JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
4 December 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Billa — Earlier EU word marks BILLABONG — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Comparison of the goods and services — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑524/18,
Billa AG, established in Wiener Neudorf (Austria), represented by J. Rether, M. Kinkeldey, J. Rosenhäger and S. Brandstätter, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas 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
Boardriders IP Holdings LLC, established in Huntington Beach, California (United States), represented by J. Fish, Solicitor, and A. Bryson, Barrister,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 June 2018 (Case R 2235/2017-4), as rectified on 4 October 2018, relating to opposition proceedings between Boardriders IP Holdings and Billa,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 29 August 2018,
having regard to the response of EUIPO lodged at the Court Registry on 13 November 2018,
having regard to the response of the intervener lodged at the Court Registry on 5 November 2018,
further to the hearing on 11 September 2019,
gives the following
Judgment
Background to the dispute
1 On 21 February 2013, the applicant, Billa AG, 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 Billa.
3 The goods and services in respect of which registration was sought are in, inter alia, according to the wording of the application for registration, Classes 14, 18, 25, 28 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, for each of those classes, to the following description:
– Class 14: ‘Precious metals and their alloys and goods made from precious metals and their alloys; not included in any other classes; jewellery; ornaments [jewellery, jewelry (Am)]; precious stones; horological and chronometric instruments’;
– Class 18: ‘Leather and imitations of leather and goods made therefrom; all the aforesaid goods included in class 18; animal skins, hides; trunks and travelling bags; umbrellas; parasols, sunshades’;
– Class 25: ‘Outerclothing and underwear for women; men; children and infants, including sportswear; belts; collar protectors; stockings; hosiery; footwear; headgear for wear; gloves; heated clothing’;
– Class 28: ‘Games; toys; gymnastic and sports articles; in class 28’;
– Class 35: ‘Bringing together of a variety of goods, for advertising purposes; enabling customers to conveniently view and purchase those goods; providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); business administration; radio advertising; television advertising; advertising; marketing; promotional services and merchandising; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles; billing; payment procedures for telephone cards; arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid)’.
4 The trade mark application was published in Community Trade Marks Bulletin No 69/2013 of 12 April 2013.
5 On 11 July 2013, the intervener, Boardriders IP Holdings LLC, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of some of the goods and services concerned.
6 The opposition was based on, inter alia, the following earlier rights:
– the earlier EU word mark BILLABONG, filed on 7 June 2005 and registered on 5 March 2007 under the number 4 474 268, covering goods in Classes 14, 18, 25 and 28 corresponding, for each of those classes, to, inter alia, the following description:
– Class 14: ‘Jewellery and costume jewellery; charms; ornaments of precious metal, including, ornamental pendants and ornamental pins; cuff links; precious gemstones and semiprecious gemstones; watches and clocks, and parts of the foregoing goods; watch accessories, including, watch bands, watch chains, watch straps and watch cases; jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated therewith; medallions and badges of precious metal, precious metal alloys or coated therewith; key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith’;
– Class 18: ‘Chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags of leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty; travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods in this class; cases including travel eases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases; jewellery bags for travel; pouches in this class; wallets; purses, key cases; key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof; umbrellas’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 28: ‘Sporting goods, parts, fittings and accessories for the aforegoing goods’.
– the earlier EU word mark BILLABONG, filed on 20 June 2005 and registered on 9 February 2007 under the number 4 497 202, covering services in Class 35 corresponding to the following description: ‘Retailing of, optical apparatus and eyewear, including spectacles, sunglasses, eyeshades, anti-glare visors and glasses, goggles including goggles for swimming, skiing and snowboarding, glasses, eyewear cases, eyewear accessories including straps, chains and cords, protective clothing including diving suits, storage media and apparatus for recording, storage, transmitting, reproducing or processing data, sound and/or images including magnetic data carriers, tapes, cassettes and discs, audio tapes, pre-recorded films including video films, telecommunications equipment, apparatus, instruments and devices including mobile telephones, videophones, and other handheld communications apparatus, messaging devices, parts, fittings and accessories for all of the aforegoing goods and including mobile telephone housings, MP3 players, jewellery and costume jewellery, charms, ornaments of precious metals, including ornamental pendants and ornamental pins, cuff links, precious gemstones and semiprecious gemstones, watches and clocks and parts of the foregoing goods, watch accessories, including watch bands, watch chains, watch straps and watch cases, jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated therewith, key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith, chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags or leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty, travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods, cases including travel cases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases, jewellery bags for travel, pouches, wallets, purses, key cases, key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof, umbrellas, clothing, footwear, headgear, including shirts, T-shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surfwear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, things and slippers, hats, caps, beanies, peaks and visors, wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops, sporting goods, parts, fittings and accessories for the aforegoing goods, including surfboards, sailboards, kiteboards, bodyboards, wake boards, waterskis, sporting goods for other water sports, scooters (toys), skateboards, rollerblades, roller skates, parts, fittings and accessories for all of the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, legropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories; loyalty programs; loyalty card programs; discount card schemes; incentive schemes, advertising and promotional services in this class namely consumer loyalty programs; loyalty programs; promoting the goods and services of others by means of offering discounts; schemes which offer discounts on hotels, motels, inns, resort accommodation, restaurants, car rentals, tours, cruises, air fares, tour packages; business management and business and office administration services; providing information regarding discount shopping services for shoppers, travellers and businesses; organisation, operation, and supervision of sales and promotional incentive schemes; marketing of entertainment, sporting and cultural events; franchising business services; registration and notification services relating to cards used in financial transactions; publication and dissemination of publicity material; information services relating to all of the aforegoing’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 respectively).
