JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
30 April 2014 (*)
(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark BEYOND VINTAGE — Earlier Community word mark BEYOND RETRO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009)
In Case T‑170/12,
Beyond Retro Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
S&K Garments, Inc., established in New York, New York (United States),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 January 2012 (Joined Cases R 493/2011-4 and R 548/2011-4), relating to opposition proceedings between Beyond Retro Ltd and S&K Garments, Inc.,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czùcz and A. Popescu, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 10 April 2012,
having regard to the response lodged at the Court Registry on 17 August 2012,
further to the hearing on 4 December 2013,
gives the following
Judgment
Background to the dispute
1 On 12 October 2008, S&K Garments, Inc., obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration bearing the reference W 994046 and designating the European Community of the word mark BEYOND VINTAGE (‘the international registration’ or ‘the mark applied for’).
2 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration of that sign on 19 March 2009. The particulars of the international registration provided for in Article 147(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, (now Article 152(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), were published in Community Trade Marks Bulletin No 10/2009 of 23 March 2009.
3 The goods in respect of which that international registration was obtained are in Classes 14, 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 14: ‘Jewellery, precious stones and watches’;
– Class 18: ‘Clothing accessories, handbags, purses and wallets’;
– Class 25: ‘Clothing’.
4 On 30 November 2009, the applicant, Beyond Retro Ltd, filed a notice of opposition, pursuant to Articles 41 and 156 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier Community word mark BEYOND RETRO, registered on 15 January 2008 under the number 5629035, which covers, inter alia, goods in Class 25 corresponding to the following description: ‘Clothing, headgear and footwear’.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
7 By decision of 7 January 2011, the Opposition Division upheld the opposition in part. It upheld the opposition with respect to the goods covered by the mark applied for in Classes 18 and 25 and rejected it for the goods in Class 14.
8 On 3 March 2011, S&K Garments filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. On 7 March 2011, the applicant also filed a notice of appeal against that decision under the same provisions.
9 By decision of 30 January 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM first of all joined the two cases. It then upheld the appeal of S&K Garments and therefore annulled the decision of the Opposition Division in so far as the latter had upheld the opposition concerning the goods in Classes 18 and 25, stating that there was no likelihood of confusion. Lastly, it dismissed the applicant’s appeal, thus confirming the rejection of the opposition as regards the goods in Class 14.
10 It is apparent from the contested decision that the Board of Appeal took the view that there was no likelihood of confusion on the part of the relevant public, which consisted, in the present case, of the average end consumer, who was deemed to be reasonably well informed and reasonably observant and circumspect.
11 As regards the comparison of the goods covered by the marks at issue, the Board of Appeal confirmed the analysis of the Opposition Division, first, by finding that the goods in Classes 18 and 25 designated by the mark applied for were identical or similar to the ‘clothing, headgear and footwear’ covered by the earlier mark and, secondly, by rejecting the alleged similarity of the goods in Class 14 with the goods protected by the earlier mark.
12 As regards the comparison of the signs, the Board of Appeal, finding that they consisted of English language word elements, first of all distinguished the non-English-speaking public in the Member States of the European Union where, overall, consumers have little or no command of English, from the English-speaking public who have the capacity to understand the meaning of those word elements. First, the Board of Appeal found that there was a low degree of visual and phonetic similarity between the marks at issue for both the English-speaking and non-English-speaking public. Secondly, it found that, with regard to the non-English-speaking public, there was no conceptual similarity between the marks at issue, on the basis that the comparison was neutral, as those marks did not have any meaning for that public. With regard to the English-speaking public, it is apparent from the contested decision that the Board of Appeal observed only a low degree of similarity because of the difference in the conceptual meaning of the marks at issue.
13 Lastly, the Board of Appeal found, in contrast to the Opposition Division, that the inherent distinctiveness of the earlier mark was normal for the non-English-speaking public, and lower than average for the English-speaking public.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
15 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
The single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
16 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
17 It bases its action on a number of complaints relating to the assessment of the likelihood of confusion between the marks at issue made by the Board of Appeal in the contested decision. The applicant disputes the Board of Appeal’s assessment regarding the comparison of the goods, the comparison of the signs as well as the distinctive character of the earlier mark. Consequently, the applicant challenges the conclusion drawn by the Board of Appeal from that assessment, that there is no likelihood of confusion.
