JUDGMENT OF THE GENERAL COURT (Second Chamber)
11 October 2016 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark likely to be perceived as the letter ‘p’ — Earlier EU and national figurative marks P PROTECTIVE and P — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑350/15,
Perry Ellis International Group Holdings Ltd, established in Nassau (Bahamas), represented by O. Günzel, V. Ahmann and C. Tenkhoff, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, M. Fischer and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being
CG Verwaltungsgesellschaft mbH, established in Gevelsberg (Germany), represented by T. Körber and T.- E. Vlah, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 28 April 2015 (Case R 2441/2014-4) relating to opposition proceedings between CG Verwaltungsgesellschaft and Perry Ellis International Group Holdings,
THE GENERAL COURT (Second Chamber),
composed of S. Gervasoni, acting as President, L. Madise (Rapporteur) and Z. Csehi, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 30 June 2015,
having regard to the responses of EUIPO and the intervener lodged at the Court Registry on 26 October 2015 and 6 November 2015 respectively,
following the hearing on 29 June 2016,
gives the following
Judgment
Background to the dispute
1 On 16 May 2012, the applicant, Perry Ellis International Group Holdings Limited, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Clothing and accessories, namely, swimsuits, jackets, shorts, leotards, swimsuits, swim trunks, casual shirts, shorts, workout pants, warm-up shirts and suits, cover-ups, socks, sport bras, sweatshirts, sport shirts, T-shirts, underwear; headwear and footwear’.
4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 2012/127 on 5 July 2012.
5 On 5 October 2012, the predecessor in title to the intervener, CG Verwaltungsgesellschaft mbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods named in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– the German figurative mark in black and white reproduced below (‘the earlier German mark in black and white’), registered on 26 February 2003 under No 30262912 and renewed until 31 December 2022 for goods in Class 25 and corresponding to the following description: ‘Articles of clothing’:
– the German figurative mark in red and black reproduced below, registered on 13 February 2002 under No 30201255 and renewed until 31 January 2022 for goods in Class 25 and corresponding to the following description: ‘Articles of clothing’:
– the EU figurative mark in black and white reproduced below, registered on 4 October 2010 under No 9027558 for ‘Protective helmets, in particular protective helmets for sports; spectacles (optics), in particular sunglasses and goggles for sports’ in Class 9; for ‘Clothing; footwear, in particular sports shoes; headgear’ in Class 25 and ‘Protective clothing for sports’ in Class 28:
7 The grounds relied on in support of the opposition are those set out in Article 8(1)(b) of Regulation No 207/2009.
8 By decision of 22 July 2014, the Opposition Division found that there was a likelihood of confusion between the mark applied for and the earlier EU trade mark P PROTECTIVE.
9 On 19 September 2014, the applicant lodged an appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.
10 By decision of 28 April 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First, it stated, as is apparent from paragraphs 13 and 25 of the contested decision, that it would begin by assessing the opposition based on the earlier German figurative mark in black and white, stating that the relevant territory for the purposes of assessing the likelihood of confusion was Germany and that the relevant public was the general public of that Member State with a normal level of attention. It then stated, in paragraphs 14 and 15 of the contested decision, that the goods covered by the signs at issue were identical or highly similar. In paragraphs 18 to 21 of the decision, the Board of Appeal held that the signs at issue, likely to be perceived as the letter ‘p’, had average visual similarity, were phonetically identical if they were perceived as the letter ‘p’ and that there was no conceptual similarity. Furthermore, it added, in paragraph 26 of the contested decision, that the earlier German mark in black and white had an average degree of distinctive character with regard to the goods covered. Finally, it concluded, in paragraph 30 of the contested decision, that there was a likelihood of confusion between the mark applied for and the earlier German mark in black and white and stated, in paragraph 31 of the decision, that, the opposition being accepted on the basis of the earlier German mark in black and white, it was unnecessary to assess the existence of a likelihood of confusion with regard to the other earlier marks relied upon by the intervener.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In the first place, it disputes, in essence, the Board of Appeal’s assessment of the relevant public’s perception of the marks at issue. In the second place, it disputes the results of the comparison of the signs at issue in the contested decision and claims, in essence, that they are different in every aspect. In the third place, it submits that the Board of Appeal’s assessment relating to the average degree of distinctive character of the earlier German mark in black and white is incorrect and claims that the latter is, on the contrary, weak.
