JUDGMENT OF THE GENERAL COURT (Third Chamber)
10 September 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark JSherWood wear it with pride – Earlier EU word marks SHER-WOOD and SHER-WOOD SL and earlier EU figurative mark SHERWOOD – Relative ground for refusal – Likelihood of confusion – Similarity between products – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑448/24,
JSherwood sp. z o.o., established in Warsaw (Poland), represented by E. Delert-Wiącek, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
INA International Ltd, established in Calgary (Canada),
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm (Rapporteur) and R. Meyer, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after 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
1 By its action under Article 263 TFEU, the applicant, JSherwood sp. z o.o., seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 June 2024 (Case R 2004/2023‑4) (‘the contested decision’).
Background to the dispute
2 On 21 December 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods and services in Classes 9, 14, 18, 24, 25 and 35 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.
4 On 20 April 2022, the other party to the proceedings before the Board of Appeal, INA International Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– EU word mark SHER-WOOD, registered on 11 January 2005 under number 3 327 137, designating goods in Classes 9, 18 and 28 (‘earlier mark No 1’):
– EU figurative mark SHER-WOOD SL, registered on 22 January 2013 under number 11 003 811, designating goods in Classes 9, 18, 25 and 28 (‘earlier mark No 2’):
– the EU figurative mark, registered on 11 August 2022 under number 18 682 199, designating goods in Classes 9, 25 and 28, reproduced below (‘earlier mark No 3’):
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 25 July 2023, the Opposition Division upheld the opposition in part in respect of certain goods and services in Classes 9, 18, 24, 25 and 35.
8 On 25 September 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal upheld the appeal in part. In essence, it found, inter alia, in the first place, that the relevant public consisted of the public at large and professionals in the European Union with an average to high level of attention.
10 In the second place, as regards the comparison of the goods and services at issue, the Board of Appeal found, first, that the goods at issue in Class 9 were in part identical and in part similar at least to a low degree. Secondly, it found that the goods at issue in Class 18 were identical. Thirdly, according to the Board of Appeal, the goods at issue in Class 24 were in part, at least to a low degree, similar and in part dissimilar. Fourthly, the Board of Appeal found that the goods at issue in Class 25 were either identical, were similar to an average degree, had at least a low degree of similarity, had a low degree of similarity, or were dissimilar. Lastly, it found that the services in Class 35 covered by the mark applied for were in part similar to an average degree and in part similar to a low degree to the goods in Class 25 covered by earlier mark No 3.
11 In the third place, as regards the comparison of the signs at issue, the Board of Appeal, relying on the perception of the English-speaking part of the relevant public, found that the mark applied for had (i) an above-average degree of visual similarity with earlier mark No 1 and an average degree of visual similarity with earlier marks Nos 2 and 3, (ii) an above-average degree of phonetic similarity with earlier marks Nos 1 and 3 and an average degree of phonetic similarity with earlier mark No 2 and (iii) at least an above average degree of conceptual similarity.
12 In the fourth place, as regards the global assessment of the likelihood of confusion, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public when purchasing the identical or similar goods and services at issue.
13 Consequently, the Board of Appeal annulled the decision of the Opposition Division in so far as it had upheld the opposition to registration of the mark applied for in respect of the goods at issue, which it found to be dissimilar, but dismissed the appeal in respect of the goods and services in Classes 9, 18, 24, 25 and 35 corresponding to the following description:
– Class 9: ‘Protective work clothing [for protection against accident or injury]; thermal protective aids [clothing] for protection against accident or injury; insulated clothing for protection against accident or injury; safety clothing for protection against accident or injury; high-visibility safety clothing; protective clothing for the prevention of injury; shoes (protective -); boots [protective footwear]; protective industrial boots; trousers for protection against accidents, irradiation and fire’;
– Class 18: ‘Shoe bags’;
– Class 24: ‘Bath linen, except clothing’;
– Class 25: ‘Kerchiefs [clothing]; visors being headwear; hoods [clothing]; muffs [clothing]; face mask [clothing]; paper hats [clothing]; veils [clothing]; face masks [fashion wear]; earbands; sportswear incorporating digital sensors; face coverings [clothing], not for medical or sanitary purposes; slips [underclothing]; bodies [clothing]; nightwear; corsets [underclothing]; babies’ pants [underwear]; parts of clothing, footwear and headgear; fur hats; sports caps; woolly hats; baseball caps; knitted caps; ski hats; garrison caps; cycling caps; peaked caps; bobble hats; caps being headwear; sports caps and hats; fake fur hats; golf caps; slip-on shoes; work boots; leather shoes; winter boots; canvas shoes; baby shoes; waterproof boots; lace boots; sports shoes; dress shoes; ladies’ boots; flat shoes; casualwear; garments for protecting clothing; pantsuits; shirts; suits; women’s suits; men’s suits; skirts; skirt suits; gauchos; ladies’ dresses; maternity dresses; leather dresses; maternity smocks; women’s ceremonial dresses; dresses for infants and toddlers; babies’ undergarments; layettes [clothing]; swaddling clothes; babies’ outerclothing; baby bibs [not of paper]; socks for infants and toddlers; overalls for infants and toddlers; plastic baby bibs; one-piece clothing for infants and toddlers; snap crotch shirts for infants and toddlers; bonnets; children’s headwear; children’s wear; trousers for children; baby tops; rompers; sunsuits; children’s outerclothing; swim wear for children; infant wear; clothing for men, women and children; costumes for use in children’s dress up play; children’s footwear; bonnets [headwear]; bloomers; coats for women; chemise tops; stoles; pants; one-piece playsuits; men’s and women’s jackets, coats, trousers, vests; knickers; baby doll pyjamas; boy shorts [underwear]; nighties; footwear for women; ladies’ sandals; women’s foldable slippers; footwear for men and women; men’s socks; morning coats; coats for men; cravats; men’s sandals; sandals; baby sandals; tailleurs; bathing costumes for women; womens’ outerclothing; swim wear for gentlemen and ladies; yashmaks; bathing suits for men; outerclothing for men; footwear for men; clothing of leather’;
– Class 35: ‘Retail services connected with the sale of clothing and clothing accessories; online retail store services relating to clothing; retail services in relation to clothing; wholesale services in relation to clothing; mail order retail services for clothing; retail store services in the field of clothing; mail order retail services connected with clothing accessories; retail services in relation to clothing accessories; online retail services relating to clothing’.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition in its entirety;
– order EUIPO to pay the costs.
