JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
12 June 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark TOUR DE X – Earlier national word mark and earlier international registration of a figurative mark TOUR DE FRANCE – Earlier EU and national word marks LE TOUR DE FRANCE – Earlier EU figurative mark LE TOUR DE FRANCE – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No damage to reputation – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))
In Case T‑604/22,
Société du Tour de France, established in Boulogne-Billancourt (France), represented by T. de Haan, P. Péters and S. Vandezande, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
FitX Beteiligungs GmbH, established in Monheim am Rhein (Germany), represented by S. Prés and T. Nguyen, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 25 October 2023,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Société du Tour de France, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 July 2022 (Case R 1136/2019-2) (‘the contested decision’).
I. Background to the dispute
2 On 11 May 2017, the intervener, FitX Beteiligungs GmbH, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark applied for designated goods and services in Classes 25, 28 and 41 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 corresponding, for each of those classes, to the following description:
– Class 25: ‘Clothing; footwear; headgear’;
– Class 28: ‘Games, toys and playthings; video game apparatus; sports equipment; body training apparatus [exercise]; sporting articles and equipment; decorations for Christmas trees; but none of the aforegoing including ice hockey skates, in-line roller skate frames, protective equipment for skaters and/or skate bags’;
– Class 41: ‘Sporting education services; training; entertainment services; sporting and cultural activities’.
4 The intervener claimed the colours black and orange.
5 On 11 August 2017, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights (together ‘the earlier rights’):
– the international trade mark designating Germany for the figurative mark TOUR DE FRANCE, filed and registered on 2 December 1966 under number 329298, designating, inter alia, ‘clothing, including boots, footwear and slippers’ in Class 25, and ‘games, toys, gymnastic and sporting articles (except clothing), ornaments and decorations for Christmas trees’ in Class 28, as reproduced below:
– the French word mark TOUR DE FRANCE, filed on 21 August 1986 and registered under number 1368310, designating, inter alia, ‘ready-made clothing, knitwear and hosiery, lingerie, underwear, pajamas, dressing gowns, skirts, dresses, pants, jackets, coats, shirts, neckties, scarves, belts, gloves, hats, waterproof clothing, clothing for playing sports, footwear, socks, stockings, tights, boots, shoes and slippers; all clothing for men, women and children; thigh boots, bathrobes; tracksuits, gymnastic and sports shoes; swimsuits’ in Class 25; ‘games, toys, gymnastics and sports articles not included in other classes; decorations for Christmas trees; fitness equipment; stationary exercise bicycles’ in Class 28; and ‘entertainment; organization of competitions for education or entertainment; organization of sporting events, operating fitness facilities and training for the practice of sports’ in Class 41;
– the EU word mark LE TOUR DE FRANCE, filed on 1 April 1996 and registered on 13 September 1999 under number 28191, designating, inter alia, ‘clothing; footwear; headgear’ in Class 25, and ‘sporting activities; organization of sporting activities’ in Class 41;
– the EU figurative mark LE TOUR DE FRANCE, filed on 31 October 2003 and registered on 31 March 2005 under number 3530557 (‘the earlier figurative mark’), designating, inter alia, ‘software for games’ in Class 9; ‘clothing, shoes, headgear; shirts; belts (clothing); gloves (clothing); headscarves; neckties, including ties; singlet; socks; booties; sports shoes; underclothing’ in Class 25; ‘toys, games and playthings; decorations for Christmas trees (except lighting devices); appliances for physical exercise or gymnastics’ in Class 28; and the services ‘provision of education; entertainment/sporting and cultural performances; entertainment information; leisure services; organization of competitions (education or entertainment); games offered on-line on a computer network; gambling services’ in Class 41, as reproduced below:
– the EU word mark LE TOUR DE FRANCE, filed on 31 October 2003 and registered on 19 April 2005 under number 3503216, designating, inter alia, ‘toys, games and playthings; decorations for Christmas trees (except lighting devices); appliances for physical exercise or gymnastics’ in Class 28;
– the French word mark LE TOUR DE FRANCE, filed on 30 July 2015 and registered on 20 November 2015 under number 4200761, designating, inter alia, ‘sporting activities; organization of sporting events and cycling races; organization of shows and sporting events; entertainment; organizing competitions related to education and entertainment; game services provided on-line from a computer network’ in Class 41.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
8 The applicant furnished proof of genuine use of the earlier rights relied on, both in support of its claim of reputation and at EUIPO’s invitation following the request made by the intervener.
