JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
7 November 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark BIANCALUNA — Earlier national figurative mark bianca — Procedural economy — Relative ground for refusal — Likelihood of confusion — Identity of the goods — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑627/15,
Frame Srl, established in San Giuseppe Vesuviano (Italy), represented by E. Montelione, M. Borghese and R. Giordano, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Bianca-Moden GmbH & Co. KG, established in Ochtrup (Germany), represented by P. Lange, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 August 2015 (Case R 2952/2014-5), relating to opposition proceedings between Bianca-Moden and Frame,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín (Rapporteur) and I. Reine, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 11 November 2015,
having regard to the response of EUIPO lodged at the Court Registry on 18 March 2016,
having regard to the response of the intervener lodged at the Court Registry on 11 March 2016,
further to the hearing on 28 February 2017,
gives the following
Judgment
I. Background to the dispute
1 On 9 October 2012, the applicant, Frame Srl, filed 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), as amended (replaced by 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)).
2 Registration as a mark was sought for the word sign BIANCALUNA.
3 The goods in respect of which registration was sought are in Classes 3, 24 and 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, for each of those classes, to the following description:
– Class 3: ‘Soaps; Perfumery, essential oils, cosmetics, hair lotions’;
– Class 24: ‘Textiles and textile goods, not included in other classes; Bed covers; Table covers; Glass cloths [towels]; Face towels of textile; Towels of textile; Bath linen, except clothing; Household linen; Bed linen; Table linen, not of paper; Diapered linen; Brocades; Calico; Canvas for tapestry or embroidery; Tablemats, not of paper; Haircloth [sackcloth]; Bed blankets; Bed covers of paper; Travelling rugs [lap robes]; Curtain holders of textile material; Bed clothes; Dimity; Cotton fabrics; Crepe [fabric]; Crepon; Damask; Labels of cloth; Handkerchiefs of textile; Pillowcases; Mattress covers; Felt; Sanitary flannel; Flannel [fabric]; Hat linings, of textile, in the piece; Covers [loose] for furniture; Covers for cushions; Pillow shams; Fitted toilet lid covers of fabric; Linings [textile]; Flags, not of paper; Gauze [cloth]; Washing mitts; Jersey [fabric]; Cheviots [cloth]; Sheets [textile]; Marabouts [cloth]; Filtering materials of textile; Plastic material [substitute for fabrics]; Material (Textile -); Drugget; Billiard cloth; Printers’ blankets of textile; Wall hangings of textile; Eiderdowns [down coverlets]; Door curtains; Tick [linen]; Furniture coverings of plastic; Furniture coverings of textile; Sleeping bags [sheeting]; Coasters [table linen]; Bunting; Bolting cloth; Banners; Cloth; Lining fabric for shoes; Woollen cloth; Fabric, impervious to gases, for aeronautical balloons; Table runners; Shrouds; Taffeta [cloth]; Tablecloths, not of paper; Moleskin [fabric]; Hemp cloth; Calico cloth (Printed -); Ticks [mattress covers]; Oilcloth for use as tablecloths; Gummed cloth, other than for stationery; Cheese cloth; Buckram; Curtains of textile or plastic; Shower curtains of textile or plastic; Fabric; Adhesive fabric for application by heat; Hemp fabric; Jute fabric; Linen cloth; Rayon fabric; Ramie fabric; Silk [cloth]; Silk fabrics for printing patterns; Esparto fabric; Elastic woven material; Fabric of imitation animal skins; Fibreglass fabrics for textile use; Knitted fabric; Non-woven textile fabrics; Upholstery fabrics; Fabric for footwear; Lingerie fabric; Fabrics for textile use; Traced cloths for embroidery; Chenille fabric; Frieze [cloth]; Place mats, not of paper; Serviettes of textile; Napkins, of cloth, for removing make-up; Trellis [cloth]; Quilts; Tulle; Velvet; Net curtains; Mosquito nets; Zephyr [cloth]’;
