JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
25 October 2023 (*)
(EU trade mark – Opposition proceedings – Application for an EU figurative mark, representing a dachshund in profile, GILBERT TECKEL – Earlier EU figurative mark representing a dachshund in profile – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Equal treatment – Legal certainty)
In Case T‑773/22,
Contorno Textil, SL, established in Almedinilla (Spain), represented by E. Sugrañes Coca and C. Sotomayor Garcia, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Harmont & Blaine SpA, established in Caivano (Italy), represented by A. Mascetti, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, 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, Contorno Textil, SL, seeks the alteration and, in the alternative, the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 October 2022 (Case R 372/2022-4) (‘the contested decision’).
Background to the dispute
2 On 8 November 2019, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to 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) in respect of the following figurative sign:
3 The mark applied for covered goods in Class 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 to the following description: ‘Clothing; footwear; headgear’.
4 On 27 February 2020, the intervener, Harmont & Blaine SpA, 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 international registration having effect in the European Union of the earlier figurative mark reproduced below, which was registered on 9 June 2014 under the number 1249733 and covers, inter alia, goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear’:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
7 On 13 January 2022, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001, finding that there was a likelihood of confusion on the part of the French general public, which was the relevant public in the present case.
8 On 8 March 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, confirming that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the general public in France, in the light of the average level of attention of that public, the identity of the goods concerned, the visual and conceptual similarity between the marks at issue, which were respectively at least low and high in degree, and the normal inherent distinctiveness of the earlier mark.
Forms of order sought
10 The applicant claims that the Court should:
– alter the contested decision by holding that the mark applied for may be registered in respect of all the goods at issue;
– in the alternative, 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 in the event that a hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs;
– in the alternative, if the Court upholds the action, remit the case to the Opposition Division in order for it to be assessed on the basis of the ground set out in Article 8(5) of Regulation 2017/1001.
Law
The issue of whether the Court has jurisdiction to take cognisance of the applicant’s first head of claim
13 Without formally putting forward a plea of inadmissibility by a separate document on the basis of Article 130(1) of the Rules of Procedure of the General Court, EUIPO submits that the first head of claim in the application is inadmissible in so far as it seeks to have the Court adopt a decision relating to the registration of an EU trade mark holding that the application for registration must be granted in respect of all the goods concerned in the present case.
14 As a preliminary point, it must be held that the applicant’s first head of claim constitutes a claim for alteration requesting that the Court register the mark applied for or that it declare its registration possible in respect of all the goods at issue in the present case.
15 In that regard, it must be stated that it is true that the Court has jurisdiction under Article 72(3) of Regulation 2017/1001 to alter the decision of the Board of Appeal. Nevertheless, that power to alter the decision is intended to ensure that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation, which means that the admissibility of a claim for alteration must be assessed in the light of the powers conferred on that Board of Appeal (see judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 12 and the case-law cited).
16 However, although the registration of an EU trade mark is a consequence of the finding that all the conditions laid down in Article 51 of Regulation 2017/1001 have been met, the departments of EUIPO that are responsible for the registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. Accordingly, a Board of Appeal, which may, under Article 71(1) of Regulation 2017/1001, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further treatment, does not have the power to take cognisance of an application which seeks to have it register an EU trade mark or declare that registration is possible. Consequently, it is also not for the Court to take cognisance of an claim for alteration requesting that it alter the decision of a Board of Appeal to that effect (see judgment of 18 October 2016, Brauwelt, T‑56/15, EU:T:2016:618, paragraph 13 and the case-law cited).
17 In the light of the foregoing, the first head of claim must be rejected on the ground that the Court does not have the jurisdiction to take cognisance of it. Consequently, it is necessary to examine the head of claim which the applicant has submitted in the alternative, seeking the annulment of the contested decision.
Substance
18 The applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, failure to comply with the principles of equal treatment and of legal certainty. It submits, in essence, that there is no likelihood of confusion between the marks at issue and that a decision to the contrary would contravene the principles of equal treatment and of legal certainty.
