, 25 and 28 corresponding, for each of those classes, to the following description:
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; babies’ diapers of paper and cellulose; babies’ diaper-pants of paper and cellulose; diaper liners of paper and cellulose; bags including diaper bags of paper or plastics’;
– Class 25: ‘Clothing, footwear, headgear; including diapers, washable diapers, diaper liners, washable diaper liners; T-shirts including T-shirts for children and infants’;
– Class 28: ‘Toys, games and playthings’.
6 The ground of opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 29 August 2022, the Opposition Division upheld the opposition in respect of all of the goods referred to in paragraph 3 above on the basis of Article 8(1)(b) of Regulation 2017/1001.
8 On 24 October 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion in view of the identity and similarity of the goods, the average degree of visual and phonetic similarity between the signs and the normal distinctiveness of the earlier mark.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
Law
12 In support of its action, the applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 120(1) of Regulation 2017/1001 and (ii) infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 120(1) of Regulation 2017/1001
13 The applicant claims, in essence, that the opposition which was the subject of the contested decision should have been considered to be inadmissible because the opponent’s representative before EUIPO, namely the association Wilson Gunn (Europe), established in Iceland, did not satisfy the conditions laid down in Article 120(1) of Regulation 2017/1001 regarding professional representation before EUIPO. It argues that Wilson Gunn is a law firm which is established only in England and Scotland, countries which are not members of the European Union or the European Economic Area (EEA), and that no company is registered in that name, or in the name of Wilson Gunn (Europe), in Iceland. It argues, in that regard, that Wilson Gunn (Europe) is a non-existent company, which does not carry out any actual activity and the sole purpose of which is to circumvent the Brexit agreement between the European Union and the United Kingdom. It therefore submits that the notice of opposition, which was signed by Mr Gunnar Orn Hardarson, on behalf of Wilson Gunn (Europe), was not valid. However, the applicant acknowledges that Mr Orn Hardarson, in his own name, could represent the opponent before EUIPO, as he satisfied the requirements laid down in Article 120(1) of Regulation 2017/1001.
14 EUIPO disputes the applicant’s arguments.
15 It must be pointed out at the outset that, in the contested decision, the Board of Appeal found, in essence, that the opposition, the notice of opposition in respect of which was signed by the professional representative, Mr Orn Hardarson, had been validly filed by the association Wilson Gunn (Europe) as an ‘association of representatives’ within the meaning of Article 74(8) 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), and that, in that capacity, it was not necessary for it to be a registered company in order to satisfy the conditions of Article 120 of Regulation 2017/1001, since all the persons comprising it satisfied those conditions. On that basis, it took the view that legal practitioners and/or professional representatives could form an association, but that it was not required in Regulation 2017/1001, or anywhere else, that that should happen by means of a registered company.
16 Article 120(1)(a) and (b) of Regulation 2017/1001 provides that representation of natural or legal persons before EUIPO may only be undertaken either by a legal practitioner qualified in one of the Member States of the EEA and having his or her place of business within the EEA, to the extent that he or she is entitled, within the said Member State, to act as a representative in trade mark matters, or by professional representatives whose names appear on the list maintained for this purpose by EUIPO. Furthermore, according to Article 120(2) of Regulation 2017/1001, only natural persons who satisfy the criteria set out in that article may be entered on the list of professional representatives.
17 Consequently, it is apparent from Article 120 of Regulation 2017/1001 that representation of the parties to the proceedings before EUIPO may be undertaken only by natural persons, namely either a legal practitioner or a professional representative within the meaning of that article.
18 First, in accordance with Article 119(2) of Regulation 2017/1001, the opponent, as a legal entity established in Canada, outside of the EEA, must be represented before EUIPO by a professional who meets the requirements laid down in Article 120(1) of that regulation.
19 Secondly, it must be pointed out that, for the purposes of the professional representation of such a party before EUIPO, several legal practitioners and professional representatives may be organised in entities called ‘Associations of representatives’. In that regard, Article 74(8) of Delegated Regulation 2018/625 provides that the appointment or authorisation of an association of representatives is to be deemed to be an appointment or authorisation of any representative who practises within that association.
20 An association of representatives must thus consist of at least two legal practitioners or professional representatives, who must necessarily be entitled to represent a party before EUIPO in accordance with the requirements of Article 120 of Regulation 2017/1001 and are the only ones who are able to perform legal acts on behalf of third parties.
