JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
8 May 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark PEDRO — Earlier Community figurative mark Pedro del Hierro — Partial refusal to register — Relative grounds for refusal — Genuine use of the earlier mark — Highly distinctive character of the earlier mark — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑38/13,
Pedro Group Pte Ltd, established in Singapore (Singapore), represented by B. Brandreth, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Vuijst and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Cortefiel, SA, established in Madrid (Spain), represented initially by H. Mosback, P. López Ronda, G. Macias Bonilla and G. Marín Raigal, and subsequently by P. López Ronda, G. Macias Bonilla and G. Marín Raigal, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 26 November 2012 (Case R 271/2011-4), relating to opposition proceedings between Cortefiel, SA, and Pedro Group Pte Ltd,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 24 January 2013,
having regard to the response of OHIM lodged at the Court Registry on 29 May 2013,
having regard to the response of the intervener lodged at the Court Registry on 21 May 2013,
further to the hearing on 23 January 2014,
gives the following
Judgment
Background to the dispute
1 On 21 January 2009, the applicant, Pedro Group Pte Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign PEDRO.
3 The goods in respect of which registration was sought are in Classes 18, 25 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, as regards Class 25, correspond inter alia to the following description:
‘Articles of clothing for men and women; socks and stockings; head scarves, neck scarves, shoulder scarves, shawls, ties, bow-ties, gloves, foulards, lingerie, brassieres, panties (other than sanitary), lingerie tops, undershirts, underpants; skirts, dresses, shorts; blouses, tee-shirts, polo shirts, shirts, cardigans, chemises, vests, blouses, trousers, pants, neckties, coats, wind resistant jackets and wind resistant tops, sweaters, pullovers, waistcoats, jackets, overcoats, blazers, hunting jackets, gabardines, bermudas, ponchos, stoles, suspenders, neckerchieves, pyjamas, mittens, bathing costumes, blousons, bathrobes, sports clothing, tracksuits, ready-made linings, swim wear, thermal wear.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 21/2009 of 8 June 2009.
5 On 24 July 2009, the intervener, Cortefiel, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of all the goods in Classes 18, 25 and 35 referred to by the applicant.
6 The opposition was based, first, on the earlier Community figurative mark, registered on 20 October 2000 under the number 1252899 for, inter alia, ‘ready-made clothing for ladies, gentlemen and children, footwear (except orthopaedic) and headgear’ in Class 25 reproduced below:
7 The opposition was based, secondly, on the earlier international figurative mark in black and white, registered on 27 June 2005 under the number 864740, designating Bulgaria, Spain and Romania, for, inter alia, goods in Class 25, reproduced below:
8 The opposition was based on all the goods covered by the marks referred to in paragraphs 6 and 7 above.
9 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.
10 By letter of 29 April 2010, following a request by the applicant, OHIM requested the intervener, pursuant to Article 42 of Regulation No 207/2009, to furnish proof of use of the earlier Community trade mark by 30 June 2010 at the latest. The intervener provided evidence by letter of 30 June 2010.
11 By decision of 17 December 2010, the Opposition Division rejected the opposition, finding that, in so far at it was based on the earlier Community trade mark, there was no likelihood of confusion, in the light of the differences between the signs at issue, and that, as regards reputation, the intervener had not provided evidence that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark.
12 On 28 January 2011, the intervener filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
13 By decision of 26 November 2012, the Fourth Board of Appeal of OHIM annulled the Opposition Division’s decision, in so far as the opposition had been rejected in respect of the goods in Class 25 referred to in paragraph 3 above (‘the contested decision’).