18 OHIM disputes the applicant’s arguments.
19 It must be pointed out that, under Article 151(1) of Regulation No 207/2009, an international registration designating the European Community is, from the date of its registration pursuant to Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), to have the same effect as an application for a Community trade mark. Article 156(1) of Regulation No 207/2009 provides that international registration designating the Community are to be subject to opposition in the same way as published Community trade mark applications.
20 Article 8(1)(b) of Regulation No 207/2009 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, an 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.
21 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
22 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative. Consequently, it is still necessary, even where the two marks are similar or identical, to adduce evidence of similarity between the goods or services covered by them (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraphs 42 and 43 and the case-law cited).
23 It is in the light of the abovementioned principles that it must be examined whether the Board of Appeal was right to find that there was no likelihood of confusion between the marks at issue.
The relevant public
24 It is common ground that the target public, as the Board of Appeal correctly pointed out having regard to the goods concerned which are those in Classes 14, 18 and 25, consists of average reasonably well-informed and reasonably observant and circumspect consumers. The Board of Appeal was right to find that the relevant territory with regard to which the consumer’s perception of the marks at issue must be taken into account consists of all the Member States of the European Union.
25 In that regard, the Board of Appeal, reiterating the Opposition Division’s analysis, correctly distinguished, in its assessment of the perception of the marks by consumers and the inherent distinctiveness of the earlier mark, between the English-speaking public and the non-English-speaking public, a distinction which the applicant does not dispute.
The comparison of the goods
26 First of all, it must be pointed out, as the Board of Appeal correctly found in paragraphs 8 and 9 of the contested decision, that the goods in Classes 18 and 25 covered by the mark applied for are identical or similar to the goods in Class 25 covered by the earlier Community trade mark. Those findings have not, moreover, been called into question by the parties.
27 By contrast, the applicant takes the view that the Board of Appeal was wrong to conclude that there was no similarity between the goods in Class 14 covered by the mark applied for, namely the items of jewellery, precious stones and watches, and the clothing, footwear and headgear in Class 25 covered by the earlier Community trade mark.
28 In the contested decision, confirming the Opposition Division’s analysis on that point, the Board of Appeal found that those goods were not similar because they were not made of the same materials, were not sold at the same prices or in the same sales outlets and were also not complementary.
29 Relying on the case-law, first, the applicant claims that those goods have a similar function, of an aesthetic nature, giving rise to a relationship of complementarity. Secondly, the price difference characterising the goods at issue does not constitute a distinguishing factor in the present case as the goods may be sold according to a wide price range. Thirdly, it takes the view that the goods may be sold under the same brands and through the same distribution channels, thus strengthening the link between them.
30 In that regard, it must be borne in mind that, in assessing the similarity between the goods, 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 the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
31 In the first place, it is necessary to reject the applicant’s argument alleging that the goods at issue are complementary in nature on the basis of their similar purpose of creating a harmonious aesthetic appearance.
32 As is apparent from settled case-law, goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see easyHotel, paragraphs 57 and 58 and the case-law cited).
33 It is indeed true that aesthetic complementarity between goods may give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 207/2009. Such aesthetic complementarity must involve a genuine aesthetic necessity, in the sense that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use the goods together (Case T‑169/03 Sergio Rossi v OHIM — Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 60 and 62, and Case T‑150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 36).
34 Nevertheless, it must be pointed out that the search for a certain aesthetic harmony in clothing is a common feature in the entire fashion and clothing sector and is too general a factor to justify, by itself, a finding that all the goods concerned are complementary and, thus, similar (see SISSI ROSSI, paragraph 62, and Case T‑116/06 Oakley v OHIM — Venticinque (O STORE) [2008] ECR II‑2455, paragraph 86).
35 To conclude that there is a similarity between the goods, consumers must also consider it usual that those goods are marketed under the same trade mark, which normally implies that a large number of the producers or distributors are the same (SISSI ROSSI, paragraph 63, and TOSCA BLU, paragraph 37).
