Language of document : ECLI:EU:T:2018:45

JUDGMENT OF THE GENERAL COURT (First Chamber)

30 January 2018 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark HISPANITAS JOY IS A CHOICE — Earlier EU word mark JOY — Genuine use of the earlier mark — Relative ground for refusal — Likelihood of confusion — 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‑808/16,

Jean Patou Worldwide Ltd, established in Watford (United Kingdom), represented by S. Baran, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, A. Folliard-Monguiral and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Emboga, SA, established in Petrel (Spain),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 23 June 2016 (Case R 235/2016-1), relating to opposition proceedings between Jean Patou Worldwide and Emboga,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová (Rapporteur), President, V. Valančius and U. Öberg, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 14 November 2016,

having regard to the response lodged at the Court Registry on 31 March 2017,

further to the hearing on 5 October 2017,

gives the following

Judgment

 Background to the dispute

1        On 14 April 2014, Emboga, SA 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) (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 following figurative sign:

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3        The goods in respect of which registration was sought are in Classes 3, 14, 16, 18 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; Perfumes, essential oils, cosmetics, hair lotions’;

–        Class 14: ‘Precious metals and their alloys; Jewellery, costume jewellery, precious stones; Clocks, watches and chronometric instruments’;

–        Class 16: ‘Printed matter; Bookbinding material; Photographs; Stationery’;

–        Class 18: ‘Goods of leather and imitations of leather, namely handbags, notecases, purses, shoulder bags, cords, boxes, backpacks, key rings and card cases; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols, canes and walking sticks; Whips and saddlery’;

–        Class 25: ‘Clothing, headgear, footwear’.

4        On 29 August 2014, the applicant, Jean Patou Worldwide Ltd, filed an opposition against the registration of the mark applied for in respect of just ‘perfumes’ in Class 3.

5        The opposition was based on the EU word mark JOY, filed on 17 June 1997 and registered on 16 February 1999 under number 10 596 047, covering goods in Class 3 corresponding to the following description:

‘Perfumery; perfumery and beauty products, hair products, make-up, dentifrice, soap, perfume, essential and cosmetic oils, eau de toilette, eau de Cologne, non-medicinal preparations and lotions for skin care, hair care products and lotions, cosmetics; talcum powder for toilet use; non-medicinal preparations in the form of sun-tanning creams and lotions, preparations for relief of sunburn; make-up powder; deodorants for personal use; cosmetic preparations for slimming purposes; cosmetic baths preparations, bath salts; beauty masks, skin whitening creams; cosmetic preparations for eyelashes; cosmetic kits; cosmetic creams; make-up removing preparations; oils for cosmetic purposes; oils for toilet purposes; cleansing milk for toilet purposes; nail varnish; lipsticks; cosmetic lotions, make-up preparations, mascara, nail care preparations; deodorant soap; bars of toilet soap; bath salts, not for medical purposes; shampoos; antiperspirants.’

6        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

7        In addition, the applicant provided numerous documents for the purpose of demonstrating enhanced distinctive character, acquired through use, of the earlier mark.

8        On 16 December 2015, the Opposition Division upheld the opposition and rejected the application for registration for all the goods against which the opposition was directed, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

9        On 3 February 2016, Emboga, SA filed an appeal with EUIPO against the Opposition Division’s decision, claiming that it should be entirely set aside.

10      On 5 May 2016, the applicant submitted its observations in response, in which it contended that the appeal should be dismissed.

11      By decision of 23 June 2016 (‘the contested decision’), the First Board of Appeal of EUIPO found the appeal to be admissible and well founded, in so far as there was, in the present case, no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. As a result, it annulled the Opposition Division’s decision and dismissed the opposition brought by the applicant.

12      In examining the likelihood of confusion, the Board of Appeal found, first, that the relevant territory was the European Union and that the relevant public was the general public. It also confirmed the Opposition Division’s finding that, in respect of everyday goods and luxury goods, the relevant public’s level of attention would vary from average to high.

13      Next, regarding the comparison of the goods, the Board of Appeal confirmed the finding of the Opposition Division, which was not disputed by the parties, that the goods covered by the opposition — namely ‘perfumes’ in Class 3 — were included in the broader category of ‘perfumery’ in the same class, for which the earlier mark had, inter alia, been registered and, therefore, that the goods in question were identical.

14      With regard to the comparison of the trade marks at issue, the Board of Appeal found that, although the element ‘joy’ was present in both marks, there were a number of visual and phonetic features which precluded the signs from being perceived as similar. In particular, in the mark applied for: i) the word element ‘hispanitas’ was the dominant element; ii) the word element ‘joy’ formed only part of a word element that, itself, was of secondary importance; and, iii) the word element ‘joy’ merged with the larger word element ‘joy is a choice’, which was perceived as a laudatory slogan or at least as an English expression forming a whole, thus removing its specific, independent identity.

