JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
26 March 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark Royal County of Berkshire POLO CLUB — Earlier Community figurative trade marks BEVERLY HILLS POLO CLUB — Relative ground for refusal — Likelihood of confusion — Duty to state reasons — Article 75 of Regulation (EC) No 207/2009 — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑581/13,
The Royal County of Berkshire Polo Club Ltd, established in London (United Kingdom), represented by J. Maitland-Walker, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Lifestyle Equities CV, established in Amsterdam (Netherlands), represented by D. Russo, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 July 2013 (Case R 1374/2012-2), relating to opposition proceedings between Lifestyle Equities CV and Royal County of Berkshire Polo Club Ltd,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 November 2013,
having regard to the response of OHIM lodged at the Court Registry on 24 April 2014,
having regard to the response of the intervener lodged at the Court Registry on 24 April 2014,
having regard to the responses of the parties to the written question from the Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 6 January 2011, the applicant — Royal County of Berkshire Polo Club Ltd — filed an application for the registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in, inter alia, Classes 9, 14, 18 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Spectacles, spectacle cases, spectacle frames, spectacle glasses, sun glasses; and accessories therefor’;
– Class 14: ‘Watches, jewellery, precious stones, precious metals, goods coated in precious metals’;
– Class 18: ‘Leather goods; imitation leather goods; trunks, travel bags, umbrellas, parasols, whips, harnesses, saddlery, walking sticks’;
– Class 25: ‘Articles of clothing, footwear and headgear’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 45/2011 of 7 March 2011.
5 On 30 May 2011, the intervener — Lifestyle Equities CV — filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for, in respect of, inter alia, the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community figurative marks registered under Nos 364257, 532895, 5482484 and 8456469, all represented by the following sign:
7 The earlier marks were registered in respect of goods falling within, inter alia, Classes 9, 14, 18 and 25 within the meaning of the Nice Agreement and corresponding, for each of those classes, to the following description:
– Class 9: ‘Eyewear, namely, eyeglasses, eyeglass frames, eyeglass cases and eyeglass chains’ (Mark No 5482484);
– Class 14: ‘Watches’ (Mark No 532895); ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’ (Mark No 8456469);
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (Mark No 8456469);
– Class 25: ‘Clothing, footwear, headgear’ (Marks No 5482484 and No 8456469).
8 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.
9 On 15 June 2012, the Opposition Division rejected the opposition in its entirety.
10 On 24 July 2012, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11 By decision of 25 July 2013, as corrected on 9 September 2013 (‘the contested decision’), the Second Board of Appeal of OHIM partially annulled the Opposition Division’s decision, upholding the opposition with regard to the goods referred to in paragraph 3 above.
12 To that end, the Board of Appeal found, inter alia, that:
– the goods at issue were everyday consumer goods and were directed at the general public of the European Union, whose level of attention was normal;
– the image of the polo player, and the words ‘polo club’, in the two signs in question had an inherent enhanced distinctiveness in relation to the goods in Classes 9, 14, 18 and 25 covered by those signs;
– the signs at issue, none of the components of which was negligible, had:
– some visual similarity;
– ‘a degree of [au]ral similarity’, that the Board did not further define;
– significant conceptual similarity;
– the earlier marks had an average distinctiveness;
– there was a likelihood of confusion between the marks at issue in relation to all the goods mentioned in paragraph 3 above.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs incurred by the applicant in the proceedings and in the previous proceedings before the Board of Appeal.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 Although the intervener contended in its response only that the Court should order the applicant to pay the costs, it must be held that, at least implicitly, the intervener, like OHIM, seeks dismissal of the action.
Law
16 The applicant relies in essence on two pleas in law: (i) infringement of Article 75 of Regulation No 207/2009 and (ii) infringement of Article 8(1)(b) of that regulation.
First plea in law: infringement of Article 75 of Regulation No 207/2009
17 The applicant submits, in essence, that the statement of reasons for the contested decision is inadequate owing to the insufficient reference made to the evidence and arguments submitted by the parties. As a result, it is especially difficult to understand the basis on which the Board of Appeal reached its findings. The applicant submits, in particular, that there is a lack of clarity as regards the finding that the level of attention of the average EU consumer of the relevant goods at issue is normal.