– Class 25: ‘Clothing, footwear, headgear; Clothing of imitations of leather; Clothing of leather; Motorists’ clothing; Cyclists’ clothing; Clothing for gymnastics; Dresses; Dressing gowns; Bath robes; Non-slipping devices for footwear; Clothing; Bandanas [neckerchiefs]; Bibs, not of paper; Caps [headwear]; Berets; Underwear; Underwear (Anti-sweat -); Smocks; Boas [necklets]; Teddies [undergarments]; Suspenders; Studs for football boots; Corsets [underclothing]; Galoshes; Skull caps; Footwear; Boots for sports; Stockings; Stockings (Sweat-absorbent -); Slippers; Socks; Breeches for wear; Short-sleeve shirts; Shirts; Stuff jackets [clothing]; Bodices [lingerie]; Hats; Top hats; Paper hats [clothing]; Coats; Hoods [clothing]; Hat frames [skeletons]; Footmuffs, not electrically heated; Belts [clothing]; Money belts [clothing]; Tights; Shoulder wraps; Detachable collars; Camisoles; Headgear for wear; Collar protectors; Ear muffs [clothing]; Layettes [clothing]; Corselets; Suits; Beach clothes; Masquerade costumes; Neckties; Ascots; Bathing caps; Shower caps; Headbands [clothing]; Pocket squares; Scarfs; Fittings of metal for footwear; Ready-made linings [parts of clothing]; Gabardines [clothing]; Spats; Jackets [clothing]; Fishing vests; Garters; Skirts; Jumper dresses; Aprons [clothing]; Girdles; Gloves [clothing]; Mittens; Ski gloves; Welts for footwear; Waterproof clothing; Ready-made clothing; Paper clothing; Knitwear [clothing]; Jerseys [clothing]; Leg warmers; Leggings [trousers]; Liveries; Singlets; Hosiery; Swimsuits; Sweaters; Muffs [clothing]; Maniples; Pelerines; Mantillas; Sleep masks; Skorts; Miters [hats]; Pants; Bathing trunks; Vests; Babies’ pants [clothing]; Trousers; Parkas; Pelisses; Furs [clothing]; Shirt yokes; Chasubles; Pyjamas; Cuffs; Ponchos; Pullovers; Tips for footwear; Stocking suspenders; Sock suspenders; Brassieres; Heelpieces for footwear; Heelpieces for stockings; Sandals; Bath sandals; Saris; Sarongs; Shoes; Esparto shoes or sandals; Bath slippers; Gymnastic shoes; Beach shoes; Football boots; Sports shoes; Ski boots; Shawls; Sashes for wear; Underpants; Lace boots; Wimples; Topcoats; Outerclothing; Dress shields; Gaiter straps; Petticoats; Slips [undergarments]; Shirt fronts; Half-boots; Boots; Fur stoles; Soles for footwear; Inner soles; Heels; Pockets for clothing; Tee-shirts; Togas; Footwear uppers; Boot uppers; Turbans; Wet suits for water-skiing; Combinations [clothing]; Uniforms; Veils [clothing]; Cap peaks; Wooden shoes’.
4 The trade mark application was published in Community Trade Marks Bulletin No 20/2013 of 29 January 2013.
5 On 22 April 2013, the intervener, Bianca-Moden GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for.
6 The opposition was directed against all the goods covered by the application for registration which have been listed in paragraph 3 above. It was based on Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and on the following earlier marks:
– the EU word mark BIANCA, filed on 3 March 1998 and registered on 12 July 1999 under the number 761700, covering ‘clothing’ in Class 25;
– the EU figurative mark filed on 10 June 1998 and registered on 18 October 1999 under the number 854240, also covering ‘clothing’ in class 25, as reproduced below:
– the German figurative mark filed on 30 May 2008 and registered on 18 August 2008 under the number 302008035102 (‘the earlier German trade mark’), as reproduced below:
7 The goods covered by the earlier German trade mark are in, inter alia, Classes 14, 18 and 25 and correspond, for each of those classes, to the following description:
– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, included in Class 14; jewellery; precious stones; horological and chronometric instruments’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials, included in Class 18; hides; trunks and travelling bags; umbrellas, parasols and walking sticks’;
– Class 25: ‘Clothing, footwear, headgear’.
