JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 November 2016 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark P PRO PLAYER — Earlier EU and national figurative marks P and P PROTECTIVE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑349/15,
CG Verwaltungsgesellschaft mbH, established in Gevelsberg (Germany), represented by T. Körber, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and M. Fischer, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Perry Ellis International Group Holdings Ltd, established in Nassau (Bahamas), represented by O. Günzel and V. Ahmann, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 28 April 2015 (Case R 2439/2014-4), relating to opposition proceedings between Perry Ellis International Group Holdings and CG Verwaltungsgesellschaft,
THE GENERAL COURT (Second Chamber),
composed, at the time of deliberation, of S. Gervasoni, acting as President, L. Madise and Z. Csehi (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 June 2015,
having regard to the response of EUIPO lodged at the Court Registry on 8 October 2015,
having regard to the response of the intervener lodged at the Court Registry on 30 September 2015,
having regard to the reply lodged at the Court Registry on 11 January 2016,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks following service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 16 May 2012 the intervener, Perry Ellis International Group Holdings Ltd, 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 The mark in respect of which registration was sought is 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 European Union Trade Marks Bulletin No 126/2012 of 5 July 2012.
5 On 5 October 2012, the predecessor in title to the applicant, 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 the goods referred to 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 number 30262912 and renewed until 31 December 2022 for goods in Class 25 corresponding to the following description: ‘Clothing items’:
– the German figurative mark in red and black (‘the earlier German mark in red and black’), registered on 13 February 2002 under number 30201255 and renewed until 31 January 2022 for goods in Class 25 corresponding to the following description: ‘Clothing items’:
– the EU figurative mark in black and white reproduced below, registered on 4 October 2010 under number 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 for ‘Protective clothing for sports’ in Class 28:
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 22 July 2014 the Opposition Division upheld the opposition for all of the contested goods on the basis of the earlier EU trade mark and rejected the application for registration in its entirety.
9 On 19 September 2014 the intervener filed a notice of 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 annulled the decision of the Opposition Division and rejected the opposition. The Board of Appeal excluded any likelihood of confusion, basing itself on the three earlier marks in succession.
11 With regard to the comparison of the goods, the Board of Appeal found that the goods covered by the mark applied for were identical or highly similar to those in Class 25 covered by the earlier marks (paragraphs 14, 15, 32 and 35 of the contested decision).
12 Concerning the assessment based on the earlier German mark in black and white, the Board of Appeal found that the marks at issue were visually similar to a very low degree and not similar phonetically and conceptually (paragraphs 20 to 22 of the contested decision). It found that the distinctiveness of the earlier German mark in black and white was normal, and that the sign, irrespective of whether or not it would be perceived as representing the letter ‘p’, had no meaning in respect of the goods concerned in Class 25 (paragraph 27 of the contested decision). Taking into account the low degree of visual similarity between the marks at issue, the lack of phonetic and conceptual similarity, the lack of above-average distinctiveness of the earlier German mark in black and white, and even though the goods were identical or highly similar, the Board of Appeal concluded that there was no likelihood of confusion (paragraph 31 of the contested decision).
13 As for the assessment based on the earlier German mark in red and black, the Board of Appeal considered that the same reasoning as that in relation to the earlier German mark in black and white applied so far as concerned the phonetic and conceptual comparisons and that the marks at issue were even less visually similar, or that they were different, owing to their differences in colours. It also inferred a lack of likelihood of confusion between the marks at issue (paragraph 34 of the contested decision).
14 As regards the assessment based on the earlier EU trade mark, the Board of Appeal found that the marks at issue were visually and phonetically similar to a low degree, at most, given that only the start of the syllables of the word elements concerned coincided, and given that they were conceptually different. In view of the lack of above-average distinctiveness of the earlier EU trade mark, the Board of Appeal found there to be no likelihood of confusion, even for identical goods and taking into account a normal level of attention on the part of the relevant public (paragraphs 37 to 41 of the contested decision).