8 On 21 September 2017, the Opposition Division partially upheld the opposition on the ground that there was, under Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion as regards all the goods referred to in paragraph 3 above which formed the subject matter of the opposition, except for the goods ‘games; toys’ in Class 28. The opposition was upheld in respect of the goods ‘games; toys’ in Class 28 on the basis of Article 8(5) of Regulation No 207/2009.
9 On 18 October 2017 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10 By decision of 21 June 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal. The Board of Appeal found, first, in paragraph 16 of the contested decision, that the goods and services at issue were aimed mainly at the general public, displaying an average level of attention. Secondly, as is apparent from a combined reading of paragraphs 7 and 18 of the contested decision, the Board of Appeal confirmed the Opposition Division’s conclusion that, on the one hand, the goods covered by the earlier marks and, on the other hand, the goods listed in paragraph 3 above were identical or similar. By contrast, in point 19 of the contested decision, the Board of Appeal, unlike the Opposition Division, found that the ‘games’ and ‘toys’ in Class 28 covered by the mark applied for were similar to an average degree to some of the services in Class 35 covered by earlier trade mark No 4 497 202. Thirdly, in paragraphs 22 to 24 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to an average degree and phonetically similar to at least an average degree. Furthermore, the Board of Appeal found that no conceptual comparison of the signs at issue could be carried out. Lastly, having regard to the relevant public and its level of attention, the similarity of the signs at issue, the identity or similarity of the goods and services covered by those signs and the normal degree of inherent distinctive character of the earlier marks, the Board of Appeal found, in paragraphs 28 and 29 of the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
11 On 4 October 2018, the Fourth Board of Appeal adopted a corrigendum to the decision of 21 June 2018 on the basis of Article 102(1) of Regulation 2017/1001. It is apparent from a combined reading of paragraphs 1 and 3 of the contested decision that the first paragraph of that decision listed the goods and services with regard to which the application for registration was, according to the Board of Appeal, opposed. The corrigendum of 4 October 2018 withdrew from paragraph 1 of the decision of 21 June 2018 all the goods in Class 20 and some of the services in Class 35, namely those corresponding to the following description: ‘procurement services, for others; namely purchasing of telephone credit for prepaid cards for mobile telephones via mobile phone networks for other companies and arranging contracts regarding the use of telephone credit for prepaid cards for mobile telephones via mobile telephone networks’.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
13 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant relies, in essence, on two pleas in law. The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, seeks to challenge the Board of Appeal’s assessments regarding the existence of a likelihood of confusion. The second plea, alleging infringement of Article 71 of Regulation 2017/1001, read in conjunction with Article 2(2)(b)(i) and Article 27(2) 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), seeks to challenge the Board of Appeal’s supposedly erroneous reference to certain goods and services covered by the mark applied for with regard to which the intervener had not opposed registration of the mark applied for, with the result that the Opposition Division had not rejected the application for registration as regards those goods and services.
The second plea, alleging infringement of Article 71 of Regulation 2017/1001, read in conjunction with Article 2(2)(b)(i) and Article 27(2) of Delegated Regulation 2018/625
15 It must be pointed out at the outset that, in the application, dated 29 August 2018, the applicant complained, in the second plea, that the Board of Appeal had widened the subject matter of the opposition by finding, first, that the opposition concerned all the goods in Class 20 covered by the mark applied for and all the services in Class 35 covered by the mark applied for and, secondly, that the Opposition Division had rejected the application for registration of the contested mark with regard to, inter alia, all the goods and services in those classes. The applicant stated, in that regard, that the intervener had not opposed registration of the mark applied for as regards the goods in Class 20 covered by that mark and that it had opposed that registration only with regard to some of the services in Class 35 covered by that mark, as could clearly be seen from the notice of opposition filed on 11 July 2013 and the Opposition Division’s decision of 21 September 2017. According to the applicant, the contested decision therefore referred to more goods and services than those that were the subject of the opposition and therefore also of the present action. It maintains that, consequently, the Board of Appeal went beyond the limits of its powers and, to that extent, the contested decision must be annulled.
16 In the observations, dated 13 December 2018, on the corrigendum to the contested decision, the applicant, on account of the Board of Appeal’s subsequent amendment to the contested decision, partially withdrew its action in so far as that action disputed the reference, in paragraph 1 of the contested decision, to the goods in Class 20 covered by the mark applied for.