15      Lastly, the Board of Appeal found that, despite the identity of the goods in question, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 given the lack of any similarity between the signs at issue. That conclusion would not alter even if it were accepted that the signs were not different but were similar to a very low degree on account of the presence of the common element ‘joy’ and assuming that the earlier mark had enhanced distinctiveness, acquired through use, because the signs at issue leave a significantly different overall impression in the minds of the relevant public.

 Forms of order sought

16      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and Emboga to pay all the costs before the Opposition Division and the Board of Appeal as well as in the present proceedings.

17      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

18      When asked at the hearing about the plea of inadmissibility raised by EUIPO in its response, the applicant stated that it was withdrawing its second head of claim in so far as it related to the proceedings before the Opposition Division, and the Court took formal note of that in the minutes of the hearing.

 Law

19      In support of the present action, the applicant puts forward, in essence, a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

20      In that regard, it is important to bear in mind that 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.

21      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 in question (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

22      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

23      In the present case, the single plea raised by the applicant in support of its claim for annulment consists of three parts. The first part alleges an error in law regarding the degree of similarity required in order for a global assessment of the likelihood of confusion to be necessary. The second part alleges an incorrect assessment of the relevant public’s perception of the mark applied for. The third part alleges a failure to take into account adequately the enhanced distinctive character, acquired through use, of the earlier mark during the assessment of the likelihood of confusion. According to the applicant, those errors led the Board of Appeal to reach the wrong conclusion, in the contested decision, as to the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, thus justifying the annulment of the decision for infringement of that provision.

24      It is appropriate to begin by examining the second part, which relates to the perception and comparison of the marks at issue, and then to examine the first and third parts, which relate to the global assessment of the likelihood of confusion.

 The second part

25      In the second part of its plea, the applicant claims that the Board of Appeal made an error of assessment in the contested decision by refusing to consider that the relevant public would perceive the mark applied for as being a combination of the ‘house mark’ HISPANITAS and a ‘product’ mark JOY IS A CHOICE, as is normal in the fashion industry and, particularly, in the perfume industry in order to distinguish between product lines whilst still linking them to the same manufacturer. In support of the existence of such a use, the applicant relies on paragraph 51 of the judgment of 6 October 2004, New Look Ltd v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) (T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293), as well as evidence concerning the way it and the other party to the proceedings before EUIPO use their marks. In the absence of the error of assessment thus noted, the Board of Appeal would have had to compare the earlier mark with the ‘product mark’ JOY IS A CHOICE (associated with the ‘house mark’ HISPANITAS), in which the element ‘joy’ is dominant since it is the first word in a rather long sign (judgment of 13 February 2008, Sanofi-Aventis v OHIM-GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 49), or could, at least, retain an independent distinctive character (judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 30).

26      EUIPO disputes the applicant’s arguments and submits that the second part of the plea should be rejected.

27      As a preliminary point it must be noted that the applicant does not contest, in the present case, the Board of Appeal’s definition of the relevant territory, stated in paragraph 18 of the contested decision as being the European Union. The applicant also does not dispute the Board of Appeal’s definition of the relevant public and its level of attention, stated in paragraph 17 of the contested decision as being the public at large with a level of attention that will vary from average to high, given that the goods at issue may be ordinary goods or luxury goods.

28      The Board of Appeal’s definition of the relevant territory as well as the relevant public and its level of attention are, in the present case, well founded and may be upheld by the Court.

29      Furthermore, and in so far as the applicant criticises the Board of Appeal, in essence, for having, in the contested decision, compared the marks at issue by considering each of them in its entirety, it is important to note that, according to settled case-law, when considering the likelihood of confusion, 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 35).

30      It is true that the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). However, 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 35).

31      In the present case, the mark applied for — presented at registration as a single sign — cannot be split into two separate marks to be compared, each separately, to the earlier mark. Furthermore, in the mark applied for no element was or may be considered negligible and may therefore be omitted in the comparison of the marks at issue.

32      The applicant’s argument that the earlier mark should essentially be compared to the element ‘joy is a choice’ of the mark applied for, inasmuch as the relevant public would perceive the marks at issue as a combination of a ‘house mark’ and a ‘product mark’, as is said to be common in the fashion industry and, particularly, perfumery, is not sufficiently substantiated to the requisite legal standard by the evidence produced by the applicant.

33      First, the judgment of 6 October 2004, New Look Ltd v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) (T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 51) is irrelevant for the purpose of establishing the existence of such a usage, since that judgment exclusively concerns the clothing sector and not that of perfumery.