9 On 2 April 2019, the Opposition Division rejected the opposition in its entirety.
10 On 24 May 2019, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11 By the contested decision, the Board of Appeal dismissed the appeal on the grounds, first, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) and, secondly, that the use of the mark applied for in respect of the goods and services covered by it was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights within the meaning of Article 8(5) of that regulation.
II. Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
A. Determination of the applicable regulation ratione temporis
15 Given the date on which the application for registration of the mark applied for was filed, namely 11 May 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, the wording of which is identical.
16 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
B. Substance
17 The applicant relies on three pleas, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009, secondly, infringement of Article 8(5) of that regulation, and thirdly, infringement of Article 94 of Regulation 2017/1001.
1. The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
18 In support of the first plea, the applicant submits that the Board of Appeal erred in its assessment of the likelihood of confusion, in particular in its examination of the similarity between the rights at issue and of the distinctive character of the earlier rights.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
21 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22 In the present case, in paragraphs 37 and 38 of the contested decision, the Board of Appeal found that the relevant public was the public at large, cycling enthusiasts and professional cyclists, whose level of attention was average, and that the relevant territories were those of Germany, France and the European Union depending on the earlier right concerned. Those findings of the Board of Appeal are not disputed by the applicant.
23 As regards the comparison of the goods and services at issue, the Board of Appeal found, in paragraphs 29 to 35 of the contested decision, that the goods and services covered by the mark applied for were identical or similar to the goods and services covered by the earlier rights. The applicant does not put forward any argument to call that assessment into question.
(a) The comparison of the rights at issue
24 It should be borne in mind that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).
25 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
26 In accordance with that case-law, before addressing the issue of the visual, phonetic and conceptual similarity of the rights at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the rights at issue.
(1) The distinctive and dominant elements of the rights at issue
27 The Board of Appeal analysed the distinctive and dominant elements of the rights at issue in paragraphs 43 to 59 of the contested decision.
28 As regards the earlier word marks and the earlier international registration, the Board of Appeal took the view that those rights did not contain any dominant element. In addition, it examined the elements ‘tour de’, ‘tour’, ‘de France’ and ‘le’ contained in the earlier rights and concluded, in essence, that each of those elements had very little, if any, distinctive character or was descriptive of the goods and services in question.
29 As regards the earlier figurative mark, also containing the word element ‘le tour de France’, the Board of Appeal stated that the distinctive and dominant elements were the figurative elements, which were stylised, whereas the word element was descriptive and was ‘weak’ in the overall impression created by that mark.
30 As regards the mark applied for, the Board of Appeal concluded that the letter ‘x’ should be considered to be the dominant element of the mark applied for, in particular because of its stylisation, and that it was of average distinctiveness.
31 The applicant disputes that assessment, arguing that the word element ‘tour de’, which is common to the rights at issue, is visually dominant and that it does not have a low degree of distinctiveness, contrary to the Board of Appeal’s analysis.
32 EUIPO and the intervener dispute the applicant’s arguments.
33 In that regard, it must be noted that, when assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35).
34 In the present case, in the first place, it must be noted that, as regards the Board of Appeal’s finding that the word element ‘tour de’, common to the rights at issue, has very little, if any, distinctive character, especially in the context of cycling competitions and goods related thereto, the applicant confines itself to claiming that that finding is incorrect, without putting forward any argument capable of calling it into question.