8 On 11 November 2013, in its observations on the opposition, the applicant requested that proof of genuine use of the earlier marks on which the opposition was based be provided. The intervener replied to that request on 6 March 2014.
9 On 19 September 2014, the Opposition Division based its reasoning on the examination of the likelihood of confusion between the mark applied for and the earlier German trade mark. In that regard, it partially upheld the opposition and rejected the application for registration in respect of the following goods:
– the goods in Class 24 described as follows: ‘Textiles, not included in other classes; face towels of textile; towels of textile; bath linen, except clothing; brocades; calico; tablemats, not of paper; haircloth [sackcloth]; dimity; cotton fabrics; crepe [fabric]; crepon; damask; labels of cloth; felt; flannel [fabric]; hat linings of textile, in the piece; linings [textile]; gauze [cloth]; jersey [fabric]; cheviots [cloth]; marabouts [cloth]; material (textile -); drugget; tick [linen]; coasters [table linen]; bolting cloth; cloth; lining fabric for shoes; woollen cloth; table runners; taffeta [cloth]; moleskin [fabric]; hemp cloth; calico cloth (printed -); gummed cloth, other than for stationery; cheese cloth; buckram; fabric; adhesive fabric for application by heat; hemp fabric; jute fabric; linen cloth; rayon fabric; ramie fabric; silk [cloth]; silk fabrics for printing patterns; esparto fabric; elastic woven material; fabric of imitation animal skins; fibreglass fabrics for textile use; knitted fabric; non-woven textile fabrics; upholstery fabrics; fabric for footwear; lingerie fabric; fabrics for textile use; chenille fabric; frieze [cloth]; place mats, not of paper, trellis [cloth]; quilts; tulle; velvet; zephyr [cloth]’;
– the goods in Class 25 described as follows: ‘Clothing, footwear, headgear; clothing of imitations of leather; clothing of leather; motorists’ clothing; cyclists’ clothing; clothing for gymnastics; dresses; dressing gowns; bath robes; clothing; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; underwear (anti-sweat -); smocks; boas [necklets]; teddies [undergarments]; suspenders; studs for football boots; corsets [underclothing]; galoshes; skull caps; footwear; boots for sports; stockings; stockings (sweat-absorbent -); slippers; socks; breeches for wear; short-sleeve shirts; shirts; stuff jackets [clothing]; bodices [lingerie]; hats; top hats; paper hats [clothing]; coats; hoods [clothing]; footmuffs, not electrically heated; belts [clothing]; money belts [clothing]; tights; shoulder wraps; detachable collars; camisoles; headgear for wear; collar protectors; ear muffs [clothing]; layettes [clothing]; corselets; suits; beach clothes; masquerade costumes; neckties; ascots; bathing caps; shower caps; headbands [clothing]; pocket squares; scarfs; gabardines [clothing]; spats; jackets [clothing]; fishing vests; garters; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; mittens; ski gloves; waterproof clothing; ready-made clothing; paper clothing; knitwear [clothing]; jerseys [clothing]; leg warmers; leggings [trousers]; liveries; singlets; hosiery; swimsuits; sweaters; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; skorts; miters [hats]; pants; bathing trunks; vests; babies’ pants [clothing]; trousers; parkas; pelisses; furs [clothing]; chasubles; pyjamas; cuffs; ponchos; pullovers; stocking suspenders; sock suspenders; brassieres; sandals; bath sandals; saris; sarongs; shoes; esparto shoes or sandals; bath slippers; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; shawls; sashes for wear; underpants; lace boots; wimples; topcoats; outerclothing; dress shields; gaiter straps; petticoats; slips [undergarments]; shirt fronts; half-boots; boots; fur stoles; soles for footwear; inner soles; pockets for clothing; tee-shirts; togas; turbans; wet suits for water-skiing; combinations [clothing]; uniforms; veils [clothing]; cap peaks; wooden shoes’.
10 As regards the two earlier EU trade marks on which the opposition was also based, the Opposition Division took the view that the outcome of the proceedings as regards those marks could not be any different, since those marks covered a more limited range of goods than the earlier German trade mark.
11 On 19 November 2014, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), the applicant filed a notice of appeal against the decision of the Opposition Division in so far as it had rejected the application for registration in respect of the goods in Classes 24 and 25 listed in paragraph 9 above.