The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
19 The applicant’s first plea consists, in essence, of four complaints, according to which the Board of Appeal erred, first, in the context of the assessment of the distinctive and dominant elements of the mark applied for, secondly and thirdly, in the context of the analysis of, respectively, the visual and conceptual similarities between the marks at issue and, fourthly, in the context of the overall assessment of the likelihood of confusion between those marks.
20 EUIPO and the intervener dispute the applicant’s arguments.
21 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. Furthermore, under Article 8(2)(a)(iv) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
22 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).
23 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).
24 It must be stated at the outset that there is no need to call into question the Board of Appeal’s finding, which is not disputed by the parties, that the goods concerned are aimed at the general public, the level of attention of which is considered to be average (paragraph 17 of the contested decision). The same is true as regards the considerations relating to the taking into account of the French-speaking general public in France, notwithstanding the fact that the relevant territory in the present case is that of the European Union (paragraph 19 of that decision).
25 Likewise, there is no need to call into question the finding that the goods covered by the marks at issue are identical (paragraph 20 of that decision), a finding which is also not disputed.
– The distinctive and dominant elements of the mark applied for
26 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 could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42 and the case-law cited; judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
27 For the purposes of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 41).
28 By its first complaint, the applicant criticises the Board of Appeal for finding, in paragraphs 28 and 29 of the contested decision, that the figurative element representing a dog belonging to the dachshund breed and the word elements ‘gilbert’ and ‘teckel’ [the French word for ‘dachshund’], written below that figurative element, were equally inherently distinctive within the mark applied for, with the result that they were regarded as having an equivalent impact and, consequently, a co-dominant position within that mark. The applicant’s complaint against those assessments on the part of the Board of Appeal consists of three arguments.
29 First of all, according to the applicant, the impact of the word and figurative elements is not the same. The applicant submits that the average consumer in the general public in France will not instantly recognise the dachshund breed of dog, either in the figurative element or in the second word element of the mark applied for. It argues that the relevant public will not therefore understand that one refers to the other and, consequently, will not pay particular attention to the figurative element. It contends that that figurative element will be perceived as decorative in relation to the word elements.
30 Next, the applicant acknowledges that the figurative element of the mark applied for has some distinctive character. However, it submits that the overall impression which it creates is dominated by the two word elements ‘gilbert’ and ‘teckel’, without that giving rise to automatic conceptual relationships with the figurative element representing a dog, as the latter is only a ‘decorative complement’. According to the applicant, those word elements convey an independent meaning as a ‘male name [and] surname’ and the fact that the word ‘teckel’ coincides with the dog breed represented by the figurative element of that mark can be perceived only by some consumers in France.
31 Lastly, in the alternative, as regards the part of the relevant general public which will understand the word element ‘teckel’ and the figurative element representing a dog as referring to a particular breed of dog, the word elements will, according to the applicant, still be the distinctive and dominant elements, because the association between the word element ‘teckel’ and the figurative element will be ancillary to the first name ‘Gilbert’. It submits that the latter will attract attention first, as it names the dog ‘Gilbert’, which makes ‘Gilbert the dog’ unique. It argues that, consequently, the word elements ‘gilbert’ and ‘teckel’ must be regarded as distinctive and dominant, even for those who might perceive the mark applied for as meaning ‘a teckel named Gilbert’.
32 EUIPO and the intervener dispute the applicant’s arguments.
33 In the present case, the Board of Appeal found, in paragraph 28 of the contested decision, that the word elements and the figurative representation of a dachshund in the mark applied for were all distinctive and that the word element ‘gilbert’ would be understood as a male first name, whereas the element ‘teckel’ designated the dachshund breed of dog for the French-speaking part of the relevant public. Consequently, the Board of Appeal found, in paragraph 29 of that decision, that the second word element referred to or named the figurative element so that they had an equivalent impact, since they reinforced each other, and thus occupied a co-dominant position in that mark.