15 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
Admissibility of an annex to the application
16 The applicant submitted, in Annex A.1 to the application, screenshots of websites of online shops in order to demonstrate the coexistence of the earlier marks on the market.
17 EUIPO contends that the annex at issue is inadmissible because the documents that it contains are being submitted for the first time before the Court.
18 It must be stated that it is apparent from the examination of the file relating to the proceedings before the Board of Appeal that the documents contained in Annex A.1 to the application were not, in fact, submitted before the Board of Appeal.
19 The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
20 Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
21 The position is different where the evidence adduced for the first time before the Court seeks to challenge the Board of Appeal’s taking into account of matters of common knowledge or on the particular understanding of those matters by their members. In such a case, the adversely affected party may dispute its accuracy in its action before the Court and the evidence put forward in support of that challenge is, therefore, admissible (see judgment of 21 December 2022, Sanrio v EUIPO – Miroglio Fashion (SANRIO CHARACTERS), T‑43/22, not published, EU:T:2022:844, paragraph 19 and the case-law cited).
22 Similarly, an applicant is entitled to adduce evidence for the first time before the Court where it challenges an assessment that the Board of Appeal was required to carry out, if necessary of its own motion, and which did not presuppose any matter of fact which it was for the parties to provide and was not subject to the submission by the parties of pleas or arguments, such as the examination of the extent of the inherent distinctive character of the earlier mark (see, to that effect, judgment of 28 April 2021, Primart v EUIPO – Bolton Cile España (PRIMART Marek Łukasiewicz), T‑584/17 RENV, not published, EU:T:2021:231, paragraph 69).
23 In the present case, it should be noted that the evidence in Annex A.1 to the application is put forward in support of a criticism relating to an assessment by the Board of Appeal relating to the coexistence of the earlier marks on the market, which, unlike, in particular, the examination of the inherent distinctive character of the earlier mark, presupposed factual evidence that it was for the parties to provide.
24 It follows from settled case-law that, while the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could eliminate the likelihood of confusion between two marks at issue, such a possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgments of 20 January 2010, Nokia v OHIM – Medion (LIFE BLOG), T‑460/07, EU:T:2010:18, paragraph 68 and the case-law cited, and of 26 July 2023, Rada Perfumery v EUIPO – Prada (RADA PERFUMES), T‑439/22, not published, EU:T:2023:441, paragraphs 74 and 75 and the case-law cited).
25 Consequently, in so far as, first, the assessment of the coexistence between the earlier marks presupposes matters of fact that it was for the applicant to provide before the adjudicating bodies of EUIPO and, secondly, the evidence in Annex A.1 to the application is being submitted for the first time before the Court, that annex must be declared inadmissible.
The first head of claim, seeking annulment of the contested decision
26 In support of its application for annulment of the contested decision, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
27 The applicant submits, in essence, that the Board of Appeal’s conclusion that registration of the mark applied for would give rise to a likelihood of confusion on the part of the relevant public when purchasing the goods and services at issue is vitiated by manifest errors of assessment. It disputes, in that regard, the Board of Appeal’s assessments relating, first, to the relevant public, secondly, to the comparison of some of the goods and services at issue, thirdly, to the visual comparison of the signs and, fourthly, to the global assessment of the likelihood of confusion. In that context, it complains, inter alia, that the Board of Appeal failed to take into account the decisive nature of the figurative elements of the marks at issue, the dominance of the visual comparison of the signs at issue in the light of the method of marketing the goods at issue, the coexistence of the earlier marks with certain marks of which it is the proprietor, which include the element ‘sherwood’, and the variations in the degree of similarity between the goods and services at issue.
28 EUIPO disputes the applicant’s arguments.
29 Article 8(1)(b) of Regulation 2017/1001 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.
30 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs at issue 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 those 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).
31 For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited; judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45).
32 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 and services in question in that territory. However, it must be borne in mind that, 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 2017/1001 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).
33 In the present case, it is apparent from paragraph 36 of the contested decision that the Board of Appeal relied exclusively on the perception of the marks at issue by the English-speaking public of the European Union. It is therefore necessary to ascertain whether the Board of Appeal did not make an error of assessment in concluding that registration of the mark applied for would give rise to a likelihood of confusion in relation to that public.
The relevant public
34 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
35 In the present case, the Board of Appeal was correct to find, in paragraphs 30 to 34 of the contested decision, that that public consisted both of the general public and of professionals with an average to high level of attention depending on the goods and services at issue. It thus correctly pointed out that that level of attention would be average for clothing, headgear and footwear in Class 25, the goods at issue in Classes 18 and 24 and the related retail services in Class 35, but would be high for the goods at issue in Classes 9 and 28, since they were used by professionals or the general public for protective purposes. It also validly found that the level of attention would be high as regards the purchase of wholesale services in Class 35 by professional customers.
36 Lastly, as regards the other goods covered by the earlier marks, the Board of Appeal did not make an error of assessment in finding that the level of attention would vary from average to high depending on whether they were aimed at professional customers or the general public and according to the price and degree of specialisation of those goods. In that context, the Board of Appeal correctly pointed out that, where the goods and services covered by the marks at issue were aimed at the same relevant public, consisting of both the general public and professionals, the public with the lowest attention level had to be taken into consideration (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 27 to 29 and the case-law cited).
37 The merits of that assessment are not called into question by the applicant’s argument, contained in the section of the application dealing with the definition of the relevant public, by which it criticises the Board of Appeal, first, for having erred in finding that the goods covered by the marks at issue targeted the same social group, whereas those covered by the earlier marks were aimed at the public with a specific interest in hockey, which was an expensive ‘niche’ sport, whereas the range of goods and services covered by the mark applied for was much broader and intended for all levels of income, and, secondly, for failing to draw the appropriate conclusions from the existence of a high level of attention on the part of the relevant public when purchasing the goods at issue in Class 9 and the services in Class 35.