35 In the second place, as regards the applicant’s argument relating to the dominant nature of the word element ‘tour de’ in the rights at issue from a visual standpoint, it should be observed, first of all, that that word element in the earlier word marks and in the earlier international registration is identical in size to the other word elements, namely the word ‘France’ and, as the case may be, the article ‘le’. Next, in the earlier figurative mark, the word element ‘tour de’ is not in any way dominant either in relation to the word element ‘France’ or in relation to the figurative elements of that mark, such as the particular figurative structure, the representation of the cyclist and the stylisation of the letter ‘o’. In addition, in the mark applied for, the letter ‘x’ constitutes the dominant element because it is represented in a large, bright orange font, which clearly distinguishes it from the element ‘tour de’ represented in a smaller black font.
36 Furthermore, it is also because of its very weak distinctive character that the word element ‘tour de’ does not dominate the overall impression created by the rights at issue. That element does not have a greater degree of distinctiveness than the other elements making up the rights at issue, with the result that it will not be more able to dominate the overall impression created by those rights (see, by analogy, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53).
37 It follows from the foregoing that the Board of Appeal did not err in its assessment of the distinctive and dominant elements of the rights at issue in finding that the word element ‘tour de’ had very little, if any, distinctive character and was not dominant within those rights.
(2) The visual, phonetic and conceptual comparison
38 The Board of Appeal took the view, in paragraphs 60 to 65 of the contested decision, that the rights at issue were visually similar to a low, or even very low, degree and, at most, phonetically similar to a low degree, and that they were not conceptually similar.
39 The applicant submits that the rights at issue are highly similar.
40 The applicant criticises the Board of Appeal for having taken into account the circumstances in which the goods and services in question are marketed in the context of the visual comparison and the weak distinctiveness of the word element ‘tour de’ in the context of the visual and phonetic comparisons, submitting that this was contrary to the case-law. In particular, the applicant submits that the fact that the common element ‘tour de’ is allegedly non-distinctive for the services concerned is irrelevant for the visual and phonetic analysis of the rights at issue. That common element is visually dominant and phonetically non-negligible in those rights. Furthermore, it argues, the rights at issue have a high degree of phonetic similarity in view of the overlap and the identical pronunciation of the first part of each one. Thus, the applicant maintains, the marks have a high degree of visual and phonetic similarity. Furthermore, it argues that the rights at issue are conceptually similar to a certain degree, or even very similar, as the fact that the mark applied for is likely to be understood as conveying the idea that X is to be filled in with a destination or country which is yet to be disclosed means that an obvious mental link will be made with the most highly reputed and well-known earlier rights.
41 EUIPO and the intervener dispute the applicant’s arguments.
42 First, as regards the visual comparison, it should be noted that the word element ‘tour de’ is common to the rights at issue. However, as is apparent from paragraphs 34 to 37 above, that element is not dominant within those rights and has very little, if any, distinctive character. Next, the rights at issue should be regarded as different in that, on the one hand, the mark applied for contains a different font, the letter ‘x’, which is dominant for the reasons set out in paragraph 35 above, and the letter ‘o’, which contains the stylised representation of a stopwatch. On the other hand, the earlier rights include the word elements ‘France’ and, as the case may be, ‘le’, which are not present in the mark applied for. Furthermore, the differences between the mark applied for and the earlier figurative mark are even more obvious. The font is clearly different, the earlier figurative mark has a different overall shape, its letter ‘o’ is reminiscent of a wheel of a bicycle and its letter ‘r’ takes the stylised form of a cyclist. Thus, all those differences and the average distinctive character of the letter ‘x’ in the mark applied for considerably lessen the similarity arising from the common expression ‘tour de’ and its position within the rights at issue.
43 Consequently, the Board of Appeal correctly found that, visually, the mark applied for had a low degree of similarity with the earlier word marks and the earlier international registration and a very low degree of similarity with the earlier figurative mark.