14 In the contested decision, the Board of Appeal undertook an examination of the likelihood of confusion, first taking the earlier Community trade mark into consideration. In paragraph 28, it found that the intervener had furnished proof of genuine use of the earlier Community trade mark in Spain in respect of the ‘ready-made clothing for ladies and gentlemen; footwear (except orthopaedic)’ in Class 25 and the ‘handbags’ in Class 18. In paragraph 33, it took the view, in the light of the evidence submitted by the intervener, that the earlier Community trade mark had a highly distinctive character in Spain in respect of clothing, but that the reputation of that mark was not proved. In paragraph 56, it found that a certain number of goods in Classes 18 and 25 covered by the mark applied for were identical to the ‘handbags’ in Class 18 and the ‘ready-made clothing for ladies and gentlemen, footwear (except orthopaedic)’ in Class 25 covered by the earlier Community trade mark, and that there was an average or low degree of similarity between other goods in Classes 18, 25 and 35 covered by the mark applied and those goods. In paragraphs 59 and 60, it found that the degree of visual and phonetic similarity between the marks at issue was low, and that the conceptual comparison between them remained neutral. Having regard inter alia to the average level of attention of the relevant public, it found that there was no likelihood of confusion between the marks at issue as regards the goods similar or identical to the ‘footwear (except orthopaedic)’ in Class 25 and the ‘handbags’ in Class 18 (paragraph 70). By contrast, having regard to the highly distinctive character of the earlier Community trade mark in Spain, it found that there was a likelihood of confusion between the marks at issue as regards the goods referred to in paragraph 3 above (paragraph 71). In paragraph 75, it found that the opposition had to be rejected to the extent that it was based on Article 8(5) of Regulation No 207/2009. The Board of Appeal found that the comparison with the earlier international mark did not lead to a finding of a likelihood of confusion.
Procedure and forms of order sought
15 The applicant claims that the Court should:
– partially annul the contested decision, in so far as it partially annulled the decision of the Opposition Division and rejected the trade mark application in respect of certain goods in Class 25;
– order OHIM to pay the costs incurred before the Board of Appeal and before the Court.
16 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
17 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred in the present proceedings.
18 The applicant and the intervener requested, pursuant to Article 135a of the Rules of Procedure of the General Court, to be heard at an oral hearing and that the Court give its judgment following the oral procedure. The Court granted that application.
Law
19 The applicant puts forward three pleas in law in support of its action. The first plea alleges infringement of Articles 15 and 42 of Regulation No 207/2009 as regards the proof of genuine use of the earlier Community trade mark. The second plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 as regards the evidence of the highly distinctive character of the earlier Community trade mark. The third plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 as regards the similarity of the signs at issue.
20 It is appropriate to examine the first plea first of all and then to examine the second and third pleas together.
The first plea, alleging infringement of Articles 15 and 42(2) of Regulation No 207/2009
21 The applicant submits that, in paragraph 25 of the contested decision, the Board of Appeal inferred from the existence of retail outlets that the volume of sales under the earlier Community trade mark was sufficient to prove genuine use of that mark, thus revealing an incorrect approach to the examination of the evidence, which is contrary to the case-law. Consequently, ‘no effect was given to Article 42(2) [of Regulation No 207/2009]’, as the intervener did not actually prove the use of the earlier Community trade mark.
22 Defining the scope of its plea at the hearing, the applicant submitted that the Board of Appeal had erred in assessing the qualitative significance of the use of the earlier Community trade mark without indicating the scale or context of such use, as the contested decision does not disclose either the nature of the market concerned or evidence of activity.
23 OHIM and the intervener dispute the applicant’s arguments.
24 First, as is clear from the recital 10 in the preamble to Regulation No 207/2009, the legislature considered there was no justification for protecting an earlier trade mark except where the mark had actually been used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which notice of opposition has been given (Case T‑308/06 Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products) [2011] ECR II‑7881, paragraph 44).
25 Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), proof of use must relate to the place, time, extent and nature of use of the earlier mark.
26 The rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that OHIM’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 10 in the preamble to Regulation No 207/2009, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see Case T‑427/09 centrotherm Clean Solutions v OHIM — Centrotherm Systemtechnik (CENTROTHERM) [2011] ECR II‑6807, paragraph 24 and the case-law cited).
27 According to the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected in the relevant territory, be used publicly and outwardly (see CENTROTHERM, paragraph 26 above, paragraph 25 and the case-law cited).
28 Although the concept of genuine use therefore excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, nevertheless the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see CENTROTHERM, paragraph 26 above, paragraph 26 and the case-law cited).
29 More specifically, to assess whether a particular trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see CENTROTHERM, paragraph 26 above, paragraph 27 and the case-law cited).
30 As to the extent of the use to which the trade mark at issue has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or regular, and vice versa (see CENTROTHERM, paragraph 26 above, paragraph 28 and the case-law cited).
31 However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see CENTROTHERM, paragraph 26 above, paragraph 29 and the case-law cited).
32 Moreover, genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see CENTROTHERM, paragraph 26 above, paragraph 30 and the case-law cited).