38 Such criticisms do not make it possible to call into question the merits of a definition of the relevant public consisting of both the general public and professionals, the level of attention of which may vary from average to high depending on the goods and services in question. More specifically, it is necessary to take into account the description of the goods covered by the marks at issue, whereas only some of the goods covered by the earlier marks relate explicitly to hockey (see, to that effect, judgment of 1 September 2021, FF IP v EUIPO – Seven (the DoubleF), T‑23/20, not published, EU:T:2021:523, paragraph 45). Moreover, the latter may be of interest both to the general public interested in hockey and to professional hockey players and are therefore aimed at both the general public and specialised consumers (see, to that effect, judgment of 26 March 2019, Deray v EUIPO – Charles Claire (LILI LA TIGRESSE), T‑105/18, not published, EU:T:2019:194, paragraphs 36 and 37). Furthermore, the relevant public is composed of users likely to use both the goods and services covered by the earlier marks and the product covered by the mark applied for (see, to that effect, judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38). Thus, in any event, it is not relevant to take into consideration only the public likely to purchase only the goods and services covered by one of the marks at issue.
39 Furthermore, it should be noted that the claim that the goods and services at issue are aimed at different publics is, in fact, relevant to the examination of the merits of the Board of Appeal’s assessments relating to the comparison of those goods and services, since the latter seeks to dispute the common purpose of those goods and services. Similarly, the applicant’s reference to the fact that the Board of Appeal failed to draw the appropriate conclusions from the level of attention of that public when purchasing the goods at issue in Class 9 and the services in Class 35 is relevant to the examination of the merits of the Board of Appeal’s global assessment of the likelihood of confusion.
Comparison of the goods and services at issue
40 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
41 As a preliminary point, it should be noted that, although the applicant disputes the Board of Appeal’s assessments concerning the similarity of the goods covered by the mark applied for in Classes 9, 24, 25 and 35 with certain goods or services covered by the earlier marks, it does not provide any arguments concerning the assessment, set out in paragraphs 48 to 50 of the contested decision, that the ‘shoe bags’ in Class 18 covered by the mark applied for and the ‘sports bags’ in the same class covered by earlier mark No 2 are identical. Similarly, it should be noted that the applicant refers only to some of the goods at issue in Classes 9, 24 and 25.
42 In so far as the applicant highlighted the comparison of certain goods and services for illustrative purposes only and expected the Court to extend its criticism to all the goods and services at issue, such a challenge cannot be regarded as admissible.
43 By virtue of the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court pursuant to the first paragraph of Article 53 of that statute, and of Article 177(1)(d) of the Rules of Procedure, an application must state, inter alia, the subject matter of the proceedings and a summary of the pleas in law on which the application is based. Those particulars must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any further information (see judgment of 21 April 2004, Concept v OHIM (ECA), T‑127/02, EU:T:2004:110, paragraph 17 and the case-law cited). In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 8 July 2010, Strålfors v OHIM (ID SOLUTIONS), T‑211/10, not published, EU:T:2010:301, paragraph 5).
44 It is clear from the case-law that requirements similar to those set out in paragraph 43 above apply where a claim or an argument is relied on in support of a plea in law (judgments of 9 July 2010, Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38, and of 8 November 2017, Pempe v EUIPO – Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 86).
45 With regard to the goods and services covered by the marks at issue in respect of which the applicant does not provide any specific arguments or even an explicit reference, it cannot be held that the Court is in a position to rule on the action for the purposes of the case-law cited in paragraph 43 above (see, by analogy, judgments of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (FLIS Happy Moreno choco), T‑708/18, not published, EU:T:2019:762, paragraphs 68 to 70; of 26 March 2020, Alcar Aktiebolag v EUIPO – Alcar Holding (alcar.se), T‑77/19, not published, EU:T:2020:126, paragraphs 38 to 40; and of 23 February 2022, Lackmann Fleisch- und Feinkostfabrik v EUIPO – Schuju (Хозяин), T‑184/21, not published, EU:T:2022:88, paragraphs 42 and 43).
– The goods at issue in Class 9
46 In paragraphs 45 to 47 of the contested decision, the Board of Appeal found that some of the goods covered by the mark applied for, in particular the ‘high-visibility safety clothing’ and the ‘trousers for protection against accidents, irradiation and fire’, were similar, at least to a low degree, first, to the ‘body protective articles and equipment for the practice of ice hockey’ covered by earlier mark No 1 and, secondly, to the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2. It justified that assessment by highlighting the fact that they had a similar nature, purpose and method of use, could share some further features, such as, for example, their materials, and that the relevant groups of consumers, although different, could overlap.
47 The applicant calls into question the assessment of the existence of at least a low degree of similarity between the goods referred to in paragraph 46 above. In addition to the criticism referred to in paragraphs 37 and 38 above alleging that the goods covered by the marks at issue are aimed at different publics, it submits, first, that such an assessment is vitiated by an error of assessment as regards the comparison of the ‘high-visibility safety clothing’ covered by the mark applied for with the ‘body protective articles and equipment for the practice of ice hockey’ covered by earlier mark No 1 and the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2. Secondly, as regards the comparison of the ‘trousers for protection against accidents, irradiation and fire’ covered by the mark applied for with those same goods covered by the earlier marks, the applicant complains that the Board of Appeal relied exclusively on the protective purpose of the goods at issue, which is specific to all the goods in Class 9, and infers from that that the Board of Appeal infringed Article 33(7) of Regulation 2017/1001. It adds that, although the goods that it markets are intended to protect the body, the circumstances of that protection are different enough for them not to be capable of being described as similar to the goods covered by the earlier marks.
48 EUIPO submits, in essence, that the considerations put forward by the Board of Appeal – concerning the nature, purpose, method of use and characteristics of the goods referred to in paragraph 46 above and the overlap of the groups of targeted consumers – in themselves justify the existence of at least a low degree of similarity.
