JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 November 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Bergsteiger — Earlier Benelux word marks and EU figurative and word marks BERG — Relative ground for refusal — Article 47(1) and (2) of Regulation (EU) 2017/1001 — Admissibility of a request for proof of genuine use — No likelihood of confusion — Article 8(1)(b) of Regulation 2017/1001)
In Case T‑736/18,
Runnebaum Invest GmbH, established in Diepholz (Germany), represented by W. Prinz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Berg Toys Beheer BV, established in Ede (Netherlands), represented by E. van Gelderen, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 October 2018 (Case R 572/2018-4) relating to opposition proceedings between Berg Toys Beheer and Runnebaum Invest,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberation, of S. Gervasoni, President, K. Kowalik‑Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 14 December 2018,
having regard to the response of EUIPO lodged at the Court Registry on 12 March 2019,
having regard to the response of the intervener lodged at the Court Registry on 8 March 2019,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 24 February 2016, the predecessor in law to the applicant, Runnebaum Invest GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign Bergsteiger.
3 The goods and services in respect of which registration was initially sought are in Classes 12 and 35 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 to the following description:
– Class 12: ‘Vehicles: apparatus for locomotion by land’;
– Class 35: ‘Retailing of vehicles, apparatus for locomotion by land; advertising; business management’.
4 The application was published in Community Trade Marks Bulletin No 2016/055 of 21 March 2016.
5 On 21 June 2016, the intervener, Berg Toys Beheer BV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001). The opposition was based on:
– the earlier Benelux word mark BERG (‘the first earlier mark’), registered on 25 January 1999 under number 653413 and renewed until 2 February 2019 for goods in Classes 12 and 28 corresponding, for each of those classes, to the following description:
– Class 12: ‘Vehicles over land’;
– Class 28: ‘Pedal go-karts (toy), toy-wagons, beach wagons (toy), toy trailers, toy wheel-barrows, toy tipper-trailors, toy scooters, toy diggers, toy tank trailors, toy cranes’;
– the earlier EU figurative mark BERG (‘the second earlier mark’), registered on 18 June 2011 under number 6446439 for goods and services in Classes 12, 28 and 41 corresponding, for each of those classes, to the following description:
– Class 12: ‘Means of transport, excluding bicycles and children’s bicycles; moving vehicles for children’;
– Class 28: ‘Toys, including construction toys, moving toys, other moving playing equipment and trampolines’;
– Class 41: ‘Education, providing of training, entertainment, sporting activities’;
– the earlier EU word mark BERG (‘the third earlier mark’), registered on 18 May 2011 under number 8305393 for goods in Class 28 corresponding to the following description: ‘Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees’.
6 The second earlier mark, on which, inter alia, the opposition was based, is represented below:
7 It follows from the contested decision that the grounds on which the opposition was based were ‘those laid down in Article 8(1)(b) [of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, p. 1)]’. The opposition was directed against all the goods and services covered by the mark applied for and was based on all the goods and services designated by the earlier marks.
8 On 6 April 2017, the applicant filed its reply to the opposition. The following sentence appeared on the last page thereof, under the heading ‘Non-use’: ‘Furthermore, we raise the objection of non-use (Art. 15).’
9 By notification of 11 April 2017, the Opposition Division invited the intervener to prove use of the first earlier mark for all the goods and services on which the opposition was based and informed the intervener that the request for proof of use for the second and third earlier marks could not be taken into account, since it concerned marks which, at the date on which the trade mark application was filed, had not been registered for at least five years. In response, the intervener furnished proof of use.
10 On 22 February 2018, the Opposition Division rejected the opposition in its entirety.
11 On 28 March 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12 On 5 September 2018, the applicant requested a limitation of the list of goods and services covered by its application for registration (‘the first limitation request’) so as to cover only goods and services corresponding to the following description:
– Class 12: ‘Vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats’;
– Class 35: ‘Retailing of vehicles and apparatus for locomotion by land, namely the following goods: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats; Advertising concerning the following goods, namely the following goods [sic]: cars; motorcycles; scooters; e-bicycles; ebikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats; Business management concerning the following goods, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats’.
13 By decision of 22 October 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the intervener’s appeal in part. It upheld the opposition for the ‘vehicles: apparatus for locomotion by land’ in Class 12 and for the ‘retailing of vehicles, apparatus for locomotion by land’ in Class 35.
14 The Board of Appeal found that the opposition was based on the first earlier mark, on the one hand, and the second earlier mark, on the other. As regards the third earlier mark, the Board of Appeal found, in essence, that it could not serve as a basis for the opposition, since it was registered only for the goods in Class 28, which were different from the goods and services listed in the trade mark application.
15 The Board of Appeal’s findings on the merits of the opposition can be summarised as follows.
16 In the first place, as regards the first earlier mark, the Board of Appeal found that the applicant’s request for proof of use (see paragraph 8 above) did not meet the conditions laid down in Article 47(2) and (3) of Regulation 2017/1001, failing any details of the provision on which it was based, the earlier mark in question and the goods and services covered. It therefore found that ‘there was no request of proof of use filed for [the first] earlier mark’.