17 By contrast, according to the applicant, the contested decision, even taking into account the corrigendum of 4 October 2018, still incorrectly lists some of the services in Class 35 covered by the mark applied for. The services that are incorrectly listed are, according to the applicant, the ‘wholesaling and retailing of foodstuffs; alcoholic and non-alcoholic drinks; food for babies; dietetic foodstuffs; housewares; pharmacy articles; tobacco; tobacco products; smokers’ articles; matches; garden article; DIY articles; …; toys; …; stationery; …; arranging contracts for telecommunication services of all kinds’ in Class 35 covered by the application for registration. As has been stated in paragraph 15 above, the applicant submits that the intervener did not oppose registration of the mark applied for as regards those services. It maintains that, consequently, the Board of Appeal went beyond the limits of its powers and, to that extent, the contested decision must be annulled.
18 EUIPO concedes that, even taking into account its rectification of the contested decision by the corrigendum of 4 October 2018, some of the services in Class 35 covered by the mark applied for which were not the subject of the opposition still appear in paragraph 1 of that decision. EUIPO submits that that ‘administrative oversight’ cannot lead to the annulment of the contested decision as the scope of the opposition in the present case does not raise any doubts. It maintains that the Opposition Division’s decision correctly listed the goods and services in respect of which registration of the mark applied for was rejected. It submits that the applicant filed its appeal with the Board of Appeal in respect of all those goods and services, an appeal which was subsequently dismissed in its entirety by the Board of Appeal. Consequently, according to EUIPO, by confirming the Opposition Division’s decision, the Board of Appeal did not exceed its power of review as the applicant alleges.
19 At the hearing, as was formally noted in the minutes of the hearing, the applicant declared that it was withdrawing its criticism of the contested decision on the basis of its second plea, alleging infringement of Article 71 of Regulation 2017/1001, read in conjunction with Article 2(2)(b)(i) and Article 27(2) of Delegated Regulation 2018/625. It, however, wished the Court to clarify, in the judgment to be delivered in the present case, the Board of Appeal’s error as regards the scope of the opposition.
20 Even if such a request for clarification, on which the withdrawal of the second plea seems to be conditional, were admissible, it must be pointed out that it is clear from EUIPO’s case file that the opposition concerned some of the services in Class 35 covered by the mark applied for, namely the services corresponding to the following description: ‘bringing together of a variety of goods, for advertising purposes; enabling customers to conveniently view and purchase those goods; providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); business administration; radio advertising; television advertising; advertising; marketing; promotional services and merchandising; … camping articles; … clothing; … electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles; … billing; payment procedures for telephone cards; arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid)’.
21 By contrast, the opposition did not concern the following services in Class 35 covered by the mark applied for: ‘wholesaling and retailing of foodstuffs; alcoholic and non-alcoholic drinks; food for babies; dietetic foodstuffs; housewares; pharmacy articles; tobacco; tobacco products; smokers’ articles; matches; garden article; DIY articles; …; toys; …; stationery; …; arranging contracts for telecommunication services of all kinds’. Those services, which did not form the subject matter of the dispute, nevertheless, even after the corrigendum of 4 October 2018 to the contested decision, erroneously remained in paragraph 1 of the contested decision. It is therefore apparent that the Board of Appeal took into account in its decision, even after that decision had been amended, services in respect of which the intervener had not opposed registration and to which the appeal brought before the Board of Appeal did not relate.
22 According to the case-law, the Board of Appeal does not have a discretion to widen the scope of an appeal to the extent that it examines questions that the appellant before it would not be entitled to raise (judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 22; see also, by analogy, order of 2 March 2011, Claro v OHIM, C‑349/10 P, not published, EU:C:2011:105, paragraph 44).
23 However, in any event, if the Court ruled on the second plea, the finding that there has been such an error would not be capable of leading to the annulment of the contested decision. It is clear from the operative part of the contested decision that the Board of Appeal confined itself in the present case to dismissing the appeal in its entirety. It follows that the explanations relating, in the contested decision, to the examination of the services in respect of which the intervener had not brought the opposition and in respect of which the Opposition Division had not rejected the application for registration are not in the nature of a decision and that their annulment would, as a result, also have no effect (see, to that effect, judgment of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraphs 30 to 34). That plea would therefore, in any event, have to be rejected as ineffective.
The first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
24 This plea is divided, in essence, into three complaints. In the first place, the applicant disputes the Board of Appeal’s assessments relating to the comparison of the signs at issue. In the second place, the applicant disputes the Board of Appeal’s assessments regarding the comparison of the goods and services at issue. In the third place, the applicant submits that the Board of Appeal should not have insinuated, in the contested decision, that there was a likelihood of confusion without giving any grounds in that regard.
25 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 at issue, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) of Regulation 2017/1001, ‘earlier trade marks’ means EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark in question.
26 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 (judgments 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 of 7 November 2013, Three-N-Products v OHIM — Munindra (AYUR), T‑63/13, not published, EU:T:2013:583, paragraph 14).
27 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).
28 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (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).