14 EUIPO and the intervener dispute the applicant’s arguments.
15 At the hearing, the intervener withdrew its argument that, notwithstanding the annulment of the contested decision, the Opposition Division’s decision, which upheld the opposition to registration of the mark applied for, has become legally effective.
16 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 is not to 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks means trade marks registered in a Member State with a date of application for registration earlier than the date of application for registration of the EU trade mark.
17 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (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).
18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
19 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. Account should, however, be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on an imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20 It is in the light of those considerations that it must be examined whether the Board of Appeal was correct to conclude, in the contested decision, that there is a likelihood of confusion between the signs at issue.
21 First of all, it is necessary to dismiss from the outset the intervener’s arguments alleging the existence of a likelihood of confusion between the mark applied for and the earlier marks other than the earlier mark examined by the Board of Appeal. In that regard, it should be recalled that only the assessment made by the Board of Appeal in the contested decision may be reviewed by the Court (see, to that effect, judgment of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 39 and the case-law cited). The latter may not, therefore, rule on the existence of a likelihood of confusion between the mark applied for and the other earlier marks that were not assessed by the Board of Appeal.
22 Next, it is appropriate to confirm the Board of Appeal’s definition of the relevant public, in paragraphs 13 and 25 of the contested decision, uncontested by the applicant and corresponding, due to the registration of the earlier mark in Germany and the nature of the goods covered by the signs at issue, to the general public of that country with a normal level of attention.
23 Finally, the assessment made by the Board of Appeal in the contested decision relating to the identity or high degree of similarity of the goods covered by the signs at issue must be accepted. The Board of Appeal was fully entitled to hold, in paragraph 14 of the contested decision, without being contradicted on this point by the applicant, that the goods covered by the mark applied for, such as clothing and accessories, with the exception of ‘headwear and footwear’, were identical to the goods covered by the earlier mark on the ground that they were part of clothing. Moreover, in accordance with the criteria established by the case-law (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited), it also correctly held, in paragraph 15 of the contested decision, that the ‘headwear and footwear’ goods covered by the mark applied for and the ‘clothing’ covered by the earlier mark were highly similar on the grounds that they were used for the same purposes, namely, to cover and protect various parts of the human body, they could be made in whole or in part from the same materials, their distribution channels and their manufacturers were often the same, they targeted the same final consumers and they were complementary.
Comparison of the signs at issue
24 The global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression created by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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).
25 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks in question as a whole, but that 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. 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. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited; 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraph 36 and the case-law cited; and 5 November 2013, Capitalizaciones Mercantiles v OHIM — Leineweber (X), T‑378/12, not published, EU:T:2013:574, paragraph 54 and the case-law cited).
26 In the present case, in the first place, the Board of Appeal held, as is apparent from paragraph 18 of the contested decision, that the signs at issue consisted of a black figurative element likely to be perceived as a highly stylised form of the letter ‘p’ and that that element, encompassed, in the mark applied for, by a curved line forming an arc, constituted the most dominant element of that mark. In the second place, in paragraphs 19 to 21 of the contested decision, the Board of Appeal compared the signs at issue on various aspects and concluded that they had average visual similarity, were phonetically identical if perceived as the letter ‘p’ and, if not, were not comparable. Finally, it held that there is no conceptual similarity, even in the event that the signs at issue are perceived as the letter ‘p’, because a single letter does not convey a concept.
27 The applicant disputes the Board of Appeal’s assessment in the contested decision relating to the perception that the relevant public is likely to have of the signs at issue.
28 First, it claims, in particular, concerning the earlier German mark in black and white, that the Board of Appeal wrongly considered that it was perceived by the relevant public as the letter ‘p’. The Board of Appeal was incorrectly influenced by its knowledge of the earlier EU figurative mark P PROTECTIVE, because the figurative element at the beginning of that mark (which corresponds to the figurative element of the earlier German mark in black and white) is followed by the word ‘protective’. According to the applicant, if the figurative element of the earlier mark in black and white were followed by the word ‘durable’, that element could be perceived as the letter ‘d’.