17 As regards the assessment of the merits of the opposition, the Board of Appeal found, in essence, that the goods in Class 12 covered by the trade mark application, namely ‘vehicles: apparatus for locomotion by land’, were identical to the goods ‘vehicles over land’ in the same class, in respect of which the first earlier mark was registered. With regard to the services in Class 35 covered by the trade mark application, the Board of Appeal found, first, that the services of ‘retailing of vehicles, apparatus for locomotion by land’ were similar to an average degree to the goods covered by the first earlier mark in Class 12 and, secondly, emphasised the complementary relationship between those services and the goods covered by the first earlier mark. On the other hand, it found that the ‘advertising and business management’ services in Class 35 were not similar to any of the goods covered by the first earlier mark. As regards the comparison of the signs, the mark applied for and the first earlier mark were, according to the Board of Appeal, visually and phonetically similar to an average degree and conceptually similar to an average degree for the Dutch-speaking part of the relevant public, which forms the majority in the Benelux countries. The Board of Appeal also noted the normal level of inherent distinctiveness of the first earlier mark and, on the basis of all the above factors, concluded that the opposition should be upheld for all the goods and services in Classes 12 and 35 covered by the trade mark application, with the exception of the ‘advertising and business management’ services in Class 35, on the ground that there was a likelihood of confusion on the part of the public in the territory in which the earlier mark was protected, within the meaning of Article 8(1)(b) of Regulation 2017/2001.
18 In the second place, as regards the second earlier mark, the Board of Appeal found that the goods in Class 12 covered by the trade mark application, namely ‘vehicles: apparatus for locomotion by land’, included in a more general category the goods in Class 12 covered by the second earlier mark, namely ‘moving vehicles for children’, and that they were therefore identical. With regard to the services in Class 35 covered by the trade mark application, the Board of Appeal applied the same reasoning as that set out in the part of the contested decision relating to the first earlier mark. As regards the comparison of the signs, the Board of Appeal found that the marks at issue were visually similar to a below average degree and phonetically similar to an average degree. In respect of the conceptual comparison, the Board of Appeal referred to its analysis of the first earlier mark. The above factors led the Board of Appeal to conclude that the opposition was well founded in respect of all the goods and services in Classes 12 and 35 covered by the trade mark application, with the exception of the ‘advertising and business management’ services in Class 35, on the ground that there was a likelihood of confusion on the part of the public in the territory in which the earlier mark was protected, within the meaning of Article 8(1)(b) of Regulation 2017/2001.
19 Lastly, in the third place, the Board of Appeal examined the first limitation request (see paragraph 12 above). It noted in that regard, in essence, that although the limitation requested explicitly restricts the general terms ‘vehicles, apparatus for locomotion by land’ in the applicant’s initial application for registration by adding the word ‘namely’ and a list of various types of vehicles and apparatus for locomotion by land and, in particular, various categories of bicycles and buggies for children, that list also covered ‘child safety seats’. According to the Board of Appeal, since the latter goods are not vehicles or apparatus for locomotion by land, the limitation request entailed, in respect of those goods, an inadmissible extension of the list of goods and services. As a result of that extension, the Board of Appeal rejected the first limitation request in its entirety.
20 The fact remains that, in paragraphs 67 to 74 of the contested decision, the Board of Appeal compared the goods and services as referred to in the admissible part of the first limitation request with the goods and services for which the first and second earlier marks were registered. It concluded that, ‘had the applicant requested the limitation just for the admissible part (quod non), the outcome of the opposition as reasoned [in the contested decision] would not [have been altered]’.
21 On 12 November 2018, the applicant requested a second limitation of the list of goods and services covered by its application for registration (‘the second limitation request’).
Forms of order sought
22 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
23 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
24 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
General clarification
25 It is clear from the background to the dispute set out in paragraphs 1 to 20 above that although the trade mark application was filed under Regulation No 207/2009, the contested decision was issued by the Board of Appeal of EUIPO after Regulation 2017/1001 entered into force.
26 However, since that regulation codified Regulation No 207/2009 without substantially amending the provisions thereof relevant to the present dispute, reference will be made, in the remainder of this judgment, exclusively to the provisions of Regulation 2017/1001.
Subject matter of the dispute
27 In the application, the applicant states that, in November 2018, it ‘updated’ the first limitation request. It states that the list of goods and services covered by the trade mark application resulting from that limitation is as follows:
– Class 12: ‘Vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies’;
– Class 35: ‘Retailing of vehicles and apparatus for locomotion by land, namely the following goods: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; Advertising concerning the following goods …: cars; motorcycles; scooters; e-bicycles; ebikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; Business management concerning the following goods, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies’.
28 By letter of 13 March 2019, EUIPO stated that the second limitation request, filed by the applicant on 12 November 2018, corresponded exactly to the admissible part of the first limitation request, in that it did not contain ‘child safety seats’ in any of the classes concerned. For that reason, EUIPO is of the opinion that the second limitation request is admissible and does not change the subject matter of the appeal before the Board of Appeal.
29 In response to the measure of organisation of procedure of 18 July 2019, by which the Court invited the parties to comment on EUIPO’s letter of 13 March 2019, the intervener contends that that letter may be ignored, since, in the contested decision, the Board of Appeal concluded, in essence, that the second limitation request would not affect the outcome of the opposition.
30 Under Article 31(1)(c) of Regulation 2017/1001 ‘an application for an EU trade mark shall contain … a list of the goods or services in respect of which the registration is requested’. Article 49(1) of Regulation 2017/1001 provides that ‘the applicant may at any time withdraw his EU trade mark application or restrict the list of goods or services contained therein’.