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
16 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of evidence submitted for the first time before the Court
17 The applicant argues that the documents included as Exhibits 6 to 8 annexed to the response of the intervener are inadmissible, since they were never submitted before EUIPO.
18 Exhibits 6 and 7 are extracts from EUIPO’s database of 25 September 2015, listing 53 registrations of EU trade marks that might represent the letter ‘p’ and 46 EU trade marks that might represent the letter ‘d’. Exhibit 8 is a screen capture of the intervener’s website, archived on 16 August 2000.
19 Exhibits 6 and 7, although produced for the first time only before the Court, are not strictly evidence but relate to EUIPO’s usual practice in reaching decisions to which a party has the right to refer, even after the procedure before EUIPO is complete (judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 20). They must therefore be declared admissible.
20 By contrast, Exhibit 8, which concerns factual elements produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned document must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
21 In support of its action, the applicant essentially relies on a number of heads of claim which may be analysed as supporting a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In the first place, the applicant disputes the comparison of the signs carried out by the Board of Appeal and argues that they are in fact of high visual and phonetic similarity. In the second place, it argues that, since the distinctiveness of the earlier marks is high, and not average, there is a likelihood of confusion between the marks at issue.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 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. In addition, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means EU trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
24 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, as the case may be, economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and of the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, 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).
25 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, in order for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
26 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
27 With regard to the relevant public, the Board of Appeal essentially took the view, rightly, that, with regard to the earlier German trade marks, the relevant public was the general public in Germany, with a normal level of attention, a view which must be confirmed given that the goods covered, namely ‘clothing items’ in Class 25, are everyday consumer goods (see, to that effect, judgment of 17 October 2012, MIP Metro v OHIM — J. C. Ribeiro (MISS B), T‑485/10, not published, EU:T:2012:554, paragraphs 6 and 22). As for the earlier EU trade mark, even though the Board of Appeal did not explicitly take a position on the relevant public, it must be considered that that relevant public is the average EU consumer with a normal level of attention, this not being disputed by the parties.
28 Regarding the comparison of the goods, the Board of Appeal considered, in essence, that the ‘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’ in Class 25 covered by the mark applied for were all items of clothing and were therefore identical to the ‘clothing items’ in Class 25 covered by the three earlier marks. Concerning the ‘headwear and footwear’ covered by the mark applied for, the Board of Appeal found these to be highly similar to the ‘clothing items’ in Class 25 covered by the two earlier German figurative marks, given that those goods are used for the same purpose, in that they aim to cover and protect parts of the human body, they may be made partially of the same materials, they often share the same distribution channels and producers and they target the same end consumers. In addition, the Board of Appeal noted that many manufacturers and designers produce and design all the aforementioned items, which have a complementary character. The Board of Appeal also took the view that shoes and headgear were identical, on account of their wording, to the goods in Class 25 covered by the earlier EU trade mark. That assessment, which is correct, is not disputed by the parties.
Comparison of the signs
29 The applicant criticises the Board of Appeal for committing errors of assessment regarding, in the first place, the perception of the signs at issue by the relevant public and, in the second place, the visual and phonetic comparison of those signs.
30 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 the marks by the average consumer of the goods or services at issue 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).
– Perception of the signs by the relevant public
31 In the present case, in paragraph 18 of the contested decision, the Board of Appeal considered that the mark applied for consisted of the words ‘pro player’ represented in stylised black capital letters. It found that, in English, the word ‘pro’ meant, inter alia, ‘a person who engages in an activity on a professional rather than an amateur basis’, and that the word ‘player’ meant ‘a person who practises physical exercise’, and that the use of those two words in combination was distinctive as it did not describe any of the characteristics of the goods covered by the mark applied for. The Board of Appeal then stated that there appeared, above the word combination, a figurative element which, combined with the words ‘pro’ and ‘player’, which both start with the letter ‘p’, would be perceived as the letter ‘p’, in black, surrounded by a curved dark grey line following the shape of the stylised letter ‘p’. It recalled, in that regard, that, where a mark is composed of word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name rather than by describing the figurative element of the mark, but that, due to the size and position of the figurative element that might be perceived as the letter ‘p’ within the mark applied for, that element had to be regarded as co-dominant with the word element ‘pro player’.