49 It is necessary, in the first place, to examine the challenge to the merits of the comparison of the ‘trousers for protection against accidents, irradiation and fire’ covered by the mark applied for with, on the one hand, the ‘protective articles and equipment for practising ice hockey’ covered by earlier mark No 1 and, on the other, the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2.
50 It must be held that the complaint alleging infringement of Article 33(7) of Regulation 2017/1001 is based on a misreading of paragraph 46 of the contested decision. It is apparent from that decision that the Board of Appeal’s analysis did not focus exclusively on the fact that the goods that it found to be similar had a protective purpose in common, which would have been contrary to the first sentence of Article 33(7) of that regulation, according to which ‘goods and services shall not be regarded as similar to each other on the ground that they appear in the same class of the Nice Classification’. More generally, the Board of Appeal highlighted the fact that they had ‘a similar nature, purpose and method of use and [could] also share some further features, such as, for example, their materials’.
51 The fact remains that the finding of similarity between the goods referred to in paragraph 49 above is vitiated by an error of assessment.
52 The ‘body protective articles and equipment for the practice of ice hockey’ and the ‘protective sports clothing designed to protect against sporting injuries’ covered, respectively, by earlier marks Nos 1 and 2 are specifically aimed at a public concerned with protecting themselves in the context of practising a sporting activity.
53 By contrast, the very heading of the ‘trousers for protection against accidents, irradiation and fire’ covered by the mark applied for clearly shows that those goods are intended to provide protection against the risks of accidents that may arise in a professional or industrial context or during works requiring appropriate safety equipment.
54 Therefore, although those goods have a certain proximity in their nature, in that they fall within the broad meaning of the category of clothing, and in their intended purpose, in that they have a protective purpose, it must be borne in mind that that purpose falls within radically different contexts, namely, on the one hand, the conduct of a sporting activity and, on the other, the carrying out of works, which are unlikely to overlap. That different method of use also implies that they are marketed through different distribution channels. In those circumstances, it cannot be held that the publics targeted by those goods overlap, contrary to what the Board of Appeal found in paragraph 47 of the contested decision.
55 Furthermore, it should be borne in mind that, according to the case-law, goods intended for different publics cannot be regarded as substitutable or, consequently, as being in competition with each other (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 56).
56 It follows from the foregoing that the Board of Appeal should have found that the ‘trousers for protection against accidents, irradiation and fire’ covered by the mark applied for were different from the ‘body protective articles and equipment for the practice of ice hockey’ covered by earlier mark No 1 and the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2.
57 As noted in paragraph 31 above, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services that they cover are identical or similar. Those conditions are cumulative.
58 Since one of those conditions is not satisfied, the Board of Appeal therefore incorrectly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in the event of registration of the mark applied for in respect of ‘trousers for protection against accidents, irradiation and fire’ in Class 9.
59 In the second place, as regards the comparison of the ‘high-visibility safety clothing’ covered by the mark applied for with the ‘body protective articles and equipment for the practice of ice hockey’ covered by earlier mark No 1 and the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2, it is necessary to take into account the fact that the main purpose of ‘high-visibility safety clothing’ is to achieve greater visibility in order to prevent accidents or injuries, which is likely to make them relevant also for the target public of the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2. Consequently, it cannot be ruled out that certain goods falling within that specification concern a public that overlaps with that of the goods covered by that mark and use the same distribution channels as those goods.
60 It should therefore be noted that, although those goods are different from the ‘body protective articles and equipment for the practice of ice hockey’ covered by earlier mark No 1, in so far as they are aimed at very different publics, there is nevertheless a low degree of similarity with the ‘protective sports clothing designed to protect against sporting injuries’ covered by earlier mark No 2.
– The goods at issue in Class 24
61 In paragraphs 51 to 54 of the contested decision, the Board of Appeal found that there was ‘an at least low degree of similarity’ between the ‘bath linen, except clothing’ in Class 24 covered by the mark applied for and the ‘athletic clothing’ in Class 25 covered by earlier mark No 3. It relied on the fact that the goods covered by the mark applied for included towels, which were frequently used together with ‘athletic clothing’ during sports practice, were sold via the same distribution channels and were aimed at the same public.
62 The applicant submits that the Board of Appeal’s analysis has the effect of granting protection to earlier mark No 3 in respect of goods for which that mark has not been registered, contrary to what is provided for in Article 33(5) of Regulation 2017/1001.
63 EUIPO contends that the Board of Appeal was right to place towels in the category of bath linen, except clothing, of the mark applied for, then to compare them with athletic clothing and to find that there was an at least low degree of similarity.
64 As regards the applicant’s reference to Article 33(5) of Regulation 2017/1001, it should be noted that that provision states that the use of ‘general terms, including the general indications’ of the class headings of the Nice Classification is to be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term used. The use of such terms or indications is not to be interpreted as comprising a claim to goods or services which cannot be so understood.
65 Contrary to what the applicant appears to claim, the Board of Appeal’s reasoning does not have the effect of extending the registration of earlier mark No 3 to ‘bath linen, except clothing’. In finding that there was ‘an at least low degree of similarity’ between the goods at issue, the Board of Appeal merely found that one of the cumulative conditions of Article 8(1)(b) of Regulation 2017/1001 referred to in paragraph 31 above was satisfied.
66 In addition, it should be noted that the applicant does not call into question the findings in paragraphs 52 and 53 of the contested decision, according to which, first, ‘sports clothing manufacturers frequently produce and commercialise sports towels to wipe off the sweat during sports practice and also bath towels to dry the body after showering’ and, secondly, that the goods at issue are ‘therefore frequently used together during the sports practice, are sold throughout the same distribution channels and are aimed at the same public’.
67 In so far as those findings make it possible to justify the existence of a low degree of similarity between the goods at issue, it must be held that the ‘bath linen, except clothing’, which includes towels, covered by the mark applied for is similar to a low degree to the ‘athletic clothing’ covered by earlier mark No 3.
– The goods at issue in Class 25
68 In paragraphs 57 to 83 of the contested decision, the Board of Appeal found that the goods at issue in Class 25 were either identical, similar to an average degree, bearing at least a low degree of similarity, or bearing a low degree of similarity.