33 Secondly, it is apparent from the case-law that the territorial borders of the Member States should be disregarded in the assessment of ‘genuine use in the [European Union]’ within the meaning of Article 15(1) of Regulation No 207/2009 (Case C‑149/11 Leno Marken [2012] ECR, paragraph 44).
34 In that context, whilst there is admittedly some justification for thinking that a Community trade mark should — because it enjoys more extensive territorial protection than a national trade mark — be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark in that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark (Leno Marken, paragraph 33 above, paragraph 50).
35 Thus, whilst it is reasonable to expect that a Community trade mark should be used in a larger area than a national mark, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (see Leno Marken, paragraph 33 above, paragraph 54 and the case-law cited).
36 Lastly, since the assessment of whether the use of the trade mark is genuine is carried out by reference to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule, which would not allow the Courts of the European Union to appraise all the circumstances of the dispute before it, cannot therefore be laid down (Leno Marken, paragraph 33 above, paragraph 55 and the case-law cited).
37 It is in the light of those considerations that it must be assessed whether the Board of Appeal was right to find that the evidence provided by the intervener proved that there had been genuine use of the earlier Community trade mark in respect of the ‘ready-made clothing for ladies and gentlemen; footwear (except orthopaedic)’ in Class 25 and the ‘handbags’ in Class 18.
38 In paragraph 20 of the contested decision, the Board of Appeal stated what was covered by the concept of genuine use, namely use of the mark in accordance with its essential function, which was to guarantee the identity of the goods or services for which it had been registered in order to create or preserve an outlet for them; the use had to take place on the market for the goods or services protected by the mark. It also stated that the assessment of whether the use of the trade mark was genuine was to be carried out on an overall basis, by considering all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark was real, in particular the nature of those goods and services, the characteristics of the market and the scale and frequency of use of the mark, in order to ascertain whether the use was warranted in the economic sector concerned to maintain or create a share in the market for the goods and services protected by the mark.
39 In paragraph 21 of the contested decision, the Board of Appeal found that, in view of the evidence provided, the intervener had proved that there had been genuine use of the earlier Community trade mark in Spain for ‘clothing, shoes and handbags’. In paragraph 22 of the contested decision, it referred to various documents in support of that finding: press articles in Spanish; the press dossier for the intervener’s group; printouts from websites, including that of the intervener; Spanish labels and Spanish advertising documents, promotional items and magazine articles. Having regard to that evidence, the Board of Appeal found, in paragraph 23 of the contested decision, that the earlier Community trade mark was used in the upper segment of the fashion industry, namely haute couture design for men and women, for clothing but also for shoes and handbags.
40 As regards the scale of use of the earlier Community trade mark, the Board of Appeal found, in paragraph 24 of the contested decision, that the evidence put forward by the intervener relating to advertising expenditure and sales figures had no probative value since it was unclear where those figures originated from, no authorisation or certification as to their accuracy was provided and it was impossible to derive from the undefined figures where and for which products the relevant sales and promotion activities took place. As regards the other items of evidence provided, the Board of Appeal found, in paragraph 25 of the contested decision, that, in Spain, 15 to 17 independent shops and the intervener’s shops had sold fashion products under the earlier Community trade mark during the relevant period, that that mark appeared on the website ‘Foro de Marcas Renombradas Españolas’ and on the English language version of that website, entitled ‘Leading Brands of Spain Forum’, with a clear description of its history and presence on the market, and that various advertising documents, press cuttings, promotional items and magazine articles showed that the earlier Community trade mark had been marketed in Spain. The Board of Appeal was of the opinion that, even though none of that evidence contained hard figures concerning sales and advertising in respect of the earlier mark, there was no doubt that that mark had been put to genuine use during the relevant period in Spain.
41 Lastly, in paragraph 26 of the contested decision, the Board of Appeal examined the evidence which the intervener provided as regards the use of the earlier Community trade mark outside of Spanish territory, particularly in Belgium, France and Portugal, before concluding that the evidence submitted was not sufficient to prove genuine use of the earlier mark in those countries.
42 In the first place, it must be stated that the applicant does not dispute either the place, Spain, or the duration, from 2004 to 2009, of use of the earlier Community trade mark.