29 It is in the light of those considerations that it must be assessed whether the Board of Appeal was right in finding that, as regards the marks at issue, there was, on the part of the relevant public, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
30 As a preliminary point, it is not necessary to call into question the Board of Appeal’s findings, first, that the relevant public, for the purposes of assessing whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, is the general public, displaying an average level of attention, and, secondly, that the earlier marks have a normal degree of distinctive character with regard to the goods and services covered by those marks. Those finding are not, moreover, disputed by the parties.
31 It is appropriate to deal with the second complaint referred to in paragraph 24 above first.
The second complaint, relating to the comparison of the goods and services at issue
32 As a preliminary point, it is necessary, first of all, to reject the intervener’s argument that the opposition should succeed with regard to the goods ‘games’ in Class 28 covered by the application for registration, regardless of whether or not they are, for the purposes of Article 8(1)(b) of Regulation 2017/1001, similar to the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202. The intervener submits that the opposition should succeed because, in its appeal against the Opposition Division’s decision, the applicant did not challenge the Opposition Division’s finding that, in so far as ‘games’ in Class 28 were concerned, the mark applied for would take unfair advantage of the distinctive character or repute of the earlier marks, contrary to Article 8(5) of Regulation 2017/1001.
33 In that regard, first, it must be stated that the Opposition Division’s decision upholding the opposition on the basis of Article 8(5) of Regulation 2017/1001 is not final, because the third sentence of Article 66(1) of Regulation 2017/1001 provides that appeals filed at EUIPO have suspensive effect. In those circumstances, a decision from which such an appeal lies, such as a decision of an Opposition Division, takes effect only if no appeal has been lodged with EUIPO in the form and within the time limits prescribed in Article 68 of Regulation 2017/1001 or if such an appeal has been definitively dismissed by the Board of Appeal. However, that is not the case here, since the contested decision has, on account of the action brought before the EU judicature, not taken effect either.
34 Secondly, the Board of Appeal found that there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 without ruling on the Opposition Division’s assessments relating to the application, in the present case, of Article 8(5) of that regulation. The Board of Appeal stated in paragraph 13 of the contested decision that ‘although the notice of appeal indicated that the entire contested decision was contested, the subsequently filed statement of grounds concerned only the likelihood of confusion between the contested trade mark and the earlier trade marks’. It added that ‘no submissions whatsoever were made regarding the findings of the contested decision in relation to the findings under Article 8(5) [of Regulation 2017/1001]’. It is not, however, apparent from the contested decision that the Board of Appeal upheld the Opposition Division’s findings as regards the application of Article 8(5) of Regulation 2017/1001. Consequently, in its review of the legality of the contested decision, the Court’s examination will be restricted to a review of the applicability of Article 8(1)(b) of Regulation 2017/1001 and will not, in the absence of any assessments in that regard by the Board of Appeal, relate to whether the conditions for the application of Article 8(5) of that regulation are satisfied in the present case. Furthermore, the power of the Court to alter decisions pursuant to Article 72 of Regulation 2017/1001 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 adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
35 It follows that the intervener’s argument submitting, in essence, that the second complaint in the plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 is ineffective must be rejected.
36 Next, as regards the issue of the similarity of the goods and services, it must be pointed out that, according to settled case-law, in assessing that similarity, 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). 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).
37 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
38 As regards the similarity between goods and retail services, it must be borne in mind that there is a similarity between goods and the retail services which relate to those goods (see judgment of 16 October 2013, El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), T‑282/12, not published, EU:T:2013:533, paragraph 37 and the case-law cited).
39 As has been stated in paragraph 10 above, the Board of Appeal confirmed, in paragraph 18 of the contested decision, the Opposition Division’s conclusion that the goods covered by the earlier marks and the goods in Classes 14, 18 and 25 listed in paragraph 3 above and also the ‘gymnastic and sports articles’ in Class 28 covered by the mark applied for were identical or similar. Furthermore, as regards the services in Class 35 covered by the mark applied for, since the applicant did not, in that regard, put forward any arguments before the Opposition Division and before the Board of Appeal, the Board of Appeal did not rule on the identity or similarity of those services. However, in paragraph 19 of the contested decision, in contrast to the Opposition Division, the Board of Appeal found that the goods ‘toys’ and ‘games’ in Class 28 covered by the mark applied for were similar to an average degree to the services of retailing of, respectively, ‘scooters (toys), skateboards, rollerblades, roller skates’ and ‘of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202. In that regard, the Board of Appeal explained, as the Opposition Division had observed, that a ‘link’ existed under Article 8(5) of Regulation 2017/1001 between the goods and services at issue, since ‘toys’ refers to various products, including such items as roller skates or mini scooters, and the goods ‘games’ include ‘an activity or sport usually involving skill, knowledge or chance, in which one follows rules to try to beat an opponent, and so these goods concern a related market sector to the earlier goods and service[s covered by earlier trade mark No 4 497 202]’. The Board of Appeal stated that such reasoning should have been applied in comparing the goods and services under Article 8(1)(b) of Regulation 2017/1001. It took the view that, since ‘retail’ services necessarily concern goods to which the goods covered by the mark applied for can relate, the goods ‘games’ must be considered to be complementary to the service of ‘retailing of sporting goods’ in the sense that they are indispensable for the provision of the ‘retail’ service.