32 Regarding the earlier German mark in black and white, the Board of Appeal found that it consisted of a black figurative element which could be perceived as a highly stylised letter ‘p’, and that its elements were represented in a light tinted rectangle, for which no explicit colour claim was made. In relation to the earlier German mark in red and black, the Board of Appeal noted, in paragraph 34 of the contested decision, that it had the same shape but was represented in red on a black background. Concerning the earlier EU trade mark, the Board of Appeal found that it consisted of a figurative element identical to the one protected by the earlier German mark in black and white, and contained, in addition, the word element ‘protective’ next to it. It took the view that that word element, meaning ‘having the quality, character, or effect of protecting someone or something’, was weakly distinctive for the relevant goods in Class 25, since they could be used for protective purposes. However, it concluded that that word element could not be completely overlooked because of, inter alia, its rather distinct letter type.
33 The applicant claims, essentially, that the Board of Appeal should have disregarded the word element ‘pro player’ of the mark applied for and compared only the following elements and signs:
– the figurative element of the mark applied for:
– the earlier German mark in black and white and the figurative element of the earlier EU trade mark:
– the earlier German mark in red and black:
34 In the first place, it argues that the Board of Appeal failed to take into account the dominant and distinctive nature of the element representing the letter ‘p’, which is shared by the marks at issue. In the second place, it argues that the Board of Appeal neglected to take into account the purely descriptive nature of the word element ‘pro player’ in the mark applied for, which refers to the idea that the goods covered are meant to be worn by sporting professionals, and the fact that, as a result, that word element should not have been taken into account in the comparison of the marks. In the third place, it argues that, given that it was not necessary to take into account the purely descriptive element ‘pro player’ in the comparison, the decision of the Fourth Board of Appeal of EUIPO of 28 April 2015 in Case R 2441/2014-4, in which that Board of Appeal had concluded that there was a likelihood of confusion between a mark corresponding only to the figurative element of the mark applied for and the earlier German mark in black and white, was applicable to the present case.
35 EUIPO and the intervener dispute those arguments.
36 First, with regard to the mark applied for, the applicant’s arguments — that the Board of Appeal failed to take into account the fact that the figurative element that might be perceived as the letter ‘p’ is dominant — must be rejected. In that regard, it suffices to point out that the Board of Appeal acknowledged, in paragraph 18 of the contested decision, that the figurative element that might be perceived as representing the letter ‘p’ was in an important place within the sign applied for on account of its size and position, to the point of being co-dominant with the word element ‘pro player’.
37 Second, in relation to the perception of the word element ‘pro player’ in the mark applied for, it must be recalled that, according to the case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 30 and the case-law cited, and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 59 and the case-law cited). In the present case, the German general public, which understands basic English (see, to that effect, judgment of 30 November 2011, SE-Blusen Stenau v OHIM — Sport Eybl & Sports Experts (SE© SPORTS EQUIPMENT), T‑477/10, not published, EU:T:2011:707, paragraph 39; see also, to that effect, judgment of 13 May 2015, easyGroup IP Licensing v OHIM — Tui (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 38 and the case-law cited), will break down the word element into two words known to it, namely ‘pro’ and ‘player’. The same, at the very least, goes for the English-speaking part of the general public of the European Union.
38 As the Board of Appeal rightly noted, in English the word ‘pro’ means, inter alia, ‘a person who engages in an activity on a professional rather than an amateur basis’. In addition, according to the case-law, the word ‘pro’ may be laudatory for the sake of advertising, the purpose of this being to highlight the positive qualities of the goods for the presentation of which that element is used (see judgment of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraph 27 and the case-law cited). The European Union judicature has thus already held that that word element would be perceived by the English-speaking public as meaning ‘professional’ or ‘favourable, positive or supportive’ (see judgment of 15 November 2011, Hrbek v OHIM — Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), T‑434/10, not published, EU:T:2011:663, paragraph 64). The word ‘player’, in its view, does mean, inter alia, ‘a person who practises physical exercise’.