34 In that regard, first of all, the applicant’s main argument that the general public in France will not recognise the dachshund breed of dog, either in the figurative element or in the second word element of the mark applied for, must be rejected as unfounded. In addition to the fact that the applicant has not substantiated that argument, it must be stated that the characteristics of that breed of dog are among the most easily recognisable. The very existence of an expression as familiar as ‘sausage dog’ with regard to dachshunds demonstrates both their popularity and the ease with which their characteristics (dog resembling a sausage on legs) are spontaneously and immediately recognisable. In that regard, and in the light of those characteristics, it must be stated that the term ‘teckel’ or the expression ‘sausage dog’ are commonly used and understood by at least a significant part of the general public in France. As the intervener points out, it is not necessary for the relevant public to consist of experts or canine specialists in order to identify one of the most common and most characteristic breeds of dog. Consequently, and in any event, the representation of a sausage dog situated above the word element ‘teckel’ will create an inevitable link between those two components of the mark applied for, even for the part of the relevant public in France which, without knowing or being able specifically to designate the dachshund breed of dog, has probably already heard the common French word ‘teckel’ and will connect it with the image of the dog above it, since the first word element in that mark, namely ‘gilbert’, will spontaneously be understood as a French first name.
35 Next, the argument that the two word elements in the mark applied for convey an independent meaning indicating that ‘gilbert’ and ‘teckel’ refer to a male first name and surname must also be rejected as unfounded. It must be stated, as observed by the intervener, that the applicant has not in any way substantiated that assertion in the context of the general public in France. Although the word ‘gilbert’ may be seen and understood in France as a male first name, as the Board of Appeal found in paragraph 28 of the contested decision, it nevertheless seems unlikely that, upon seeing the figurative representation of a dachshund dog, a member of the relevant public will understand the French term ‘teckel’ as a surname, rather than as a reference to the breed of dog represented above that term. The representation of a dachshund dog which precedes the word elements in question, combined with the common French word ‘teckel’, makes the applicant’s argument implausible. In any event, without any proof on the part of the applicant in that regard, it must be held that that argument cannot succeed.
36 Lastly, as regards the applicant’s alternative argument, it must be stated that, considering that the relevant public in France understands the mark applied for as ‘Gilbert the dachshund’, the main subject, and therefore the concept used, both of the figurative element and of the second word element in the mark applied for, is still the dachshund. In that regard, it must be held that, in the present case, the fact that the dachshund has a first name is of little importance, since the subject is identical. Even though the relevant public reads from left to right, it sees the graphic representation of a dachshund first and understands only afterwards, on account of the direct link with the second word element, that the dachshund in the figurative element is called Gilbert. In the light of the way in which the mark applied for is designed (which is examined in paragraphs 28 and 29 of the contested decision) and in particular of the fact that the figurative element occupies a prominent position and is situated above the two word elements, which are smaller and written in bold upper-case letters and the second of which designates and refers to the figurative element and vice versa, it must therefore be held that the figurative and word elements in that mark are co-dominant.
37 Consequently, the Board of Appeal was right in finding, in paragraph 29 of the contested decision, that the figurative element and the second word element in the mark applied for refer each other to the concept of a dachshund, with the result that they reinforce each other and that, in the light of the absence of any link with the goods concerned and the prominent position of the figurative element within that mark, the word and figurative elements are equally distinctive.
38 In that regard, it must be stated that, although the applicant is right in submitting that the consumer’s attention is often focussed more on the initial word elements, the fact remains that, in some cases, the figurative element of a composite mark may, in particular on account of its shape, size, colour or position in the sign, rank equally with the word element (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 37). In the present case, not only do the size and position of the figurative element of the mark applied for contribute strongly towards making it co-dominant, but the concept which it conveys is reproduced by the second word element of that mark, which undoubtedly reinforces its co-dominant position. By pronouncing the term ‘teckel’ in order to describe the figurative element, the consumer will inevitably refer to the second word element of the mark applied for and vice versa. The impact of the word elements in that mark is therefore, in the present case, identical to that produced by the figurative element which precedes them.
39 Thus, in addition to their size and position in the mark applied for, which may be indications of the impact of each element comprising a mark, the word and figurative elements in that mark do not have any connection with the goods concerned and both refer to the concept conveyed by that mark by reinforcing each other. Likewise, not only is none of the word or figurative elements in the mark applied for negligible within the meaning of the case-law which has been cited in paragraph 26 above, but each of them is equally inherently distinctive, with the result that they have an equivalent impact and therefore a co-dominant position within the mark applied for.