21 As has been rightly pointed out by EUIPO, the appointment or authorisation of an association of representatives within the meaning of Article 74(8) of Delegated Regulation 2018/625 therefore has the objective of facilitating the representation of a party before EUIPO, in order to save that party from having to individually appoint or authorise all the representatives which it could choose, irrespective of the specific arrangements under which that association may have been constituted as a matter of law or of fact. It must be held that an association of representatives has the common objective of performing legal acts before EUIPO on behalf of a third party, and in particular of ensuring that the interests of that third party are represented.
22 Furthermore, as Regulation 2017/1001 and Delegated Regulation 2018/625 do not at all establish the legal nature of an association of representatives, the Board of Appeal was right in stating that an association of representatives does not necessarily have to be understood as being a legal entity as a registered company would be.
23 In the present case, the opponent had chosen to be represented before EUIPO by an association of representatives within the meaning of Article 74 of Delegated Regulation 2018/625, namely the association Wilson Gunn (Europe), to which the person who signed the notice of opposition, Mr Orn Hardarson, who, as is common ground between the parties, satisfied the conditions set out in Article 120 of Regulation 2017/1001, belonged.
24 Accordingly, the fact that there was no legal entity in Iceland bearing the name of Wilson Gunn (Europe) is not capable of affecting the admissibility of the opposition, since it is common ground that it was filed and signed by a professional representative, in accordance with Article 120 of Regulation 2017/1001.
25 Consequently, it must be held that Wilson Gunn (Europe) is an association approved by EUIPO, which consists of representatives who are themselves approved by EUIPO and who satisfy the conditions for representing the opponent before EUIPO, in accordance with the conditions laid down in Article 120(1) of Regulation 2017/1001. It follows that the notice of opposition filed by Wilson Gunn (Europe), in its capacity as the opponent’s representative, and signed by Mr Orn Hardarson, a professional representative, was admissible.
26 In view of the foregoing, the first plea, alleging infringement of Article 120(1) of Regulation 2017/1001, must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
27 The applicant claims, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. In that regard, it disputes the merits of the Board of Appeal’s assessments relating to the relevant public and its level of attention, to the comparison of the goods at issue and of the signs at issue and to the global assessment of the likelihood of confusion.
28 EUIPO disputes the applicant’s arguments.
29 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.
30 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. 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).
31 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).
The relevant public
32 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).
33 In the present case, the Board of Appeal found that the relevant public with regard to the goods at issue was the general public, the level of attention of which would, taking into account the nature of the goods, be average, in spite of the fact that some of them were intended for babies. Furthermore, the Board of Appeal found that the relevant territory was the European Union and, in accordance with the approach adopted by the Opposition Division, it limited the assessment of the likelihood of confusion to the Spanish-speaking part of the public.
34 The applicant criticises the Board of Appeal for comparing the signs at issue and assessing the likelihood of confusion in relation to the Spanish-speaking public and for not taking into consideration the public which speaks other languages. Furthermore, the applicant submits that, since the goods at issue are aimed at the parents of newborn children, their level of attention will be high, given that the choice of baby products is made with care.
35 EUIPO disputes the applicant’s arguments.
36 In the first place, as regards the definition of the relevant public, it is apparent from the case-law that, where the earlier mark relied on in support of an opposition is an EU trade mark, it is not a requirement of Article 8(1)(b) of Regulation 2017/1001 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the language areas of the European Union. The unitary character of the EU trade mark means that such an earlier trade mark can be relied on against any application for registration of a later trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraphs 56 and 57, and order of 16 September 2010, Dominio de la Vega v OHIM, C‑459/09 P, not published, EU:C:2010:533, paragraphs 29 and 30).
37 Consequently, the Board of Appeal did not err in limiting its examination of whether there was a likelihood of confusion to the Spanish-speaking part of the relevant public.
38 In the second place, as regards the relevant public’s level of attention, even if that level of attention were high, as the applicant submits, it must be held that that would have no effect on the legality of the contested decision for the reasons set out in paragraph 77 below.
The comparison of the goods
39 The Board of Appeal found, like the Opposition Division, that the goods in Class 16 covered by each of the marks at issue were identical. As regards the goods in Classes 10, 21, 24 and 28 covered by the mark applied for, the Board of Appeal endorsed the Opposition Division’s finding that they were at least similar, to an average degree, to the goods in Classes 16, 25 and 28 covered by the earlier mark. To the reasoning of the Opposition Division, the Board of Appeal added that the ‘matryoshka dolls; stacking toys; toys for babies; teethers’ in Class 28 covered by the mark applied for were included in the broader category of goods ‘toys, games and playthings’ in the same class covered by the earlier mark and that those goods were therefore identical.