18 OHIM and the intervener dispute the applicant’s arguments.
19 It should be recalled that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. It is settled case-law that that obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required by that provision must disclose in a clear and unequivocal manner the reasoning followed by the body which adopted the measure in question. The purpose of the obligation to state the reasons for OHIM’s decisions is twofold: to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision. However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to take a view on every argument submitted to them by the parties. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 30 April 2014 in Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, EU:T:2014:238, paragraph 88 and the case-law cited).
20 In particular, where OHIM refuses to register a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal — absolute or relative — which precludes that registration and the legal provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. Such a statement of reasons is, in principle, sufficient (see, to that effect, judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 46).
21 In the present case, the statement of reasons for the contested decision describes in a readily understandable manner all the steps taken in examining whether there was a likelihood of confusion: it sets out the applicable legislative provisions and describes the position under the relevant case-law in paragraphs 12 to 15; it goes on to determine the relevant public in paragraphs 16 to 20; and then undertakes a detailed analysis of the similarity of the goods concerned and of the signs at issue in paragraphs 21 to 26 and paragraphs 27 to 42, respectively. The conclusions reached as to the likelihood of confusion, set out in paragraphs 43 to 53 of the contested decision, are thus amply supported by the reasoning leading up to those findings.
22 As regards, more specifically, the assertion made in paragraph 20 of the contested decision to the effect that ‘[t]he Board considers that the level of attention of the average EU consumer of the relevant products in conflict is normal’, that assertion cannot — contrary to the applicant’s contention — be said to be obscure. That conclusion simply follows on logically from the preceding paragraphs.
23 Moreover, it should be borne in mind that the duty to state reasons for decisions is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons, which may be adequate even though it sets out reasons which are incorrect (see judgment of 12 July 2012 in Gucci v OHIM — Chang Qing Qing (GUDDY), T‑389/11, EU:T:2012:378, paragraph 17 and the case-law cited).
24 Since the Board of Appeal gave adequate reasons for the contested decision for the purposes of Article 75 of Regulation No 207/2009, the first plea must be rejected, while the applicant’s arguments concerning the soundness of the reasoning followed in that decision will be examined in the context of the second plea.
Second plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
25 The applicant disputes the Board of Appeal’s assessment concerning the similarity of the signs at issue and its finding that, in the circumstances, there is a likelihood of confusion. The applicant argues in particular that the Board attributed an unjustified and excessive value to the image of the polo player in the marks at issue and thus failed to consider each mark as a whole.
26 OHIM and the intervener dispute the applicant’s arguments.
27 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to an earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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 is to include the likelihood of association with the earlier trade mark.
28 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant public
29 According to 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 judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
30 In the present case, the Board of Appeal found that the relevant territory was that of the European Union. The Board went on to find that the goods in question were intended for the general public, who put those goods to everyday use. That being so, the Board found that the consumer’s level of attention would be normal.
31 The applicant submits that the Board of Appeal’s finding concerning the level of attention of the relevant public is unclear.
32 OHIM and the intervener dispute the applicant’s arguments.
33 First, it must be held that the Board of Appeal was correct in finding that the relevant territory for the purposes of examining the likelihood of confusion is that of the European Union, since the earlier marks were Community marks.
34 Second, it can be seen from the case-law that the goods referred to in paragraphs 3 and 7 above must — in the absence of further details concerning their possible status as luxury goods — be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them (see, to that effect, judgments of 29 September 2009 in The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, ECR, EU:T:2009:364, paragraph 19; 7 December 2011 in El Corte Inglés v OHIM — Azzedine Alaïa (ALIA), T‑152/10, EU:T:2011:715, paragraph 20; and 17 October 2012 in MIP Metro v OHIM — J. C. Ribeiro (MISS B), T‑485/10, EU:T:2012:554, paragraph 22).
35 The Board of Appeal was therefore correct in finding that the level of attention of the relevant public was normal.
The comparison of the goods
36 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
37 In the present case, the Board of Appeal held that the goods covered by the marks at issue and falling within Classes 9, 14, 18 and 25 were identical.
38 It is appropriate to uphold the Board of Appeal’s conclusion in that regard, which, moreover, the parties do not call into question.