69 More specifically, the Board of Appeal found, first, in paragraphs 60 and 61 of the contested decision, that some of the goods covered by the mark applied for were identical to the ‘athletic clothing’ and ‘casual clothing’ covered by earlier mark No 3, on the ground that they fell within the broader categories covered by that mark. It reached that conclusion with regard, inter alia, to ‘paper hats [clothing]’, ‘garments for protecting clothing’, ‘maternity dresses’, ‘maternity smocks’, ‘baby bibs [not of paper]’, ‘swim wear for children’, ‘bathing costumes for women’, ‘swim wear for gentlemen and ladies’ and ‘bathing suits for men’.
70 Secondly, in paragraphs 62 and 63 of the contested decision, the Board of Appeal found that some of the goods at issue, although not identical, coincided in their commercial origin and their general purpose, namely to cover the human body, were marketed via the same distribution channels and were aimed at the same public. That led it, inter alia, to find that the ‘baby doll pyjamas’ covered by the mark applied for had an average degree of similarity with the ‘athletic clothing’ and ‘casual clothing’ covered by earlier mark No 3.
71 Thirdly, the Board of Appeal found, in paragraph 65 of the contested decision, that some of the goods at issue had not only the same nature, purpose and method of use, but were also aimed at the same public and could also be combined. That led it to consider that there was at least an average degree of similarity between the ‘veils [clothing]’, ‘suits’, ‘women’s suits’, ‘men’s suits’, ‘women’s ceremonial dresses’ covered by the mark applied for and the ‘athletic clothing’ and ‘casual clothing’ covered by earlier mark No 3.
72 Fourthly, the Board of Appeal found, in paragraph 69 of the contested decision, inter alia, that the ‘plastic baby bibs’ covered by the mark applied for had at least a low degree of similarity with the ‘casual clothing’ and ‘athletic clothing’ covered by earlier mark No 3.
73 The applicant essentially raises two complaints in relation to that analysis. First, it puts forward the fact that the factor of similarity taken into account by the Board of Appeal and based on the fact that the goods at issue are used to cover the body is specific to all of the goods in Class 25, so the Board of Appeal relied on all of those goods belonging to the same class, in breach of Article 33(7) of Regulation 2017/1001. Secondly, it submits, in essence, that the Board of Appeal made an error of assessment in including among ‘athletic clothing’ and ‘casual clothing’ goods such as ‘paper hats’, ‘veils’, ‘garments for protecting clothing’, ‘suits’, ‘women’s suits’, ‘men’s suits’, ‘maternity dresses’, ‘maternity smocks’, ‘women’s ceremonial dresses’, ‘baby bibs [not of paper]’, ‘plastic baby bibs’, ‘swim wear for children’, ‘baby doll pyjamas’, ‘bathing costumes for women’, ‘swim wear for gentlemen and ladies’ and ‘bathing suits for men’.
74 EUIPO states, in essence, that the Board of Appeal examined all the relevant factors.
75 As regards the applicant’s first complaint, it must be held that it is based on a misreading of the contested decision. Although, in paragraph 63 of the contested decision, the Board of Appeal referred to the fact that some of the goods at issue had the ‘same general purpose to cover the human body’, it was not the only factor that it took into account for the purposes of noting that those goods were similar to an average degree, since the Board of Appeal also noted that they were marketed through the same distribution channels and were aimed at the same public.
76 As regards the second complaint, alleging, in essence, errors of assessment when comparing certain goods covered by the mark applied for with the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3, a distinction must be drawn according to the 16 goods in respect of which the applicant considers that the Board of Appeal’s finding is incorrect.
77 In the first place, as regards the goods referred to in paragraph 69 above, it should be noted, first, that the ground highlighted by the Board of Appeal is free from error of law, since it follows from settled case-law that goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
78 Secondly, it should be noted that that ground is, moreover, devoid of any error of assessment as regards ‘swim wear for children’, ‘bathing costumes for women’, ‘swim wear for gentlemen and ladies’ and ‘bathing suits for men’ covered by the trade mark applied for, since they actually fall within the broader category of ‘athletic clothing’ covered by earlier mark No 3, as the Board of Appeal held in paragraph 61 of the contested decision.
79 Thirdly, that finding of identity with the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3 cannot, by contrast, be extended to the ‘paper hats [clothing]’, the ‘garments for protecting clothing’, the ‘maternity dresses’, the ‘maternity smocks’ or even the ‘baby bibs [not of paper]’ covered by the mark applied for.
80 The goods covered by earlier mark No 3, although belonging to the general category of clothing, are distinguished by their specific use, whether it be the practice of a sporting activity or the pursuit of casual dress.
81 First, some of the goods covered by the mark applied for, although intended to cover the body, serve a clearly different method of use from that of the goods covered by the earlier mark. Thus, ‘garments for protecting clothing’ have a utilitarian or protective purpose, whereas ‘maternity dresses’ or ‘maternity smocks’ are designed to accompany maternity-related morphological changes.
82 Secondly, as regards ‘paper hats [clothing]’ and ‘baby bibs [not of paper]’, they also have a very different method of use from that of the goods covered by the earlier mark, namely short-lived use or use linked to requirements of hygiene and protection against soiling.
83 It must therefore be held that the Board of Appeal erred in finding, with regard to those goods, that they were identical to some of the goods covered by earlier mark No 3.
84 By contrast, first, in the light of the relevant factors set out in paragraph 40 above and in view of the fact that the ‘maternity dresses’ and ‘maternity smocks’ covered by the mark applied for and the ‘casual clothing’ covered by earlier mark No 3 have the same nature and purpose and that they are likely to be marketed through the same distribution channels, it must be concluded that there is an average degree of similarity between those goods.
85 Secondly, in view of the purpose of the ‘garments for protecting clothing’ covered by the mark applied for, which is clearly different from that of the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3, those goods must be regarded as different for reasons similar to those set out in paragraph 54 above.
86 Thirdly, it must be held that the ‘paper hats [clothing]’ and the ‘baby bibs [not of paper]’ are different from the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3. Apart from the differences relating to their use, it cannot be considered with regard to those goods that they are marketed through the same distribution channels, are aimed at the same public or are complementary within the meaning of the case-law cited in paragraph 40 above.