39 According to the case-law, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
40 In the present case, as regards jackets, shorts, leotards, casual shirts, cover-ups, socks, sweatshirts, T-shirts, underwear, shoes and footwear, it must be noted that they may be used for playing a sport, but nothing in their description indicates that they are specifically designed for that purpose. The applicant is therefore wrong to argue that the expression ‘pro player’ would be descriptive of those goods and that it would not be perceived by the relevant public. The inherent distinctiveness of the world element ‘pro player’ in relation to them will thus be normal (see, to that effect, 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 48 and the case-law cited and paragraph 49, second indent).
41 However, contrary to what EUIPO and the intervener contend, items of clothing the wording of which does indicate that they have a direct link with sporting activities are also included in the list of goods covered by the mark applied for. This concerns swimsuits, swim trunks, workout pants, warm-up shirts and suits, sport bras and sport shirts. Consequently, at least for those goods, the expression ‘pro player’ will be descriptive of their sporting nature and of their proximity to the professional grade. Therefore, the Board of Appeal erred in finding that the two words combined did not describe any of the characteristics of the goods covered by the mark applied for. It follows that, in accordance with the case-law cited in paragraph 39 above, the distinctiveness of the word element ‘pro player’ will be weak for those goods (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 48 and paragraph 49, first indent).
42 Nevertheless, as was noted in paragraph 18 of the contested decision, it is also necessary to take into account the fact that, where a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods or services in question by citing the name rather than by describing the figurative element of the mark (see judgment of 10 March 2016, LG Developpement v OHIM — Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 43 and the case-law cited).
43 Moreover, according to settled case-law, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited). As the Board of Appeal observed, the word element of the mark applied for is indeed visible since it is represented in stylised black capital letters, and has a non-negligible size within the sign as a whole. Consequently, contrary to what the applicant claims, it will be remembered by the consumer. The error made by the Board of Appeal regarding the level of distinctiveness of the element ‘pro player’ in relation to certain goods covered does not therefore affect the conclusion that that word element is co-dominant with the figurative element that might be perceived as the letter ‘p’.
44 In any event, it must be emphasised that, even if the word element ‘pro player’ were not to be regarded as co-dominant in the mark applied for, the assessment of the similarity of the marks at issue cannot, however, be limited to taking into account solely one component of a composite mark — in the present case, the element that might represent the letter ‘p’ — and comparing it with another mark. As EUIPO notes, the comparison must be made, on the contrary, by examining the marks at issue, each considered as a whole. It is only if all of 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). It is apparent from paragraphs 42 and 43 above that the word element ‘pro player’ is not insignificant or negligible in the overall impression created by the mark applied for.
45 As regards the earlier EU trade mark, it must be noted that the Board of Appeal rightly took into account the overall impression created by that sign, in so far as it considered that the word element ‘protective’, though weakly distinctive in relation to the goods in question in Class 25, since they can be used for protective purposes, could not be completely overlooked in favour of the figurative element that might represent the letter ‘p’, because of, inter alia, its rather distinct letter type. It must also be held that the size and length of the element ‘protective’, which represents the largest part of the sign, justify that finding all the more.
46 Therefore, the applicant is wrong to argue that the Board of Appeal ought to have compared the signs at issue solely on the basis of their figurative element that might represent the letter ‘p’.
47 Consequently, it is also necessary to reject the arguments of the applicant that the decision of the Fourth Board of Appeal of EUIPO of 28 April 2015 (Case R 2441/2014-4), which found that there was a likelihood of confusion between a sign corresponding to the figurative element of the mark applied for and the earlier German mark in black and white, applies to the present case. It is apparent from the foregoing that the element ‘pro player’ will be perceived by the relevant public and that the mark applied for differs from that which was at issue in Case R 2441/2014-4.