29 Secondly, as regards the mark applied for, the applicant submits that, even if the relevant public could perceive one of its elements as the letter ‘p’, that mark would also be perceived as different combinations of the letters ‘d’ and ‘p’. Moreover, the fact that, in the application for registration, the mark applied for was referred to as the letter ‘p’ does not mean that the relevant public will clearly recognise the earlier German mark in black and white in the mark applied for.
Perception by the relevant public of the signs at issue
30 The signs to be compared are the following:
Earlier mark Mark applied for
31 In the first place, as regards the earlier German mark in black and white, first, it must be stated that, contrary to the applicant’s submissions, the Board of Appeal did not take into account only the possibility that that mark would be perceived as the letter ‘p’. It is not apparent from the contested decision that it excluded the mark being perceived as a simple graphic element not corresponding to a letter of the alphabet.
32 Nor, secondly, is it apparent from the contested decision that the Board of Appeal was influenced, as the applicant claims, by its knowledge of the earlier EU figurative mark, upon which the Opposition Division based its assessment of the existence of a likelihood of confusion. On the contrary, it follows from paragraphs 18 and 19 of the contested decision that the Board of Appeal assessed only the earlier German mark in black and white’s own features when it concluded that that mark is capable of being seen as the letter ‘p’. The Board of Appeal correctly observed that that mark is composed of a tilted vertical line and a loop starting from its upper end and stopping, more or less, in the middle of the vertical line, which are characteristics of the letter ‘p’.
33 Thirdly, the argument raised by the applicant that the earlier German mark in black and white could be perceived as the letter ‘d’ if it was followed by a word beginning with ‘d’ cannot succeed. That argument is based on mere conjecture and, as the applicant itself asserts, in the assessment of the characteristics of a sign, only the form in which that sign was registered, not the form which it might take in the event that it was accompanied by other, unregistered elements, should be taken into account.
34 In the light of the foregoing, it must be stated that the applicant has not demonstrated that the Board of Appeal committed an error as regards the perception that the relevant public has of the earlier German mark in black and white.
35 In the second place, concerning the mark applied for, it must first be noted that, admittedly, as the applicant submits, the designation of that mark as the letter ‘p’ in the application for registration does not imply its recognition as the letter ‘p’ by the relevant public (see, to that effect, judgment of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraphs 62 and 63). However, such a perception is highly likely, taking into account the specific characteristics of that mark. On the one hand, it is composed, as the applicant itself admits, of a figurative element consisting of a thicker line that represents the outline of the letter ‘p’, namely, a vertical bar and a semi-circle that begins at the upper end of the vertical bar and finishes in the middle of that bar. On the other hand, that mark is composed of another figurative element, consisting of a thinner curved line that encompasses the thicker figurative element like an arc pointing to the left. That second element is likely to be perceived as a purely decorative element since, as EUIPO correctly observes, it is an open curved line, the ends of which are not linked by a vertical line, as is the case for the letter ‘d’. Thus, the applicant’s argument that the mark applied for could be perceived as different combinations of the letters ‘d’ and ‘p’ fails to convince.
36 Concerning the applicant’s latter argument, it must in addition be pointed out that it is based on EUIPO’s previous decision-making practice. It has been held that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65; 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 37, and 8 May 2012, G, T‑101/11, EU:T:2012:223, paragraph 77 and the case-law cited). Furthermore, it has been made clear by the case-law that, while EUIPO is required to take previous decisions into account under the principles of equal treatment and sound administration, and to take particular care in considering whether to decide the issue before it in the same way, those principles must nevertheless be applied in a manner consistent with the principle of legality (see judgment of 21 January 2015, Sabores de Navarra v OHIM — Frutas Solano (KIT, EL SABOR DE NAVARRA), T‑46/13, not published, EU:T:2015:39, paragraph 47 and the case-law cited). Thus, in the present case, the applicant cannot reasonably rely, in support of its argument, on a previous decision of EUIPO that, moreover, concerned different signs from those at issue in the present case.
37 Secondly, as regards the distinctive and dominant elements of the mark applied for, it must be noted that the relative importance of the different elements constituting the sign should be taken into account (see, to that effect, judgment of 10 November 2011, Representation of a letter on a pocket, T‑22/10, not published, EU:T:2011:651, paragraph 78).