31 Under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal.
32 According to settled case-law, the Court may annul or alter a decision of a Board of Appeal of EUIPO only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration referred to in Article 72(2) of Regulation 2017/1001. In accordance with Article 95 of that regulation, the Court must give judgment in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 20 November 2007, Tegometall International v OHIM — Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraphs 19 and 20 and the case-law cited). The Court may not annul or alter the Board of Appeal’s decision on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 24).
33 Furthermore, a statement by the trade mark applicant subsequent to the decision of the Board of Appeal, in which he withdraws his application in respect of some of the goods covered by the initial application, may be interpreted as a statement that the contested decision is being challenged only in so far as it covers the remainder of the goods concerned or as a partial withdrawal, where that statement is made at an advanced stage of the proceedings before the Court. Thus, such a limitation must be taken into account by the Court, since it is being asked to review the legality of the Board of Appeal’s decision not in so far as it relates to the goods or services withdrawn from the list but only in so far as it relates to the other goods or services remaining on that list (see, to that effect, judgment of 9 July 2008, Mozart, T‑304/06, EU:T:2008:268, paragraphs 27 and 28 and the case-law cited).
34 In the present case, it is common ground that the second limitation request was made after the contested decision was adopted.
35 The fact remains that, first, that limitation corresponds exactly to the part of the first limitation request that was deemed admissible in the contested decision and, secondly, in that decision, the Board of Appeal examined the merits of the opposition by taking into account both the initial version of the list of goods and services covered by the trade mark application and, for the sake of completeness, the version of that list amended by the admissible part of the first limitation request. At the end of that examination, it concluded that its assessment of the opposition was not affected by the admissible part of the limitation (see paragraphs 19 and 20 above).
36 It follows that the Board of Appeal examined the merits of the opposition by taking into account not only the list of goods and services covered by the trade mark application in its initial version, but also the version corresponding exactly to the second limitation request. The second limitation request cannot therefore be considered to alter the subject matter of the proceedings before the Board of Appeal.
37 It is therefore necessary to take the second limitation request into account and to interpret the application as meaning that, by its action, the applicant is seeking annulment of the contested decision in so far as, in its assessment of the merits of the opposition, the Board of Appeal took into account the list of goods and services covered by the trade mark application as amended by the admissible part of the first limitation request.
The pleas in law relied upon in support of the action
38 In the application, the applicant explicitly relies on only the sole infringement of Article 47(2) and (3) of Regulation 2017/1001. However, as rightly observed by EUIPO, it can easily be inferred from the arguments put forward in the application that, in support of its action, the applicant raises two pleas in law, the first alleging infringement of Article 47(2) and (3) of Regulation 2017/1001 and the second alleging infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 47(2) and (3) of Regulation 2017/1001
39 By the first plea, the applicant submits that, by finding that the objection of non-use of the first earlier mark that it raised on 6 April 2017 was inadmissible, the Board of Appeal infringed Article 47(2) and (3) of Regulation 2017/1001.
40 According to the applicant, its request for proof of use complied both with the provisions referred to in paragraph 39 above and with the EUIPO examination guidelines. In particular, the applicant claims that the Board of Appeal was incorrect in finding that its request for proof of use was not sufficiently precise.
41 The applicant submits that the intervener was able to furnish proof of use of the first earlier mark only in respect of ‘pedal go-karts (toy)’ and ‘trampolines for children’. Those goods are protected as toys in Class 28, but could not be regarded as ‘vehicles’ or ‘apparatus for locomotion over land’ in Class 12. The Board of Appeal therefore erred in disregarding the objection of non-use and in basing its comparison on all the goods covered by the earlier mark rather than solely on the abovementioned goods.
42 EUIPO acknowledges that the first plea is well founded.
43 The intervener submits that it furnished proof of genuine use of the first earlier mark not only for go-karts and trampolines, but also for bicycles, scooters and racers, trailers for go-karts, and push bikes. All those goods are in Class 12, which is confirmed by the EUIPO classification tool ‘TMclass’. Moreover, bearing in mind the expression ‘in particular’ in the Class 12 list, proof of genuine use furnished for only some of the goods in that class would be sufficient to demonstrate genuine use of the first earlier mark for all the goods in that class.
44 In the first place, it follows from Article 47(2) of Regulation 2017/1001 that ‘if the applicant so requests’, the proprietor of an earlier trade mark who has given notice of opposition is to furnish proof of genuine use of the earlier trade mark on which the opposition is based.
45 Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), which relates to proof of use and is applicable rationae temporis to requests for proof of use submitted before 1 October 2017, pursuant to Article 80 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), read in conjunction with Article 82(1)(d) of that regulation, provides that, where the opposing party has to furnish proof of use of the trade mark or show that there are proper reasons for non-use, EUIPO is to invite him to provide the proof required within such period as it is to specify. Where the opposing party does not provide such proof before the time limit expires, the opposition is to be rejected.
46 It must be noted that the provisions of the regulations governing the EU trade mark that are applicable in the present case do not lay down any specific requirements as to the form and content of the applicant’s request referred to in Article 47(2) of Regulation 2017/1001.
47 As observed by EUIPO, such conditions have not been established by case-law either. According to case-law, a request within the meaning of Article 47(2) of Regulation 2017/1001 must be made expressly and timeously to EUIPO, bearing in mind that the expression ‘timeously’ not only concerns the observance of any period laid down, but also implies the requirement to present that request before the Opposition Division, not for the first time before the Board of Appeal (see, to that effect, judgment of 22 March 2007, Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraphs 34 to 41 and the case-law cited).