The comparison of the signs
– Preliminary observations
39 The global assessment of the likelihood of confusion, as regards the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression produced by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
40 The assessment of the similarity of two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, paragraph 39 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgments in OHIM v Shaker, paragraph 39 above, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of the mark that members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
41 Lastly, it should be borne in mind that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see, to that effect, judgments of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraph 61; 18 May 2011 in Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), T‑376/09, EU:T:2011:225, paragraph 35; and 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 30).
– The distinctiveness of the image of a polo player and the words ‘polo club’
42 In paragraphs 33 and 50 of the contested decision, the Board of Appeal — relying, directly or by analogy, on the judgments of 21 February 2006 in Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB) (T‑214/04, EU:T:2006:58) and POLO SANTA MARIA, paragraph 41 above (EU:T:2011:225) — found that the image of a polo player and the words ‘polo club’ had an inherently enhanced distinctiveness in relation to the goods referred to in paragraphs 3 and 7 above, because that image and those words had an imaginative content in relation to those goods, as they did to the goods involved in the cases that gave rise to those judgments.
43 The applicant submits that the image of a polo player and the words ‘polo club’ are descriptive of the sport in question and the place where it is played.
44 OHIM and the intervener dispute the applicant’s arguments.
45 First, it should be noted that, in the judgment in POLO SANTA MARIA, paragraph 41 above (EU:T:2011:225, paragraphs 7, 11, 35 and 55), the General Court found in essence that the image of a polo player had an enhanced distinctiveness in relation to, inter alia, the Class 18 and Class 25 goods mentioned in paragraphs 3 and 7 above, with the exception of the ‘whips, harness and saddlery’ in Class 18. In reaching that conclusion, the Court relied, in respect of the relevant Class 18 goods, on the fact that they were not directly linked to the playing of polo, and, in respect of the relevant Class 25 goods — as the applicant rightly points out — on the fact that the opposing party had proved to the requisite legal standard that the relevant public was familiar with its mark.
46 Thus, contrary to OHIM’s contention, the Board of Appeal erred in holding that the judgment in POLO SANTA MARIA, paragraph 41 above (EU:T:2011:225), supported a finding that the intrinsic characteristics of the sign were sufficient on their own to endow the image of a polo player and the words ‘polo club’ with enhanced distinctiveness in relation to the Class 25 goods at issue.
47 Nor is the Board of Appeal’s conclusion concerning the Class 25 goods at issue supported by the judgment in ROYAL COUNTY OF BERKSHIRE POLO CLUB, paragraph 42 above (EU:T:2006:58, paragraphs 42 and 43), also mentioned in paragraphs 33 and 50 of the contested decision. In that judgment, the General Court admittedly found that the device of a polo player had inherent enhanced distinctiveness in relation to Class 3 goods, such as personal hygiene goods, given the high imaginative content deriving from the fact that such a device had no connection with those goods. However, it cannot be said that there is no connection in the present case in relation to the Class 25 goods at issue.
48 Second, it should be observed that, in the judgment of 18 September 2014 in Herdade de S. Tiago II v OHIM — Polo/Lauren (V) (T‑90/13, EU:T:2014:778, paragraphs 33 and 43), the General Court held that the device of a polo player was not inherently particularly distinctive in relation to goods which were in substance identical to the Class 25 goods referred to in paragraphs 3 and 7 above, namely, ‘clothing, footwear, headgear’. It must also be observed that, as regards goods identical in substance to the Class 18 goods referred to in paragraphs 3 and 7 above, the Court found that that device had at least normal inherent distinctiveness, except in the case of ‘whips, harness and saddlery’, in relation to which that distinctive character was weaker.
49 In the light of the case-law cited in paragraphs 45 and 48 above, the Board of Appeal’s finding relating to the enhanced inherent distinctiveness of the image of a polo player and the words ‘polo club’ cannot be upheld in its entirety. It must be held that that image and those words have:
– weak inherent distinctiveness in relation to the ‘whips, harness and saddlery’ in Class 18, given their close connection to the playing of polo, which has been acknowledged by OHIM and, in substance, by the intervener, in their responses to the Court’s written question;
– normal inherent distinctiveness in relation to the Class 25 goods referred to in paragraphs 3 and 7 above, given that they can be used for polo playing, although there is nothing in their description to the effect that they relate to goods specifically designed for that purpose;
– inherent distinctiveness which is more enhanced, and at the very least normal, in relation to the other goods referred to in paragraphs 3 and 7 above, given that they have no connection with the playing of polo.