38 In that regard, it is important to note that the curved line consists of an outline, thinner in comparison to the figurative element likely to be perceived as the letter ‘p’, that emerges and is visually distinguished by its size. Moreover, as EUIPO contends, in essence, the presence of that curved line in the mark applied for cannot render unrecognisable, for the relevant public, the element likely to be perceived as the letter ‘p’, which immediately commands attention and constitutes the element that the consumer will most easily retain in his memory, within the meaning of the case-law cited in paragraph 19 above. The curved line, composed of a thinner outline, appears to be a purely decorative element within the overall impression created by the mark applied for.
39 The Board of Appeal’s assessment, set out in paragraph 18 of the contested decision, that the most distinctive and dominant element of the mark applied for is the element likely to be perceived as the letter ‘p’ must, therefore, be accepted.
40 It follows from the foregoing that the applicant has not demonstrated that the Board of Appeal committed an error concerning the perception that the relevant public has of the mark applied for. However, it should be stressed that, as the Board of Appeal held, the perception of the signs at issue is not necessarily identical for the whole of the relevant public, to the extent that they are perceived either as representing the letter ‘p’ or as consisting of purely figurative elements.
41 It is in the light of the foregoing observations and the case-law referred to in paragraphs 24 and 25 above that it must be examined whether the Board of Appeal did not commit an error in assessing the similarity of the signs at issue from the various visual, phonetic and conceptual aspects.
Visual similarity
42 According to the case-law, two signs 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 (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, confirmed by order of 28 April 2004, Matratzen Concord v OHIM, C‑3/03 P, EU:C:2004:233).
43 The Board of Appeal, in paragraph 19 of the contested decision, stated that, visually, the signs at issue were similar to an average degree, because they were similar in structure, since the earlier German mark in black and white and the most distinctive and dominant element of the mark applied for were stylised in the same way.
44 The applicant maintains that the Board of Appeal did not sufficiently assess the differences existing between the signs at issue. Those signs are visually different in a number of details, such as the number of elements constituting them and their graphical features.
45 In that respect, it should be stated that, as is apparent from paragraph 19 of the contested decision, the Board of Appeal has taken into account the different elements of the signs at issue, namely, the more angular outline of the mark applied for compared to the earlier German mark in black and white and the presence of an additional curved line in the mark applied for. However, it was fully entitled to hold that those differences did not outweigh the similarities of the signs. In fact, it must be stated that, contrary to the applicant’s allegations, the signs at issue are stylised in a similar manner, their proportions are more or less the same, their colour is the same, namely, black on a white background, and their outline corresponds to the outline of the letter ‘p’ inclined to the right, in bold characters and in such a way that that letter’s loop does not touch the inclined vertical line. It must be stressed, in that regard, as has been noted at paragraph 19 above, that the public has only occasionally the opportunity to carry out a direct comparison of the various trade marks and must therefore rely on its imperfect mental image of them (see judgment of 10 November 2011, Representation of a letter on a pocket, T‑22/10, not published, EU:T:2011:651, paragraph 115 and the case-law cited).
46 The Board of Appeal therefore correctly held, in paragraph 19 of the contested decision, that, visually, the signs at issue were similar to an average degree because they were similar in structure, since the earlier German mark in black and white and the most distinctive and dominant element of the mark applied for were stylised in the same way.
Phonetic similarity
47 As regards the phonetic comparison of the signs at issue, as the Board of Appeal held in paragraph 20 of the contested decision, it must be stated that they are phonetically identical if they are perceived and pronounced as a letter ‘p’ and that a comparison is not possible if they are perceived as unpronounceable simple graphic elements.
48 That finding, as EUIPO correctly contends, is not called into question by the applicant’s arguments claiming, in essence, that the signs at issue, perceived as graphic forms, would be unpronounceable and there is, thus, no similarity between them. In fact, if the graphic forms are unpronounceable, the phonetic comparison is irrelevant, that is to say, its result would be ‘neutral’ for the purposes of the overall comparison of the signs at issue. Thus, the applicant’s claim that the signs, consisting of purely graphic forms, are different, is incorrect.
49 Finally, concerning the argument raised by the applicant at the hearing by which it claimed that consumers will not pronounce trade marks consisting of a single letter by referring to them, but by pronouncing instead the names of the proprietors of those marks, it must be stated that that argument is based on mere unfounded speculation and, therefore, must be rejected.