43 In the second place, it must be stated that, in accordance with the case-law cited in paragraph 29 above, the Board of Appeal carried out an overall assessment of the documents in the file, taking account of all the relevant factors in the case and having regard to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real.
44 The Board of Appeal had regard to seven of the intervener’s catalogues for the years 2004 to 2007, showing the earlier mark for clothing and shoes on the last few pages; a brochure entitled ‘Pedro del Hierro Colección Otoño. Invierno 06/07’ showing the earlier Community trade mark for clothing, shoes and handbags; various labels in Spanish depicting the earlier Community trade mark, with prices in euros and references to sizes of clothing; advertising documents, press cuttings, promotional items and magazine articles, inter alia in Spanish, referring to the earlier mark for clothing, shoes and handbags; a printout in Spanish from the web page ‘Foro de Marcas Renombradas Españolas’ showing around 45 marks in the fashion industry; a copy of a catalogue in respect of the earlier Community trade mark for Autumn-Winter 2008-2009 in Spanish, showing a collection of clothing, shoes and handbags and referring to 17 shop locations in Spain; a press dossier in respect of the intervener’s group, referring to the existence of 226 shops with its name in Spain and 19 shops specialising in the earlier Community trade mark and stating that that mark is one of the five main brands of that group; a printout of the history of that group and its main brands including the earlier Community trade mark; printouts from the website in respect of the earlier mark with a date subsequent to the relevant period, referring to 15 shops in Spain and showing the brand’s latest collection; and a printout from the English version of the website ‘Foro de Marcas Renombradas Españolas’ setting out the history of the earlier Community trade mark and its presence on the Spanish market, on which it is marketed in 64 department stores, 110 prime department stores and 17 independent shops.
45 It cannot, therefore, be claimed that the Board of Appeal simply inferred the fact that the volume of sales under the earlier Community trade mark was sufficient to prove genuine use of that mark from the existence of retail outlets.
46 In the third place, it is true that the Board of Appeal, for the reasons set out in paragraph 40 above, regarded as insufficiently probative two pages containing an overview of advertising and promotion expenditure of EUR 1 to 1.5 million per year and sales figures, for the years 2005 to 2009, of EUR 30 to 40 million per year. However, it is necessary to take into account the fact that a large number of items covered by the earlier Community trade mark were offered for sale in the mark’s catalogues and in the intervener’s catalogues relating to clothing, shoes and handbags and that those items were available in 17 shops exclusively selling the earlier Community trade mark and in over 150 department stores during the relevant period. In the circumstances of the case, that evidence allowed the Board of Appeal, in the overall assessment of whether the use of the earlier mark was genuine, to conclude that the mark had been used to a certain extent, as the requirement for such use does not seek to assess the commercial success of the undertaking in question (see the case-law cited in paragraph 28 above).
47 The Board of Appeal was therefore right to find, having regard to all the facts and circumstances relevant to establishing whether the commercial exploitation of the earlier Community trade mark was real, that mark had been put to genuine use in Spain. Furthermore, some of the evidence with which the intervener provided the departments of OHIM, namely the locations of the shops marketing the mark in other European countries and the magazine articles in English and Portuguese (paragraphs 4 and 26 of the contested decision), show the gradual and continuous expansion of that mark in the territory of other Member States, mainly in Portugal, but also, to a lesser extent, in Belgium and France.
48 The different arguments which the applicant has put forward against such a finding must be rejected.
49 First, although the applicant relies on the judgment in Case T‑334/01 MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 36, to claim that the assessment of whether the use of a trade mark is genuine requires an assessment of the scale or volume of sales, it must be stated that, in that case, the opposing party provided only very little evidence seeking to prove that there had been genuine use of its mark (HIPOVITON, paragraphs 8 and 14). In the present case, the intervener, on the contrary, provided the departments of OHIM with numerous documents proving that the earlier Community trade mark had been used with a view to its marketing, namely catalogues showing the earlier mark or goods marketed by the intervener, including those bearing the earlier Community trade mark. It is not therefore possible to rely on the analysis carried out by the Court in HIPOVITON to dispute the assessment carried out by the Board of Appeal as to whether the use of the earlier mark was genuine.
50 Secondly, the applicant submits that the Board of Appeal did not specify the scale or context of use of the earlier Community trade mark, as the contested decision does not disclose either the nature of the market concerned or evidence of activity.