44 Secondly, as regards the phonetic comparison, it should be noted, as did the Board of Appeal, that the pronunciation of the rights at issue coincides in the sound of the word element ‘tour de’ and differs in the pronunciation of the non-coinciding elements, namely the word ‘France’ and, as the case may be, the article ‘le’ in the earlier rights, and the letter ‘x’ in the mark applied for. Although the fact that the word element ‘tour de’ (see paragraphs 34 and 37 above) has very little, if any, distinctive character does not preclude, from a phonetic standpoint, the public from perceiving a certain similarity in the first part of the rights through the pronunciation of that common element, it should be recalled that that element is not dominant in the overall impression created by the rights at issue, as has been stated in paragraphs 35 to 37 above, and that it will not be stressed. By contrast, the letter ‘x’, which is the dominant element of the mark applied for, produces a distinct sound that would not pass the ears of the relevant public unnoticed, and would rather tend to be stressed. Thus, the differences between the rights at issue, which are essentially based on the letter ‘x’, on the one hand, and the word element ‘France’, on the other, which is also not negligible in the light of its pronunciation, largely offset the similarities resulting from the common element ‘tour de’.
45 Consequently, the degree of phonetic similarity between the rights at issue is low, as the Board of Appeal in essence found.
46 Thirdly, the findings concerning the visual and phonetic similarity set out in paragraphs 43 and 45 above are not called into question by the applicant’s other arguments.
47 In that regard, it should be noted that the applicant’s argument, alleging an infringement of the case-law from the judgment of 4 March 2020, EUIPO v Equivalenza Manufactory (C‑328/18 P, EU:C:2020:156, paragraphs 66 to 72), on account of the Board of Appeal’s taking into account of the circumstances in which the goods and services in question are marketed in the context of the visual comparison and of the weak distinctive character of the word element ‘tour de’ in the context of the visual and phonetic comparison, cannot succeed.
48 As EUIPO correctly contends, the Board of Appeal’s assessment that the expression ‘tour de’ is commonly used in the context of cycling events and competitions does not constitute a reference to the circumstances in which the goods and services in question are marketed, but a reference to the perception of the public in respect of which the inherent distinctiveness of the elements comprising the rights at issue must be examined. By contrast, the circumstances in which the goods and services in question are marketed, namely the fact that the goods are sold in self-service stores or in specialist sales outlets, with or without the aid of sales staff, were not a factor taken into account in the comparison of the rights at issue in the contested decision.
49 In addition, the fact that the Board of Appeal took account of the semantic content and of the degree of distinctiveness of the common element ‘tour de’ in the assessment of the similarity of the marks at issue is consistent with the case-law according to which 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 judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited).
50 Fourthly, as regards the conceptual comparison, it should be noted, on the one hand, that the earlier rights refer to a specific cycling competition, the Tour de France, which involves carrying out a tour mainly in France. On the other hand, the mark applied for is likely to be understood as a reference to a competition, but without reference to a specific geographical location, and not necessarily to a cycling competition. The interpretation of the meaning of ‘X’ is left entirely open. The mere fact that the rights at issue are all likely to be understood as referring to a competition does not make them conceptually similar, given that they refer to different concepts overall. However, it is possible that part of the relevant public would perceive the mark applied for as referring to a cycling competition, which the Board of Appeal did not exclude. In that case, even though the relevant public would distinguish that cycling competition from the specific concept conveyed by the earlier rights, namely the Tour de France, there would be a low degree of conceptual similarity between the rights at issue.
51 It follows from the foregoing considerations that there is a low degree of similarity between the rights at issue.
(b) The distinctiveness of the earlier rights
52 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 earlier 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 marks with less distinctive character (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
53 In the present case, in paragraphs 66 to 95 of the contested decision, the Board of Appeal found, as regards the services in respect of the organisation of cycling competitions in Class 41, that the earlier word marks had, through their use, an average degree of distinctiveness and the earlier figurative mark had a high degree of distinctiveness. In that regard, it found that, although the earlier word marks and the earlier international registration were to be regarded as having a low degree of inherent distinctiveness, the earlier word marks had acquired, in the light of the evidence submitted by the applicant on their use, an average degree of distinctiveness for the services in respect of the organisation of cycling competitions in Class 41. It stated that the enhanced distinctiveness acquired through use applied to the earlier rights as a whole, rather than only to the elements ‘tour de’. Furthermore, it took the view that the earlier figurative mark had an average degree of inherent distinctiveness, but that, through its use, that mark had acquired a high degree of distinctiveness as regards the services in respect of the organisation of cycling competitions in Class 41.