40 The applicant does not dispute the Board of Appeal’s analysis as regards the goods in Classes 14, 18 and 25 and the goods ‘gymnastic and sports articles’ and ‘toys’ in Class 28 covered by the mark applied for. Since there is nothing in the case file which calls into question the identity or similarity of the goods at issue, the Board of Appeal’s analysis with respect to those goods must be upheld.
41 Accordingly, in the context of the second complaint referred to in paragraph 24 above, the applicant submits that the Board of Appeal erred in finding that the goods ‘games’ and the service of ‘retailing of sporting goods’ were similar.
42 EUIPO submits that, first, since the goods ‘games’ refer to ‘an activity or sport usually involving skill, knowledge or chance, in which one follows rules to try to beat an opponent’, they cover sports games in which basically the same items are used as for sporting activities, such as balls or rackets. Consequently, EUIPO maintains that the goods ‘games’ overlap with and should thus be considered to be identical to the ‘sporting goods’ to which the ‘retailing’ service in Class 35 relates. Secondly, EUIPO notes that, since the Nice Classification serves purely administrative purposes and does not in itself provide a basis for drawing conclusions as to the comparison of goods and services, the mere fact that ‘games’ and ‘sporting goods’ are mentioned as separate items cannot call into question the abovementioned finding. Thirdly, EUIPO contends that, although the nature, purpose and method of use of those goods and those services are not the same, they display similarities having regard to the fact that they are complementary, since they are generally offered for sale in the same places and are aimed at the same public. As a result, according to EUIPO, there is at least a low degree of similarity between the ‘games’ in Class 28 covered by the mark applied for and the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202.
43 It must be pointed out that it is apparent from the contested decision that the Board of Appeal, in finding that the goods ‘games’ and the service of ‘retailing of sporting goods’ were similar, referred in part to the Opposition Division’s decision which, according to the Board of Appeal, concluded that there was a ‘link’ between those goods and that service.
44 However, it has been held that the goods ‘games’ and the goods ‘sporting goods’ are different because they have a different nature, intended purpose and distribution channels, and are not interchangeable or in competition with each other (see, to that effect, judgment of 4 June 2013, i-content v OHIM — Decathlon (BETWIN), T‑514/11, EU:T:2013:291, paragraphs 35 to 39 (not published)).
45 Whereas sporting goods are intended above all for engaging in physical exercise, in particular, for purposes connected with health and well-being, the sole function of games is, in principle, to entertain. In this respect, the fact that one purpose (for example, physical exercise) does not exclude another purpose (for example, entertainment) and that both purposes may overlap in a product does not rule out the possibility of identifying a dominant, or in other words ‘primary’ purpose of a product. The term ‘use’, within the meaning of the case-law referred to in paragraph 36 above, means the generally intended use of the product and not any misuse or occasional use (judgment of 2 July 2015, BH Stores v OHIM — Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraphs 63 and 64).
46 It follows that the existence of a fluid transition or an area of overlap between two categories of goods with essentially different purposes does not mean that all the goods or services concerned by those categories of goods are similar (judgment of 2 July 2015, ALEX, T‑657/13, EU:T:2015:449, paragraph 65).
47 It is clear from the foregoing that the goods ‘games’ in Class 28 covered by the mark applied for are not, for the purposes of Article 8(1)(b) of Regulation 2017/1001, similar to the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202. The contested decision is therefore marred by an error in that regard.
48 That finding is not invalidated by EUIPO’s arguments.
49 The references to the judgments of 13 November 2014, Natura Selection v OHIM — Afoi Anezoulaki (natur) (T‑549/10, not published, EU:T:2014:949), and of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI) (T‑512/15, EU:T:2016:527), which EUIPO has made for the purposes of concluding that there is complementarity between the goods ‘games’ in Class 28 covered by the mark applied for and the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202, must be held to be irrelevant. In those judgments, the Court found that there was a similarity between goods and retail services relating to those goods. Accordingly, in the judgment of 13 November 2014, natur (T‑549/10, not published, EU:T:2014:949), the Court found that there was a similarity between the service of ‘commercial retailing and via worldwide telematic networks … relating to … table covers’ in Class 35 and the goods ‘table covers’ in Class 24. In the judgment of 22 September 2016, SUN CALI (T‑512/15, EU:T:2016:527), the Court found that there was a similarity between ‘retail store services featuring clothing, shoes and handbags’ in Class 35 and the goods ‘clothing’ and ‘shoes’ in Class 25.
50 However, the goods ‘games’ and the goods ‘sporting goods’ are different (see paragraph 44 above). Furthermore, the use of the goods ‘games’ is not indispensable or important for the use of the service of ‘retailing of sporting goods’, and vice versa, for the purposes of the principle of complementarity referred to by the case-law mentioned in paragraph 37 above.