40 The applicant does not dispute the Board of Appeal’s findings as regards the goods in Classes 16 and 28 covered by the mark applied for and admits that they are identical or highly similar to the goods in the same classes covered by the earlier mark. However, it disputes the Board of Appeal’s comparison of the goods at issue regarding the goods in Classes 10, 21 and 24 covered by the mark applied for, in that, according to the applicant, those goods are dissimilar to the goods covered by the earlier mark, since the goods covered by the earlier mark are in different classes.
41 EUIPO disputes the applicant’s arguments.
42 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
43 Furthermore, it must be borne in mind that goods can be considered to be identical when the goods covered by the earlier mark are included in a more general category covered by the trade mark application (see judgment 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).
44 Moreover, it must be pointed out that a Board of Appeal may lawfully adopt the grounds of a decision taken by the Opposition Division, which thus form an integral part of the statement of reasons for its decision (see judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 48 and the case-law cited).
45 In the present case, as regards the comparison of the goods in Classes 10, 21 and 24 covered by the mark applied for with the goods in Classes 16, 25 and 28 covered by the earlier mark, the Board of Appeal expressly referred to the Opposition Division’s reasoning. In that regard, the Opposition Division found that the goods in Classes 10, 21 and 24 covered by the mark applied for concerned goods which were or could be specifically adapted for babies. It stated that those types of baby goods usually had to be manufactured in accordance with EU safety standards, which played a crucial role in the level of safety of the goods found on the market, and that manufacturers had to inform consumers of the risks associated with the goods they supplied and take measures to prevent those risks. It observed that it was therefore common for those goods and those of the other party to the proceedings to come from the same undertakings, since that they were familiar with those requirements and were able to choose the appropriate materials and adapt the production processes to comply with European standards.
46 The Opposition Division therefore found that the goods coincided in numerous relevant criteria, such as their nature, their purpose, their method of use and their complementarity, whether they were goods which were in competition with each other or even identical, and that those goods clearly belonged to one homogeneous sector of goods on the market, which were produced by the same undertakings, were aimed at the same end users and were sold in the same places through the same distribution channels. Referring to those findings of the Opposition Division, the Board of Appeal found that the goods in Classes 10, 21 and 24 covered by the mark applied for were, in essence, similar to an average degree to the goods covered by the earlier mark.
47 The applicant does not put forward any argument which serves to call those assessments into question.
48 It confines itself to stating, first, that Classes 10, 21 and 24, which appear in the trade mark application, are not the same as the classes covered by the earlier mark, and that registration cannot therefore be refused in respect of the goods in those classes, since it would be excessive if the opponent were allowed to file a notice of opposition to registration of the mark applied for in respect of classes which are not covered by the earlier mark. In that regard, it is sufficient to point out that the classification of goods and services under the Nice Agreement is to serve exclusively administrative purposes, with the result that, in accordance with Article 33(7) of Regulation 2017/1001, goods and services are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under that classification (see judgment of 11 October 2023, Flowbird v EUIPO – APCOA Parking Holdings (FLOWBIRD), T‑296/22, not published, EU:T:2023:613, paragraph 27 and the case-law cited).
49 Secondly, the applicant’s argument that the fact that the opponent has filed an application for registration of an EU trade mark in respect of goods in Classes 8, 10, 21, 24 and 25 creates an unreasonable situation for the applicant falls outside of the subject matter of the present proceedings and is not capable of showing that the goods covered by the mark applied for are dissimilar to the goods covered by the earlier mark.
50 Consequently, the Board of Appeal was right in finding that the goods in Classes 10, 21, 24 and 28 covered by the mark applied for and the goods in Classes 16, 25 and 28 covered by the earlier mark were similar to an average degree.
The comparison of the signs
51 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).
– The visual comparison
52 In the present case, the Board of Appeal found that the signs at issue were visually similar to an average degree. In particular, first, it observed that those signs consisted of an almost identical number of letters, seven with regard to the earlier mark and six with regard to the mark applied for, and that they coincided in the identical sequence of five letters, namely ‘ushie’. Secondly, it found that those signs merely differed in their initial consonants, ‘k’ and ‘m’, and in the last letter ‘s’ of the earlier mark.
