Case T‑509/12

Advance Magazine Publishers, Inc.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for Community word mark TEEN VOGUE — Earlier national word mark VOGUE — Admissibility — Formulation of the form of order sought — Relative ground for refusal — Likelihood of confusion — Identity or similarity of the goods — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 — Partial refusal to register)

Summary — Judgment of the General Court (Eighth Chamber), 27 February 2014

1.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Amendment of a decision by the Office — Assessment having regard to the competences conferred on the Board of Appeal

(Council Regulation No 207/2009, Arts 64(1), second sentence, and 65(3))

2.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

3.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Complementary nature of the goods — Clothing, footwear, headgear and hosiery

(Council Regulation No 207/2009, Art. 8(1)(b))

4.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word marks TEEN VOGUE and VOGUE

(Council Regulation No 207/2009, Art. 8(1)(b))

1.      According to the second sentence of Article 64(1) of Regulation No 207/2009 on the Community trade mark, the Board of Appeal of OHIM may, after annulling the contested decision before it, exercise any power within the competence of the OHIM body which took that decision, in this case rule on the opposition and reject it. Consequently, that measure falls within the measures which may be taken by the Court in the exercise of its power to alter decisions, laid down by Article 65(3) of Regulation No 207/2009.

(see para. 15)

2.      See the text of the decision.

(see paras 23, 24)

3.      In assessing the similarity of the goods or services in question, for the purposes of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, 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.

Concerning the similarity between clothing in general, and footwear, the sufficiently close links between the respective purposes of those goods, discernible in particular in the fact that they belong to the same class, and the specific possibility that they can be produced by the same operators or sold together, permit the conclusion that those goods may be linked in the mind of the relevant public. That consideration applies even more as regards hosiery.

Lastly, the clothing, footwear and headgear in Class 25 have a common purpose because they are manufactured to cover, conceal, protect and adorn the human body.

(see paras 28, 32, 33)

4.      For the general public in Sweden, there is a likelihood of confusion between the word mark TEEN VOGUE, registration of which is sought in respect of ‘clothing; footwear; headgear; parts and fittings for all the aforesaid goods’ falling within Class 25 of the Nice Agreement, and the word mark VOGUE, previously registered in Sweden and use of which has been demonstrated in respect of hosiery articles, taking account of the visual and phonetic similarities of the signs at issue and having regard to the fact that the goods designated by those marks are in part identical and in part similar.

(see para. 49)