JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 March 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark LILI LA TIGRESSE — Earlier EU word mark TIGRESS — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑105/18,
André Deray, residing in Bry-sur-Marne (France), represented by S. Santos Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Charles Claire LLP, established in Weybridge, Surrey (United Kingdom),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 December 2017 (Case R 1244/2017-2), concerning opposition proceedings between Charles Claire and Mr Deray,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 February 2018,
having regard to the response lodged at the Court Registry on 8 May 2018,
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
Background to the dispute
1 On 1 February 2016, the applicant, André Deray, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign LILI LA TIGRESSE.
3 The goods in respect of which registration was sought fall within Classes 3, 14, 18, 24, 25 and 26 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of those classes to the following descriptions:
– Class 3 — ‘Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations’;
– Class 14 — ‘Jewellery; Gemstones, pearls and precious metals, and imitations thereof’;
– Class 18 — ‘Luggage, bags, wallets and other carriers; Umbrellas and parasols’;
– Class 24 — ‘Textile goods, and substitutes for textile goods’;
– Class 25 — ‘Clothing; Hats; Footwear; Headgear’;
– Class 26 — ‘Accessories for apparel, sewing articles and decorative textile articles; Hair ornaments, hair rollers, hair fastening articles, and false hair’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2016/033 of 18 February 2006.
5 On 13 May 2016, the opponent, Charles Claire LLP, filed a notice of opposition, under Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and 8(5) of Regulation 2017/1001), to registration of the trade mark sought in respect of the goods referred to in paragraph 3 above.
6 On 22 September 2016, the opponent informed EUIPO, first, that it was no longer pursuing the opposition brought under Article 8(5) of Regulation No 207/2009 and, second, that it was limiting the opposition brought under Article 8(1)(b) solely to ‘luggage, bags; umbrellas and parasols’ in Class 18, and to ‘clothing’ in Class 25.
7 The opposition was based on the earlier EU word mark TIGRESS, applied for on 17 April 1996 and registered on 1 October 1999, designating goods in Classes 18 and 28 and corresponding, for each of those classes, to the following description:
– Class 18 — ‘Golf umbrellas’;
– Class 28 — ‘Golf clubs and parts thereof, namely club-heads, shafts, grips; covers for golf heads (head-covers), golf balls, golf tees; golf bags, caddy bags; golf gloves’.
8 On 10 April 2017, the Opposition Division upheld the opposition in its entirety, finding that there was a likelihood of confusion.
9 On 9 June 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 13 December 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
11 In the first place, the Board of Appeal found that the relevant public was, in the light of the earlier mark and the goods at issue, the public at large in the territory of the European Union, with an average degree of attention.
12 In the second place, the Board of Appeal found that, essentially, the goods covered by the marks at issue were in part identical and in part similar.
13 In the third place, the Board of Appeal held that, visually, the word ‘tigress’ in the earlier mark and the word ‘tigresse’ in the mark applied for created a significant visual similarity between the marks, which was not offset by the additional elements of the mark applied for, namely ‘lili’ and ‘la’, or by the addition of the letter ‘e’ at the end of the word ‘tigresse’ in the mark applied for.
14 Phonetically, the Board of Appeal found that the marks at issue presented only an average degree of similarity.
15 Conceptually, the Board of Appeal held that the signs at issue were dominated by a vibrant and powerful image of a female tiger, with the result that they had to be regarded as possessing a high degree of conceptual similarity.
16 In the light of all the foregoing, the Board of Appeal concluded that there was, in the case in point, and particularly for English-speaking consumers, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs of the present proceedings;
– order EUIPO and the opponent to pay the costs of the proceedings before EUIPO.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
19 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
20 The applicant argues, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion. More specifically, he disputes the Board of Appeal’s findings in relation to, first, the determination of the relevant public, second, the comparison of the goods at issue, and, third, the comparison of the signs at issue.
21 EUIPO contests the applicant’s arguments and contends that the plea should be rejected.
22 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.