12 By decision of 7 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal against the Opposition Division’s decision. Like the Opposition Division, the Board of Appeal based its examination on the likelihood of confusion between the mark applied for and the earlier German trade mark. It stated, in particular, that it agreed with the Opposition Division’s assessment regarding the identity or similarity of some of the goods at issue, since the parties had not, in essence, raised any plea in that regard. As regards the comparison of the signs, the Board of Appeal found that they were visually, phonetically and conceptually similar. Lastly, as regards the global assessment of the likelihood of confusion, the Board of Appeal found that, on account of the average degree of distinctiveness of the earlier German trade mark, which was not disputed by the parties, the similarity of the signs, and the identity or similarity of the goods concerned, there was a likelihood of confusion on the part of the relevant public.
13 By an action before the General Court, which was registered as Case T‑628/15, the applicant has also challenged the decision of the Fifth Board of Appeal of EUIPO of 7 August 2015 (Case R 2720/2014-5) refusing, following opposition, to register the following figurative mark in respect of goods in Class 25:
II. Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision in so far as it dismissed its appeal against the Opposition Division’s decision;
– remit the case to EUIPO;
– in the alternative, alter the contested decision so as to grant the application for registration in respect of the following goods in Class 25: ‘underwear, p[yj]amas, t-shirts, panties, und[i]es’;
– order EUIPO to pay the costs.
15 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
A. Procedure
16 In its written pleadings, the intervener observed that some of the annexes to the application were not in the language of the case and consequently requested the Court not to take them into consideration.
17 In accordance with point 108 of the Practice Rules for the Implementation of the Rules of Procedure of the General Court, the Registrar of the General Court, however, requested that the applicant lodge a translation into the language of the case of the annexes in question. That translation was lodged on 30 April 2016 and those translated annexes were served on the intervener. Consequently, there is nothing to preclude those annexes from being taken into consideration.
18 In its written pleadings the intervener also observed that the application had been signed by only one of the applicant’s three lawyers and took the view that it was therefore to be regarded as having been lodged only by its sole signatory.
19 In that regard, it is sufficient to state that the intervener has not contended that the application is inadmissible and that the application has, in any event, been signed by one of the applicant’s three lawyers, which is sufficient under the third paragraph of Article 19 of the Statute of the Court of Justice of the European Union, applicable to the General Court by virtue of the first paragraph of Article 53 thereof, and under Article 3 of the decision of the General Court of 14 September 2011 on the lodging and service of procedural documents by means of e-Curia (OJ 2011 C 289, p. 9).
20 The fact that the application has not been signed by the applicant’s three representatives is therefore irrelevant.
B. The subject-matter of the action
21 At the hearing, the applicant stated that it was limiting its claim for annulment of the contested decision to the extent that it was requesting that the contested decision should be annulled in so far as it had dismissed its appeal against the Opposition Division’s decision in respect of ‘underwear, pyjamas and t-shirts’ in Class 25.
22 The intervener did not raise any objections in that regard. By contrast, EUIPO considered that that limitation of the subject-matter of the action was belated.
23 It is important, at the outset, to bear in mind that Article 26(1)(c) of Regulation No 207/2009 (now Article 31(1)(c) of Regulation 2017/1001) provides that ‘an application for [a] … trade mark shall contain … a list of the goods or services in respect of which the registration is requested’. Furthermore, Article 43(1) of Regulation No 207/2009 (now Article 49(1) of Regulation 2017/1001) provides that, before EUIPO, ‘[t]he applicant may at any time withdraw his … trade mark application or restrict the list of goods or services contained therein’.
24 Moreover, the Court may annul or alter a decision of a Board of Appeal of EUIPO only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration referred to in Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001). Under Article 76 of that regulation (now Article 95 of Regulation 2017/1001), the Court must rule on the case in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal. The Court may not, however, annul or alter a decision of a Board of Appeal on grounds which come into existence subsequent to its adoption (see, to that effect, judgment of 25 September 2014, Peri v OHIM (Shape of a turnbuckle), T‑171/12, EU:T:2014:817, paragraphs 13 and 14 and the case-law cited).