51 First of all, it must be pointed out that the applicant expressly declared at the hearing that it was not, by its argument, stressing the geographical aspect of the use of the earlier Community trade mark.
52 Consequently, it must be held that the applicant is complaining that the Board of Appeal did not rule on the nature and context of the market for the goods at issue, with a view to ascertaining whether the standard of the evidence submitted by the intervener was sufficient to establish that there was activity and, therefore, that there was genuine use of the earlier Community trade mark.
53 It is true that the case-law (see paragraph 29 above) requires the Board of Appeal to carry out an overall assessment of the documents in the file in which regard is to be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the earlier mark is real. It must be held that, in the present case, the Board of Appeal ruled on the nature of the goods protected by the earlier Community trade mark, as regards their inherent characteristics, namely clothing, shoes and handbags (paragraph 21 of the contested decision), and as regards their market position, namely goods which belong to the upper segment of the fashion industry and, more specifically, as regards clothing, which are of haute couture design for men and women (paragraph 23 of the contested decision). The Board of Appeal therefore took into consideration the context within which and the market on which the goods covered by the earlier Community trade mark were marketed in order, having regard to the evidence provided by the intervener, to rule on the genuine use of the earlier Community trade mark.
54 Consequently, the premiss on which the applicant’s argument, as set out in paragraph 52 above, is based is unfounded.
The second and third pleas, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 as regards, respectively, the evidence of the highly distinctive character of the earlier Community trade mark and the similarity of the signs at issue
55 First, the applicant calls into question the Board of Appeal’s finding that the earlier Community trade mark has a highly distinctive character. Secondly, it is of the opinion that the Board of Appeal erred in finding that there was a low degree of similarity between the signs at issue. Such arguments seek to criticise the Board of Appeal’s assessment as regards the existence of a likelihood of confusion in the present case.
56 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if ‘because of its identity with, or similarity to, 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’.
57 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion (see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17). According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 and 31 and the case-law cited).
58 That global assessment 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 (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48, and GIORGIO BEVERLY HILLS, paragraph 57 above, paragraph 32).
59 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
60 According to the case-law, 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 Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
61 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in partially upholding the opposition on the ground that there was a likelihood of confusion between the marks at issue, having regard to the highly distinctive character of the earlier Community trade mark in Spain.
62 It must be stated at the outset, that the applicant does not dispute either the definition of the relevant public, namely the average consumer in all the Member States of the European Union, or the Board of Appeal’s finding that the goods referred to in paragraph 3 above are identical to the ‘ready-made clothing for ladies and gentlemen’ in Class 25 covered by the earlier mark.
63 As regards the comparison of the signs at issue, the applicant submits that the Board of Appeal erred in finding that there was a low degree of visual and phonetic similarity between those signs and in not giving due regard to the nature of the distinctive element in a global assessment of the signs. In spite of the presence of the element ‘pedro’ in the signs at issue, the Board of Appeal should have found that there was, at best, a very low degree of similarity between the signs.
64 In the contested decision, the Board of Appeal carried out a global assessment of the similarity of the signs at issue. In paragraph 57 it stated that the assessment of the similarity of the marks at issue, whether visual, phonetic or conceptual, had to be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant components, as the consumer perceives a mark as a whole and does not proceed to analyse its various details. In paragraph 59, it found that, throughout the European Union, the first element of the earlier Community trade mark, which is present in the mark applied for, would be perceived as a masculine forename, being very common in Spain and Portugal, and that the other elements of the earlier Community trade mark would be perceived as a surname, a perception strengthened by the fact that the first letters of the words ‘pedro’ and ‘hierro’ are written in uppercase letters and that those words are connected by the word ‘del’, such a structure being common in Europe to combine a forename with a surname. It also pointed out that the consumer would, as a general rule, attribute greater distinctiveness to a surname than to a forename. In paragraph 60, it found, targeting the Spanish consumer, that the mark applied for was, visually and phonetically, an identical reproduction of the first element of the earlier Community trade mark, the marks at issue differing only in the element ‘del hierro’, which would be perceived as a not very common surname. Consequently, the Board of Appeal was of the opinion that, for the Spanish consumer, there was a low degree of visual and phonetic similarity between the marks at issue and that, for the other consumers in the European Union, the visual and phonetic similarity was equally low, in the light of the presence, in the earlier Community trade mark, of the additional and more distinctive element ‘del hierro’, which would be perceived as an uncommon surname.