53 The applicant submits that the signs at issue are visually dissimilar, pointing out that the first letter of each of those signs is different and creates a different visual impression. Furthermore, it submits that the fact that the earlier sign has an additional letter at the end reinforces the difference between the impressions created by the signs at issue by indicating the plural.
54 EUIPO disputes the applicant’s arguments.
55 It must be borne in mind that the arguments put forward by the applicant cannot, in any event, call into question the principle that the examination of the similarity of the signs must take into account the overall impression created by those signs, because the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgments of 10 October 2006, Armacell v OHIM – nmc (ARMAFOAM), T‑172/05, EU:T:2006:300, paragraph 65 and the case-law cited, and of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 40 and the case-law cited).
56 Consequently, the differences between the signs relied on by the applicant, namely the presence of an additional letter ‘s’ at the end of the earlier mark and of a different initial consonant, ‘k’, in the earlier mark and, ‘m’, in the mark applied for, are not sufficient to call into question the similarity resulting from the presence of the sequence of letters, ‘ushie’, which the signs at issue have in common.
57 The Board of Appeal did not therefore make any error of assessment in finding that there was an average degree of visual similarity.
– The phonetic comparison
58 In the present case, the Board of Appeal found that the signs at issue were phonetically similar to an average degree. In particular, it observed that the earlier mark would be pronounced by the relevant Spanish-speaking public as ‘ku’ ‘shi’ ‘es’ and the mark applied for would be pronounced as ‘mu’ ‘shi’ ‘e’. Furthermore, it found that the signs at issue had the same number of syllables and coincided in rhythm and intonation, the initial and last syllables being similar and the middle syllable being identical.
59 The applicant submits that the signs at issue are phonetically similar to at most a low degree. In particular, it states that there is a difference in pronunciation between the signs at issue for the Spanish-speaking public, because the sounds of those signs differ in the beginnings and endings of the two signs. It refers in that regard to an earlier decision of the Board of Appeal in which it was found that there was a phonetic difference between the words ‘osiris’ and ‘iris’.
60 EUIPO disputes the applicant’s arguments.
61 First, it must be held that, notwithstanding the difference in the initial and final letters in the earlier mark, the sequence of letters ‘u’, ‘s’, ‘h’ and ‘i’, which is common to the signs at issue, is pronounced in the same way in those signs. In that regard, the applicant does not substantiate the argument that the mere presence of the letter ‘k’, which has a sharper sound in the earlier mark, is capable, in its view, of reducing the degree of phonetic similarity resulting from the identical pronunciation of the sequence of letters ‘u’, ‘s’, ‘h’ and ‘i’.
62 Secondly, as regards the applicant’s reliance on a previous decision of the Board of Appeal acknowledging that there was a phonetic difference on account of the presence of different letters at the beginning of one of the marks in question, it must be borne in mind that it has been held that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of EUIPO’s decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 37). Furthermore, it has been made clear by the case-law that, although, in view of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality (see judgment of 21 January 2015, Sabores de Navarra v OHIM – Frutas Solano (KIT, EL SABOR DE NAVARRA), T‑46/13, not published, EU:T:2015:39, paragraph 47 and the case-law cited). Accordingly, in the present case, the applicant cannot usefully rely, in support of its argument, on a previous decision of EUIPO which concerns different signs from those at issue in the present case.
63 The Board of Appeal did not therefore make any error of assessment in finding that there was an average degree of phonetic similarity between the marks at issue.
– The conceptual comparison
64 In the present case, the Board of Appeal found that, as neither of the signs at issue conveyed any concept to the Spanish-speaking part of the relevant public, the conceptual comparison remained neutral.
65 The applicant submits, in essence, that the signs at issue may be understood as being words that each have a different meaning, in particular in English, the basic grammar of which the relevant public is familiar with. It thus argues that the relevant public, which is familiar with basic English grammar, may, on the one hand, identify the plural, which is indicated solely in the earlier mark. On the other hand, it contends that the term ‘mushie’ is an English word which is known to the relevant public as designating someone cute, such as a baby, or an informal term meaning ‘mushroom’. Consequently, according to the applicant, for the part of the public for which the two marks have meanings, the signs at issue are conceptually dissimilar.
66 EUIPO disputes the applicant’s arguments.
67 In the present case, none of the applicant’s arguments refers to a meaning which the words ‘mushie’ and ‘kushies’ have for the Spanish-speaking part of the relevant public. In any event, its argument regarding a potential meaning of ‘mushie’ as referring to someone cute or to an informal term meaning ‘mushroom’ in English is neither substantiated nor clearly set out.