– Visual comparison
48 In terms of the visual comparison, the Board of Appeal took the view, in paragraph 20 of the contested decision, that the earlier German mark in black and white and the mark applied for were differently structured, the earlier mark consisting of a single figurative element in black and the mark applied for consisting of the word combination ‘pro player’ and a figurative element in black and grey above it, presented together on a rectangular background. The Board of Appeal considered that the distinctive word element ‘pro player’, which would certainly not be overlooked in the mark applied for, had no counterpart in the earlier mark. It also noted that there was a similarity between the marks at issue as regards the element that might represent the letter ‘p’, since, in both marks, that element, made up of a bold black line slanting forward with the same angle, the rounded upper part of which has more or less the same proportions, was represented in such a way that the loop did not touch the slanted upright. The Board of Appeal found that the element of the earlier German mark in black and white that might be interpreted as the letter ‘p’ was, however, more curved than that of the mark applied for, and that the latter mark depicted an additional curved dark grey line. It concluded that those marks were visually similar, but only to a very low degree.
49 In paragraph 34 of the contested decision, the Board of Appeal found that the earlier German mark in red and black and the mark applied for were even less similar, owing to the use of the colours red and black in the earlier mark.
50 As regards the comparison with the earlier EU trade mark, the Board of Appeal took the view, in paragraph 38 of the contested decision, that the structure of the marks at issue was different in so far as the mark applied for consisted of a figurative element with two words underneath, whereas the earlier mark consisted of a figurative element with the word ‘protective’ next to it. The Board of Appeal also noted that, although the word elements coincided in the first three letters, the additional word element ‘protective’ was written as one word, in a distinct letter type, while the word element of the mark applied for consisted of two words located under the word element that might represent the letter ‘p’. The Board of Appeal concluded that the marks at issue were, at most, visually similar to a low degree.
51 The applicant disputes that assessment and considers that the Board of Appeal should have found that there was a high degree of visual similarity between the signs at issue.
52 The applicant argues, essentially, that, due to its prominent and major position in the marks at issue, the letter ‘p’, common to the signs at issue, is the only thing that the consumer, who is subject to the principle of imperfect recollection, will remember, having regard also to the fact that the consumer tends to remember similarities, rather than differences, between signs. The applicant stresses more specifically the fact that the letter ‘p’ is stylised in a very similar way in all the signs at issue. It adds that the average consumer will hardly be able to notice the only difference between the signs, which, in its view, is the purely decorative curve around the letter ‘p’ of the mark applied for. Regarding, more specifically still, the earlier EU trade mark, the applicant submits that the expression ‘pro player’ is written in the same font as the term ‘protective’.
53 As a preliminary point, contrary to what the applicant claims, it cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. Thus, in accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or on the conditions under which the goods or services covered by them are marketed (see judgment of 13 May 2015, Ferring v OHIM — Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 84 and the case-law cited).
54 It must be observed that, by its argument, the applicant once again bases its comparison on a misperception of the marks at issue, and that argument must be rejected having regard to paragraphs 43 to 46 above, according to which the Board of Appeal rightly took into account the overall impression of each of the marks at issue.
55 First, with regard to the comparison made with the earlier German marks, it must be stated that the Board of Appeal rightly took into account all the elements of the marks at issue. Contrary to what the applicant claims, the Board of Appeal did not neglect to take into consideration the similarities between the signs made up of the element that might represent the letter ‘p’, namely its stylisation by a bold black line slanting forward with the same angle, the similar proportions of the rounded upper part and the lack of closure of the loop of the letter ‘p’. However, the Board of Appeal was right to find that the dissimilarities between the signs at issue outweighed the similarities. Those differences are, firstly, differences in structure that are immediately perceptible between the mark applied for — consisting of three elements, namely the figurative element that might represent the letter ‘p’, the narrower grey line that surrounds it like an arc pointing towards the left, and the word element ‘pro player’ situated below — and the earlier German marks consisting of a single figurative element. Next, it must be pointed out that the word element of the mark applied for — which does not go overlooked in the mark applied for — has no equivalent in the earlier German marks. Last, it should be noted that, as the Board of Appeal correctly found, in the earlier marks the figurative element that might represent the letter ‘p’ is more curved than in the mark applied for and does not contain the additional dark grey arc which surrounds that letter ‘p’ in the mark applied for.