36 In the present case, although it may be accepted that a consumer’s choice, when purchasing one of the products in Class 14, may be influenced by the intention of adorning or finishing off an outfit, it cannot, however, be held that there is a genuine aesthetic necessity to create that harmony, which makes the use of one of those products indispensable or important for the wearing of clothing, footwear and items of headgear.
37 Furthermore, as OHIM correctly states, it has already been held that there is no complementary connection between jewellery and watches, on the one hand, and items of clothing, on the other, on the ground that the relationship between those goods is too indirect to be regarded as conclusive (O STORE, paragraph 86). The same is true, a fortiori, as regards precious stones.
38 Lastly, although the applicant is right in stating that they may be sold under the same brands and appear together in fashion magazines, that is not, in any event, sufficient to show, first, that the goods are indispensable or important for each other’s use and, secondly, that consumers consider it ordinary and natural to use those goods together, as required by the case-law.
39 Furthermore, it must be pointed out that the nature of those goods is different. As the Board of Appeal states in paragraph 39 of the contested decision, they are made of different raw materials as the goods in Class 14 are generally made of precious stones and metals in contrast to the goods in Class 25.
40 In addition, as regards their intended purpose and method of use, it must be stated that the clothing, footwear and headgear in Class 25 are manufactured to cover, conceal, protect and adorn the human body, whereas jewellery and precious stones have an ornamental function and watches are used to measure and indicate the time (see, to that effect, judgment of 24 March 2010 in Case T‑364/08 2nine v OHIM — Pacific Sunwear of California (nollie), not published in the ECR, paragraph 33 and the case-law cited). Consequently, it must be held that consumers will, overall, inevitably perceive the use of those goods to be different.
41 Consequently, the Board of Appeal’s assessment that the goods in Class 14 at issue are neither in competition with nor complementary to the goods in Class 25 must be upheld.
42 In the second place, as regards the applicant’s argument that the goods in Class 14, like those in Class 25, may be offered for sale according to a wide price range, it must be admitted that there may in fact be an overlap in the price ranges covered by the goods at issue. However, that does not make it possible to call into question the distinction which was correctly made between those goods in the contested decision, particularly in view of what has been explained above regarding the nature, intended purpose and method of use of the goods at issue.
43 In the third place, the applicant cannot, likewise, reasonably claim that the distribution channels are identical. The evidence which it put forward before OHIM in that regard, which consists inter alia of documents from websites relating to well-known trade marks in the clothing sector and was in fact analysed, was rightly found to be insufficient by the Board of Appeal (see paragraph 39 of the contested decision). Although it must be accepted that the goods in question may be promoted by means of the same magazines as well as on the internet and be sold by producers, some of which are extending their range of goods, under the same brands, the fact remains that not all producers follow that practice. Moreover, it is possible to state, as did the Board of Appeal, that it is customary to see shops specialising in the sale of the goods in Class 14 in question, such as those relating to jewellery-making or watch-making, in which consumers may expect to receive specific advice from staff with specific knowledge, as has been held at least in respect of watches and jewellery (see, to that effect, nollie, paragraph 39). Consequently, it is unlikely that the relevant public will associate the outlets selling those particular goods with those selling the goods in Class 25.
44 In the light of the foregoing, since the goods at issue cannot be regarded as similar or a fortiori identical, the Board of Appeal did not err in finding that there could be no likelihood of confusion concerning them. Consequently, and in view of the case-law set out in paragraph 22 above, the action must be dismissed as regards the goods in Class 14.
45 The existence of a likelihood of confusion between the marks at issue must thus be assessed only with regard to the goods in Classes 18 and 25 covered by the mark applied for.
The comparison of the signs
46 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
47 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T‑6/01 Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30, and judgment of 10 December 2008 in Case T‑290/07 MIP Metro v OHIM — Metronia (METRONIA), not published in the ECR, paragraph 41).
48 It must be stated as a preliminary point that what is at issue concerns, on the one hand, the earlier word mark BEYOND RETRO and, on the other hand, the word mark applied for BEYOND VINTAGE.
49 It must be pointed out at the outset that, as the Board of Appeal correctly found, the two word elements of which the signs at issue consist are of equal overall importance, with the result that neither of those two elements is dominant in relation to the other.