Conceptual similarity
50 The Board of Appeal held, as stated in paragraph 21 of the contested decision, that there was no conceptual similarity between the signs at issue, on the ground that, even if they were perceived as the letter ‘p’, a letter does not have semantic content. Contrary to the applicant’s submission, the Board of Appeal did not state that the signs at issue were conceptually different. As EUIPO correctly contends, it confined itself to finding, in essence, that there was no semantic content specific to the signs at issue.
51 In the present case, even if it were to be accepted, contrary to the Board of Appeal’s view, that the conceptual comparison of the signs at issue is possible if they are perceived as the letter ‘p’ and that, in that case, the latter would be conceptually identical since they refer to the same letter of the alphabet (see, to that effect, judgments of 10 November 2011, Representation of a letter on a pocket, T‑22/10, not published, EU:T:2011:651, paragraph 99 and the case-law cited, and 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 58), recognising any such conceptual identity could only reinforce, as was rightly pointed out by EUIPO at the hearing, the Board of Appeal’s finding as to the existence of a likelihood of confusion between them.
52 In any case, it is important to note that, if the signs at issue are not perceived as representing the letter ‘p’, their comparison would be neutral, contrary to the applicant’s claim (see, to that effect, judgment of 10 November 2011, Representation of a letter on a pocket, T‑22/10, not published, EU:T:2011:651, paragraphs 100 and 101).
Likelihood of confusion
53 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 the 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 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).
54 A finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
55 However, a trade mark or an element of a trade mark that does not have any particular link with the goods at issue and is not commonly used in the sector concerned is considered to have an average degree of inherent distinctive character with regard to the goods at issue (see, to that effect, judgment of 6 October 2011, Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND), T‑176/10, not published, EU:T:2011:577, paragraph 37).
56 Moreover, it must be stressed that the legislature has expressly included signs composed of a letter in the list, set out in Article 4 of Regulation No 207/2009, of examples of signs which may constitute an EU trade mark and that Articles 7 and 8 of that regulation, relating to refusal of registration, do not lay down specific rules for signs composed of a letter or a combination of letters not forming a word. It follows that the global assessment of the likelihood of confusion between such signs pursuant to Article 8(1)(b) of Regulation No 207/2009 in principle follows the same rules as those in respect of word signs comprising a word, a name or an invented term (see judgment of 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 50 and the case-law cited). Thus, a letter is, in itself, capable of giving a trade mark distinctive character (see judgment of 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 50 and the case-law cited).
57 Finally, the fact that signs composed of the same letter are, by assumption, phonetically and conceptually identical is in no way irrelevant in the examination of similarity for the purposes of assessing the likelihood of confusion. On the contrary, it is precisely because of that phonetic and conceptual identity that special consideration is to be given, in the context of registering a trade mark composed of a single letter for goods identical to, or presenting a high degree of similarity to, those covered by an earlier trade mark composed of the same letter, to ensuring that the mark applied for is sufficiently visually distinct from the earlier mark, in order to exclude any likelihood of confusion on the part of the relevant public (see, to that effect, judgment of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraph 60).
58 In the present case, the Board of Appeal stated, in paragraph 26 of the contested decision, that, irrespective of whether the earlier German mark in black and white is perceived as the letter ‘p’, that mark has an average degree of inherent distinctive character because it has no meaning in relation to any of the goods covered.
59 The applicant disputes any such assessment and claims that the distinctive character of the earlier German mark in black and white is weak. First, it bases its argument on the error committed by the Board of Appeal concerning the relevant public’s perception of that mark, which consists only of a simple graphic element. Secondly, it claims that, even if that mark is perceived as the letter ‘p’, its inherent distinctive character would remain weak, on the ground that a single letter has such a level of distinctive character. Thirdly, the applicant maintains that the coexistence of other, far more similar marks in the sector of the goods covered by the signs at issue shows that the relevant public has become accustomed to the presence of such similar signs and so reduces the scope of protection to be given to the earlier German mark in black and white.