51 As regards distribution channels, EUIPO submits that an undertaking involved in the ‘retailing of sporting goods’ could also be offering ‘games’. However, it must be stated that such a circumstance cannot, without other evidence in support, lead the Court to take the view that those goods and services share the same distribution channels. In that regard, the Court has already held that the goods ‘games’ and ‘sporting goods’ are categories of goods which are generally manufactured by specialist undertakings and are sold in specialist stores. Admittedly, like all types of other goods, they can now be found in large retail stores. However, in such points of sale, both ‘sporting goods’ and ‘games’ are sold in specialist departments which, even though they may be close, are nonetheless separate (see, to that effect, judgment of 4 June 2013, BETWIN, T‑514/11, EU:T:2013:291, paragraph 38 (not published)).
52 As regards EUIPO’s argument that the goods ‘games’ and the service of ‘retailing of sporting goods’ are aimed at the same public, it must be observed that that argument, if proved, is not in itself sufficient for it to be held that there is a similarity between the goods and services in question, since goods and services that are aimed at the same consumers are not necessarily all identical or similar.
53 The second complaint referred to in paragraph 24 above must therefore be upheld in so far as it was found in the contested decision that, on the one hand, the goods ‘games’ in Class 28 covered by the mark applied for and, on the other hand, the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202 were similar.
The first complaint, relating to the comparison of the signs at issue
54 It must be borne in mind that it has been held that 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 (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46 and the case-law cited).
55 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).
56 First, it must be pointed out, as the Board of Appeal observed in paragraph 20 of the contested decision, that the mark applied for consists of the group of letters ‘billa’ and that the earlier marks consist of the group of letters ‘billabong’. Since both of the earlier trade marks and the mark applied for are word marks, the signs may be written in capital or small letters.
57 Secondly, it must be noted that, as the Board of Appeal correctly found, the parties not having challenged it on that point, the signs at issue consist of a single word, with no element more dominant or distinctive than any other.
58 In paragraph 22 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to an average degree, since the group of letters ‘billa’ in the mark applied for was included in its entirety in the beginning of the earlier marks. The Board of Appeal observed, in that regard, that the signs at issue had the same first five letters in common, namely ‘b’, ‘i’, ‘l’, ‘l’ and ‘a’. It noted that the earlier signs contained four other letters, namely ‘b’, ‘o’, ‘n’ and ‘g’, after the first five letters and that there was no counterpart in the contested sign to those last four letters in the earlier signs.
59 In paragraph 23 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to at least an average degree. More specifically, it took the view that the mark applied for would be pronounced as two syllables which were identical to the first two syllables of the earlier signs, which consisted of three syllables. It found that the last syllable in the earlier signs, ‘bong’, had no counterpart in the contested sign.
60 The applicant maintains that the Board of Appeal, by finding that the signs at issue were visually and phonetically similar on account of the presence of the group of letters ‘billa’ at the beginning of those signs, infringed the well-established case-law principle in the context of Article 8(1)(b) of Regulation 2017/1001, that the marks at issue must be assessed on the basis of the overall impression that they create.
61 It submits that the Board of Appeal could not find, as it did, that there were no dominant elements in the signs at issue while relying solely on the group of letters ‘billa’, which is common to the beginnings of the two signs, in order to conclude that those signs were similar, particularly because, according to the case-law, the assessment as to whether signs at issue are similar can be carried out on the basis of the dominant element only if all the other components of the signs at issue are negligible, which is not the case as regards the group of letters ‘bong’.
62 The applicant maintains that the Board of Appeal erred in relying on the principle that coincidences in the beginnings of words generally have greater weight. It argues that that principle is not sufficient to justify the finding that the signs at issue are similar. It submits that, first of all, too strict an application of that principle would unduly extend the protection of the mark. Next, it maintains that the cases in which that principle was applied involved marks in which the endings showed certain similarities or consisted only of weak elements, which is not the case here, as the group of letters ‘bong’ is an integral part of the earlier marks and forms an important part of those marks, both visually and phonetically. The applicant states, in that regard, that the earlier marks consist of a unitary term, a term which is neither determined nor dominated by one of its elements. Lastly, it submits that the principle that the beginnings of words generally have greater weight applies only to the visual comparison and not to the phonetic comparison of the signs at issue.
63 In short, the applicant maintains that the signs at issue are, first, visually dissimilar, since the group of letters ‘billa’ is not dominant and does not have an independent distinctive character, which creates a different overall impression, and, secondly, phonetically dissimilar, since the group of letters ‘bong’ is not present in the contested sign and the signs at issue are therefore pronounced differently. The applicant submits that the lack of similarity between the signs at issue is connected, in particular, with the unitary nature of the term ‘billabong’.
64 EUIPO and the intervener dispute the applicant’s arguments.
65 In the first place, it is necessary to make the following observations as regards the applicant’s arguments that the Board of Appeal did not take into account the overall impression created by the marks at issue.
66 First, in finding that the sign applied for is identical to the beginning and first part of the earlier signs (paragraph 29 of the contested decision), the Board of Appeal simply took into account the fact that consumers normally attach more importance to the beginning of signs (see, to that effect, judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81).