34      Second, even assuming that the evidence produced by the applicant did prove that it or the other party to the proceedings before EUIPO traditionally combined a ‘house mark’ with ‘product marks’, it could not be inferred from this that such a usage is common to the entire perfumery sector and could be presumed to be known by the average consumer of perfumes. In any case, the finding of such a usage would not allow, when comparing the marks at issue, the element ‘hispanitas’ to be disregarded as the applicant suggests; rather it would necessitate a comparison of the ‘product mark’ JOY, associated with the ‘house mark’ JEAN PATOU, with the mark applied for made up of a combination of the ‘house mark’ HISPANITAS and a ‘product mark’ JOY IS A CHOICE, and a review of the extent to which the average perfume consumer might believe that the ‘house marks’ JEAN PATOU and HISPANITAS correspond to a single undertaking or, as the case may be, economically-linked undertakings.

35      On the basis of its arguments, there is, therefore, no foundation for the applicant’s claim that the Board of Appeal erred in the contested decision by comparing the earlier mark with the mark applied for as a whole.

36      It follows from the foregoing assessments that the second part of the plea must be rejected as unfounded.

 The first part

37      In the first part of its plea, the applicant claims that the Board of Appeal made an error in law in the contested decision by holding that a low degree of similarity between the marks at issue relieved it of the need to carry out a global assessment of the likelihood of confusion, even though it is clear from case-law and from Chapter 4, Section 2 of Part C of EUIPO’s Guidelines for Examination that the faintest degree of similarity between the marks at issue means that a global assessment must be carried out, in the light of all the relevant factors of the case. In so far as the Board of Appeal found, in paragraphs 27, 29 and 31 of the contested decision, an element of visual, phonetic and conceptual similarity between the marks at issue, corresponding to the element ‘joy’, it could not conclude that it was not necessary in the present case to carry out a global assessment of the likelihood of confusion, in the light of all relevant factors, without disregarding that element. That would have been even more the case had the Board of Appeal correctly analysed the mark applied for as a combination of a ‘house mark’, HISPANITAS, and a ‘product mark’, JOY IS A CHOICE (see paragraph 25 above).

38      The applicant adds, in essence, that the error in law thus committed is not remedied by the fact that, in the contested decision, the Board of Appeal did eventually carry out a global assessment of the likelihood of confusion. That is because that assessment was carried out for the sake of completeness and without the Board of Appeal adequately taking into account all the relevant factors of the present case — particularly the enhanced distinctive character, acquired through use, of the earlier mark — in the light of the principal assessment it made.

39      EUIPO contests the applicant’s arguments.

40      It follows from the case-law that, where the only constituent word element of a mark is contained in another mark, with which the first is in conflict, that is an indication that the two trade marks are similar (see judgment of 7 March 2013, FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31 and the case-law cited). In such circumstances, the element common to both marks may be rejected as irrelevant for the purposes of comparison only to the extent that it is negligible in the overall impression produced by those marks (see, to that effect, judgment of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, EU:T:2009:400, paragraph 50, and of 26 January 2016, LR Health & Beauty Systems v OHIM — Robert McBride (LR nova pure.), T‑202/14, not published, EU:T:2016:28, paragraph 86). Moreover, according to the case-law, a degree of similarity between the marks at issue as regards one of the relevant aspects examined, namely the visual, phonetic or conceptual similarity, precludes the marks, when considered in their entirety, from being considered devoid of similarity (see, to that effect, judgment of 2 December 2009, Volvo Trademark v OHIM — Grebenshikova (SOLVO), T‑434/07, EU:T:2009:480, paragraph 50).

41      In the present case, although the Board of Appeal did not identify, in the contested decision, phonetic similarity between the marks at issue, it noted in paragraph 27 of that decision that ‘[visually] the signs [were] similar to the extent that they coincide[d] in the word element “joy”, present identically in both signs’, and conceded in paragraph 28 of the decision that a ‘visual similarity [between the marks at issue might exist] as a result of that common element’. Furthermore, in paragraph 31 of the contested decision, the Board of Appeal found that because of ‘the coincidence in the word “joy” the [signs at issue were] conceptually similar at most to a low degree’.

42      These assessments, which are not disputed by the parties, must be upheld. The word element ‘joy’ — the only word constituting the earlier mark, also appearing in the mark applied for — corresponds to an English word that will be pronounced in the same way by the relevant public and will bring to mind, for the English-speaking part of that public, the same concept conveyed by that word. In addition, even though the element ‘joy’ is not the dominant element in the mark applied for, it is not negligible in the overall impression created by the mark and therefore remains relevant for the purposes of the comparison of the marks at issue, particularly from a phonetic and conceptual perspective. As a result, as the Board of Appeal correctly found in paragraphs 27 and 31 of the contested decision, because of the presence of the word element ‘joy’ in the marks at issue, those marks are phonetically and conceptually similar to a certain degree, even if only weakly.