87 In the light of the foregoing, and for the reasons set out in paragraphs 31 and 57 above, the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in the event of registration of the mark applied for in respect of ‘garments for protecting clothing’, ‘paper hats [clothing]’ and ‘baby bibs [not of paper]’.
88 In the second place, as regards the ‘baby doll pyjamas’ covered by the mark applied for, it should be noted that they belong to the category of nightwear, and not to that of dolls’ clothing, as the applicant submits. Thus, although they fall within the category of lingerie, they share certain similarities with the ‘casual clothing’ covered by earlier mark No 3, in particular in that they are intended to be worn in a private context and offer a certain level of comfort. Furthermore, the Board of Appeal was entitled to find, in paragraph 63 of the contested decision, that they were marketed through the same distribution channels as casual clothing. The Board of Appeal was therefore right to find that there was an average degree of similarity between those goods.
89 In the third place, as regards the ‘veils [clothing]’, the ‘suits’, the ‘women’s suits’, the ‘men’s suits’, and the ‘women’s ceremonial dresses’ covered by the mark applied for, as the Board of Appeal noted, in essence, first, those goods share a common purpose linked to clothing, in particular with the ‘casual clothing’ covered by earlier mark No 3, and they may be aimed at the same public and be distributed through similar distribution channels. Secondly, although they are not intended to be worn on the same occasions, it cannot be ruled out that they are worn in a complementary manner or combined within the same wardrobe. Thirdly and lastly, since a large number of fashion companies market articles of different styles under the same mark, it cannot be ruled out that the relevant public will perceive the goods at issue as originating from the same undertaking (see, to that effect, judgment of 16 November 2011, Chabou v OHIM – Chalou (CHABOU), T‑323/10, not published, EU:T:2011:678, paragraph 34). In those circumstances, it should be noted that those goods have an average degree of similarity, in particular with the ‘casual clothing’ covered by earlier mark No 3.
90 In the fourth place, as regards the ‘plastic baby bibs’ referred to in paragraph 72 above and for reasons similar to those already set out in paragraphs 82 and 86 above, it should be noted that the Board of Appeal erred in finding that there was even a low degree of similarity with the ‘casual clothing’ and the ‘athletic clothing’ covered by earlier mark No 3.
– The services in Class 35
91 The Board of Appeal found, in the first place, in paragraphs 77 to 80 of the contested decision, that the ‘retail services connected with the sale of clothing’, the ‘online retail store services relating to clothing’, the ‘retail services in relation to clothing’, the ‘wholesale services in relation to clothing’, the ‘mail order retail services for clothing’, the ‘retail store services in the field of clothing’, and the ‘online retail services relating to clothing’ covered by the mark applied for were similar to an average degree to the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3. It based that conclusion on the fact that the services at issue related to goods identical to those covered by that mark and that they were, therefore, complementary.
92 In the second place, the Board of Appeal found, in paragraphs 81 to 83 of the contested decision, that ‘retail services connected with the sale of clothing accessories; mail order retail services connected with clothing accessories; retail services in relation to clothing accessories’ related to goods that were only similar to the ‘athletic clothing’ and the ‘casual clothing’ covered by earlier mark No 3. It inferred from that that there was only a low degree of similarity between those services and the goods covered by that mark.
93 The applicant submits, in essence, that the Board of Appeal’s analysis does not take account of the fact that the goods covered by the earlier marks are not marketed in the same specialised shops or in the same departments of supermarkets as those covered by the services covered by the mark applied for.
94 EUIPO states, inter alia, that the applicant’s arguments are based on the incorrect premiss that account should be taken of the goods actually marketed rather than those protected by the marks at issue.
95 In the first place, as regards the services referred to in paragraph 91 above, first, the Board of Appeal was correct to find that they were retail and wholesale services relating to goods that had to be regarded as identical to those covered by earlier mark No 3, in accordance with the case-law cited in paragraph 77 above.
96 Secondly, it has previously been held that, although wholesaling, retailing and mail-order sales of goods identical to those covered by the earlier mark differ in their nature, intended purpose and method of use of those goods, they are nevertheless complementary, implying that they have a certain degree of similarity (see, to that effect, judgment of 20 March 2018, Grupo Osborne v EUIPO – Ostermann (DONTORO dog friendship), T‑390/16, not published, EU:T:2018:156, paragraphs 32 and 33 and the case-law cited).
97 Consequently, the Board of Appeal correctly found, in paragraph 80 of the contested decision, that there was an average degree of similarity between those services and the goods covered by earlier mark No 3.
98 As regards, in the second place, the services referred to in paragraph 92 above, first, the Board of Appeal correctly found that they were retail services relating to goods that had to be regarded as similar to those covered by earlier mark No 3.
99 Secondly, it has previously been noted that similarity could be found between retail services of certain goods and goods which are not strictly identical to the goods subject to retail (see judgment of 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (Sadia), T‑309/19, not published, EU:T:2020:565, paragraph 141 and the case-law cited), for reasons similar to those set out in paragraph 96 above.
100 Consequently, the Board of Appeal did not overestimate the degree of similarity between those services and the goods covered by earlier mark No 3.
101 In the third place, it should be noted that the validity of that conclusion is not called into question by the applicant’s assertion, in essence, that the goods that it markets are not sold in the same specialist shops, or in the same departments of department stores or supermarkets as those marketed by the proprietor of the earlier marks. It is apparent from the case-law that, in order to assess the similarity of the goods in question, it is necessary to take into account the group of goods protected by the marks at issue and not the goods actually marketed under those marks (see, to that effect, judgment of 31 January 2024, Feed v EUIPO – The Feed.com (Feed.), T‑26/23, not published, EU:T:2024:48, paragraph 40 and the case-law cited).
The comparison of the signs at issue
102 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 given 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 in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not 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).
103 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
104 The Board of Appeal found, in paragraphs 109 to 116 of the contested decision, that the mark applied for had (i) an ‘above-average’ degree of visual similarity with earlier mark No 1 and an average degree of visual similarity with earlier marks Nos 2 and 3, (ii) an ‘above-average’ degree of phonetic similarity with earlier marks Nos 1 and 3 and an average degree of phonetic similarity with earlier mark No 2 and (iii) at least an ‘above-average’ degree of conceptual similarity with the earlier marks.