50 In the first place, as regards the visual and phonetic comparison, it must be stated that the Board of Appeal, in the contested decision, found that there was a low degree of similarity between the signs BEYOND RETRO and BEYOND VINTAGE both for the English-speaking public and the non-English-speaking public. It also stated that the presence of the word ‘beyond’ at the beginning of both of the signs at issue could not give that word more weight and thus alter the degree of similarity between those signs.
51 The applicant submits that the marks share the same word, ‘beyond’, which is positioned identically at the beginning of each of the signs. In that regard, it relies on the principles laid down in the case-law of the Courts of the European Union, according to which the first component of word marks is more likely to catch the consumer’s attention.
52 OHIM states that, as the words of which those signs consist have the same importance overall, greater weight could not be attributed to the word ‘beyond’, in spite of its position at the beginning of the signs at issue. OHIM adds that the case-law relied on by the applicant is not relevant and cannot justify a difference in the assessment of the degree of similarity of the marks at issue. In any event, the Board of Appeal did not err in law in that regard, since it in fact found that there was a degree of visual and phonetic similarity, which it simply described as low.
53 As a preliminary point, it must be stated that the references to the case-law in paragraph 15 of the contested decision, concerning cases in which an average degree of similarity was upheld when one of the two words of which a mark consisted was the only element in the other mark, is, as the applicant observes, irrelevant, since that is not the case here.
54 As regards both the visual and phonetic aspects, it must be held that the signs at issue have the same structure since they both consist of two words — namely, on the one hand, ‘beyond’ and ‘retro’ and, on the other hand, ‘beyond’ and ‘vintage’ — which comprise the same number of syllables. Furthermore, they are more or less equal in length. Lastly, those signs begin with the same word element ‘beyond’, which will be more likely to attract the relevant public’s attention.
55 It is apparent from the case-law that the first part of a mark tends to have a greater visual and also phonetic impact than the final part (see, to that effect, Case T‑133/05 Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51 and Case T‑472/08 Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑3907, paragraph 62).
56 In particular, consumers are likely to take more note of a word placed at the beginning of a sign than the rest of the sign (see, to that effect, judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM — Editorial Planeta (FOCUS Radio), not published in the ECR, paragraphs 36 to 38 and the case-law cited, and judgment of 13 December 2012 in Case T‑34/10 Hairdreams v OHIM — Bartmann (MAGIC LIGHT), not published in the ECR, paragraph 29).
57 Although it is admittedly true that that principle is not absolute, as OHIM stated in its written pleadings and at the hearing, it has not, however, been shown that the second component of the signs should be regarded as the more distinctive component, or, consequently, that the relevant public will attach more importance to it. This cannot therefore neutralise the existence of a certain degree of similarity caused by the identity of the first part of the signs in the overall impression created by the marks at issue (see, to that effect and by analogy, judgment of 8 September 2010 in Case T‑369/09 Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), not published in the ECR, paragraphs 28 and 29).
58 It follows from the foregoing that, contrary to what the Board of Appeal found, and having regard to the case-law set out in paragraphs 55 and 56 above, the degree of similarity between the marks at issue, both visually and phonetically, cannot be regarded as low.
59 Although the second word element of those marks is different, when each of the marks is considered in its entirety their common element ‘beyond’ creates a certain degree of visual and phonetic similarity between them.
60 That similarity obtains for both the English-speaking and the non-English-speaking public. Furthermore, as the Board of Appeal stated in paragraph 17 of the contested decision, the phonetic analysis which has been carried out cannot be called into question on the basis of the pronunciation of one or other of those publics.
61 In the second place, as regards the conceptual comparison, first, taking into account the perception of the non-English-speaking public, the Board of Appeal, proceeding on the basis of the premiss that the English meanings of the marks were not understood or that the marks did not have a meaning in another European Union language, found that that comparison was neutral, that is to say that the marks were not similar. Secondly, with regard to the English-speaking public, the Board of Appeal found that the marks were not the same. First, the word ‘beyond’ could not, in itself, have any meaning, but had to be combined with another element in order to convey a concept. Secondly, the meanings of the word ‘vintage’ and the word ‘retro’ were not the same, the former referring to a general term for something which is old and dates from a particular year and the latter referring to a fashion style from past decades.