23 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 that 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, 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 26 June 2014, Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).
24 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 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).
25 It is in the light of those considerations that it is appropriate to examine whether, as the applicant claims, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there could be a likelihood of confusion in the present case.
Preliminary remark
26 In its response, EUIPO contends that the action is ineffective inasmuch as it seeks annulment of the contested decision in relation to ‘wallets and other carriers’ in Class 18 covered by the trade mark applied for, whereas the opposition was limited to ‘luggage, bags; umbrellas and parasols’ in Class 18.
27 It should be noted that it is indeed apparent from the application that the applicant erred in the presentation of the goods in Class 18 against which the opposition is directed.
28 It should also be noted that the applicant has not submitted any argument in the application concerning those goods or made any request in relation thereto.
29 It follows that that error is of no consequence with regard to the subject matter of the action.
The relevant public
30 The Board of Appeal found, in paragraphs 20 to 22 of the contested decision, that the relevant public was the public at large in the territory of the European Union, with an average degree of attention.
31 The applicant claims that the Board of Appeal erred in its determination of the relevant public. The applicant argues that the goods covered by the earlier mark on which the opposition was based are aimed at very specific consumers, namely golf players, with an above-average degree of attention. By contrast, the goods covered by the mark applied for are aimed at the public at large.
32 In the first place, it should be recalled that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38 and the case-law cited).
33 In the present case, the goods covered by the mark applied for, against which the opposition was filed, were ‘luggage, bags; umbrellas and parasols’ in Class 18, and ‘clothing’ in Class 25.
34 As the applicant points out, those goods are everyday consumer goods, intended for the public at large with an average degree of attention.
35 The goods covered by the earlier mark on which the opposition was based were ‘golf umbrellas’ in Class 18, and ‘Golf clubs and parts thereof, namely club-heads, shafts, grips; covers for golf heads (head-covers), golf balls, golf tees; golf bags, caddy bags; golf gloves’ in Class 28.
36 Those goods, which are in principle intended for playing golf, may be of interest both for the public at large with an interest in golf and for a specialised public.
37 As EUIPO rightly points out in its response, those goods may be intended for professional or confirmed golfers with a high degree of attention and for amateur or beginner golfers with an average degree of attention.
38 It follows that, contrary to the applicant’s argument, the goods in respect of which the earlier mark was registered are not intended solely for specialised consumers.
39 In the second place, and in any event, it should be borne in mind that, if the goods or services covered by the marks at issue target both the general public and specialists, the likelihood of confusion will be assessed in relation to the perception of the part of the public displaying the lower degree of attentiveness, as it will be more prone to confusion (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).
40 It follows that the Board of Appeal did not err in finding that the likelihood of confusion had to be assessed in the light of the public at large with an average degree of attention.
The comparison of the goods in question
41 The applicant argues that the Board of Appeal conducted an erroneous comparison of the goods in question. First, with regard to the ‘golf umbrellas’ in Class 18 protected by the earlier mark, the applicant submits that, while it is true that a golf umbrella can be used as an umbrella or parasol to protect the owner from the rain or sun, not only when playing golf, it is nonetheless designed to protect the golf player while playing golf and not in other circumstances of his or her life. Second, with regard to the ‘luggage’ covered by the mark applied for, the applicant argues that there is no complementarity, for the purposes of the EUIPO guidelines, between ‘luggage’ and ‘caddy bags’. Third, with regard to the ‘clothing’ covered by the mark applied for, the applicant argues that ‘conventional gloves’ are not similar to ‘golf gloves’, inasmuch as the latter, unlike other types of glove, are sold separately.
42 EUIPO takes issue with the applicant’s arguments.
43 As a preliminary point, it should be borne in mind that, 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 and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 20 February 2013, Caventa v OHIM — Anson’s Herrenhaus (BERG), T‑224/11, not published, EU:T:2013:81, paragraph 34 and the case-law cited).