54 The applicant disputes that assessment, claiming that the findings concerning the enhanced distinctiveness acquired through use of the earlier rights are inconsistent, incoherent and incorrect.
55 It maintains, as regards the services in respect of the organisation of cycling competitions in Class 41, that the fact that the Board of Appeal considered, unjustifiably, the earlier word marks to be less inherently distinctive than the earlier figurative mark does not justify the finding that the word marks required additional evidence to show that they enjoyed enhanced distinctiveness acquired through use. The evidence submitted by the applicant shows enhanced distinctiveness acquired through use for all the earlier rights, whether it be the earlier word marks or the earlier figurative mark. The Board of Appeal made an error of assessment in taking the view that the earlier word marks enjoyed a ‘lower degree’ of enhanced distinctiveness acquired through use.
56 Furthermore, in the context of its arguments on the global assessment of the likelihood of confusion, the applicant maintains that the enhanced distinctiveness acquired through use of ‘the TOUR DE FRANCE trade mark’ cannot be annihilated by the mere reference to the existence of other names of events most of which are either unknown or marginal.
57 EUIPO and the intervener dispute the applicant’s arguments.
58 In that regard, it must be stated that the applicant does not put forward any substantiated argument in paragraph 34 of the application to call into question the Board of Appeal’s assessments in the contested decision relating to the inherent distinctiveness and to the enhanced distinctiveness acquired through use of the earlier rights, which are summarised in paragraph 53 above. The applicant confines itself to mere assertions to that effect, not putting forward any argument.
59 For the sake of completeness, as regards the applicant’s claim that the enhanced distinctiveness acquired through use of the ‘TOUR DE FRANCE trade marks’ cannot be annihilated by the mere reference to the existence of other names of events most of which are either unknown or marginal, it is sufficient to note that this is a misreading of the contested decision. In paragraphs 54 and 55 of that decision, the Board of Appeal did not examine the distinctiveness acquired through use of the earlier rights as a whole, but only the inherent distinctiveness of their common element ‘tour de’. In that context, the Board of Appeal considered that element to have very little, if any, distinctive character, especially in relation to cycling events and goods related thereto, in the light of the fact that, inter alia, the expression ‘tour de’ is frequently used in the names of cycling competitions and similar events. In addition, the Board of Appeal was correct to take the view, in paragraph 95 of the contested decision, that the additional distinctiveness acquired through use applied to the earlier rights as a whole, rather than only to the element ‘tour de’.
(c) The assessment of the likelihood of confusion
60 It should be recalled that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
61 Furthermore, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 does not often lead to a finding that such likelihood exists (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited).
62 In the present case, the Board of Appeal concluded, in paragraph 100 of the contested decision, that, in view of the clear differences between the rights at issue, a likelihood of confusion could be safely ruled out, despite the identity and similarity of the goods and services in question and the enhanced distinctiveness acquired through use of the earlier rights for the services in respect of the organisation of cycling competitions in Class 41.
63 The applicant disputes that assessment, submitting that, in the light of the fact that the earlier rights enjoy enhanced distinctiveness acquired through use or even an exceptional reputation, that the rights at issue are similar on account of the identity of the first part ‘tour de’, and that the goods and services in question are identical or very similar, the relevant public may believe that those goods and services come from the same undertaking or, at the very least, from economically linked undertakings.