The visual similarity
65 The applicant takes the view that the Board of Appeal should have taken into consideration not only the element ‘pedro’, but should also have attached great significance to the rest of the earlier Community trade mark, which consists of a significantly different surname. Such a factor has the effect of increasing the specificity of the identification, having regard also to the fact that the element common to the signs at issue is a common forename.
66 In paragraphs 60 and 70 of the contested decision, the Board of Appeal found that there was a low degree of visual similarity between the signs at issue. In reading paragraphs 59 and 60 of that decision, in which the Board of Appeal carried out a global assessment of the similarity of the signs at issue, it is clear that the Board of Appeal found that there was a certain degree of visual similarity between those signs on the ground that they shared the forename ‘pedro’, which is the only element in the mark applied for and one of the three word elements in the earlier Community trade mark. Furthermore, the Board of Appeal noted that the figurative element included in the earlier Community trade mark was commonplace and would be perceived as purely decorative. It was therefore in the light of the word element ‘pedro’, which it regarded as corresponding to a forename which is very common in Spain and Portugal and less common in the rest of the European Union, that the Board of Appeal found that there was a low degree of visual similarity between the signs at issue.
67 The applicant’s argument therefore has no factual basis because, in order to reach the conclusion that there was a low degree of visual similarity between the signs at issue, the Board of Appeal not only took into consideration the word element ‘pedro’, but also the other word elements of the earlier Community trade mark, dwelling moreover on the fact that those other elements would be perceived by all of the relevant public as a surname constituting a more distinctive element than the forename ‘pedro’ (paragraph 60 of the contested decision). The Board of Appeal did therefore indeed take into account all the word elements in the earlier mark by attaching greater significance to the word element ‘del hierro’ than to the word element which is common to the two marks, by giving those word elements due regard and by taking into account their impact on the relevant public’s perception of the earlier Community trade mark. In so doing, the Board of Appeal, however, found that the addition of the word element ‘del hierro’ was not capable of excluding the low degree of similarity resulting from the presence of the word element ‘pedro’ in the signs at issue.
68 The Board of Appeal was therefore right to find that there was a low degree of visual similarity between the signs at issue.
The phonetic similarity
69 The applicant reproduces the argument set out in paragraph 65 above to dispute the phonetic similarity of the signs at issue.
70 It is necessary, once again, to refer to paragraphs 60 and 70 of the contested decision in which the Board of Appeal found that the signs at issue were phonetically similar to a low degree. Without applying its analysis specifically to the phonetic perception of the signs at issue, the Board of Appeal found that their similarity arose from the presence of the word element ‘pedro’, which is common to the two signs, and that the low degree of similarity resulted from the presence of the additional and more distinctive element ‘del hierro’, which would be perceived as an uncommon surname by all of the relevant public. The applicant’s argument, set out in paragraph 65 above, does not therefore, for the same reasons as those set out in connection with the assessment of the visual similarity, make it possible to rebut the finding made by the Board of Appeal as regards the low degree of similarity between the signs at issue.
The conceptual similarity
71 In paragraph 61 of the contested decision, the Board of Appeal found that as names do not convey a concept, the conceptual comparison between the two signs remained neutral, a finding which is not, in itself, disputed by the applicant.
72 Furthermore, even if the applicant’s argument set out in paragraph 65 above also related to the conceptual comparison of the signs at issue, it would not, for the same reasons as those set out in connection with the assessment of the visual similarity, make it possible to rebut the Board of Appeal’s conclusion that the conceptual comparison does not affect the finding that the signs at issue are similar as the word elements of which the signs at issue consist do not convey any concept, since they are, on the one hand, a forename and, on the other, a forename and a surname.
73 In view of paragraphs 65 to 72 above, it must be held that the Board of Appeal was right to find that there is a low degree of visual and phonetic similarity between the signs at issue and that the effect of the conceptual comparison on the perception of the similarity between those signs is neutral.
The likelihood of confusion
74 First, the applicant submits that the Board of Appeal erred in its assessment as to the highly distinctive character of the earlier Community trade mark, as the evidence on which it is based provides no indication of the scale or extent of its use or, consequently, of its highly distinctive character. The Board of Appeal did not succeed in establishing the highly distinctive character of the earlier Community trade mark in relation to the goods at issue for a significant part of the relevant public, namely average consumers. Secondly, the applicant submits that, in view of the very low degree of similarity between the signs at issue, there is no likelihood of confusion.