62 The applicant takes the view that, with regard to the non-English-speaking public, the Board of Appeal wrongly concluded that the marks were not similar on the basis solely of the finding of conceptual neutrality caused by the lack of understanding of the words that make up the marks at issue. With regard to the English-speaking public, the applicant submits that there is a certain degree of conceptual similarity between the marks in so far as, first, the common element ‘beyond’ conveys the same idea of ‘to go further than’ and, secondly, the elements ‘retro’ and ‘vintage’ both designate, in relation to the relevant products, a style belonging to the past.
63 As regards the English-speaking public, OHIM put forward, in the response and at the hearing, the argument that the words of which the marks at issue consist, understood according to their strict meaning, denoted something ‘from the past’, but in two different ways, with the element ‘retro’ denoting the idea of imitation of the past and the word ‘vintage’ referring to an authentic article dating from a particular year.
64 It should be noted at the outset that the relevant goods for the purpose of the comparison in the present case are those in Classes 18 and 25. As the applicant rightly submits, the Board of Appeal’s considerations in the contested decision relating to other goods, such as wine and cars, must be rejected, as the meaning of the words of which the marks at issue consist has to be assessed with regard to the goods in respect of which registration of the signs was sought (judgment of 6 June 2013 in Case T‑580/11 McNeil v OHIM — Alkalon (NICORONO), not published in the ECR, paragraph 44).
65 First, as regards the non-English-speaking public, it must be held that the Board of Appeal erred in finding that there was no conceptual similarity.
66 It is common ground that the word ‘beyond’ has no meaning for the public which does not have a command of English. It follows, as is apparent from paragraph 18 of the contested decision, that the conceptual analysis with regard to that word is neutral. However, contrary to what the Board of Appeal decided, that finding of neutrality does not make it possible to conclude that there is no similarity between the signs.
67 As regards the words ‘retro’ and ‘vintage’, it must be pointed out that the Board of Appeal limited itself, erroneously, to excluding the existence of any similarity on the basis of the incorrect premiss that those words had no meaning for that public.
68 The word ‘vintage’ may reasonably be considered to be an anglicism which is in common usage in countries other than the English-speaking countries of the European Union to describe fashions from the past. It is therefore part of the English vocabulary known and understood by a large part of the relevant public (see, to that effect, judgment of 11 May 2010 in Case T‑492/08 Wessang v OHIM — Greinwald (star foods), not published in the ECR, paragraph 52). As regards the word ‘retro’, it must be pointed out that this is understood in other European Union countries, inter alia inasmuch as it constitutes, in French, the abbreviation for the word ‘rétrograde’ (retrograde), as well as in cases where it is used as a prefix deriving from Latin and meaning ‘backwards’.
69 It follows that the word ‘beyond’, the meaning of which the public in question does not understand, does not affect the conceptual perception of the signs as a whole. It must also be observed that the element ‘vintage’, like the word ‘retro’, is commonly used to describe aesthetic styles, inter alia with regard to articles of clothing and clothing accessories, which have in common their evocation of the ‘past’ for a large part of the non-English-speaking public. There may therefore be held to be a similarity as regards the final parts of the marks at issue, as they have a clear and definite conceptual content (see, to that effect, NICORINO, paragraph 69 and the case-law cited).
70 Consequently, following a global assessment of the signs at issue, it may be concluded from those considerations that there is a conceptual similarity as regards the non-English-speaking public.
71 Secondly, as regards the English-speaking public, it must be stated, as has been pointed out by the applicant, that, although the word element ‘beyond’ is generally combined with another word, it nevertheless serves to convey, to that public, the idea of ‘to go further than’, which gives the marks at issue that facet in common.
72 As regards the words ‘retro’ and ‘vintage’, it is necessary to accept the Board of Appeal’s finding, which has not been refuted by the applicant, that there is a slight difference between those concepts — lying in the fact that the former corresponds to an imitation of a past style, whereas the latter is an indicator of a genuine and high quality product from the past — which will probably be perceived by the majority of English-speaking consumers.
73 The fact none the less remains that, for that public, those words evoke, inasmuch as they are part of the semantic field of that which is old, the idea of an aesthetic style from past years.
74 It follows, as the applicant submits, that that subtle difference between the words understood according to their strict meaning does not make it possible to deny that the marks at issue, considered as a whole and in relation to the relevant goods, will be perceived by the English-speaking public as referring to a style of clothing based on a recollection of the past.