48 Furthermore, as noted by both the applicant and EUIPO, point 3.1.3 of the EUIPO Guidelines, in Part C, headed ‘Opposition’, Section 6, headed ‘Proof of use’, point 3, headed ‘Procedure’, point 3.1, headed ‘Admissibility of the request for proof of use’, of those guidelines lists various examples of requests for proof of use considered to be ‘sufficiently explicit and unambiguous’. Those examples include the sentence indicating that ‘the applicant raises the objection of non-use’.
49 In the present case, it is clear from the case file that, in its reply to the notice of opposition filed before the Opposition Division on 6 April 2017, the applicant included in paragraph 4, headed ‘Non-use’, the following sentence: ‘Furthermore, we raise the objection of non-use (Art. 15)’ (see paragraph 8 above).
50 According to the Court, contrary to what the Board of Appeal stated in paragraph 27 of the contested decision, that sentence must be regarded as a request within the meaning of Article 47(2) of Regulation 2017/1001, formulated in accordance with the requirements of that regulation, Regulation No 2868/95 and the case-law. By that sentence, inserted in a separate paragraph of its reply to the opposition, with a heading referring to non-use, the applicant explicitly and unambiguously contested the genuine use of the earlier marks.
51 In that regard, the applicant correctly observes that, in view of how it has worded its application (see paragraph 49 above), it was not necessary to specify that it was based on Article 47(2) and (3) of Regulation 2017/1001. Likewise, given the context of the request for proof of use at issue, in particular the fact that the second and third earlier marks were covered by the grace period, it was sufficiently clear that the request related to the first earlier mark. Lastly, as observed by the applicant and EUIPO, it follows from Article 47(2) of Regulation 2017/1001, in particular from the passage according to which proof of use must be furnished ‘in connection with the goods or services in respect of which [the trade mark] is registered and [on which the opposition is based]’, that, where a request for proof of genuine use does not specify that it concerns specific goods and services, it is assumed by default that it covers all those on which the opposition is based.
52 It follows from the foregoing that, as also acknowledged by EUIPO, the Board of Appeal was incorrect in finding in the contested decision that no request for proof of use had been filed before the Opposition Division in respect of the first earlier mark.
53 In the second place, according to settled case-law, where the applicant for the trade mark raises the matter of genuine use of the earlier mark, the Board of Appeal is required to examine that matter before examining the opposition proper. By failing to examine the question of genuine use in those circumstances, the Board of Appeal is erring in law (see, to that effect, judgments of 22 March 2007, PAM PLUVIAL, T‑364/05, EU:T:2007:96, paragraph 37; of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraphs 30 and 34; and of 11 July 2017, Dogg Label v EUIPO — Chemoul (JAPRAG), T‑406/16, not published, EU:T:2017:482, paragraphs 79 and 83).
54 Since, in the present case, the applicant validly raised the matter of genuine use of the first earlier mark, the Board of Appeal erred in law by failing to examine that matter before examining the opposition in so far as it was based on that mark.
55 In the third place, the applicant and the intervener are in disagreement as to the substantive assessment of the proof of genuine use of the first earlier mark furnished by the intervener. In that regard, it must be borne in mind that the power of the Court, under Article 72(3) of Regulation 2017/1001, to alter decisions does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
56 In the present case, the Board of Appeal did not take a decision on the genuine use of the first earlier mark. The conditions for the exercise of the Court’s power to alter decisions, as set out in the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), are therefore not met and the Court cannot carry out a substantive assessment of the matter of the genuine use of that mark.
57 It follows from the foregoing that, by finding, in essence, that the request for proof of use of the first earlier mark made by the applicant was inadmissible and by failing, consequently, to take that request into account when examining the opposition in so far as it was based on that mark, the Board of Appeal infringed Article 47(2) and (3) of Regulation 2017/1001. The first plea in law must therefore be upheld.
58 In that regard, it should be recalled that the Board of Appeal’s decision to annul the decision of the Opposition Division and to uphold the opposition is based on both the first and the second earlier mark (see paragraphs 14 to 18 above). The intervener was not required to furnish proof of genuine use of the second earlier mark, since it had not been registered for at least five years at the date on which the trade mark application was filed (see paragraph 9 above).
59 It follows that, as correctly observed by EUIPO, the Board of Appeal’s error in examining the opposition in so far as it is based on the first earlier mark cannot in itself entail annulment of the contested decision.
60 The second plea in law must therefore be examined. However, among all the arguments put forward by the applicant in the second plea, it is sufficient to examine those by which it contests the Board of Appeal’s conclusion that the opposition should be upheld in so far as it was based on the second earlier mark.
The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
61 By the arguments set out in paragraphs 46 to 55 of the application, which may be interpreted as constituting a plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the applicant submits, in essence, that the Board of Appeal was incorrect in upholding the opposition on the basis of the second earlier mark (see paragraph 5, second indent, above). According to the applicant, owing to the differences between the goods and services covered by the mark applied for, as defined in the second limitation request (see paragraph 37 above), and those covered by the second earlier mark, and owing to differences between the signs at issue, there is no likelihood of confusion on the part of the public in the territory in which the earlier mark is protected, within the meaning of the above provision.
62 EUIPO and the intervener dispute the applicant’s arguments and refer, in essence, to the statement of reasons for the contested decision.