75 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than do marks with less distinctive character (see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24; Canon, paragraph 57 above, paragraph 18; and Lloyd Schuhfabrik Meyer, paragraph 57 above, paragraph 20).
76 The existence of a higher than average level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, Case T‑277/04 Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraphs 34 and 35 and the case-law cited).
77 In paragraphs 29 to 39 of the contested decision, the Board of Appeal analysed whether the earlier Community trade mark had a highly distinctive character and a reputation within the meaning of Article 8(5) of Regulation No 207/2009, which was claimed by the intervener in respect of ‘clothing’ in Spain, by the filing date of the mark applied for, namely 21 January 2009 (paragraph 32 of the contested decision). In view of all the evidence submitted by the intervener, it found that the highly distinctive character of the earlier Community trade mark in respect of ‘clothing’ was proven, but that the same was not true as regards reputation (paragraph 33). As a basis for its assessment, it relied on the fact that the goods covered by the earlier Community trade mark were sold in a ‘considerable’ number of independent or in-store shops throughout Spain and that the earlier Community trade mark was classified by the website ‘Leading Brands of Spain Forum’ as one of the main brands in Spain for haute couture design. It found that the highly distinctive character obtained only in respect of clothing, the only goods with regard to which such a character had been claimed, and not in respect of the other goods for which genuine use had been proven (paragraph 35). It took the view that the evidence submitted did not prove the reputation of the earlier Community trade mark, in spite of the evidence that it had been sold in Spain to a certain extent, since the absence of any reliable and specific evidence on sales figures meant that it was not possible to establish the exact scope of the sales and the printout from the abovementioned website was not accompanied by any evidence about the organisation which established that site, its measurement methods and credibility (paragraph 36).
78 In the first place, the applicant’s argument relates to the absence of evidence of the highly distinctive character of the earlier Community trade mark since there is no indication, in the contested decision, of the scale or extent of use, which would have made it possible to ascertain whether the average consumer was sufficiently aware of the use of the earlier Community trade mark. The applicant also submits that the Board of Appeal found that the intervener had not been able to establish that the earlier Community trade mark had a reputation with a significant part of the relevant public. According to the applicant, the same is true of the highly distinctive character acquired through use, which must be assessed having regard to the goods covered and the average consumer of those goods.
79 First, it must be borne in mind that earlier Community trade marks may be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the European Union. Consequently, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
80 Secondly, it must therefore be ascertained whether, having regard to all the evidence provided, the Board of Appeal could properly conclude that the earlier Community trade mark had a highly distinctive character for average consumers in Spain (see paragraph 62 above).
81 It must be pointed out at the outset that the printout from the website ‘Leading Brands of Spain Forum’ and the printouts from the website in respect of the earlier mark bear dates subsequent to that of 21 January 2009, the date by reference to which the assessment of the distinctive character had to take place (see paragraph 77 above). However, although the reputation of an earlier mark must be established as at the filing date of the mark applied for, documents bearing a date after that date cannot however be deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (judgment of 16 December 2010 in Joined Cases T‑345/08 and T‑357/08 Rubinstein and L’Oréal v OHIM — Allergan (BOTOLIST and BOTOCYL), not published in the ECR, paragraph 52). The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (BOTOLIST and BOTOCYL, paragraph 52 and the case-law cited). The same must apply as regards evidence of the highly distinctive character of a mark.
82 In the present case, it is common ground that the printout from the website ‘Leading Brands of Spain Forum’ contains many items of information about the earlier Community trade mark, its history and its expansion in Spain. It is, inter alia, stated in that printout that the earlier mark was created in 1974, that it has been marketed in the intervener’s shops since 1989 and that, as from 1999, independent shops have been opened, particularly in sites presented as prime sites in large cities like Madrid (Spain) and Valencia (Spain). That document also presents the marketing network in respect of the earlier Community trade mark at the time at which the document was compiled, namely 64 in-store concessions, 110 prime in-store concessions and 17 independent shops. In view of the specific, numerous and relevant items of information included in the printout from the site ‘Leading Brands of Spain Forum’, the Board of Appeal was right to choose that document as one of the items of evidence which enabled it to ascertain whether the earlier Community trade mark had a highly distinctive character, since those items of information show the expansion of the earlier mark over a period of more than 25 years throughout Spanish territory and provide evidence of how intensive, geographically widespread and long-standing its use has been.