25 It follows that, in principle, a restriction of the list of goods or services contained in a trade mark application, which restriction is made after the adoption of the decision of the Board of Appeal that is challenged before the Court, cannot affect the legality of that decision (see judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 18 and the case-law cited).
26 It must also be noted, however, that a decision of a Board of Appeal of EUIPO may be challenged before the Court in relation to only some of the goods or services on the list given in the trade mark application concerned. In such a case, that decision becomes final in respect of the other goods or services on the same list (see judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 19 and the case-law cited).
27 Having regard to that possibility, the Court has interpreted a statement made before it by a trade mark applicant, a statement which was therefore made subsequent to the decision of the Board of Appeal, to the effect that it was withdrawing its application in respect of some of the goods which were initially covered by that application, as a statement that the contested decision was being challenged only in so far as it related to the remainder of the goods concerned, or as a partial withdrawal, where the statement was made at an advanced stage of the proceedings before the Court (see, to that effect, judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 20 and the case-law cited).
28 However, if the purpose of the restriction of the list of goods concerned is to alter one or more characteristics of that list with the result that that alteration might possibly have an effect on the examination of the trade mark carried out by the adjudicating bodies of EUIPO during the administrative proceedings, such an alteration at the stage of the action before the Court would amount to a change in the subject-matter of the pending proceedings, which is prohibited by Article 188 of the Rules of Procedure of the General Court. Consequently, such a restriction could not be taken into account in examining the merits of the action (see, to that effect and by analogy, judgment of 25 September 2014, Shape of a turnbuckle, T‑171/12, EU:T:2014:817, paragraph 21 and the case-law cited).
29 In the present case, the applicant restricted the goods covered by its EU trade mark application at the hearing and therefore after the contested decision had been adopted.
30 It is not, however, apparent that the purpose of that restriction was to make, to one or more characteristics of the list of goods in respect of which the applicant had sought registration of the mark at issue, an alteration that was capable of having an effect on the examination of that mark carried out by EUIPO, which does not, moreover, submit that that is the case.
31 In those circumstances, in accordance with the case-law referred to in paragraph 27 above, it must be held that, at the hearing, the applicant validly withdrew its action in part.
32 Consequently, both the claim for annulment and the alternative claim for alteration must now be read, in accordance with the applicant’s wishes, as being directed against the contested decision in so far as that decision dismissed its appeal against the Opposition Division’s decision as regards ‘underwear, pyjamas and t-shirts’ in Class 25.
C. The claims for annulment and for the case to be remitted to EUIPO
33 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Having regard to the way in which that plea is set out, it can, however, be divided into two parts, alleging (i) that there was an error which arose from taking only the earlier German trade mark into consideration and (ii) that there was an error in the assessment of the similarity of the signs and of the goods at issue. It is appropriate to begin the examination of the plea by examining the second part.
1. The second part, alleging that there was an error in the assessment of the similarity of the signs and of the goods at issue
34 The applicant submits, in essence, that, as there are no similarities between the signs and between the goods at issue, there is no likelihood of confusion between the mark applied for and the earlier marks.
(a) Preliminary observations
35 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means 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.
36 According to settled case-law, 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. According to the same case-law, 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).
37 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services covered by the marks at issue are identical or similar. Those conditions are cumulative (see, to that effect, 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).
38 It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
(b) The relevant public
39 In paragraph 21 of the contested decision, the Board of Appeal found that, having regard to the nature of the goods concerned, the likelihood of confusion had to be analysed from the point of view of the general public, which is reasonably well informed, reasonably observant and circumspect and has an average level of attention.
40 That finding, which has not, moreover, been disputed, must be upheld.
(c) The comparison of the signs
41 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 (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
42 In the present case, the applicant puts forward complaints which are common, first, to the assessments of the visual and phonetic similarities and, secondly, to the assessments of the visual and conceptual similarities. It is therefore for the Court, with a view to the presentation of the applicant’s arguments, to determine whether those similarities exist.
(1) The complaints common to the assessments of the visual, phonetic and conceptual similarities
43 At the outset, the applicant points out generally that the three earlier marks are a word mark and two figurative marks, whereas the mark applied for is purely a word mark.