40 Consequently, the applicant’s alternative argument must also be rejected as unfounded and, as a result, its first complaint must be rejected.
– The visual and phonetic similarities
41 As regards the comparison of the marks at issue, it should be noted at the outset that, according to settled case-law, two marks are similar where, 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).
42 In the present case, it is apparent from paragraph 30 of the contested decision that the Board of Appeal found that the marks at issue were visually similar to at least a low degree, because they coincided in the representation, in basic monochromatic colours, of a dog belonging to the dachshund breed, but that there was no structural element, such as a caricatured representation, a cartoonish character or a personified representation with clothing or a facial expression, which made it possible to distinguish between them palpably, the differences in the direction or position of the dogs, for example, being insufficient in that regard. It stated that the marks at issue further differed in the word elements ‘gilbert teckel’, the second of which reinforced the representation of a dachshund and vice versa.
43 By its second complaint, which consists, in essence, of three arguments, the applicant submits, first of all, that, even if the relevant public automatically perceives the figurative elements of the marks at issue as a dachshund, the manner in which the dogs are represented is completely different in each of those marks. According to the applicant, the only similarity between those marks is the representation of the intrinsic and inherent elements of the drawing of a dog, namely a head, ears, a body, legs and a tail. In that regard, the applicant claims that the Board of Appeal gave more weight to the figurative elements which display similarities within the marks at issue than to the dissimilar and differentiating word elements of the mark applied for. The applicant submits that the dachshunds represented by the figurative elements of those marks differ in so far as: one is facing towards the left, the other towards the right; one is represented in profile and is totally coloured in in black, whereas the other, also in profile, is represented on a white background and only the outline of its silhouette is black; one is stationary with its tail and ear down, whereas the other is in motion with the tail up and directed backwards, like its ear; the thickness of the body of one is the same over its whole length and only two legs are visible, whereas it varies as regards the body of the dog in the mark applied for, being much thinner towards the back, and four legs are visible; the mark applied for contains two word elements, whereas the earlier mark is purely figurative.
44 Next, the applicant claims that the Board of Appeal’s reasoning is insufficient as regards its finding that the differences listed in the preceding paragraph are not sufficient to counterbalance the similarities in the inherent and fundamental elements of the drawing of a dog. According to the applicant, that would amount to an undue extension of the protection granted to the earlier mark, irrespective of the differences that exist. The applicant argues that it is therefore incorrect to conclude that the coincidence between the intrinsic characteristics of a dog renders the marks at issue visually similar to a low degree, although they differ in many other features.
45 Lastly, according to the applicant, the Board of Appeal’s finding that ‘neither dachshund is caricatured, cartoonish or personified with clothing or a facial expression, for example’ imposes on the applicant a style requirement as a condition for registration of a mark including a dog belonging to the breed in question. The applicant submits that that indirectly grants the intervener a far too broad exclusive right over the representation of a dog breed, which is akin to a monopoly. It contends that the earlier mark is merely a faithful representation of the image of a dog belonging to the dachshund breed, but that it does not comply with any of the style requirements mentioned by the Board of Appeal. According to the applicant, in order to find that there was at least a low degree of visual similarity between the marks at issue, the Board of Appeal gave weight to the simple fact that the figurative elements of those marks contain a simple depiction of a dog. It submits that that assessment is incorrect, because that is true of a number of EU trade marks which represent a dog that could be a dachshund and have been registered.
46 EUIPO and the intervener dispute the applicant’s arguments.
47 It must be pointed out at the outset that the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 26 September 2017, La Rocca v EUIPO (Take your time Pay After), T‑755/16, not published, EU:T:2017:663, paragraph 42 and the case-law cited).
48 Given that the applicant’s first and third arguments seek to dispute, in essence, the merits of the Board of Appeal’s reasoning, it is appropriate to examine them after examining the argument relating to the inadequacy of that reasoning.
49 By its second argument, the applicant submits, in essence, that the Board of Appeal provided insufficient reasoning for its finding, first, that the differences between the figurative elements of the marks at issue are not sufficient to counterbalance the similarities between the intrinsic and inherent features of the faithful and in-profile representation, in basic monochromatic colours, of a dog belonging to the dachshund breed and, secondly, that ‘neither dachshund is caricatured, cartoonish or personified with clothing or a facial expression, for example’.