83 The other items of evidence which the Board of Appeal took into consideration point in the same direction, namely the progressive expansion of the earlier mark over a period of more than 25 years, inter alia through its integration into the intervener’s group and its marketing via the intervener’s distribution network, which is very extensive in Spain (paragraph 4 of the contested decision). That also applies to a copy of an Autumn-Winter 2008-2009 catalogue in respect of the earlier Community trade mark, showing a collection of clothing, shoes and handbags and referring to 17 independent shops and to the fact that that collection is marketed in the intervener’s shops. The same is true of the press dossier, dating from 2008 and relating to the intervener’s group, which mentions the existence of 226 shops with its name and 19 independent shops, the earlier Community trade mark being one of the intervener’s five main brands, and refers to the history of that mark, the number of sales outlets and the product lines marketed. The history of the intervener’s group and various press articles in Spanish relating to the earlier Community trade mark and to its homonymous designer are also evidence of how intensive, geographically widespread and long-standing the use of that mark has been.
84 Consequently, the Board of Appeal was right to find that the earlier mark had a highly distinctive character in Spain. It is therefore necessary to reject the applicant’s argument that the highly distinctive character of the earlier Community trade mark for a significant part of the public has not been established.
85 Furthermore, it must be held that, as the Board of Appeal, in accordance with the case-law cited in paragraph 76 above, took into consideration all the relevant facts of the case, the argument that the contested decision does not contain any indication of the scale or extent of use of the earlier Community trade mark is incorrect, since the evidence relating to the number of sales outlets in which that mark is marketed, the size of the collections of products marketed and the recognition of that mark by the relevant public in Spain, on the contrary, establishes the scale and extent of its use. If the applicant’s argument is to be understood as criticising the finding that the earlier Community trade mark has a highly distinctive character although there is no evidence of the sales figures and the advertising and promotion expenditure, it must be pointed out that the assessment of whether a mark has a highly distinctive character must be made in the light of all the relevant evidence, including the market share held by the earlier Community trade mark, but that such evidence is not required if, as in the present case, evidence of another kind enables the Board of Appeal to establish that the use of the earlier Community trade mark has been intensive and geographically widespread so that the degree of the relevant public’s recognition of that mark is sufficiently high to confer on it a highly distinctive character (see paragraph 76 above).
86 The criticism that the contested decision does not specify the scale or context of use of the earlier Community trade mark must be rejected for the same reasons as those set out in paragraph 53 above.
87 Consequently, the Board of Appeal was right to find that the earlier Community trade mark had a highly distinctive character and that it should therefore be accorded broader protection than marks with less distinctive character (see the case-law cited in paragraph 75 above).
88 In the second place, the applicant submits that, in view of the very low degree of similarity between the signs at issue, there is no likelihood of confusion.
89 In the contested decision, the Board of Appeal found that, having regard to the highly distinctive character of the earlier mark for the goods ‘ready-made clothing for ladies and gentlemen’ in Class 25 in Spain, there was a likelihood of confusion between the marks at issue, in spite of the low degree of similarity between them, but only as regards the goods covered by the mark applied for referred to in paragraph 3 above, which are identical to the abovementioned goods covered by the earlier Community trade mark (paragraph 71).
90 It is thus apparent from the contested decision that it was on account of the highly distinctive character of the earlier Community trade mark that the Board of Appeal found that there was a likelihood of confusion. The applicant’s argument relating to the very low degree of similarity between the signs at issue must therefore be rejected.
91 Consequently, the Board of Appeal was right to find that there was a likelihood of confusion for the average consumer in Spain between the goods covered by the earlier mark referred to in paragraph 3 above and the ‘ready-made clothing for ladies and gentlemen’ in Class 25, since it is sufficient, for a Community trade mark not to be registered, for a relative ground for refusal to exist in part of the European Union (see, to that effect, VENADO with frame and Others, paragraph 79 above, paragraph 76).
92 It follows from all of the foregoing that the action must be dismissed.
Costs
93 Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Pedro Group Pte Ltd to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 8 May 2014.
[Signatures]