64 EUIPO and the intervener dispute the applicant’s arguments.
65 In that regard, it must be held that, in the context of a global assessment of the likelihood of confusion, as a result of the low degree of distinctiveness of the only common element ‘tour de’, and of the low degree of similarity between the rights at issue, the relevant public will not confuse those rights, despite the identity or similarity of the goods and services in question and the enhanced distinctiveness acquired through use of the earlier rights for the services in respect of the organisation of cycling competitions in Class 41. In that context, the error of assessment made by the Board of Appeal in that it found that there was no conceptual similarity between the rights at issue, which is apparent from paragraph 50 above, has no bearing on the outcome of the global assessment of the likelihood of confusion.
66 In the light of the foregoing, it must be held that the Board of Appeal did not err in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
67 Accordingly, the first plea must be rejected in its entirety.
2. The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
68 By its second plea, the applicant submits that the Board of Appeal incorrectly assessed the use of the mark applied for in respect of the goods and services covered by that mark as not being likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights within the meaning of Article 8(5) of Regulation No 207/2009.
69 It should be borne in mind that Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
70 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34; see also judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2007:371, paragraph 29 and the case-law cited).
71 In the present case, in paragraphs 102 to 131 of the contested decision, the Board of Appeal took the view that the use of the mark applied for in respect of the goods and services covered would not be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights. In that regard, first, it found that there was some similarity between the rights at issue. Secondly, it stated that the degree of enhanced distinctiveness acquired through use of the earlier word marks and of the earlier figurative mark for the services in respect of the organisation of cycling competitions in Class 41 demonstrated reputation within the meaning of Article 8(5) of Regulation No 207/2009, but that a high degree of reputation had not been proved. Thirdly, although it observed that there was a sufficient closeness between the goods and services covered by the mark applied for, on the one hand, and the services in respect of the organisation of cycling competitions covered by the earlier rights, on the other, it took the view that the relevant public would not make a mental connection between the rights at issue within the meaning of that provision. According to the Board of Appeal, there was no evidence that the enhanced distinctiveness acquired through use and the reputation of the earlier rights TOUR DE FRANCE and/or LE TOUR DE FRANCE extended to the element ‘tour de’ on its own. Moreover, in the mark applied for, that element did not refer to a tour of France, but to a tour of X.
72 The applicant disputes that assessment, submitting, in the first place, that the Board of Appeal did not correctly assess the reputation of the earlier rights. In particular, it criticises the Board of Appeal for having taken the view that an above average or high degree of reputation had not been proved. The applicant submits that the EU legislature does not require such a degree of reputation and, in any event, the evidence submitted by the applicant is sufficient to demonstrate that the earlier rights have an exceptionally high reputation in the European Union for the goods and services in respect of which they are registered, including entertainment services.
73 In the second place, the applicant complains that, in concluding that the similarity between the rights is limited to the overlap in the expression ‘tour de’, which is very commonly used in the context of cycling events and competitions and thus has very little, if any, distinctive character, the Board of Appeal took into account, in the comparison of the rights, the circumstances in which the goods and services covered by the rights are marketed. In addition, it argues, contrary to what was stated by the Board of Appeal in the contested decision, that the applicant does not seek to obtain a monopoly over the element ‘tour de’ on account of the overlap of that part in the rights at issue; rather, it maintains that that overlap leads to the conclusion that the rights at issue are highly similar.
74 In the third place, the applicant submits that the Board of Appeal erred in its assessment of the risk of the mark applied for being associated with the earlier rights and of the risk that use of the mark applied for might take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights. The applicant claims that it has sufficiently demonstrated the existence of a non-hypothetical risk that the registration of the mark applied for rides on the coat-tails of the earlier rights and that it benefits unduly from a very high reputation of those rights.
75 EUIPO and the intervener dispute the applicant’s arguments.
76 First, as regards the applicant’s arguments, summarised in paragraph 73 above, seeking to dispute the Board of Appeal’s assessment of the similarity of the rights at issue, it is sufficient to refer to the analysis carried out in paragraphs 42 to 51 above and to find that the degree of similarity between those marks is low. The Board of Appeal therefore correctly concluded that the condition for the application of Article 8(5) of Regulation 2017/1001 relating to the existence of a degree of similarity between the rights at issue was satisfied, but that that similarity was, in essence, low.