50 In that regard, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. According to well-established case-law, the statement of reasons for a decision is regarded as sufficient, whether it is express or implicit, if it allows interested parties, in the light of the context, to know the justification for the measure taken so as to enable them to protect their rights and enables the Courts of the European Union to exercise their power to review the legality of the decision. In that regard, it is not necessary for the reasoning to address all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraphs 15 to 17 and the case-law cited).
51 Likewise, the obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient to set out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19 and the case-law cited).
52 First of all, in the present case, it must be stated that, contrary to what the applicant claims, the Board of Appeal sufficiently set out, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, the reasons why it found, in paragraph 30 of the contested decision, that the marks at issue were visually similar to at least a low degree, in so far as they represented in a basic manner and in basic monochromatic colours a dachshund in profile, one of the most easily recognisable dog breeds. The Board of Appeal also stated, in paragraph 37 of that decision, that the differences in orientation and sense of movement between the figurative elements of those marks and the presence of the word elements ‘gilbert’ and ‘teckel’ in the mark applied for were insufficient to offset palpably that similarity between the figurative element constituting the earlier mark and the co-dominant figurative element of the mark applied for, with the result that the degree of visual similarity between those marks was, in the light of the relevant public’s imperfect recollection of those marks, at least low.
53 It follows that the statement of reasons for the contested decision was sufficient, first, to enable the applicant to dispute the merits of the Board of Appeal’s assessments, as is shown by its arguments with regard to the analysis of the visual similarity, which have been set out in paragraphs 43 to 45 above, and, secondly, to provide the Court with sufficient material for it to exercise its power to review the legality of that decision, in accordance with the requirements of the case-law which has been cited in paragraphs 50 and 51 above.
54 Consequently, the applicant’s second argument must be rejected.
55 Next, as regards the applicant’s first argument, according to which the Board of Appeal focused on the figurative elements of the marks at issue and gave more weight to the elements which presented similarities than to the other, more numerous, dissimilar and differentiating elements, it must be pointed out that the Board of Appeal found, in essence, in paragraph 30 of the contested decision, that, in spite of the decorative differences which had been identified, those marks were visually similar to at least low degree, on account of the fact that they contained a simple depiction, in basic monochromatic colours, of a dog in profile, which indisputably belonged to a particular breed, namely the dachshund breed. Likewise, the Board of Appeal found that neither of the dachshunds at issue could be distinguished noticeably from the other because those dogs were not caricatured, cartoonish or personified with clothing or a facial expression, for example. Furthermore, according to the Board of Appeal, the second word element, ‘teckel’, in the mark applied for reinforced the representation of the dachshund in the figurative element, and vice versa.
56 In that regard, it must be stated, as observed by EUIPO, that the applicant itself concedes that the figurative elements of the marks at issue coincide in the representation of the intrinsic and inherent elements of a drawing of a dog. It must pointed out, as observed by the Board of Appeal, that what is involved here is not just any dog, but that that dog belongs to both a particular and spontaneously recognisable breed, namely the dachshund breed, and that neither the colours used nor the stylisation of the drawing of the dachshund are unusual or make it possible to distinguish noticeably between the dachshunds drawn in profile in each of the figurative elements compared, in order to find that they are different. In that regard, it must be borne in mind that 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).
57 Furthermore, the average consumer of the goods in question will only rarely have the chance to compare the two marks at issue when making his or her purchases and must therefore rely on his or her imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). In the present case, the relevant public will recollect the representation of a dachshund drawn in profile in basic monochromatic colours (white and black), as the figurative details of that drawing have, in this case, an insufficient impact to conclude that the figurative elements being compared are totally different. Likewise, as regards the word elements of the mark applied for, it must be pointed out that, although they are unquestionably elements of differentiation, the second word element, ‘teckel’, in that mark reinforces the impact of the representation of the dachshund in the figurative element of that mark by referring directly to it and, consequently, makes the at least low degree of visual similarity between the figurative elements of the marks at issue palpable, since it is the co-dominant element in the mark applied for, as the Court has held in paragraph 39 above, and the only element in the earlier mark.