44 It must, however, be borne in mind that the Board of Appeal confined its examination of the likelihood of confusion to the comparison of the mark applied for with the earlier German trade mark. Furthermore, that mark is a figurative mark, which consists of a black rectangle, a white dot and a word element, namely the term ‘bianca’.
45 However, there is nothing to prevent a determination as to whether there are similarities between a word mark, on the one hand, and a figurative mark including word elements, on the other hand, since those two types of mark have graphic and verbal form capable of creating visual, phonetic and conceptual impressions (see, to that effect, judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43).
46 That said, the applicant disputes the existence of both visual and phonetic similarity on the ground that there is no visual and phonetic resemblance between the marks at issue because the figurative elements in those marks are dominant and highly distinctive. Furthermore, the applicant submits that the expression ‘biancaluna’ can be distinguished from the word ‘bianca’ not only from a visual, but also from a conceptual standpoint.
47 Among its arguments, the applicant refers, with regard to the mark applied for, to elements of the figurative mark which is the subject of Case T‑628/15, referred to in paragraph 13 above, and which is therefore irrelevant in the present case. It is not therefore necessary to take those elements into account as only the elements of the mark applied for are to be compared to those of the earlier German trade mark.
(2) The visual similarity
48 The Board of Appeal pointed out, in paragraph 30 of the contested decision, that, visually, the signs at issue coincide in the word ‘bianca’, which constitutes the word element of the earlier German trade mark and is fully reproduced in the mark applied for as the first six letters of that mark. Furthermore, the Board of Appeal observed that the earlier German trade mark is only slightly ornamented and that, owing to the beginnings of their respective word elements, which beginnings they have in common, the two signs at issue were visually similar.
49 Nevertheless, it must be borne in mind that 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).
50 However, in the present case, it must be pointed out that in the mark applied for, which is a word mark, the element ‘bianca’, which is situated at the beginning of the sign, is what attracts attention first, with the result that the element ‘luna’ is somewhat neutralised (see, by analogy, judgment of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, EU:T:2009:400, paragraph 57). In word signs or signs containing a word element, the consumer generally pays greater attention to the first part of the sign and will remember it more clearly than the rest of the sign. That means that, in general, the beginning of a sign has a great deal of influence on the overall impression created by the mark (see, to that effect, judgments of 25 March 2009, L'Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30, and of 15 December 2009, Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 40).
51 Moreover, it must be held, as EUIPO correctly submits, that, in the earlier German trade mark, the black rectangle and the white dot are likely to be perceived as being purely decorative elements, with the result that the relevant public will probably not perceive either of those elements as being visually dominant (see, to that effect, judgment of 23 October 2013, SFC Jardibric v OHIM — Aqua Center Europa (AQUA FLOW), T‑417/12, not published, EU:T:2013:550, paragraph 65).
52 It follows from the foregoing that, in spite of the presence of the element ‘luna’ in the mark applied for and the presence of the black rectangle and the white dot in the earlier German trade mark, the two signs at issue are, as regards the overall impression they create, visually similar. The Board of Appeal’s assessment in that regard must therefore be upheld.
(3) The phonetic similarity
53 The Board of Appeal observed, in paragraph 31 of the contested decision, that the pronunciation of the two signs at issue coincided as regards the word element ‘bianca’ and that, owing to their beginnings in common and thus to their partially similar pronunciations, it had to be found that they were phonetically similar.
54 In that regard, it must be held that, although the earlier German trade mark contains fewer syllables than the mark applied for, the element ‘bianca’ is pronounced first, with the result that it is undoubtedly what consumers find most striking (see, to that effect, judgment of 14 October 2009, TiMi KiNDERJOGHURT, T‑140/08, EU:T:2009:400, paragraph 57).
55 It follows that, in spite of the fact that the element ‘luna’ has been added to the element ‘bianca’ in the mark applied for, the signs at issue may, as the Board of Appeal maintained, be deemed to be phonetically similar.