63 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.
64 In the present case, it must be assessed whether the Board of Appeal was correct in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 stemming from the fact that the mark applied for and the second earlier mark were identical or similar and that the goods and services designated by those marks were identical or similar.
– The relevant public
65 There is no passage in the contested decision relating to the definition of the relevant public and its level of attention. It can nevertheless be inferred from the contested decision, in particular paragraphs 38, 40, 46, 58 and 60 thereof, that the Board of Appeal assessed whether there was a likelihood of confusion from the point of view of the Dutch-speaking Benelux public and that it found that the level of attention of that public might be heightened.
66 In that regard, first, it is true that the second earlier mark is an EU trade mark and that, therefore, the assessment of the likelihood of confusion should normally have taken into account the perception of the marks at issue by the consumer of the goods or services in question throughout the territory of the European Union, not only the Benelux countries. However, it is settled case-law that it is sufficient, for an EU trade mark to be refused registration, that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists only in part of that territory (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
67 Secondly, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
68 As regards goods in Class 12, it follows from case-law that the relevant public may consist of the general public or indeed professionals and that its level of attention may vary from average to very high, in particular depending on the price of the product concerned (see, to that effect, for ‘vehicles and apparatus for locomotion by land’, inter alia cars and other motor vehicles, judgments of 22 March 2011, Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 35, and of 21 March 2012, Volkswagen v OHIM — Suzuki Motor (SWIFT GTi), T‑63/09, not published, EU:T:2012:137, paragraphs 41 and 42; for ‘strollers’ and ‘vehicles as well as their parts and accessories’, judgment of 28 October 2015, Verus v OHIM — Joie International (MIRUS), T‑576/13, not published, EU:T:2015:810, paragraph 32, and, for ‘bicycles’ and ‘motorcycles’, judgment of 14 May 2019, Zweirad-Center Stadler v EUIPO — Triumph Designs (Triumph), T‑12/18, not published, EU:T:2019:328, paragraph 21).
69 The Board of Appeal’s definition of the relevant public and its level of attention is therefore devoid of any error of assessment, which is not, moreover, disputed by the applicant.
– The comparison of the goods and services
70 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
71 Whether the goods and services in Classes 12 and 35, as set out in the lists amended by the second limitation request (see paragraph 27 above), and the goods in Class 12 in respect of which the second earlier mark was registered (see paragraph 5, second indent, above) are similar must be examined in the light of that case-law.
72 In paragraphs 71 to 74 of the contested decision, the Board of Appeal found, with regard to the goods in Class 12, first, that ‘vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters’ were all included in the more general category of goods in Class 12 corresponding to ‘means of transport, excluding bicycles and children’s bicycles’ and that those goods were thus identical.
73 Secondly, the Board of Appeal found that ‘“vehicles and apparatus for locomotion by land, namely: e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies” [were] not “means of transport” as referred to in Class 12 of [the second earlier mark]’. According to the Board of Appeal, those goods were, ‘however, identical or highly similar to the [goods covered by the earlier mark corresponding to] “moving vehicles for children” which not only [included] bicycles but also for instance go-karts, scooters or autopeds’.
74 As regards the services in Class 35, the Board of Appeal did not carry out a new analysis of similarity between the services as set out in the list amended by the second limitation request and the goods in respect of which the second earlier mark was registered, but merely referred to its analysis in the part of the contested decision relating to the comparison of the services designated in the initial trade mark application and the goods in respect of which the first earlier mark was registered. That analysis may be summed up as the finding that the retail services for the goods covered by the trade mark application were similar to an average degree to the goods in respect of which the second earlier mark was registered, because all those goods were identical. The Board of Appeal inferred therefrom that the services covered by the trade mark application could be offered in the same places as those in which the goods covered by the second earlier mark were sold (paragraphs 32 to 34 and 73 of the contested decision).
– The goods in Class 12
75 In the first place, as regards ‘vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters’ covered by the trade mark application, it is settled case-law that goods may be considered identical when the goods designated by the earlier mark are included in a more general category covered by the trade mark application or when the goods covered by the trade mark application are included in a more general category covered by the earlier mark (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
76 In the light of that case-law, the Board of Appeal did not err in its assessment in finding that ‘vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters’ were all included in the more general category of goods in Class 12 corresponding to ‘means of transport, excluding bicycles and children’s bicycles’ and that those goods were thus identical.
77 In the second place, with regard to the various types of bicycles covered by the trade mark application, it should be recalled that the applicant’s second limitation request, which consisted, as regards Class 12, of the addition of a list of goods preceded by the word ‘namely’, had the effect of creating a closed catalogue of the goods designated by the mark applied for. With the exception of ‘cars; motorcycles; scooters’, referred to in paragraph 76 above, and ‘buggies’, which will be addressed in paragraph 87 below, that catalogue specifically includes the various types of bicycles, as listed in paragraph 73 above.
78 It should also be recalled that the second earlier mark is registered for ‘means of transport, excluding bicycles and children’s bicycles; moving vehicles for children’. It follows that the intervener also limited the list of goods so as to exclude ‘bicycles and children’s bicycles’ from all means of transport.