77 Secondly, as regards the reputation of the earlier rights, it should be noted that, by finding in the contested decision that it cannot be considered that an above average or a high degree of reputation was proved, the Board of Appeal did not require a higher degree of reputation than that required by Article 8(5) of Regulation No 207/2009, but simply specified the degree of reputation of the earlier rights as demonstrated by the evidence submitted. Accordingly, the applicant’s complaint in that regard is based on a misreading of the contested decision.
78 In addition, in so far as the applicant submits, in essence, that the evidence shows that the marks TOUR DE FRANCE and LE TOUR DE FRANCE have a reputation for all of the goods and services that they cover and not only for the organisation of sports competitions in Class 41, it should be noted, as is apparent from the notice of opposition of 11 August 2017, that the applicant expressly relied on Article 8(5) of Regulation No 207/2009 only as regards the organisation of sports competitions. Thus, the Board of Appeal was fully entitled to examine the reputation of the earlier rights only in relation to those services.
79 For the sake of completeness, as regards the applicant’s argument that, according to settled case-law, sporting events must be regarded as entertainment services directed at the public at large, and that the Board of Appeal erred in taking the view that none of the evidence or arguments provided by the applicant related to entertainment, it should be recalled that, in its notice of opposition, the applicant alleged infringement of Article 8(5) of Regulation No 207/2009 solely in respect of the organisation of sports competitions. Even assuming that sporting events are also to be regarded as entertainment services, the applicant does not provide any explanation as to the impact of the alleged error of the Board of Appeal on the findings concerning the reputation of the earlier rights and the risk that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights. Accordingly, that argument cannot, in any event, succeed.
80 Thirdly, even though the applicant claims that the Board of Appeal did not correctly assess certain evidence that demonstrated that the earlier rights have an exceptionally high reputation in the European Union, that fact, even if it were established, would have no effect on the legality of the contested decision since the Board of Appeal correctly concluded that the relevant public would not make a mental connection between the rights at issue within the meaning of Article 8(5) of Regulation No 207/2009. The Board of Appeal based its conclusion in that regard on all the relevant factors, taking into account the degree of distinctiveness of the earlier rights, the degree of closeness between the goods and services covered by the mark applied for and the services in respect of the organisation of cycling competitions covered by the earlier rights and the degree of similarity between the rights at issue.
81 In that regard, the applicant’s argument that the Board of Appeal failed to take due account of the immediate and obvious link between a mark starting with the expression ‘tour de’ for sporting events and related goods and the earlier exceptionally highly reputed mark (LE) TOUR DE FRANCE is entirely unfounded. As noted in paragraph 59 above, and as the Board of Appeal correctly found in paragraphs 98 and 127 of the contested decision, the enhanced distinctiveness acquired through use and the reputation of the earlier rights TOUR DE FRANCE and LE TOUR DE FRANCE do not extend to the element common to the rights at issue, namely the element ‘tour de’.
82 Furthermore, as is apparent from paragraphs 42 to 51, 65 and 66 above, despite the common expression ‘tour de’, the rights at issue are similar to a low degree only, and there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
83 Therefore, the descriptive expression ‘tour de’, which is very commonly used in the context of cycling competitions and thus has very little, if any, distinctive character, will not lead the relevant public to perceive a link between the rights at issue, even if the reputation of the earlier rights were exceptionally high.
84 Consequently, the applicant’s arguments are not such as to call into question the Board of Appeal’s finding that, given that the relevant public would not make a connection between the rights at issue, the use of the mark applied for in respect of the goods and services that it covers is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights, with the result that the necessary conditions laid down in Article 8(5) of Regulation 2017/1001 were not satisfied.