– The visual comparison
50 In paragraphs 35 to 37 and 44 of the contested decision, the Board of Appeal found that there was some visual similarity between the signs at issue. To that end, the Board highlighted the fact that those signs had in common the image of a polo player, with a similar profile, and the words ‘polo club’, but differed as regards their other word elements. Secondly, although the Board emphasised that none of the elements making up the two signs was negligible, it stated that the relevant public will, in both cases, distinctly identify and remember the image of a polo player, but would have no recollection of minor differences between the two signs, that is to say, between the details of one image as compared with the other.
51 The applicant acknowledges that the two signs have in common the elements highlighted by the Board of Appeal, but maintains that the Board failed to apply the principle — mentioned in the contested decision — that each of the signs at issue must be assessed as a whole. The two expressions ‘Beverly Hills Polo Club’ and ‘Royal County of Berkshire Polo Club’ should each have been taken into account as a whole and regarded as dominant, while the figurative elements should have been characterised as descriptive.
52 OHIM and the intervener dispute the applicant’s arguments.
53 First, as the Board of Appeal rightly established, it follows from the examination of the signs at issue that the figurative element, representing a polo player in motion and wielding a mallet, and the words ‘polo club’ are elements common to the marks at issue.
54 It is true that, in the mark applied for, the polo player is facing left and holding his mallet upright, while in the earlier marks the polo player is facing right and holding his mallet ready to strike the ball. However, those slight differences are not sufficient to reduce significantly the similarity deriving from the fact that both the signs at issue display the figure of a polo player astride a galloping horse. In both cases, the general public will recognise clearly and remember the image of a mounted polo player.
55 Furthermore, it should be noted that, as OHIM observed, the images of the polo player occupy a central position in each of the signs at issue.
56 In the mark applied for, that figurative element appears above the two lines of text incorporating the word elements and is much larger than either. Moreover, it should be noted that the expression ‘Royal County of Berkshire’ and the expression ‘Polo Club’ are each on a separate line, one below the other, and that their lettering is very different. In addition, the expression ‘Royal County of Berkshire’ is much more difficult to read than the expression ‘Polo Club’ and the relevant public would have to inspect it closely to be able to understand it; however, according to the case-law cited in paragraph 39 above, it is not deemed likely to do so. Thus, those two expressions will not be perceived as a single word element which, taken as a whole, occupies a position of importance almost equal to that of the figurative element of the mark applied for.
57 As regards the earlier marks, it is admittedly true that their word elements occupy a position comparable to that of their figurative element in the structure of the sign at issue. However, the words ‘Beverly Hills’ and ‘Polo Club’ are not presented as a sequence of four words, but as two pairs, since the first two words form an arc above the polo player and the other two words are written in a straight line below the polo player. The fact that the polo player device is surrounded by word elements strengthens its central role within the earlier marks, as OHIM rightly points out.
58 Second, the Court must reject the applicant’s argument that the Board of Appeal did not properly consider each of the signs at issue as a whole. In the first place, the Board expressly ruled out, in paragraphs 36 and 37 of the contested decision, the possibility of regarding the expressions ‘Beverly Hills’ and ‘Royal County of Berkshire’ as negligible, even though it recognised that other elements of the signs at issue were more important. In the second place, the Board implicitly, but necessarily, took account of the differences between those signs as a result of those expressions, given that it concluded that there was some visual similarity. If, as the applicant asserts, the Board had simply considered the elements common to the signs at issue, it would have found that the visual similarity was greater.
59 In those circumstances, the Court must uphold the Board of Appeal’s conclusion that there is some visual similarity between the signs at issue.
– The aural comparison
60 In paragraphs 38 and 39 of the contested decision, the Board of Appeal found that the signs at issue provided a degree of aural similarity to the extent that they shared the word elements ‘Polo Club’ but differed as regards their other word elements. Although the Board did not further refine that conclusion, it follows from paragraph 44 of the contested decision that the aural similarity was considered to be weaker than the visual similarity.