79 In that regard, it should be noted that the present case shows that the list of goods designated by the second earlier mark is imprecise. The concept of ‘means of transport’ is so general and broad that it may naturally be understood as including ‘moving vehicles for children’. Thus, the answer to the question whether the intervener’s limitation referred to in paragraph 78 above covers only ‘means of transport’ or whether it covers all the goods in respect of which the earlier mark is registered, that is to say, ‘means of transport’ and ‘moving vehicles for children’ understood as forming part of ‘means of transport’, is not clear. In the Court’s view, interpreting the limitation made by the intervener as meaning that it covers only ‘means of transport’ and does not concern ‘moving vehicles for children’ is not admissible. That interpretation means that ‘moving vehicles for children’ may always be considered to include ‘bicycles and children’s bicycles’ and thereby deprives the limitation in question of its practical effect. Indeed, that interpretation allows the intervener to extend the protection conferred by the second earlier mark to goods which, moreover, were excluded from the list of goods in respect of which that mark was registered. In a dispute such as that in the present case, in which the goods covered by the earlier mark are compared to bicycles, that interpretation thus grants the intervener the opportunity to gain from the imprecision of the list of goods referred to above.
80 According to case-law, the goods and services for which the protection of a trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. The proprietor of the trade mark should not gain from the infringement of its obligation to draw up the list of goods with clarity and precision (see, to that effect, judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraphs 45 and 48 and the case-law cited).
81 In the present case, the Board of Appeal found, in paragraph 72 of the contested decision, that the various ‘bicycles’ covered by the trade mark application were not ‘means of transport’, but that they were, however, covered by the concept of ‘moving vehicles for children’, alongside the goods corresponding to ‘go-karts, scooters or autopeds’. As such, ‘bicycles’ were identical or highly similar to those ‘moving vehicles for children’.
82 That conclusion of the Board of Appeal is incorrect.
83 First, contrary to what was found by the Board of Appeal, bicycles are indeed a means of transport for persons and goods, whether in the context of transport to the workplace, the practising of sport, or bicycle tourism. In those circumstances, it must be held that the various bicycles covered by the mark applied for are similar to a low degree to the ‘means of transport, excluding bicycles and children’s bicycles’ covered by the second earlier mark, which include, as stated in paragraph 76 above, motorcycles (see, to that effect, judgment of 14 May 2019, Triumph, T‑12/18, not published, EU:T:2019:328, paragraphs 34 and 35).
84 Secondly, the Board of Appeal’s conclusion is based on a restrictive interpretation of the limitation made by the intervener which cannot be accepted for the reasons set out in paragraphs 79 and 80 above. It follows from those paragraphs that such an interpretation of the exclusion of ‘bicycles and children’s bicycles’ introduced by the intervener in the list of goods covered by the second earlier mark would deprive the limitation of its practical effect.
85 In that regard, according to the settled case-law referred to in paragraph 70 above, the similarity of the goods or services at issue must be assessed by taking all the relevant factors relating to those goods or services into account.
86 As mentioned in paragraph 83 above, the various bicycles covered by the trade mark application are used to transport persons and goods to the workplace, to practise sport, or for bicycle tourism. They are also, with the exception of ‘children’s bicycles’, intended to be used by adults. On the other hand, while ‘moving vehicles for children’, which include, as observed by the Board of Appeal, go-karts or scooters, might be used for transport purposes, their primary purpose is play and leisure and they are intended for a specific public, namely children. In the light of those different purposes and the public targeted by the goods concerned, the various bicycles and ‘moving vehicles for children’ cannot be considered to be identical. On the contrary, it must be accepted that there is only weak similarity between those goods.
87 Lastly, in the third place, as regards buggies, it follows from case-law that they are closely related to cots or infant beds in their purpose of transporting, on wheels, small children, by non-motorised energy derived from an adult’s push, and are different to ‘vehicles’ (see, to that effect, judgment of 28 October 2015, MIRUS, T‑576/13, not published, EU:T:2015:810, paragraph 37). As such, they are different to ‘moving vehicles for children’ and cannot, contrary to what was concluded by the Board of Appeal, be regarded as identical to those vehicles. First, buggies are evidently not intended for play or leisure and, secondly, unlike toys, they are not used by children themselves, but rather by the adults who use them to transport children. The fact remains that all those goods share the same distribution channels and may be sold in the same stores with equipment for children. For that reason, they must be considered similar to an average degree.
88 It follows from the foregoing that, as regards the various ‘vehicles and apparatus for locomotion by land’ covered by the trade mark application, they are in part identical (‘cars; motorcycles; scooters’), in part similar to a low degree (‘e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children’) and in part similar to an average degree (‘buggies’) to the goods covered by the second earlier mark.
– The services in Class 35
89 As regards the services in Class 35, apart from the extremely generic nature of the statement of reasons for the contested decision, it is sufficient to note that the Board of Appeal’s analysis is based on the premiss that all the goods covered by the trade mark application are identical to the goods covered by the second earlier mark. As follows from the reasoning in paragraphs 77 to 87 above, that premiss is false.
90 In that regard, EUIPO correctly recalls case-law from which it follows that the degree of similarity between retail services for a specific product and the product itself is considered to be ‘not low’ (see, to that effect, judgment of 20 March 2018, Grupo Osborne v EUIPO — Ostermann (DONTORO dog friendship), T‑390/16, not published, EU:T:2018:156, paragraphs 30 to 33).
91 It follows that the retail services for the goods covered by the trade mark application that are identical and similar to an average degree to the goods covered by the earlier mark must be regarded as similar to an average degree to the respective goods covered by the earlier mark. Retail services for the goods covered by the trade mark application that are weakly similar to the goods covered by the earlier mark must be regarded as weakly similar to the latter goods.