(4) The conceptual similarity
56 As regards the conceptual similarity, the Board of Appeal pointed out, in paragraph 33 of the contested decision, that the word ‘bianca’ is known in Germany as a female first name. It also found that the German public would not be able to recognise a concept in the term consisting of the two words ‘bianca’ and ‘luna’, since the latter word is not a German word. The Board of Appeal concluded that the ‘concept of the moon’ which the applicant had invoked before it was not persuasive, probably not even for those consumers who might know that ‘luna’ means ‘moon’ in some languages. Consequently, the Board of Appeal found that the mark applied for did not have a conceptual meaning for the relevant public and it took the view that, in the absence of a reference to a concept, no conceptual difference between the signs at issue could be found to exist.
57 It must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down conceptually into word elements which, for him, have a specific meaning or which resemble words known to him (judgment of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraphs 30 and 35).
58 Before the Court, the applicant claims that, both from the point of view of an Italian-speaking consumer and from that of a consumer speaking another European Union language, the word ‘biancaluna’ has distinctive character, because the two words ‘bianca’ and ‘luna’ and the combination of those words, ‘biancaluna’, are not descriptive of characteristics of the goods in respect of which registration has been sought. Furthermore, the applicant submits that, according to the rules of Italian grammar, the correct expression is ‘luna bianca’, and thus the inversion of those two words is not a familiar expression in Italian. It claims that the expression ‘biancaluna’ is a neologism and is conceptually different from the meaning of the word ‘bianca’.
59 It must be pointed out at the outset that the Board of Appeal did not find that the mark applied for would be descriptive of a characteristic of the goods concerned.
60 That said, the applicant has not rebutted the Board of Appeal’s finding that, in Germany, the word ‘bianca’ corresponds to a female first name. Furthermore, as EUIPO correctly points out, the applicant’s argument alleging that the juxtaposition of the words ‘bianca’ and ‘luna’ is unusual from the point of view of Italian grammar is irrelevant inasmuch as, with regard to the earlier German trade mark, the relevant public is the average German consumer.
61 In the contested decision, the Board of Appeal also found that the word ‘luna’ does not have any meaning in Germany. However, the intervener rightly states that the word ‘luna’ is a synonym for ‘Mond’ (‘moon’) in that country, with the result that it may be understood by the relevant public as meaning ‘moon’. More specifically, as a noun, the word ‘luna’ is a poetic synonym for ‘Mond’ and also refers, even in German, to the goddess of the moon. Furthermore, the adjective ‘lunar’ refers to that which concerns the moon, as does the adjective ‘lunarisch’, which is, however, old-fashioned.
62 The error which the Board of Appeal made in finding that the word ‘luna’ would be unknown in German does not, however, have any consequences in the present case since the Board of Appeal, in any event, found that the ‘concept of the moon’, which the applicant had invoked in its written pleadings before EUIPO, was not persuasive, probably not even for those consumers who might know that the word ‘luna’ means ‘moon’.
63 That finding must be upheld. The applicant does not establish, in the present case, that the mere association of the word ‘luna’ with the word ‘bianca’, which it does not dispute is a female first name for the relevant public, would, for that public, have any specific conceptual content which is different from that of the sign BIANCA.
64 On the contrary, as the intervener submits, ‘bianca’ is the distinctive element in its company name. Consequently, when it is joined exclusively to the word ‘luna’, it may be perceived as a reference to that company name and the sign BIANCALUNA may make the relevant public believe that the goods concerned are a line of clothing which comes from Bianca-Moden or, at the very least, from an economically-linked undertaking.
65 Consequently, it may, in any event, be held that the Board of Appeal was right in ultimately finding that the comparison of the signs at issue had not revealed any conceptual differences.
(5) The overall comparison
66 It is clear from the overall comparison of the signs at issue that the Board of Appeal was right in finding that those signs were, in the light of the visual, phonetic and conceptual similarities between them, similar.
(d) The comparison of the goods
67 The Board of Appeal stated, in paragraph 24 of the contested decision, that it did not see any reason to dispute the Opposition Division’s assessment, in which it had been found that the goods in Classes 24 and 25 covered by the application for registration and the goods covered by the earlier German trade mark were in part identical and in part similar.