75 Consequently, it must be held that there is a conceptual similarity for the English-speaking public also.
The likelihood of confusion
76 According to the applicant, the signs at issue are similar. Furthermore, although the word ‘retro’, considered in isolation, may have a low distinctive character, when it is combined with the element ‘beyond’, which is not descriptive of the goods at issue, the earlier mark BEYOND RETRO is highly distinctive. Lastly, there is a likelihood of confusion inasmuch as consumers may regard the two marks as designating ranges of clothes coming from the same clothing manufacturer.
77 OHIM takes the view that the Board of Appeal did not err in law in finding that, in view of the low degree of similarity between the marks, there was no likelihood of confusion on the part of the relevant public, even as regards the identical goods. Referring to the relevant case-law, OHIM also disputes that the consumer will perceive the two marks at issue as constituting two lines of clothing coming from the same undertaking, inter alia on account of the fact that the word ‘beyond’, although it is common to the two signs in question, does not constitute the dominant element thereof, thus excluding the application of the concept of sub-branding. Lastly, it submits that, given that the word ‘beyond’ can have contextual meaning only in the presence of the word ‘retro’, which is purely descriptive of the goods at issue, the Board of Appeal was right to find that the distinctiveness of the earlier mark was, overall, rather weak.
78 As a preliminary point, it is necessary to reject the applicant’s argument that the relevant public may regard the two marks as designating ranges of clothes coming from the same clothing manufacturer, given that the use of sub-brands is a common phenomenon in the clothing sector. As OHIM correctly submits, the relevant case-law in that regard relates to marks which share a common dominant element (see Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 51 and the case-law cited). That, however, is not true in the present case, in the light of what has been set out in paragraph 49 above, of the word ‘beyond’, which the marks at issue have in common.
79 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
80 With regard to the non-English-speaking public, the Board of Appeal found that, in view of the normal inherent distinctiveness of the earlier mark BEYOND RETRO, the low degree of visual and phonetic similarity together with the absence of a conceptual similarity were not enough to conclude that there was a likelihood of confusion, even as regards the identical goods (see paragraphs 32 and 33 of the contested decision).
81 As has been held in paragraphs 58 and 70 above, the contested decision erred in finding that there was a low degree of visual and phonetic similarity, and no conceptual similarity, with regard to that public. Those errors, made by the Board of Appeal, affect the degree of similarity which was found to exist between the signs at issue and, consequently, vitiate the global assessment of the likelihood of confusion carried out in the contested decision.
82 In the present case, it is common ground that the goods at issue are identical or similar as the Board of Appeal recognised in the contested decision. Furthermore, as regards the non-English-speaking public, there is a certain degree of visual, phonetic and conceptual similarity between the marks at issue.
83 Furthermore, as regards the distinctive character of the earlier mark, it is sufficient to point out, without it being necessary to examine the applicant’s argument claiming that the degree of that distinctive character is high, that, according to well-established case-law, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in 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 Case T‑134/06 Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70 and the case-law cited).
84 Consequently, having regard to the case-law cited in paragraph 79 above, it must be held that, contrary to what the Board of Appeal found in the contested decision, the non-English-speaking public, when faced with the marks at issue, will assume that the goods sold under those marks have the same commercial origin. It follows that there is a likelihood of confusion between the mark applied for and the earlier mark on the part of that public.
85 As regards the English-speaking public, it must be pointed out that, when it carried out the global assessment of the likelihood of confusion, the Board of Appeal, first of all, referred to the relevance of the distinction, within the relevant public, between English-speaking consumers and non-English-speaking consumers (see paragraph 25 above). However, in that analysis, conducted separately for each of those groups of consumers, regarding the existence of a likelihood of confusion, it drew a formal conclusion only with regard to the non-English-speaking public and did not state its view as regards the English-speaking public.
86 At the hearing, in accordance with the principle audi alteram partem and to comply with the requirements connected with the right to a fair hearing, the parties were asked whether there was any insufficiency of reasoning for the contested decision concerning the likelihood of confusion with regard to the English-speaking public and were able to set out their views on that matter, with the opportunity to challenge the views of the other party, as is apparent from the minutes of the hearing.