61 The applicant submits that the Board of Appeal failed to take sufficient account of the crucial differences in sound and pronunciation between the dominant word elements — those being, according to the applicant, the expressions ‘Beverly Hills’ and ‘Royal County of Berkshire’.
62 OHIM and the intervener dispute the applicant’s arguments.
63 In that connection, it should be noted that — as OHIM pointed out — owing to the fact that both the signs at issue contain the words ‘polo club’, there are similarities in the pronunciation of those signs despite the differences brought about by the words ‘Beverly Hills’ and the words ‘Royal County of Berkshire’, the former to be found only in the earlier marks and the latter only in the mark applied for.
64 Since the word elements of the signs at issue partially coincide, it must be concluded that the aural similarity of those signs is relatively low; in essence, that conclusion mirrors the findings made by the Board of Appeal in paragraphs 28, 39 and 44 of the contested decision.
– The conceptual comparison
65 The Board of Appeal found that there was a high degree of conceptual similarity between the signs at issue, owing to the common reference to the sport of polo and polo clubs. In that regard, it considered that the minor differences between the two polo player devices did not prevent the relevant public from distinctly identifying the player as such in both cases and from associating those signs conceptually with the playing of polo. According to the Board, that finding is not affected by the existence, in each of the signs at issue, of word elements referring to different geographical locations, given that those elements are not particularly distinctive as they could refer to the geographical origin of the goods.
66 The applicant submits that the word elements of the signs at issue — ‘Beverly Hills Polo Club’ and ‘Royal County of Berkshire Polo Club’ — refer to two different geographical locations where polo can be played, one of which is moreover well known to the relevant public. According to the applicant, the Board of Appeal had failed to compare those signs on the basis of each considered as a whole and had attributed too much importance to their common elements, at the same time discounting the role played by the elements which differ, those being considered to be mere geographical indicators which, accordingly, are not particularly distinctive. The applicant suggests, moreover, that an analogy can be drawn with the marks of football teams, which are distinguishable precisely because of the references to cities which those marks contain.
67 OHIM and the intervener dispute the applicant’s arguments.
68 As OHIM contends, the Board of Appeal is correct in finding that the signs at issue have a high degree of conceptual similarity, in so far as each refers to a polo club and displays a device of a polo player, and those devices are similar. Accordingly, either of those signs will bring the idea of polo to the minds of the relevant public.
69 Moreover, even if, notwithstanding the arrangement of the word elements of the signs at issue (see paragraphs 56 and 57 above), the relevant public were to associate those word elements with two different polo clubs, the degree of similarity would be only marginally reduced in so far as both those signs would nevertheless continue to refer to the idea of polo playing, albeit at different clubs. Moreover, there is nothing to suggest that the non-English speaking public understands the meaning of the word element ‘Royal County of Berkshire’ in the mark applied for.
70 Lastly, it should be noted that the applicant’s argument based on the premiss that there is no likelihood of confusion between the marks of different football teams is wholly irrelevant. The applicant does not put forward any evidence at all as grounds for concluding that it is possible to compare the general public’s knowledge of polo with its knowledge of football; nor has the applicant explained how the two polo clubs concerned in this case would be comparable, in the eyes of that public, to football teams.
71 In the light of the foregoing, it must be held that, as the Board of Appeal correctly found, the signs at issue have significant conceptual similarity.
– Conclusions regarding the similarity of the signs
72 It follows from all the considerations set out above that the Court must uphold the Board of Appeal’s finding that, in essence, the signs at issue have some visual similarity, relatively low aural similarity and significant conceptual similarity.
73 However, account should be taken of the fact that those similarities derive from the elements of the signs at issue which bring polo playing to mind. It is apparent from paragraphs 42 to 49 above that, with the exception of the ‘whips, harness, saddlery’ in Class 18, those elements have a normal or enhanced inherent distinctiveness in relation to the goods referred to in paragraphs 3 and 7 above (‘the goods not directly related to polo playing’), whereas, in relation to the ‘whips, harness, saddlery’ in Class 18, that distinctiveness is significantly weaker. Given that, when assessing the similarity of signs, account must be taken of their distinctive and dominant components, the overall similarity of the signs in the present case is lower where the marks are used in relation to those Class 18 goods.