– The comparison of the signs
92 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
93 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).
94 Furthermore, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
95 Whether the mark applied for, which is a word mark, and the second earlier mark, which is a figurative mark in black and white, consisting of a word element ‘berg’ written in bold capital letters and figurative elements, namely a rectangle framing the word ‘berg’ and a pattern of lines in the shape of a triangle, the sides of which are slightly curved, placed behind that rectangle (see paragraph 6 above), are similar must be examined in the light of that case-law.
– The visual similarity
96 In paragraphs 54 to 56 of the contested decision, the Board of Appeal observed, inter alia, that the figurative elements of the second earlier mark would be perceived as decorative elements whose role was secondary, whereas the word ‘berg’ formed the dominant and sole distinctive element of the earlier mark. It found that the marks at issue were visually similar to a below average degree.
97 In that regard, first, it is clear from case-law that where a mark is composed of word elements and figurative elements, the word element is, in principle, more distinctive than the figurative element, since the average consumer will refer more easily to the product in question by quoting the name of the mark than by describing its figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited; judgment of 17 January 2012, Kitzinger v OHIM — Mitteldeutscher Rundfunk and Zweites Deutsches Fernsehen (KICO), T‑249/10, not published, EU:T:2012:7, paragraph 42).
98 In the light of that case-law, the Board of Appeal correctly concluded that the word ‘berg’ formed the distinctive element of the earlier mark. Nor did the Board of Appeal err in its assessment in taking into account the fact that that word, as the distinctive element of the earlier mark, was identically reproduced by the first part of the mark applied for. The fact remains that, as rightly observed by the applicant, the word element of the earlier mark is presented in bold capital letters, which is not the case for the first part of the mark applied for.
99 Secondly, given its size, central position and distinctive character, the word ‘berg’ must be regarded as the dominant element of the earlier mark.
100 However, it should be recalled that it is only where all of 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). Given the size and arrangement of the figurative elements of the second earlier mark, and the fact that they are drawn with a line of the same thickness as the word ‘berg’, those elements cannot be considered negligible. Accordingly, the Board of Appeal could not limit its assessment of the visual similarity of the marks at issue to the sole finding that the word element ‘berg’ was present in both marks.
101 It follows that, visually, the degree of similarity of the marks at issue is not ‘below average’, as found by the Board of Appeal, but low.
– The phonetic similarity
102 In paragraph 57 of the contested decision, the Board of Appeal recognised that the marks at issue were phonetically similar to an average degree, primarily taking into account the fact that the second earlier mark is pronounced in the same way as the first part of the mark applied for (berg), on which consumers tend to focus their attention.
103 In that regard, first, it is clear from case-law that, phonetically, a meaningful comparison can be made between a figurative mark and another mark if that figurative mark contains a word element (see, to that effect, judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 45 and the case-law cited). The Board of Appeal was therefore able to make a phonetic comparison of the marks at issue, having found that the second earlier mark could be pronounced as such.
104 Secondly, it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (see judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 46 and the case-law cited). However, it is clear from equally settled case-law, recalled in paragraphs 92 and 93 above, that the comparison of the marks at issue must be made in the light of the overall impression given by those marks.
105 As the applicant rightly claims, the similarity between the first syllable of the mark applied for and the word element of the second earlier mark is greatly reduced by the fact that the latter is composed of a single syllable, whereas the mark applied for is composed of three syllables. Apart from an obvious difference in the pronunciation of a short word and a long word, it should be noted that, in most languages used in the European Union, a word composed of three syllables will be pronounced with the stress falling on the penultimate syllable, in other words the middle syllable. That syllable, in the present case pronounced ‘shtie’, not the first syllable, pronounced ‘berg’, is phonetically dominant when pronouncing the word ‘bergsteiger’.
106 Consequently, it must be held that the marks at issue are not phonetically similar to an average degree, but only weakly similar.
– The conceptual similarity
107 It follows from paragraphs 40 and 58 of the contested decision that, conceptually, the Board of Appeal took into account only the Dutch-speaking relevant public’s perception of the marks at issue. The Board of Appeal found that the mark applied for, considered as a whole, had no meaning in Dutch. It nevertheless concluded that the marks at issue were conceptually similar to an average degree for the Dutch-speaking part of the relevant public, in so far as they shared the word ‘berg’, which conveys the same concept of mountain, whereas they differ in the concept conveyed by the other word in the mark applied for, ‘steiger’.
108 It should be noted that the Board of Appeal correctly concluded that the word ‘bergsteiger’ had no meaning in Dutch, whereas the word ‘berg’ meant ‘mountain’ in that language.
109 In that regard, it is, admittedly, clear from case-law that, when one of the two signs at issue has no meaning for the relevant public, while the other refers to a concept, it must be held that the comparison of these signs cannot be made (see, to that effect, judgments of 16 September 2013, Gitana v OHIM — Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 67; of 13 May 2015, Harper Hygienics v OHIM — Clinique Laboratories (CLEANIC intimate), T‑363/13, not published, EU:T:2015:276, paragraphs 73 and 74; and of 21 January 2016, Spokey v OHIM — Leder Jaeger (SPOKeY), T‑846/14, not published, EU:T:2016:24, paragraph 63) or that the two signs are conceptually different (see, to that effect, judgments of 24 September 2008, Anvil Knitwear v OHIM — Aprile e Aprile (Aprile), T‑179/07, not published, EU:T:2008:401, paragraph 60; of 9 March 2012, EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, not published, EU:T:2012:121, paragraph 34; and of 19 September 2017, RP Technik v EUIPO — Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).