68 In its application, the applicant disputed that assessment, stating that there was no likelihood of confusion between the goods covered by the earlier German mark, in so far as that mark, in its view, covers ‘outer clothing’, and the goods covered by the mark applied for, in so far as those goods are, in its view, ‘underwear’.
69 As EUIPO, however, observes, the goods covered by the earlier German trade mark are not limited to ‘outer clothing’, but include the broader category of ‘clothing’, which covers ‘underwear’.
70 Furthermore, it must be borne in mind (see paragraph 21 above) that, when it was asked at the hearing to clarify its claims, the applicant stated that it was limiting its action to ‘underwear, pyjamas and t-shirts’ in Class 25. However, pyjamas and t-shirts cannot in themselves be classified as ‘underwear’ for the purpose of the distinction which the applicant made in its application. Pyjamas are nightwear or loose-fitting, light indoor and leisure clothing consisting of a pyjama top and pyjama bottoms, whereas t-shirts are collarless, short-sleeved, cotton items of clothing, the shape of which is reminiscent of that of the capital letter T and which can be worn as either underwear or outer garments.
71 Consequently, the distinction which the applicant sought to make in its application between ‘outer clothing’, which, in its view, characterises the goods covered by the earlier German trade mark, and ‘underwear’, which, in its view, in essence defines the goods covered by the mark applied for, is unfounded.
(e) The likelihood of confusion
72 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).
73 The Board of Appeal found, in the present case, that the distinctiveness of the earlier German trade mark was average, a finding which has not been disputed by the parties. It also found that the signs were similar and that the goods at issue were either identical or similar. Consequently, it found that there was indeed a likelihood of confusion on the part of the relevant public with regard to the goods at issue.
74 The applicant has confined itself, as regards the global assessment of the likelihood of confusion, to reaffirming, incorrectly, that there are differences between the goods concerned and between the signs at issue. Consequently, it must be held, in the light of the considerations above, that the Board of Appeal’s finding upholding the Opposition Division’s assessment must be upheld.
75 It follows from all of the foregoing considerations that the second part of the plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, is unfounded.
2. The first part, alleging that there was an error which arose from taking only the earlier German trade mark into consideration
76 The applicant claims that the Board of Appeal erred in basing its reasoning exclusively on the examination of the likelihood of confusion between the mark applied for and the earlier German trade mark, in respect of which no proof of use had to be produced. In so doing, EUIPO, in the applicant’s view, avoided the issue of the earlier EU trade marks in respect of which the applicant had requested that use be proved and did not rule on the co-existence of the marks at issue in the European Union market as a whole.
77 In that regard, it must be borne in mind that, in cases where an opposition is founded on a number of earlier national and EU trade marks, EUIPO is under no obligation to give priority to the EU trade marks. As is apparent from the sixth recital of Regulation No 207/2009 (now the seventh recital of Regulation 2017/1001), the EU law relating to trade marks does not replace the laws of the Member States on trade marks (see, to that effect, order of 11 May 2006, TeleTech Holdings v OHIM — Teletech International (TELETECH INTERNATIONAL), T‑194/05, EU:T:2006:124, paragraph 35). Furthermore, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (judgment of 21 March 2011, Visti Beheer v OHIM — Meister (GOLD MEISTER), T‑372/09, not published, EU:T:2011:97, paragraph 20).
78 It is clear from the examination of the second part of the plea that the Board of Appeal was right in finding that there is a likelihood of confusion between the mark applied for and the earlier German trade mark.
79 Consequently, the first part of the plea is ineffective.
80 The claims for annulment of the contested decision and for the case to be remitted to EUIPO must therefore be rejected.
D. The claim for alteration
81 In the alternative, the applicant requests that the Court alter the contested decision so as, in the light of paragraphs 21 et seq. above, to grant its application for registration in respect of the following goods in Class 25: ‘Underwear, pyjamas and t-shirts’.
82 As neither of the parts of the plea put forward by the applicant in support of its claim for annulment is well founded, the action must be dismissed in its entirety, without it being necessary to rule on the claim for alteration.
Costs
83 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Frame Srl to pay the costs.
Kanninen | Calvo-Sotelo Ibáñez-Martín | Reine |
Delivered in open court in Luxembourg on 7 November 2017.