105 The applicant does not dispute the Board of Appeal’s assessments relating to the phonetic and conceptual comparison of the signs at issue, which, moreover, do not appear to be vitiated by errors of assessment. It submits, by contrast, that ‘the visual similarity of the marks … is very low’.
106 EUIPO disputes the applicant’s argument.
107 In order to review the merits of the Board of Appeal’s assessment of the visual similarity of the signs at issue, it is necessary, in the first place, to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
108 First, the Board of Appeal correctly found, in paragraphs 94 and 96 of the contested decision, that the word element ‘sherwood’ or ‘sher-wood’, which appears in all the signs at issue, was distinctive for the English-speaking public, in so far as it would be understood as a reference to the universe of ‘Robin Hood’, which had no connection with the goods and services at issue, and that the presence of a hyphen in earlier marks Nos 1 and 2 had no bearing on that conclusion.
109 Secondly, as regards the mark applied for, the Board of Appeal correctly found, in essence, in paragraphs 94, 101 and 102 of the contested decision, that the word element ‘sherwood’ was its most distinctive element, since, first, the expression ‘wear with pride’ would be perceived by the English-speaking public as a mere slogan referring to characteristics of the goods and services at issue, with the result that it had a weak distinctive character and, secondly, the line separating those two elements was akin to a decorative element devoid of distinctive character. Furthermore, it correctly found, in essence, in paragraph 105 of the contested decision, that the element ‘sherwood’ dominated the overall impression of the mark applied for, in view of both the difference in size and in the typeface from the element ‘wear with pride’.
110 As regards earlier mark No 2, the Board of Appeal also correctly found, in paragraphs 94 and 95 of the contested decision, that the two elements of which it consists, namely ‘sher-wood’ and ‘sl’, were also distinctive, since the latter has no meaning for the English-speaking public.
111 As regards earlier mark No 3, for reasons similar to those set out in paragraph 99 of the contested decision, it must be held that the figurative element representing a letter ‘s’ has a less distinctive character than the element ‘sher-wood’, since it could, inter alia, be perceived as a reference to its first letter. Furthermore, it should be added that neither of those two elements dominates the overall impression of earlier mark No 3.
112 In the second place and consequently, in so far as the signs at issue all have in common the element ‘sherwood’ or ‘sher-wood’, which makes up earlier mark No 1, one of the two distinctive elements of earlier mark No 2, the most distinctive element of earlier mark No 3 and the most distinctive and dominant element of the mark applied for, it must be held that the Board of Appeal correctly found, in essence, that the mark applied for had a high degree of visual similarity with earlier mark No 1 and an average degree of visual similarity with earlier marks Nos 2 and 3. The applicant’s claim that the Board of Appeal overestimated the degree of visual similarity between the signs at issue by not finding that there was a ‘very low’ degree of visual similarity must therefore be rejected.
The likelihood of confusion
113 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 marks at issue and that of the goods or services covered by those marks. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
114 In addition, according to settled case-law, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is then appropriate to examine the objective conditions under which the marks at issue may be present on the market. Thus, if the goods covered by a given mark are only sold on oral request, the phonetic aspects of the sign in question are bound to have greater significance for the relevant public than its visual aspects. On the contrary, the degree of phonetic similarity between two marks is of limited significance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (see judgment of 29 January 2014, Goldsteig Käsereien Bayerwald v OHIM – Vieweg (goldstück), T‑47/13, not published, EU:T:2014:37, paragraph 41 and the case-law cited).
115 In paragraphs 120 to 128 of the contested decision, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public when purchasing goods and services that it regarded as identical or similar, despite the higher level of attention of the relevant public when purchasing some of the goods and services at issue. It also rejected the applicant’s argument that the marks at issue peacefully coexisted.
116 The applicant submits that the visual aspect plays a very important role in the global assessment of the likelihood of confusion and that the visual similarity of the marks at issue is very low. It adds that the marks at issue have coexisted for many years, since consumers are accustomed to perceiving them without confusing them, and that the mark SHERWOOD is common and devoid of distinctive character. The applicant also submits that the Board of Appeal did not draw the appropriate conclusions from the high level of attention of the relevant public (see paragraphs 37 and 38 above).
117 In the first place, in so far as the applicant submits that the ‘SHERWOOD mark is … common and indistinguishable’, it must be regarded as disputing the Board of Appeal’s assessment, in paragraph 119 of the contested decision, that the earlier marks had a ‘normal’ distinctive character, that is to say, an average degree of inherent distinctiveness (see, to that effect, judgment of 8 March 2023, Société des produits Nestlé v EUIPO – The a2 Milk Company (A 2), T‑759/21, not published, EU:T:2023:108, paragraph 45).
118 First, it should be noted that the applicant is entitled to challenge the Board of Appeal’s assessment relating to the inherent distinctive character of the earlier marks, even though it did not put forward any argument to that effect during the proceedings before EUIPO. The assessment of the inherent distinctive character of the earlier mark constitutes an issue of law which is necessary to ensure the correct application of that regulation, so that the adjudicating bodies of EUIPO are required to examine that issue, if necessary of their own motion (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 43).
119 However, secondly, it should be noted that the Board of Appeal’s assessment, set out in paragraph 94 of the contested decision and referred to in paragraph 108 above, relating to the distinctive character of the term ‘sher-wood’ for the English-speaking public, is sufficient to justify the validity of the finding in paragraph 119 of that decision that the earlier marks have a normal degree of inherent distinctiveness.
120 In the second place, as regards the applicant’s claim that the marks at issue coexisted on the market, it should be noted that the Board of Appeal correctly rejected, in paragraph 125 of the contested decision, the argument to that effect put forward before it by the applicant. In that regard, suffice it to point out that the marks to which the applicant referred before the Board of Appeal and that it invokes again before the Court are not identical to those at issue in the present case, with the result that one of the conditions set out in the case-law referred to in paragraph 24 above is not satisfied.