44 In the first place, with regard to the ‘umbrellas’ in Class 18 covered by the mark applied for, the Board of Appeal found, in paragraph 26 of the contested decision, that they are identical to the ‘golf umbrellas’ in Class 18 in respect of which the earlier mark was registered.
45 It should be observed, as the Board of Appeal rightly points out in the contested decision, that, apart from the fact that they are included in the same class of goods, golf umbrellas serve the same purpose as umbrellas, namely to protect the user from the rain.
46 It should also be observed that umbrellas are composed of the same materials and have the same structure, shape and opening and closing mechanism as golf umbrellas.
47 Lastly, it should be noted that, contrary to what the applicant submits, golf umbrellas can be used for protection against the rain in all circumstances, not only when playing golf.
48 The Board of Appeal’s finding, according to which the goods at issue are identical, must therefore be upheld.
49 That finding cannot be called into question by the argument that golf umbrellas are not purchased in the same shop as ordinary umbrellas. Apart from the fact that that assertion is not supported by any evidence, the fact that the goods at issue are not sold in the same outlets is a detail that does not in itself suffice for a finding that the goods are not similar.
50 In the second place, with regard to the ‘parasols’ in Class 18 covered by the mark applied for, the Board of Appeal found, in paragraph 27 of the contested decision, that they are similar to the ‘golf umbrellas’ in Class 18 in respect of which the earlier mark was registered.
51 It should be noted, as EUIPO rightly points out in its response, that a golf umbrella provides protection not only against the rain but also against the sun. Apart from protecting the user against the rain, a golf umbrella can in fact protect the user against the sun during a round of golf. Golf umbrellas can therefore serve the same purpose as parasols.
52 It should also be pointed out that golf umbrellas have the same structure, shape and opening and closing mechanism as parasols. They may, moreover, be composed of the same materials.
53 The Board of Appeal’s finding, according to which the goods at issue are similar, must therefore be upheld.
54 In the third place, with regard to the ‘luggage and bags’ in Class 18 covered by the mark applied for, the Board of Appeal found, in essence, in paragraph 28 of the contested decision, that they are similar to a low degree to the ‘golf bags, caddy bags’ in Class 28 in respect of which the earlier mark was registered. More specifically, the Board of Appeal held that, although it is difficult to argue that luggage in the form of sports bags is in competition with golf bags or caddy bags, which have a particular shape for golf clubs, those goods had to be found to be complementary to some degree, on the ground, first, that a golfer will carry his golf clubs in a golf bag or caddy bag, and his golf clothing in a sports bag, and, second, that those goods are aimed at the same consumer and available at the same retail outlet.
55 It should be remembered that two goods are complementary where they are closely connected in the sense that one is indispensable or important for using the other, with the result that consumers may think that the same company is responsible for manufacturing those goods (see judgment of 4 February 2013, Hartmann v OHIM — Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 44 and the case-law cited).
56 The complementary nature described by the Board of Appeal cannot, however, be established in the present case in the light of the criteria laid down in the case-law cited above. The use of a golf bag or caddy bag has no bearing on the use of a sports bag, inasmuch as it is neither indispensable nor important to have the former in order to be able to use the latter.
57 Nevertheless, it cannot be denied, despite the absence of any complementarity within the meaning of the case-law, that, first, luggage — in the present case, sports bags — shares its nature and intended purpose with golf bags and caddy bags, namely to hold and transport the items necessary to play a sport. Second, those goods can be used at the same time when playing that sport. Third, as the Board of Appeal points out in the contested decision, it is quite probable that those goods are aimed at the same consumer and available at the same retail outlets, with the result that the relevant public might be led to believe that they come from the same undertaking.
58 The Board of Appeal’s finding, according to which the goods at issue are similar, albeit to a low degree, must therefore be upheld.
59 In the fourth place, with regard to the ‘clothing’ in Class 25 covered by the mark applied for, the Board of Appeal found, in paragraph 29 of the contested decision, that this is, at the very least, similar to a low degree to the ‘golf gloves’ in Class 28 in respect of which the earlier mark was registered.