56 Second, so far as concerns the comparison with the earlier EU trade mark, the Board of Appeal also did not disregard the similarities between the figurative elements that might represent the letter ‘p’, or the fact that the word elements coincided in the first three letters ‘p’, ‘r’ and ‘o’. However, it was also right to find that the dissimilarities outweighed the similarities. In that regard, it is necessary to uphold the finding that the impressions of all the signs are very different on account of, inter alia, their different structures, the element ‘protective’, appearing to the right of, and next to, the element that might represent the letter ‘p’, and not below the element that might represent that letter, as in the mark applied for. In addition, the word element is written as one word rather than two. The applicant is also wrong to argue that the word elements ‘pro player’ and ‘protective’ are written in the same letter type. Although the shape of the characters is rather similar, the letter type in which ‘pro player’ is written inclines very slightly towards the right, unlike that in which the term ‘protective’ is written, lending the mark applied for a particular dynamism. Furthermore, it must be noted that the relative sizes of the figurative element and of the word element in the mark applied for differ greatly from the relative sizes of those same elements in the earlier EU trade mark. The figurative element is significantly larger than the word element in the mark applied for, whereas it is roughly the same size as the word element in the earlier EU trade mark.
57 Therefore, it must be held that the Board of Appeal did base its comparison on the overall impression of the marks at issue and rightly concluded that there was a very low degree of visual similarity between the mark applied for and the earlier German marks, and that there was a low degree of visual similarity between the mark applied for and the earlier EU trade mark.
58 Accordingly, the arguments of the applicant purporting to demonstrate a high degree of visual similarity between the signs at issue must be rejected.
– Phonetic comparison
59 In terms of the phonetic comparison, the Board of Appeal found, in paragraph 21 of the contested decision, that the mark applied for would be pronounced ‘pro-play-er’ or, less likely, ‘p-pro-play-er’, whereas the earlier German marks might be perceived and pronounced as ‘p’. It then observed that the phonetic comparison would at most be restricted to the first letter of the mark applied for, which is followed by nine other letters, and that the marks at issue were thus not similar from a phonetic perspective.
60 With regard to the comparison with the earlier EU trade mark, the Board of Appeal found, in paragraph 39 of the contested decision, that the phonetic similarity between the term pronounced ‘pro-play-er’ or ‘p-pro-play-er’ and the term pronounced ‘pro-tec-tive’ or the sign pronounced ‘p-pro-tec-tive’ would not be more than low.
61 The applicant disputes that assessment and argues that the marks are phonetically identical, on the ground that the letter ‘p’ will be determinative and the main stress will be placed on this single letter, which is shared by all the marks, as it is catchy and short.
62 However, that argument must be rejected in so far as it neglects to take into account the word element, consisting of three syllables, of the mark applied for, which is non-negligible and will be perceived by the consumer, and the word element of the earlier EU trade mark, the last two syllables of which differ from those of the mark applied for. Furthermore, the assertion that the relevant public will simply name the mark applied for ‘p’, since this term is catchy and short, is an erroneous and unsupported assertion, as it is clear from the case-law cited in paragraph 37 above that the consumer will tend to refer to words known to him.
63 Accordingly, the argument alleging phonetic identity between the marks at issue must be rejected.
– Conceptual comparison
64 It should be pointed out that the applicant does not call into question the finding, made in paragraphs 22, 34 and 40 of the contested decision, that there is no conceptual similarity between the signs at issue. In that regard, the Board of Appeal acted correctly in finding that the single letter ‘p’ does not convey any concept (judgment of 20 October 2011, Poloplast v OHIM — Polypipe (P), T‑189/09, not published, EU:T:2011:611, paragraph 83), that the concepts conveyed by the words ‘pro’ and ‘player’ had no counterparts in the earlier German marks, and that the meaning of the word ‘protective’ in the earlier EU trade mark bore no relation to that of the word ‘pro’ or the word ‘player’ in the mark applied for.