58 Thus, as there are no elements which make it possible to distinguish clearly between the two representations in profile of a dog which is as specific as it is recognisable, it must be held that, despite the Board of Appeal’s identification of elements of differentiation, the marks at issue are visually similar to at least a low degree (see, to that effect, judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraphs 81 and 82). In any event, if the Board of Appeal had given more weight to the similarities between the figurative elements at issue rather than to the elements of differentiation, as the applicant claims, the visual similarity would have been assessed as being average in degree (as was initially found by the Opposition Division and as incorrectly claimed by the intervener before the Court). However, it was precisely by fully taking into account those differences that the Board of Appeal rightly reduced the average degree of visual similarity, which had initially been found to exist, to at least low.
59 In spite of the differences in the figurative elements of the marks at issue, which were pointed out by the Board of Appeal in paragraph 30 of the contested decision (one of the dachshunds is facing towards the left, the other towards the right; one is represented in profile and is totally coloured in in black, whereas the other, also in profile, is represented on a white background and only the outline of its silhouette is black; one is stationary with its tail and ear down, whereas the other is in motion with the tail up and directed backwards, like its ear; only two legs of one are visible, whereas three legs of the other can be identified), it must therefore be held that those differences are not, in the light of their decorative nature and of the relevant public’s imperfect recollection of those marks, capable of eliminating all similarity.
60 Consequently, it must be held that the applicant’s first argument must be rejected as unfounded.
61 Lastly, as regards the applicant’s third argument, according to which the Board of Appeal created an additional style requirement with regard to the mark applied for, which creates a monopoly on the faithful representation of a dachshund, it must be stated that that argument is based on a misreading of the contested decision. It must be pointed out that it is clear from the contested decision that what is involved here concerns non-exhaustive examples of structural elements which are capable of contributing towards avoiding any finding of visual similarity between the figurative elements of the marks at issue and not a style requirement which was newly created with regard to the applicant. Those examples are comparable to the examples which are referred to in paragraph 37 of the contested decision and relate to the overall assessment of the likelihood of confusion between those marks, which are merely suggestions that are capable of making it possible to rule out any visual similarity by means of the use of a structural element of differentiation.
62 Moreover, the protection granted to the earlier mark has not been unduly extended, since the proprietor of that mark registered the representation, in profile, of a dog belonging to the dachshund breed, in basic monochromatic colours, as a figurative mark and the at least low degree of visual similarity between the marks at issue was found to exist only within those limits. The fact that the earlier mark does not comply with what the applicant describes as a style requirement has no bearing on the scope of protection which was initially granted to that mark, since the at least low degree of visual similarity was found to exist only within the limits of the registration of that mark. Likewise, as regards the alleged de facto creation of a monopoly on the faithful representation of a dachshund, it is sufficient to state that the eight examples of marks containing a figurative element representing a dog that could belong to the dachshund breed which have been submitted by the applicant sufficiently show that a monopoly on the representation of such a dog has not been granted to the intervener. Accordingly, apart from the fact that the applicant’s line of argument is irrelevant in the context of the analysis of the similarities between the marks at issue, no monopoly can be found to exist in the present case.
63 Consequently, the applicant’s third argument must also be rejected as unfounded and its second complaint must therefore be rejected.
64 Furthermore, as regards the phonetic comparison of the marks at issue, it must be stated that there is no need to call into question the Board of Appeal’s finding, set out in paragraph 31 of the contested decision, that it is not possible to carry out that comparison given that the earlier mark is purely figurative, a finding which is not, moreover, disputed by the parties.
– The conceptual similarity
65 By its third complaint, the applicant disputes the Board of Appeal’s assessment, in paragraph 32 of the contested decision, that the degree of conceptual similarity between the marks at issue is high, since the earlier mark will be perceived as a dachshund and the mark applied for will be perceived as a dachshund named Gilbert.