67 Consequently, it is not apparent from the contested decision that the Board of Appeal confined itself to breaking down the signs at issue without carrying out an overall assessment. The Board of Appeal examined the earlier marks as a whole, as is clear from paragraphs 20 to 24 of the contested decision, fully taking into account the visual, phonetic and conceptual differences between the signs, and it was right in assessing the impact of the group of letters ‘billa’, which is common to the signs at issue, on the overall impression created by the earlier marks. The applicant’s argument that the Board of Appeal neglected the four letters making up the group of letters ‘bong’ must therefore be rejected.
68 Secondly, as the intervener correctly points out and as the applicant itself, moreover, admits, the earlier marks are simple marks consisting of a single word. Consequently, given that, in the present case, the marks are not composite marks, the references to the principle laid down by the Court of Justice in the judgments of 6 October 2005, Medion (C‑120/04, EU:C:2005:594, paragraph 29), and of 20 September 2007, Nestlé v OHIM (C‑193/06 P, not published, EU:C:2007:539, paragraph 35), that 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, are not capable of invalidating the Board of Appeal’s findings. That is particularly so in a case where the applicant submits that the earlier marks consist of a ‘unitary’ term.
69 In the light of the considerations referred to above, the applicant’s arguments that the Board of Appeal did not, in the comparison of the signs, take into account the overall impression created by the marks at issue must be rejected.
70 In the second place, it is necessary to make the following observation as regards the merits of the Board of Appeal’s findings regarding the similarity between the signs at issue.
71 First, as regards the visual similarity, in the light of the visual identity of the group of letters ‘billa’, which is common to the signs at issue, it must be held that the element of dissimilarity referred to in paragraph 58 above is not capable of dispelling the impression on the part of the relevant public that there is a certain degree of visual similarity between those signs when they are assessed as a whole.
72 The fact that the five letters of which the sign applied for consists are identical to the first five letters of the earlier signs creates an impression of similarity between the signs at issue. In view of those similarities, the applicant’s argument that, first, the Board of Appeal erroneously attached too much importance to the first part of the earlier signs and that, secondly, the group of letters ‘bong’ is an integral part of the earlier signs and is very important visually does not make it possible to rule out the existence of an average degree of visual similarity (see, to that effect, judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraphs 43 and 44).
73 Secondly, as regards the phonetic similarity, it must be pointed out that the phonetic dissimilarity between the two signs at issue, which arises out of the addition of a third syllable, ‘bong’, in the earlier marks, is not sufficient to rule out any similarity between the signs at issue taken as a whole. It has already been held that the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity between the signs at issue (see, to that effect, judgment of 19 May 2011, PJ Hungary v OHIM — Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 79 and the case-law cited). In the present case, the first two syllables of the signs at issue are identical and it is not disputed that they are pronounced in the same way.
74 That phonetic dissimilarity cannot call into question the Board of Appeal’s finding that there is an average degree of phonetic similarity between the signs at issue on account of the relevant public’s identical pronunciation of the first two syllables, which those signs have in common (see, to that effect, judgment of 10 March 2016, LG Developpement v OHIM — Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 46).
75 It must be pointed out that, contrary to what the applicant claims, the principle that the initial part of the word elements of a mark is likely to attract the consumer’s attention more than the following parts also applies to the examination of the phonetic similarity (see, to that effect, judgments of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 83; of 28 October 2009, CureVac v OHIM — Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 49 and the case-law cited; and of 29 October 2015, Giuntoli v OHIM — Société des produits Nestlé (CREMERIA TOSCANA), T‑256/14, not published, EU:T:2015:814, paragraph 49). Consequently, the group of letters ‘billa’ carries greater weight in the phonetic comparison than that of the group of letters ‘bong’.
76 Contrary to what the applicant claims, the argument that the earlier marks are perceived as a whole does not call into question the finding that the signs at issue are similar. The sign applied for is contained in its entirety in the earlier signs and a certain degree of similarity results from that. Consequently, since the signs at issue have in common the group of letters ‘billa’, which carries greater weight in the comparison than the other elements in those signs, the Board of Appeal’s analysis that those signs are visually similar to an average degree and phonetically similar to at least an average degree must be upheld.
77 Thirdly, as regards the conceptual comparison, the Board of Appeal found, in paragraph 24 of the contested decision, first, that the word ‘billa’ had no meaning and so no conceptual comparison could be made and, secondly, that the meaning of the word ‘billabong’ was that of an Australian word which was little known within the European Union and referred to ‘a branch or effluent of a river, forming a blind channel, backwater, or stagnant pool’. Furthermore, the Board of Appeal states that that word has not been shown to be used or understood even by the English-speaking public outside Australia and that therefore the vast part of the relevant public in the European Union will not understand that word as having any meaning.
78 The applicant does not expressly dispute the Board of Appeal’s finding that no conceptual comparison could be made. However, it submits that the term ‘billabong’, designating a ‘water hole’, has a particular meaning in the Australian English language, which can be ascertained by consulting any dictionary available to the relevant public.