60 More specifically, the Board of Appeal found that, although the goods at issue were not in genuine competition with each other, it had to be borne in mind that the ‘clothing’ in Class 25 covered by the mark applied for includes sports clothing and that a golf glove is a specialised item of sports clothing.
61 First, it must be held, as the Board of Appeal found, that the ‘clothing’ in Class 25 covered by the mark applied for may include sports clothing and, thereby, golf gloves, which are sports items designed to be used when playing golf.
62 Second, it should be observed that, although golf gloves do not have the same characteristics, and are not intended for the same use, as conventional gloves, inasmuch as they are sold individually and used to ensure that golfers have a proper grip on their club, they nevertheless remain gloves, which are items of clothing which cover and protect the hands.
63 Third, golf gloves may be sold in the same retail outlets, specifically sports shops, which can offer both the goods covered by the mark applied for and the goods in respect of which the earlier mark was registered.
64 The Board of Appeal’s finding, according to which the goods at issue are similar to a low degree, must therefore be upheld.
The comparison of the signs at issue
65 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 3 May 2017, Environmental Manufacturing v EUIPO — Société Elmar Wolf (Representation of a wolf’s head), T‑681/15, not published, EU:T:2017:296, paragraph 39 and the case-law cited).
66 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression which it creates (see judgment of 19 September 2018, Eddy’s Snack Company v EUIPO — Chocoladefabriken Lindt & Sprüngli (Eddy’s Snackcompany), T‑652/17, not published, EU:T:2018:564, paragraph 39 and the case-law cited).
67 In the present case, the marks to be compared are the following:
– the mark applied for is the word sign LILI LA TIGRESSE.
– the earlier mark is the word sign TIGRESS.
The visual similarity
68 The Board of Appeal found, in paragraph 33 of the contested decision, that the word ‘tigress’ in the earlier mark and the word ‘tigresse’ in the mark applied for produce a significant visual similarity between the signs at issue, which is not offset by the additional elements of the mark applied for. The Board also found, in the same paragraph, that, although it was unlikely, it might happen that French and Spanish consumers would perceive the word element ‘tigresse’ as describing the character of a woman named Lili, and that the word will therefore lose its position as the dominant element in the mark applied for, which is certainly not the case for English-speaking consumers, for whom the elements ‘lili’ and ‘la’ will not readily evoke a female forename.
69 The applicant disputes the Board’s assessment and contends, on the basis of paragraph 73 of the judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO AIRE) (T‑156/01, EU:T:2003:198), that the presence of a shared word element in the signs at issue is not in itself sufficient to justify the conclusion that the conflicting signs are visually similar.
70 The applicant also argues that the element ‘lili’ is the element which indicates the commercial origin of his goods and that the element ‘tigresse’ can be deemed to have a low degree of distinctive character on account of its presence in a number of marks registered in the Member States. The applicant thus criticises the Board of Appeal in essence for failing sufficiently to take account of the stronger distinctive character of the elements ‘lili’ and ‘la’.
71 In that connection, it should be noted that, first, the earlier mark is composed of a single element, whereas the mark applied for comprises three elements.
72 Second, the mark applied for and the earlier mark have the element ‘tigress’ in common.
73 Third, the element ‘tigress’ in the mark applied for has the vowel ‘e’ as its last letter, and is preceded by the elements ‘lili’ and ‘la’.
74 It follows that the signs at issue coincide in the common element ‘tigress’ — which is, moreover, the sole element of the earlier mark — and differ in the presence, in the mark applied for, of the elements ‘lili’ and ‘la’ at the beginning of the latter mark and of the letter ‘e’ at the end of the element ‘tigress’.
75 Although those differences are not sufficient to confer a different overall impression on the signs at issue, they nevertheless allow the introduction of differences which cannot be disregarded, all the more so given that none of the elements of the mark applied for has an independent and distinctive role.