66 The applicant submits, in essence, that the relevant public will not make a link between the term ‘teckel’ and the figurative element of the mark applied for. Alternatively, it takes the view that, even if that public were to make a link, it would perceive the figurative element as an accessory of the male name ‘gilbert teckel’ or as a decorative element complementing the word elements, as the dog belonging to the dachshund breed is called ‘Gilbert’. However, according to the applicant, ‘in [the] earlier trade mark, the [relevant] general public … will only see the drawing of a dog, but it does not contain any words that could convey [the] same [semantic] perception [of] a male name’. The applicant submits that, consequently, the signs under comparison are not conceptually similar because they do not convey the same meaning to the relevant public.
67 EUIPO and the intervener dispute the applicant’s arguments.
68 In the present case, it is necessary, first of all, to reject, for the reasons explained in paragraph 34 above, the applicant’s main argument that the relevant public in France will not understand the French term ‘teckel’ as referring to a breed of dog or that it will not make a link between that term and the figurative element of the mark applied for.
69 Next, it must be stated that the same is true, as the Court has stated in paragraph 35 above, as regards the argument that the concept conveyed is that of a male first name and surname.
70 Lastly, as regards the argument that the relevant public will perceive the figurative element of the mark applied for as a decorative element which complements the word elements, it must be stated that that that argument is unfounded. First, as the Court has pointed out in paragraph 36 above, even if the dachshund in that mark is called Gilbert, the concept conveyed is in any event that of a dachshund, whether or not it has a first name. Secondly, as has been stated in paragraphs 37 and 39 above, the Board of Appeal was right in finding that the figurative element of the mark applied for was co-dominant and not decorative.
71 Consequently, the Board of Appeal did not make any error of assessment in finding that there was a high degree of conceptual similarity between the marks at issue.
72 The applicant’s third complaint must therefore be rejected as unfounded.
– The global assessment of the likelihood of confusion
73 According to settled case-law, 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 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 45).
74 In the context of its fourth complaint, the applicant submits, in essence, that the Board of Appeal made an error of assessment in finding, in paragraphs 33 to 40 of the contested decision, that there was a likelihood of confusion between the marks at issue. According to the applicant, the degree of similarity between those marks is not sufficient to give rise to such a likelihood of confusion. It submits that the mere coincidence of a representation of a dog, even if it belongs to a particular breed, within those marks is not sufficient for consumers to be likely to confuse them. In that regard, the applicant cites several judgments, dwelling on the point that conceptual similarity is sufficient for it to be held that there is a likelihood of confusion only if the earlier mark has a particularly distinctive character. Likewise, the applicant reiterates its argument that only the two word elements of the mark applied for will be retained by the relevant public, which excludes any likelihood of confusion.
75 EUIPO and the intervener dispute the applicant’s arguments.
76 In the present case, the Board of Appeal found, in paragraph 37 of the contested decision, that ‘the signs [did] not coincide in the generic features of a dog but the particular features of a dachshund’. According to the Board of Appeal, ‘the silhouette of the dachshund [was] simple and true to life in the earlier mark as [was] that of the … sign [applied for]. Neither dachshund [was] rendered in a way that differentiate[d] it noticeably from the other, e.g., neither sport[ed] an accessory or a comical expression or high degree of stylisation. The orientation and sense of movement or lack thereof d[id] not distinguish the devices sufficiently’. Furthermore, the Board of Appeal found that ‘nevertheless, it [wa]s clear even from the ten examples given, that there [could] be many different ways to stylise, caricature or personify dogs, even particular types of dogs including dachshunds, in a way that sets them apart from other depictions. That [was] not the case here’. In addition, it found that ‘the various elements of the … sign [applied for] reinforce[d] each other for the French public’.
77 In that regard, it must be pointed out that none of the applicant’s arguments is capable of calling into question the lawfulness of the contested decision. First, the present case concerns visual and conceptual similarity, by contrast with the examples from the case-law given by the applicant, which refer only to conceptual similarity, which makes it impossible to establish a possible parallel with those examples. Secondly, in the present case, it must be pointed out, as observed by EUIPO, that the word element ‘teckel’ in the mark applied for constitutes a direct reference to its figurative element, whereas the word ‘sabèl’, which was at issue in one of the judgments cited by the applicant, had no semantic link with the image of a bounding feline which it accompanied. Likewise, in the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), the semantic analogy between the figurative parts of the two marks at issue was limited to the fact that the animals in those marks both belonged to the feline family and were represented as bounding, whereas in the present case, the signs contain the image of one of the most easily recognisable breeds of dog, namely the dachshund, which is represented in a similar manner in both signs.