79 It must be borne in mind that it is true that, according to the case-law, conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities between those marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other mark must have no such meaning or an entirely different meaning (see judgment of 17 March 2004, MUNDICOR, T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 93 and the case-law cited).
80 In the present case, it must be held that the applicant, in claiming that the relevant public can understand the meaning of the term ‘billabong’ by consulting any Australian English dictionary, does not establish that that term has, in accordance with the case-law cited in paragraph 79 above, from the point of view of the relevant public consisting of European Union consumers taken as a whole, a clear and specific meaning, with the result that that public is capable of grasping it immediately (see, to that effect, judgments of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54, and of 1 June 2016, Wolf Oil v EUIPO — SCT Lubricants (CHEMPIOIL), T‑34/15, not published, EU:T:2016:330, paragraph 46).
81 As EUIPO correctly submits, it must be pointed out that the applicant has provided no evidence to show that that term is used in the European Union, or even that it would be understood anywhere other than in Australia, and, in particular, by the English-speaking public in the European Union.
82 Accordingly, it is sufficient to state, following the Board of Appeal, that the sign applied for as well as the earlier signs are devoid of any particular meaning and that, for that reason, the relevant public will perceive the signs at issue as invented words with no reference to a particular concept (see, to that effect, judgment of 13 September 2010, Abbott Laboratories v OHIM — aRigen (Sorvir), T‑149/08, not published, EU:T:2010:398, paragraph 39).
83 It follows that the Board of Appeal was right in finding that no conceptual comparison could be carried out.
84 The finding that the signs are similar is not invalidated by the applicant’s references, first, to the decision of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) of 9 November 2017, which also concerned an opposition filed against the registration of the German word mark billa based, inter alia, on the earlier marks, and, secondly, to the decision of the Bundespatentgericht (Federal Patents Court, Germany) of 13 February 2019. The legal framework of reference is, in the present case, Article 8(1)(b) of Regulation 2017/1001 and, according to settled case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 16 January 2014, Message Management v OHIM — Absacker (ABSACKER of Germany), T‑304/12, not published, EU:T:2014:5, paragraph 58 and the case-law cited). It follows that neither EUIPO nor the Courts of the European Union are bound by national decisions on registration such as those to which the applicant refers, or indeed by assessments made by national courts (see, to that effect, judgments of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Cheng (B), T‑505/12, EU:T:2015:95, paragraph 86 and the case-law cited, and of 27 June 2017, Jiménez Gasalla v EUIPO (B2B SOLUTIONS), T‑685/16, not published, EU:T:2017:438, paragraph 41 and the case-law cited).
85 Furthermore, since the Board of Appeal’s reasoning is not marred by error as regards the similarity of the signs, those decision-making practices, on which the applicant relies, are not capable of invalidating the contested decision.
86 In the light of the foregoing, the first complaint put forward by the applicant and referred to in paragraph 24 above must be rejected.
The third complaint, relating to the overall assessment of the likelihood of confusion
87 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
88 In the present case, the Board of Appeal found, in paragraph 29 of the contested decision, that, taking into account the identity and similarity of the goods and services at issue, the average degree of visual and phonetic similarity of the signs at issue, the normal degree of inherent distinctive character of the earlier marks and the fact that the contested sign was identical to the beginning and first half of the earlier signs, there was a likelihood of confusion on the part of the relevant general public.
89 The applicant submits that the factual basis of the contested decision does not support a finding that there is a likelihood of confusion, a finding which the Board of Appeal made in paragraph 29 of the contested decision.
90 However, it must be pointed out that the earlier marks are inherently distinctive to a normal degree in respect of the goods and services at issue and that the signs are visually and phonetically similar to an average degree.
91 Accordingly, the Board of Appeal was able to find, without making an error of assessment, that there is a likelihood of confusion so far as concerns the goods and services at issue that have to be regarded as being identical or similar.
92 However, it has been held, in paragraph 47 above, that the goods ‘games’ in Class 28 covered by the mark applied for and the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202 are not similar.
93 Consequently, the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue as regards the goods ‘games’ in Class 28 covered by the mark applied for and the service of ‘retailing of sporting goods’ in Class 35 covered by earlier trade mark No 4 497 202.
94 It follows from all of the foregoing that the contested decision must be annulled in so far as it was found in that decision that there was a likelihood of confusion between the mark applied for and earlier trade mark No 4 497 202 as regards the goods ‘games’ in Class 28 covered by the mark applied for and the service of ‘retailing of sporting goods’ in Class 35 covered by that earlier mark. The action must be dismissed as to the remainder.
Costs
95 Under Article 134(3) of the Rules of Procedure of the General Court, the parties are to bear their own costs where each party succeeds on some and fails on other heads. In the present case, since the contested decision must be annulled only in part, it is appropriate to order each party to 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 21 June 2018 (Case R 2235/2017-1) as regards the goods ‘games’ in Class 28 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, covered by the mark applied for;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Gervasoni | Madise | Da Silva Passos |
Delivered in open court in Luxembourg on 4 December 2019.