68 Furthermore, the mere fact that the term ‘kushies’ may be perceived as a plural form on account of its last letter ‘s’ is not sufficient to establish a conceptual difference.
69 Since neither of the marks at issue has any meaning for the relevant Spanish-speaking public, the conceptual comparison of the signs must be held to be impossible (judgment of 8 July 2020, FF Group Romania v EUIPO – Kik Textilien und Non-Food (_kix), T‑659/19, not published, EU:T:2020:328, paragraph 84), as the Board of Appeal correctly pointed out.
70 The Board of Appeal did not therefore make any error of assessment in finding that, as neither of the signs at issue conveyed any concept to the Spanish-speaking part of the relevant public, the conceptual comparison remained neutral.
The likelihood of confusion
71 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).
72 In the present case, the Board of Appeal found that, in the light of the identity and average degree of similarity of the goods at issue, the average degree of visual and phonetic similarity between the signs at issue and the normal degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion, at least for the Spanish-speaking part of the relevant public, even taking into account a high level of attention on the part of the relevant public.
73 The applicant, referring to its previous arguments, submits that there is no likelihood of confusion. Furthermore, it submits that it is a recognised market leader in the field of goods for babies and infants in the European Union and that the mark applied for has a reputation.
74 EUIPO disputes the applicant’s arguments.
75 First, as regards the distinctive character of the earlier mark, the parties do not dispute that it must be regarded as normal, as the Board of Appeal found. Furthermore, it must be pointed out that the applicant’s line of argument relating to the likelihood of confusion is mainly based on incorrect premisses which have been rejected in paragraphs 50, 57, 63 and 70 above.
76 In the light of the fact that the goods at issue are in part similar and in part identical, and in the light of the average degree of visual and phonetic similarity between the signs at issue, the neutral conceptual comparison and the normal degree of distinctiveness of the earlier mark, it must be held, in the context of a global assessment, that the Board of Appeal was right in finding that there was a likelihood of confusion.
77 That finding remains valid even if the relevant public’s level of attention ought to be considered to be high. Even an extraordinary level of attention is not, in itself, capable of ruling out the existence of a likelihood of confusion because, when a likelihood of confusion is created by other factors, such as the identity or high degree of similarity between the marks and the identity of the goods, the attention of the relevant public alone cannot be relied on in order to avoid confusion. A global assessment of the likelihood of confusion must be carried out in each individual case. In the context of a global assessment, the relevant public’s level of attention is only one of the various factors which have to be taken into consideration. Furthermore, even with regard to a public displaying a high level of attention, the fact remains that the average consumer only rarely has a chance to compare the various marks directly, so he or she must rely on his or her imperfect recollection of them (see, to that effect, judgment of 24 February 2021, Sonova v EUIPO – Digitmarket (B-Direct), T‑61/20, not published, EU:T:2021:101, paragraph 103 and the case-law cited).
78 Secondly, as regards the argument that the applicant is a recognised market leader in the field of goods for babies and infants in the European Union, it is apparent from settled case-law that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal of EUIPO. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
79 In the present case, in addition to the unsubstantiated nature of the applicant’s claim, it must be pointed out that its argument that the mark applied for has acquired a reputation in the course of the last four years constitutes a new claim, which has been put forward for the first time before the Court. It is apparent from EUIPO’s case file that the applicant did not argue before the Opposition Division and the Board of Appeal that the mark applied for had a reputation. Consequently, that argument must be rejected as inadmissible.
80 The same is true of the applicant’s arguments that the marks at issue coexist peacefully on account of the existence of registrations of those marks in a number of countries, arguments which have been submitted for the first time in the present proceedings before the Court. In any event, it must be borne in mind that, in order to be effective, an argument alleging coexistence must be substantiated by evidence of actual coexistence on the market for a sufficiently long period before the filing date of the contested application, which was not the case here (see judgment of 23 October 2015, Vimeo v OHIM – PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799, paragraphs 50 to 58 and the case-law cited).
81 Consequently, in the light of all the foregoing considerations, the Board of Appeal did not make any error of assessment in finding that there was a likelihood of confusion.
82 In view of the foregoing, the second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected and, as a result, the action must be dismissed in its entirety.
Costs
83 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
84 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing has been organised, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 10 April 2024.
V. Di Bucci | | M. van der Woude |