60 As regards the first argument raised by the applicant, it must be stated that, as is apparent from paragraphs 31 to 34 above, the applicant has not demonstrated that the Board of Appeal committed an error as regards the relevant public’s perception of the earlier German mark in black and white. Moreover, it must be noted that, as was stated in paragraph 57 above, the Board of Appeal did not base its assessment of the earlier mark’s average degree of inherent distinctive character solely on the case that that mark is perceived as the letter ‘p’, but also took into account the hypothesis that it is perceived as composed of a graphic element. As regards that second possibility, it must be observed that the applicant confines itself to stating that ‘the weak degree of distinctive character [of the earlier German mark in black and white] results from the fact that mere figurative elements have in themselves a weak degree of distinctive character’. As held previously, the absence of distinctive character of a trade mark cannot arise merely from the finding that the sign in question lacks an additional element of imagination or a minimum amount of imagination, because an EU trade mark is not necessarily a work of invention and is founded not on any element of originality or imagination but on its ability to distinguish goods or services on the market from goods or services of the same kind offered by competitors (see, to that effect, judgments of 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 38, and 8 May 2012, G, T‑101/11, not published, EU:T:2012:223, paragraph 73 and the case-law cited). It follows that, by its first argument, the applicant cannot disprove the Board of Appeal’s finding, referred to in paragraph 57 above, relating to the average degree of inherent distinctive character of the earlier German mark in black and white, owing to the absence of a link between it and the goods that it covers. On the contrary, as EUIPO correctly submits, it must be held that that mark is seen as composed of an abstract stylised figurative element, capable of being memorised and performing the function of indicator of commercial origin of the goods covered.
61 As regards the applicant’s second argument, that a single letter has, in itself, a weak degree of distinctive character, it must be stated that any such argument is not capable of invalidating the finding recalled in the previous paragraph, with regard to the case-law referred to in paragraph 56 above and the absence of a link between the earlier German mark in black and white and the goods that it covers. Furthermore, that argument is based, in the present case, solely upon a previous decision of EUIPO. As set out in paragraph 36 above, neither the Court, hearing the action brought by the applicant, nor EUIPO is bound by the previous decision-making practice of the latter. Therefore, the applicant cannot rely only on a previous decision of EUIPO in order to challenge the assessment relating to the average degree of distinctive character of the earlier German mark in black and white.
62 Finally, it must be noted that the applicant’s third argument, alleging that the scope of protection of the earlier German mark in black and white should be limited because of ‘a high number of third party registrations of co-existing trade marks currently used’, cannot be accepted either. As EUIPO correctly maintains, supported by the intervener, the existence of two other registrations of signs consisting of single letters or resembling them cannot automatically lead to the conclusion that the scope of protection of the earlier trade mark should be limited. Moreover, the signs referred to by the applicant are not similar to the signs at issue in the present case and the applicant’s claim that the relevant consumer has become accustomed to such signs is not borne out by any evidence.
63 Therefore, taking into account the normal level of attention of the relevant public, the identity or high degree of similarity of the goods covered by the signs at issue, their average degree of visual similarity, their phonetic identity when they are perceived as the letter ‘p’ or the lack of relevance of the phonetic and conceptual comparisons when they are not perceived as letters, and of the average degree of inherent distinctive character of the earlier German mark in black and white as well, the Board of Appeal was correct in finding, in paragraph 30 of the contested decision, that, for the relevant public, there was a likelihood of confusion between the mark applied for and the earlier German mark in black and white within the meaning of Article 8(1)(b) of Regulation No 207/2009.
64 In any case, and as EUIPO contends, it must be held that, even if it were to be accepted that the earlier German mark in black and white has a weak degree of distinctive character, that does not call into question the finding that there is a likelihood of confusion between the signs at issue, with regard to all the other matters mentioned in the previous paragraph and the case-law referred to in paragraph 54 above. Moreover, even if the likelihood of confusion existed only for part of the relevant public, namely, that composed of consumers likely to perceive the signs at issue as the letter ‘p’ (see paragraph 41 above), such a finding would be sufficient, inasmuch as it is not necessary to establish the existence of a likelihood of confusion for the entirety of the relevant public (see, to that effect, judgment of 10 November 2011, Representation of a letter on a pocket, T‑22/10, not published, EU:T:2011:651, paragraph 120 and the case-law cited).
65 Since all the arguments raised by the applicant have been rejected, the single plea raised by it and, therefore, the action in its entirety must be dismissed.
Costs
66 Under Article 134(1) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party’s pleadings.
67 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1. Dismisses the action;
2. Orders Perry Ellis International Group Holdings Ltd to pay the costs.
Delivered in open court in Luxembourg on 11 October 2016.
[Signatures]