87 It must be borne in mind that a lack or an insufficiency of reasoning constitutes an infringement of essential procedural requirements for the purposes of the second paragraph of Article 296 TFEU and is a matter of public policy which the Courts of the European Union must raise of their own motion (see, to that effect, Case C‑89/08 P Commission v Ireland and Others [2009] ECR I‑1124, paragraph 34; and judgment of 30 June 2010 in Case T‑351/08 Matratzen Concord v OHIM — Barranco Schnitzler (MATRATZEN CONCORD), not published in the ECR, paragraph 17).
88 The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM must state the reasons on which they are based. It is settled case-law that that obligation has the same scope as that laid down by the second paragraph of Article 296 TFEU and that the statement of reasons required by that article must disclose in a clear and unequivocal manner the reasoning followed by the body which adopted the measure in question. The purpose of the obligation to state the reasons for OHIM’s decisions is twofold: to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and to enable the Courts of the European Union to exercise their power of review of the legality of the decision (Case C‑447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraphs 64 and 65; and judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), not published in the ECR, paragraph 86). However, in stating the reasons for the decisions which they are called on to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see Case T‑7/04 Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 81 and the case-law cited).
89 In the present case, it is apparent from the contested decision that the Board of Appeal’s analysis regarding the comparison of the signs was also carried out with regard to the English-speaking public. The Board of Appeal found, as it did in respect of the non-English-speaking public, that there was a low degree of visual and phonetic similarity. By contrast, as regards the conceptual comparison, unlike what it found as regards the non-English-speaking public where it concluded that there was no conceptual similarity, the Board of Appeal found that there was a low degree of conceptual similarity between the marks at issue.
90 That latter finding concerning the conceptual aspect of the comparison might, to a certain extent, have been capable of giving rise to a change in the Board of Appeal’s findings on the likelihood of confusion with regard to the English-speaking public compared with the other part of the relevant public.
91 That analysis is not capable of being called into question by the fact that the Board of Appeal also categorised the distinctiveness of the earlier mark as lower than average in respect of the English-speaking public, as OHIM maintained at the hearing. The global assessment of the likelihood of confusion implies, for the Board of Appeal, not only taking into account the distinctive character of the earlier mark, but, above all, weighing up the various relevant factors regarding the similarity of the goods and that of the signs and their interdependence, as is apparent from settled case-law (see, inter alia, paragraphs 21 and 79 above).
92 The statement of reasons for the contested decision does not show that the Board of Appeal carried out a global assessment of the likelihood of confusion as regards the English-speaking public. That omission, as regards a legal consideration having decisive importance in the context of the decision, makes it impossible to understand, in a clear and unequivocal manner, the conclusion attached to the reasoning followed by the Board of Appeal in its assessment of the likelihood of confusion concerning that public.
93 In that regard, it must be held that, in the contested decision, the Board of Appeal failed to provide a sufficient statement of reasons.
94 It follows that the contested decision, in so far as it concerns the goods in Classes 18 and 25, is unlawful on account both of the infringement of Article 8(1)(b) of Regulation No 207/2009, as regards the existence of a likelihood of confusion with regard to the non-English-speaking public, and of the infringement of the obligation to state reasons, as regards the global assessment of the likelihood of confusion with regard to the English-speaking public.
95 In the light of all of the foregoing, first, the applicant’s action must be upheld and, consequently, the contested decision must be annulled as regards the goods in Classes 18 and 25 and, secondly, that action must be dismissed as to the remainder.
Costs
96 Under Article 87(3) of the Rules of Procedure, the General Court may order that the costs be shared or that each party bear its own costs where each party succeeds on some and fails on other heads. In the present case, the applicant and OHIM have failed in part of their claims. Consequently, it is appropriate to order the applicant to pay one third of the costs incurred by the parties before the Court and to order OHIM to pay two thirds of those costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 January 2012 (Joined Cases R 493/2011-4 and R 548/2011-4) in so far as it concerns the goods covered by the word mark BEYOND VINTAGE in Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended;
2. Dismisses the action as to the remainder;
3. Orders Beyond Retro Ltd to pay one third of the costs incurred by the parties before the Court and orders OHIM to pay two thirds of those costs.
Delivered in open court in Luxembourg on 30 April 2014.
[Signatures]