121 In the third place, as regards the goods and services in respect of which the level of attention of the relevant public is high and the goods and services at issue between which there is a low degree of similarity, it must be pointed out that the Board of Appeal correctly found that registration of the mark applied for in respect of the ‘high-visibility safety clothing’ in Class 9 and the wholesale services in Class 35 could give rise to a likelihood of confusion with earlier marks Nos 2 and 3 for the relevant public, despite its high level of attention.
122 Even though the visual similarity of the signs between the mark applied for and earlier marks Nos 2 and 3 is lower than that with earlier mark No 1, on account of the presence of the distinctive word element ‘sl’ or the graphic element representing an ‘s’, the fact remains that the signs at issue coincide in the element ‘sher-wood’ or ‘sherwood’, which dominates the overall impression of the mark applied for. That similarity also exists at the phonetic and conceptual levels.
123 It must be stated that, in the circumstances of the present case, that average to high degree of similarity between the signs at issue is such as to offset the lowest degree of similarity between the goods and services at issue, even if it were to be held that the visual comparison is predominant in accordance with the case-law cited in paragraph 114 above.
124 That conclusion is not invalidated by the applicant’s argument that the Board of Appeal did not draw the appropriate conclusions from the high level of attention of the relevant public (see paragraphs 37 and 38 above).
125 As the Board of Appeal stated, in essence, in paragraph 123 of the contested decision, it is apparent from settled case-law that, even for a relevant public displaying a high level of attention, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 21 November 2013, Equinix (Germany) v OHIM – Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54). It follows from that case-law that there are no cases in which, because of the level of attention displayed by the relevant public, any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and, therefore, any possibility of applying that provision may, a priori, be ruled out (judgment of 21 June 2023, International British Education XXI v EUIPO – Saint George’s School (IBE ST. GEORGE’S), T‑438/22, not published, EU:T:2023:349, paragraph 72).
126 The fact remains that the level of attention of the relevant public is one of the relevant factors that cannot, in all circumstances, be disregarded on the sole ground that the public must place its trust in ‘an imperfect recollection’ of the marks at issue. In certain circumstances, a high level of attention on the part of the relevant public may lead to the conclusion that it will not confuse the marks at issue despite the lack of direct comparison between the different marks (see, to that effect, judgment of 22 March 2011, Ford Motor v OHIM – Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 95).
127 However, in the present case, it should be noted that the importance of the factor of similarity relating to the presence in the signs at issue of the element ‘sherwood’ or ‘sher-wood’ means that the Board of Appeal correctly found that there was a likelihood of confusion, even with regard to a public with a high level of attention.
128 In the fourth place, it should be noted that that finding of the existence of a likelihood of confusion applies all the more with regard to the registration of the mark applied for in respect of the other goods and services at issue, in respect of which the Board of Appeal validly found that there was a similarity with the goods covered by the earlier marks and in respect of which the relevant public has an average degree of attention.
129 In the light of the foregoing, the application for annulment of the contested decision must be upheld only in so far as the Board of Appeal found that there was a likelihood of confusion in the event that the mark were registered for the ‘trousers for protection against accidents, irradiation and fire’ in Class 9 and for the ‘garments for protecting clothing’, the ‘paper hats [clothing]’, the ‘baby bibs [not of paper]’ and the ‘plastic baby bibs’ in Class 25, in view of the lack of similarity between those goods and those covered by the earlier marks, as found in paragraphs 56, 87 and 90 above.
The second head of claim, seeking, in essence, alteration of the contested decision
130 With regard to the applicant’s request that the Court reject the opposition in its entirety, it should be noted that, by that head of claim, the applicant asks the Court, in essence, to adopt the decision which, according to the applicant, EUIPO should have taken. Consequently, the applicant asks the Court to exercise its power to alter decisions, as provided for in Article 72(3) of Regulation 2017/1001 (see, to that effect, judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 84).
131 In that regard, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. It must be exercised in situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
132 The Court considers that the conditions for the exercise of its power to alter decisions are satisfied, with the result that it is in a position to reject the opposition to registration of the mark applied for in respect of the goods referred to in paragraph 129 above.
133 In principle, the fact that the Board of Appeal relied exclusively on the perception of part of the relevant public – in the present case, the English-speaking public – in order to find that there was a likelihood of confusion should exclude the possibility of altering the contested decision, on the ground that it cannot be ruled out that there may be a likelihood of confusion for another part of the relevant public. In the absence of an examination by the Board of Appeal of the existence of a likelihood of confusion for the whole of the relevant public, the Court cannot be regarded as being in a position to determine, on the basis of the matters of fact and of law as established, the decision that the Board of Appeal was required to take within the meaning of the case-law cited in paragraph 131 above.
134 However, in the present case, it has been found that the condition of similarity of the goods set out in Article 8(1)(b) of Regulation 2017/1001 was not satisfied as regards the goods referred to in paragraph 129 above. Since such a finding is such as to rule out the existence of a likelihood of confusion for the whole of the relevant public, whether English-speaking or not, the Court is in a position to alter the contested decision.
Costs
135 Under Article 134(1) and (3) 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. Nevertheless, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
136 In the present case, since both the applicant and EUIPO have been unsuccessful in part, each of those parties must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 June 2024 (Case R 2004/2023‑4) in so far as it dismissed the appeal against the Cancellation Division’s decision of 25 July 2023 relating to the EU figurative mark JSherWood wear it with pride as regards the goods in Classes 9 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, corresponding, for each of those classes, to the following description:
– Class 9: ‘Trousers for protection against accidents, irradiation and fire’;
– Class 25: ‘Garments for protecting clothing’, ‘paper hats [clothing]’, ‘baby bibs [not of paper]’ and ‘plastic baby bibs’;
2. Dismisses the opposition to registration of the figurative mark JSherWood wear it with pride as an EU trade mark as regards the goods mentioned in point 1 above;
3. Dismisses the action as to the remainder;
4. Orders JSherwood sp. z o.o. and EUIPO each to bear their own costs.
Škvařilová-Pelzl | Nõmm | Meyer |
Delivered in open court in Luxembourg on 10 September 2025.
V. Di Bucci | | R. Mastroianni |