76 As EUIPO points out in its response, none of the component parts of the mark applied for has a concrete meaning in regard to the goods in question.
77 However, it must be acknowledged that, since the first name ‘lili’ is a French first name and the element ‘la’ is a French word, they will be given less attention by English-speaking consumers, unlike the element ‘tigresse’, which will be immediately understood by those consumers. By contrast, the relevant French-speaking and Spanish-speaking public will immediately understand the two elements of the mark applied for. That part of the relevant public will therefore attach the same importance to the two elements of the mark applied for.
78 Accordingly, it must be found, in the light of all of the foregoing, that the signs at issue are similar to an average degree.
79 That finding cannot be called into question by the applicant’s argument, based on paragraph 73 of the judgment of 9 July 2003, GIORGIO AIRE (T‑156/01, EU:T:2003:198), according to which, in essence, the presence of a common word element in the signs at issue is not in itself sufficient to justify the conclusion that they are visually similar.
80 It should be noted that, in that case invoked by the applicant, unlike in the present case, the signs at issue comprised not only a common word element but also significant figurative elements and additional word elements.
81 It must be held that the applicant’s argument is based on a flawed interpretation of the judgment of 9 July 2003, GIORGIO AIRE (T‑156/01, EU:T:2003:198).
82 It follows that that argument must be rejected.
83 It is also necessary to reject the applicant’s arguments that the Board of Appeal ought to have attached greater importance to the elements ‘lili’ and ‘la’ and found that the element ‘tigress’ has a low degree of distinctiveness. As is clear from paragraphs 75 and 76 above, none of the elements of the mark applied for has a greater distinctive character than the other two inasmuch as they do not have a concrete meaning in regard to the goods in question. As to the claim that the distinctiveness of the word ‘tigresse’ is weakened by reason of its frequent use as an element in other marks, the Court will examine that argument in the context of the global assessment of the likelihood of confusion.
The phonetic similarity
84 The Board of Appeal found, in paragraph 34 of the contested decision, that the signs at issue are phonetically similar to an average degree.
85 The applicant disputes that finding of the Board of Appeal and argues that the signs at issue are not composed of the same number of syllables.
86 It should be observed that the signs at issue have different syllable structures and sound rhythms. The mark applied for is composed of five or six syllables, whereas the earlier mark is composed of two syllables. The syllables ‘li’, ‘li’ and ‘la’ in the mark applied for have no equivalent in the earlier mark.
87 However, contrary to the applicant’s argument, those differences are not sufficient to confer entirely different overall impressions on the signs at issue.
88 It should be noted that, by reason of the common element ‘tigress’, the signs at issue are phonetically identical in their final two syllables.
89 Moreover, that phonetic identity applies to the earlier mark as a whole and to half of the mark applied for, which determines, to a not insignificant extent, the overall impression on the relevant public created by the signs at issue.
90 Consequently, the Board of Appeal was entitled to find, in the contested decision, that, notwithstanding different syllable structures, the signs at issue had to be regarded as being phonetically similar to an average degree.
The conceptual similarity
91 The Board of Appeal held, in paragraph 35 of the contested decision, that, in so far as the signs at issue conveyed the same image — namely that of a female tiger — they were conceptually similar to a high degree.
92 The applicant disputes that finding of the Board of Appeal and argues that the mark applied for will be understood by the relevant public, including English-speaking consumers, as being associated with a woman named Lili who is called ‘la tigresse’ on account of her personality.
93 It should be borne in mind that, in accordance with the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content (see judgment of 3 May 2017, Representation of a wolf’s head, T‑681/15, not published, EU:T:2017:296, paragraph 59 and the case-law cited).
94 In that connection, first, it should be noted that the Board of Appeal rightly stated in the contested decision, and without it being disputed by the applicant, that the element ‘tigress’, which is common to the signs at issue, could be understood by a part of the relevant public as referring to the image of a female tiger.