110 However, as the Board of Appeal correctly observed in paragraph 38 of the contested decision, while the word ‘bergsteiger’ has no meaning in Dutch, the word ‘steiger’ exists in that language and means ‘landing place’ (for instance for boats) or ‘scaffold’.
111 It is clear from case-law that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57; and of 19 September 2012, TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38).
112 Accordingly, the Board of Appeal was entitled to accept, without erring in its assessment, that the Dutch-speaking relevant public will break the word ‘bergsteiger’ down into two words, ‘berg’ and ‘steiger’, and that it will make a conceptual link between the first of those words and the word element of the second earlier mark.
113 It follows that the Board of Appeal did not err in focusing its assessment of the conceptual similarity of the marks at issue on the word ‘berg’, meaning ‘mountain’ in Dutch, and in finding that, owing to the presence of that word in those two marks, they were conceptually similar to an average degree.
114 The applicant claims that the signs at issue are not conceptually similar. It relies on the meaning of the words corresponding to the two signs in German and submits that the word ‘berg’, which means ‘mountain’, differs conceptually from the word ‘bergsteiger’, which means ‘mountaineer’, since the former refers to a geological aspect of the landscape and the latter to a sporting activity or a profession.
115 The applicant’s argument cannot call into question the conclusion set out in paragraph 113 above. First, that argument is based on a comparison of the meaning of the signs at issue in German, whereas the Board of Appeal based its reasoning on the meaning of those signs in Dutch. Secondly, the concepts conveyed by the words ‘mountain’ and ‘mountaineer’ are similar, since mountaineering is generally practised in mountains.
– The global assessment of the likelihood of confusion
116 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
117 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).
118 In paragraph 60 of the contested decision, the Board of Appeal concluded that, taking into account the identity of the goods at issue in Class 12 and the average level of similarity of the retail services at issue in Class 35, the below average level of visual similarity, the average level of phonetic and conceptual similarity of the signs at issue and the normal level of inherent distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 at least on the part of the Benelux public, even taking into account a higher level of attention.
119 However, examination of the arguments put forward by the applicant in the second plea has revealed several errors of assessment which vitiate that conclusion.
120 First of all, as regards the ‘vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters’ in Class 12, it should be recalled that they are considered identical to the ‘means of transport, excluding bicycles and children’s bicycles’ covered by the second earlier mark (see paragraph 76 above). However, in view of the low degree of visual and phonetic similarity between the marks at issue and the fact that the relevant public generally exercises great care when purchasing cars, motorcycles and scooters, in particular because of their technical complexity and price (see, to that effect, judgments of 22 March 2011, CA, T‑486/07, not published, EU:T:2011:104, paragraph 35; of 21 March 2012, SWIFT GTi, T‑63/09, not published, EU:T:2012:137, paragraphs 41 and 42; and of 14 May 2019, Triumph, T‑12/18, not published, EU:T:2019:328, paragraph 21), it must be held that there is no risk that the public may believe that those goods come from the same undertaking as the goods in respect of which the second earlier mark is registered or from an undertaking economically linked to that undertaking, in spite of the average level of conceptual similarity between the marks at issue. That conclusion applies mutatis mutandis to the retail services for the goods concerned in Class 35.
121 Secondly, it follows from the observations made in paragraphs 77 to 84 and 91 above that the various types of bicycles in Class 12 and the retail services for those bicycles in Class 35 designated by the trade mark application must be regarded as similar to a low degree to the ‘means of transport’ and the ‘moving vehicles for children’ designated by the second earlier mark. However, in view of the low degree of visual and phonetic similarity between the marks at issue, there is no risk that the public may believe that those bicycles come from the same undertaking as the goods in respect of which the second earlier mark is registered or from an undertaking economically linked to that undertaking, in spite of the average level of conceptual similarity between the marks at issue.
122 Lastly, as regards the buggies in Class 12, they are similar to an average degree to the ‘moving vehicles for children’ in respect of which the second earlier mark is registered (see paragraph 87 above). However, it is clear from case-law that the relevant public has a very high level of attention when purchasing such goods (judgment of 28 October 2015, MIRUS, T‑576/13, not published, EU:T:2015:810, paragraph 32). In view of that high level of attention of the relevant public and the low degree of visual and phonetic similarity between the marks at issue, there is no risk that the public may believe that the buggies covered by the trade mark application come from the same undertaking as the ‘moving vehicles for children’ in respect of which the second earlier mark is registered or from an undertaking economically linked to that undertaking, in spite of the average level of conceptual similarity between the marks at issue. That conclusion applies mutatis mutandis to the retail services for buggies in Class 35.
123 It follows from the foregoing that the second plea must also be upheld and the contested decision must be annulled.
Costs
124 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.
125 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.
126 In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 October 2018 (Case R 572/2018-4);
2. Orders EUIPO to bear its own costs and to pay the costs incurred by Runnebaum Invest GmbH;
3. Orders Berg Toys Beheer BV to bear its own costs.
Gervasoni | Kowalik-Bańczyk | Mac Eochaidh |
Delivered in open court in Luxembourg on 28 November 2019.