85 It follows from the foregoing that the second plea must be rejected.
3. The third plea in law, alleging infringement of Article 94 of Regulation 2017/1001
86 The applicant submits that a failure to state reasons or an inadequate statement of reasons constitutes an infringement of essential procedural requirements and that a contradiction in the reasoning amounts to a failure to state reasons. The applicant also maintains that the contested decision contains several contradictions, which led to an inadequate statement of reasons by the Board of Appeal.
87 In particular, it states, first, that, although the Board of Appeal decided, in paragraph 52 of the contested decision, that it would not focus on the weakness of the word ‘tour’ on its own, it was not explained why it did take into account the fact that it considered the expression ‘tour de’ to be weak and of limited distinctiveness.
88 Secondly, the applicant maintains that, although the Board of Appeal concluded, in paragraph 90 of the contested decision, that the earlier word marks and the earlier figurative mark had enhanced distinctiveness through use for cycling competitions, it then artificially distinguished the assessment of the distinctiveness of the word marks from that of the figurative mark, and concluded out of the blue that the word marks – although considered to have enhanced distinctiveness through use – are only of average distinctiveness.
89 EUIPO and the intervener dispute the applicant’s arguments.
90 In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question. That obligation, which also stems from Article 41(2) of the Charter of Fundamental Rights of the European Union, has the purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 64 and 65 and the case-law cited).
91 It must also be borne in mind that it is apparent from the case-law that the statement of reasons for a measure must be logical and contain no internal inconsistency that would prevent a proper understanding of the reasons underlying the measure (judgments of 29 September 2011, Elf Aquitaine v Commission, C‑521/09 P, EU:C:2011:620, paragraph 151, and of 12 December 2012, Electrabel v Commission, T‑332/09, EU:T:2012:672, paragraph 181).
92 In the present case, in the first place, in so far as the applicant’s arguments could be interpreted as alleging a failure to state reasons for the contested decision, it must be held that the Board of Appeal stated, to the requisite legal standard, the reasons for the contested decision enabling the applicant to understand the grounds on which its appeal was dismissed and the Court to exercise its jurisdiction to review the legality of that decision, as is apparent, moreover, from the examination of the first and second pleas in law. In any event, the applicant does not put forward any argument to the contrary.
93 It follows that the argument alleging a failure to state reasons for the contested decision must be rejected.
94 In the second place, as regards the alleged contradiction described in paragraph 87 above, it should be noted that the Board of Appeal stated, in paragraph 52 of the contested decision, that, in order to simplify the analysis, it would not focus on the weak distinctive character of the word ‘tour’ on its own, which was the best-case scenario for the applicant and which would not affect the outcome of the contested decision. Subsequently, the Board of Appeal carried out, in paragraphs 53 to 56 of the contested decision, an in-depth examination of the expression ‘tour de’, given that it is present in all of the rights at issue and that such an examination had not been performed by the Opposition Division. Following that examination, the Board of Appeal found that the expression ‘tour de’ had very little, if any, distinctive character.
95 Those findings of the Board of Appeal must not be considered contradictory. There is no contradiction in the fact that, in its analysis, the Board of Appeal took into consideration the very weak distinctive character of the expression ‘tour de’ without specifically taking into account the weak distinctive character of the word ‘tour’ on its own, in particular in the situation where it is the expression ‘tour de’ which is common to the rights at issue and where the distinctive character of the common elements is one of the relevant factors to be taken into consideration when examining the likelihood of confusion.
96 As regards the alleged contradiction summarised in paragraph 88 above, it must be held that the various findings of the Board of Appeal relating to the degree of enhanced distinctiveness acquired through use of the various earlier rights cannot be regarded as unexpected or contradictory in the light, first, of the differences in the degree of inherent distinctiveness of those marks and, secondly, of the fact that those findings were based on an in-depth examination of the evidence carried out by the Board of Appeal in the contested decision.
97 It follows from the foregoing that the third plea must be rejected and, consequently, the action must be dismissed in its entirety.
IV. Costs
98 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
99 Since the applicant has been unsuccessful and a hearing has taken place, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener relating to their own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Société du Tour de France to pay the costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 12 June 2024.