95 Second, it should be noted that, even if the mark applied for, bearing in mind the element ‘lili’, were to be understood by the relevant public, including English-speaking consumers, as suggesting the image of a woman named Lili who is called ‘la tigresse’ on account of her personality, the mark applied for suggests an underlying image of a female tiger.
96 Third, it cannot be overlooked, as EUIPO rightly points out in its response, that the mark applied could also be perceived by the relevant public as designating a tigress (the animal) named Lili, in the same way as Jack the Rabbit or Felix the Cat.
97 Accordingly, the presence of the element ‘lili’ in the mark applied for minimises, to a certain extent, the similarity arising from the common image of a female tiger contained in the signs at issue.
98 It follows that the Board of Appeal’s conclusion that the signs at issue are conceptually similar to a high degree must be qualified, and that the conceptual similarity must be found to be average.
99 In the light of all of the foregoing, it must be concluded that the signs at issue are visually, phonetically and conceptually similar to an average degree.
100 Consequently, it must be found that the signs at issue are similar overall.
The global assessment of the likelihood of confusion
101 The Board of Appeal found, in essence, in paragraphs 36 to 38 of the contested decision, that, bearing in mind, first, the high degree of similarity between the signs at issue for a part of the relevant public and, second, the similarity of the goods in question, a likelihood of confusion was possible in the present case.
102 The applicant disputes the Board’s finding and argues that it cannot be found that consumers would be likely to confuse the signs at issue and to think that the goods in question were offered by the same undertaking.
103 In that regard, it must be borne in mind that 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 trade marks, and vice versa (see judgment of 3 May 2017, Representation of a wolf’s head, T‑681/15, not published, EU:T:2017:296, paragraph 67 and the case-law cited).
104 It follows from the foregoing, first, that the signs at issue are visually, phonetically and conceptually similar to an average degree and, second, that the goods in question are in part similar and in part identical.
105 Consequently, it must be concluded that, in a global assessment of the likelihood of confusion, there may be a likelihood of confusion in the present case. The element ‘tigress’, which is common to the signs at issue, could lead consumers to think that the mark applied for is an additional version of the earlier mark.
106 Furthermore, inasmuch as the applicant appears to argue that the earlier mark has a low degree of distinctiveness by reason of the presence of the element ‘tigress’ in a number of trade marks registered in EU Member States and that, accordingly, there is no likelihood of confusion in the present case, it should be recalled that, first, a finding of a low distinctive character for the earlier trade mark does not preclude a finding of a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account in the assessment of the likelihood of confusion, it is only one of a number of elements entering into that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 1 March 2016, BrandGroup v OHIM — Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 61 and the case-law cited).
107 Second, the possibility cannot, admittedly, be entirely ruled out that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 12 April 2016, Auyantepui Corp. v EUIPO — Magda Rose (Mr Jones), T‑8/15, not published, EU:T:2016:213, paragraph 36 and the case-law cited).
108 It is, however, clear in the present case that, first and foremost, the marks containing the element ‘tigress’ relied upon by the applicant and the signs at issue are not identical. Second, the applicant has failed to demonstrate that the marks relied upon did indeed coexist on the market. Lastly, in any event, the applicant has not in any way demonstrated that the coexistence of those marks was based on the absence of any likelihood of confusion.
109 Consequently, a mere list of trade marks containing the element ‘tigress’, without any reference to their use on the market and any challenge to those marks on account of the existence of a likelihood of confusion, does not permit the inference that the distinctive character of the earlier mark has been reduced in relation to the goods in the clothing sector (see, to that effect, judgment of 12 April 2016, Mr Jones, T‑8/15, not published, EU:T:2016:213, paragraph 38 and the case-law cited).
110 Accordingly, the Board of Appeal did not err in finding that there is a likelihood of confusion.
111 It follows that the applicant’s plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected as unfounded and, consequently, that the action must be dismissed in its entirety.
Costs
112 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.
113 Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr André Deray to pay the costs.
Delivered in open court in Luxembourg on 26 March 2019.