The likelihood of confusion
74 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
75 The Board of Appeal found that there was a likelihood of confusion between the marks at issue. First, it found that the earlier marks had at least average inherent distinctiveness. It then found there to be some visual similarity and significant conceptual similarity. Although the Board noted that there were aural differences between the signs at issue, it pointed out that, since the sale of the goods at issue takes place in shops where consumers choose those goods themselves, the visual similarity was more important. Similarly, it pointed out that the fact that the goods concerned were identical reduced the significance of the differences between those signs. Lastly, the Board found that, even assuming that the earlier marks had only a weak distinctive character, there could nevertheless be a likelihood of confusion.
76 The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue. It argues that minor similarities between the marks, in particular those relating to their visual appearance, were overestimated while the importance of the word elements specific to each sign was discounted, both in the examination of the aural and visual similarity and in the examination of the conceptual similarity.
77 OHIM and the intervener dispute the applicant’s arguments.
– The goods not directly related to polo playing
78 With regard to the goods not directly related to polo playing, the signs at issue are characterised by some visual similarity, a relatively low aural similarity and significant conceptual similarity (see paragraph 72 above).
79 That being so and given also that the corollary of the fact that the goods are identical is that the scope of any differences between the signs in question is reduced (see judgment in POLO SANTA MARIA, paragraph 41 above, EU:T:2011:225, paragraph 53 and the case law cited), the Board of Appeal was correct in concluding that there was a likelihood of confusion in the mind of the relevant public, whose level of attention is not particularly high. Furthermore, it should be noted that, in the light of the similarity of the signs at issue and the fact that the goods are identical, that conclusion would remain valid even if the applicant had asserted that some of the goods covered by its Community trade mark application were luxury goods (see paragraph 34 above), in relation to which the buyer would demonstrate a higher level of attention.
80 For the sake of completeness, it should be recalled that, according to case-law, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the good themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (judgments of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49, and 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, ECR, EU:T:2010:520, paragraph 61).
81 In the present case, as the Board of Appeal rightly held in paragraph 44 of the contested decision, without being contradicted by the applicant, most of the goods are usually sold in self-service stores where consumers choose the goods themselves. It must therefore be held that the visual aspect will be more important than the aural aspect. Contrary to the assertions made by the applicant, therefore, the differences between the word elements of the signs at issue — which, moreover, weaken the aural similarity between those signs, but without eliminating it — are not in any event sufficient to preclude the likelihood of confusion.
– ‘Whips, harness and saddlery’
82 With regard to the ‘whips, harness and saddlery’ in Class 18, it must be held, pursuant to, inter alia, the case-law cited in paragraph 40 above and that set out in paragraphs 45 to 49 and 73 above, that the similarity between the signs at issue is reduced significantly by the fact that their common elements have low inherent distinctiveness in relation to those goods.
83 Moreover, for the same reason, the earlier marks must be regarded as having a low inherent distinctiveness in relation to those goods. As it is, according to the case-law, the more distinctive the earlier marks, the greater the likelihood of confusion (see, to that effect and by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24 and 22 June 1999 in Lloyd Schufabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
84 Lastly, it should be noted that the goods in question are more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, with the result that the aural similarity of the signs — which, in the present case, is relatively weak — will gain in importance.
85 In those circumstances, the Board of Appeal was wrong to find that there was also a likelihood of confusion between the signs at issue in relation to ‘whips, harness, and saddlery’.
86 Consequently, the contested decision must be annulled to that extent and the action must be dismissed as to the remainder.
Costs
87 Under Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared or that each party bear its own costs.
88 Since the contested decision falls to be annulled in part, it is fair in the circumstances of the present case that each party bear its own costs.
89 As regards the application submitted by the applicant in relation to the costs of the proceedings before the Board of Appeal, it is for the Board to rule on the costs relating to those proceedings in the light of the present judgment (see judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.) (T‑143/11, EU:T:2012:645), paragraph 74 and the case-law cited).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 25 July 2013 (Case R 1374/2012-2) to the extent that it refused Community trade mark application No 9642621 in respect of ‘whips, harness, and saddlery’;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 26 March 2015.
[Signatures]