Likelihood of confusion
65 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and Others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
66 As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; 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).
67 It is in the light of the foregoing that the Board of Appeal’s assessment concerning the absence of any likelihood of confusion between the signs at issue must be examined.
68 In the present case, the Board of Appeal essentially found that, taking into account the no more than normal level of distinctiveness of the three earlier marks, the low degree of visual similarity between the marks at issue, and the fact that they are not similar from a phonetic and conceptual point of view, there was no likelihood of confusion on the part of the relevant public, even for identical and highly similar goods and even taking into account a normal level of attention on the part of the average consumer.
69 The applicant takes the view that, on the contrary, there is a likelihood of confusion, and it puts forward four different arguments in this regard.
70 EUIPO and the intervener dispute those arguments.
71 In the first place, the applicant considers that the distinctiveness of the earlier German marks should have been regarded as higher than normal, since that sign, perceived as the letter ‘p’, has no link to the goods covered by the earlier mark included in Class 25. It is necessary to reject that argument and hold that the Board of Appeal was right to take the view that the inherent distinctiveness of the earlier German marks was not higher than normal, in so far as the sign in question, irrespective of whether or not it would be perceived as the letter ‘p’, has no meaning in relation to the goods covered by the earlier German marks included in Class 25, nor any particular link to them, and is, moreover, not commonly used in the sector concerned (see, to that effect and by analogy, 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). In that regard, there is no rule that the absence of any conceptual link between the mark and the goods or services covered by that mark automatically confers on that mark a high degree of inherent distinctiveness capable of providing it broader protection (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71).
72 Moreover, it should be emphasised that the arguments of the intervener contending that the earlier German marks have a low degree of distinctiveness are not such as to invalidate the finding that there is no likelihood of confusion.
73 In the second place, the applicant considers that the existence of a likelihood of confusion is justified by, inter alia, the following factors: the existence of a high level of distinctiveness of the earlier marks, a high level of visual similarity between the signs, as well as their phonetic identity. It is sufficient to hold, in that regard, that none of those factors is established, as is apparent from paragraphs 57, 58, 63 and 71 above.
74 In the third place, the applicant considers it necessary to give consideration, as regards items of clothing, to the visual impression of the marks, because such items are usually examined visually or may be tried on before being bought. In that regard, it should be noted that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. It is necessary to examine the objective conditions under which the marks may be present on the market. The extent of the elements of similarity or difference in the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing marks are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the product, a visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgments of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49, and of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 61).
75 However, it must be pointed out that that argument, based on the significance of the visual similarity between the opposing signs, is not relevant in the present case, inasmuch as it follows from paragraphs 48 to 58 above that the signs are, at most, visually similar to a low degree.
76 In the fourth place, the applicant asserts that the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594) is applicable to the present case, in that the earlier German mark in black and white, even were it considered not to be dominant, has an independent distinctive role in the mark applied for, which may lead the public to believe that the goods at issue derive, at the very least, from economically linked undertakings (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 30 to 32). That argument must be rejected, since the application of the principle established in the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), presupposes that the earlier mark is contained within the mark applied for (see, to that effect, judgment of 10 December 2013, Colgate-Palmolive v OHIM — dm-drogerie markt (360º SONIC ENERGY), T‑467/11, not published, EU:T:2013:633, paragraph 43), which is not the position in the present case. It is necessary to uphold the Board of Appeal’s finding that the figurative element of the earlier German mark in black and white that might be interpreted as the letter ‘p’ is more curved than that of the mark applied for, which is more angular. It must therefore be held that the figurative element of the earlier German mark in black and white is not the same as that contained within the mark applied for.
77 Accordingly, it is necessary to reject the arguments of the applicant and to uphold the Board of Appeal’s finding that there is no likelihood of confusion.
78 The action must therefore be dismissed in its entirety.
Costs
79 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.
80 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 CG Verwaltungsgesellschaft mbH to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Perry Ellis International Group Holdings Ltd.
Delivered in open court in Luxembourg on 24 November 2016.
E. Coulon | | M. van der Woude |