78 Furthermore, in the light of the foregoing and in particular of the considerations in paragraph 39 above, it is also necessary to reject the argument that only the word elements of the mark applied for will be recollected by the relevant public, since that argument is based on the incorrect premisses, which have previously been rejected, that the figurative element is decorative.
79 Consequently, it must be held that the Board of Appeal was right in finding, in paragraphs 39 and 40 of the contested decision, that, taking into account the relevant public consisting of the general public in France and its average level of attention with regard to the goods concerned, which are identical (see paragraphs 24 and 25 above), the degree of visual and conceptual similarity between the marks at issue, which are at least low and high respectively (see paragraphs 58 and 71 above), and the normal distinctive character of the earlier mark, which is not, moreover, disputed by the applicant, it had to be concluded, in the context of the global assessment of those factors, in the light of the interdependence between them and the imperfect recollection which the relevant public had of those marks, that there was a likelihood of confusion on the part of that public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
80 In the light of all of the foregoing considerations, the applicant’s fourth complaint must be rejected as unfounded and, consequently, the first plea must be rejected.
The second plea, alleging infringement of the principles of equal treatment and of legal certainty
81 By its second plea, the applicant complains that the Board of Appeal infringed the principles of equal treatment and of legal certainty. In that regard, the applicant again refers to the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528) and to a large number of decisions of EUIPO in which it was found that there was no likelihood of confusion between marks at issue which coincide in the representation of an animal in their figurative elements.
82 EUIPO and the intervener dispute the applicant’s arguments.
83 It must be pointed out at the outset that, according to settled case-law, the decisions which the Boards of Appeal take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal 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 a previous decision-making practice (see, by analogy, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
84 The examination of an application for registration must be undertaken in each individual case, as the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal set out in Regulation 2017/1001. In that regard, it must be stated that the assessment of whether a ground for refusal of registration exists cannot be called into question on the sole basis that the Board of Appeal did not follow EUIPO’s decision-making practice in a particular case (see, to that effect, order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraphs 41 to 48; judgments of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑459/13, not published, EU:T:2014:892, paragraphs 35 to 39, and of 12 December 2014, Wilo v OHIM (Pioneering for You), T‑601/13, not published, EU:T:2014:1067, paragraphs 42 and 43).
85 In the present case, it is apparent from the examination of the first plea that the Board of Appeal was right in finding, on the basis of a diligent and full examination, that the mark applied for was caught by the relative ground for refusal set out in Article 8(1)(b) of Regulation 2017/1001, with the result that the applicant cannot usefully rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO or on the case-law of the Court of Justice of the European Union. As has been stated in paragraph 84 above, the validity of the registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77 and the case-law cited).
86 Likewise, it must be observed that, contrary to the applicant’s opinion, none of the examples given by it has any characteristics which are comparable with the present case. Each of the examples concerns cases in which the marks at issue coincide solely in the generic characteristics of the animals represented by their figurative elements. Accordingly, whereas, as regards the judgment of 11 November 1997, SABEL (C‑251/95, EU:C:1997:528), reference is made to the considerations contained in paragraph 77 above, it must be held that the other examples given by the applicant are not relevant with regard to the analysis of the present case. First, the present case does not concern a coincidence in the generic characteristics of any dog, but in the specific characteristics of a dachshund, one of the most easily recognisable breeds of dog, and, secondly, none of the examples given contains a word element which reproduces the concept conveyed by the figurative element or designates it directly and vice versa. Consequently, the applicant cannot usefully rely on the principles of equal treatment and of legal certainty in support of its arguments.
87 The applicant’s second plea must therefore be rejected.
88 In the light of all of the foregoing considerations, the applicant’s claim for annulment of the contested decision must be rejected.
Costs
89 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.
90 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Contorno Textil, SL to bear its own costs and to pay those incurred by Harmont & Blaine SpA;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 25 October 2023.
V. Di Bucci | | S. Papasavvas |