43      In accordance with the case-law cited in paragraph 40 above, the finding of the existence of even a weak degree of visual and conceptual similarity between the marks at issue prevented the Board of Appeal from concluding in paragraphs 32 and 34 of the contested decision that those marks, considered as a whole, were devoid of similarity. That finding should have led the Board of Appeal to carry out a global assessment of the likelihood of confusion as a principal concern and not for the sake of completeness.

44      However, the error thus vitiating paragraphs 32 and 34 of the contested decision cannot justify the annulment of that decision since, in paragraphs 35 to 42 of the decision, the Board of Appeal did examine, for the sake of completeness, the situation where ‘the signs were ... not to be considered dissimilar, but similar to a very low degree’. That led it to conclude, in paragraphs 41 and 42 of the contested decision, that, even in such a situation, ‘the signs at issue maintain[ed] the necessary distance so that there [was] no likelihood of confusion’ and, as a result, ‘the [Opposition Division’s] decision [had to] be annulled even if the signs at issue were to be considered similar to a very low degree’. The mere fact, as the applicant noted, that these arguments are contained in the contested decision in reasoning given for the sake of completeness rather than in the principal reasoning, is irrelevant in this respect since, if the main reasoning is vitiated, this supplementary reasoning is able to provide alternative justification for the contested decision (see, to that effect, order of 24 January 1994, Boessen v ESC, C‑275/93 P, EU:C:1994:20, paragraph 25).

45      In so far as the applicant intended, with the first part of its plea, to call into question the Board of Appeal’s global assessments — whether carried out as a principal concern or for the sake of completeness — of the similarity between the marks at issue and the likelihood of confusion, it must be held that the applicant has not stated, within the context of that part of its plea, any exact complaint or argument which could be examined in substance by the Court.

46      As for the argument alleging an incorrect analysis of the mark applied for, which the applicant claims should have been considered to be a combination of a ‘house mark’, HISPANITAS, and a ‘product mark’, JOY IS A CHOICE, this argument is indissociable, in essence, from the arguments put forward in support of the second part of the plea and must be rejected for the same reasons as those already set out in paragraphs 29 and 35 above.

47      It follows from the foregoing considerations that the first part of the plea must be rejected as unfounded.

 The third part

48      In the third part of its plea the applicant claims that, during the assessment of the likelihood of confusion in the contested decision, the Board of Appeal did not sufficiently take into account the enhanced distinctive character, acquired through use, of the earlier mark, bearing in mind that the more distinctive the earlier mark, the greater the risk of confusion (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 36). As the Opposition Division correctly identified, based on the documents that were presented before it, the earlier mark had acquired an enhanced distinctive character through its use on the market, justifying a high degree of protection.

49      EUIPO contends that the third part of the plea should be rejected for the same reasons as stated in support of rejecting the first part of the plea (see paragraph 39 above).

50      It must be noted that the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case. A global assessment means that there is some interdependence between the relevant factors. For example, a likelihood of confusion may be found, despite a lesser degree of similarity between the goods or services concerned, where the marks are very similar and the distinctiveness of the earlier mark, in particular its reputation, is high (see judgment of 22 June 2000, Marca Mode, C‑425/98, EU:C:2000:339, paragraph 40 and the case-law cited).

51      The reputation of a mark, where it is established, is thus an element which, amongst others, may have a certain importance in the assessment of the likelihood of confusion. In that respect, it may be observed that marks with a highly distinctive character, in particular because of their reputation, enjoy broader protection than marks with a less distinctive character. Nevertheless, the reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense of the term (see judgment of 22 June 2000, Marca Mode, C‑425/98, EU:C:2000:339, paragraph 41 and the case-law cited).

52      In the present case, in paragraph 35 of the contested decision the Board of Appeal found that ‘even if the signs were ... not to be considered dissimilar but similar to a very low degree due to the common element “joy”, there would still be no likelihood of confusion ... irrespective of whether enhanced distinctiveness of the earlier mark has been proven’, such that ‘for reasons of procedural efficiency, it [would] not be examined whether the opponent ha[d] shown consumer awareness of the earlier mark “joy” apart from the fame associated with the “JEAN PATOU” mark’. The Board of Appeal thus stated, in paragraph 35 of the contested decision, that, for the purposes of assessing the likelihood of confusion, ‘it [was] assumed that the earlier sign enjoy[ed] enhanced distinctiveness’.

53      In paragraph 40 of the contested decision, the Board of Appeal found that ‘despite the identity of the ... goods [in question] and the assumed enhanced distinctiveness of the earlier mark, there [was] no likelihood of confusion in the case at hand’. It based its conclusion in this regard on the assessments set out in paragraph 41 of the contested decision, which is worded as follows:

‘The [signs at issue] leave a significantly different overall impression on the relevant public. The dominant element of the contested sign is the word “hispanitas”. Due to its prominent position in the first line and its considerably larger and darker print, it forms the visual focus of the younger sign. Furthermore, the word “joy” plays only a secondary role in the contested sign. It will not be perceived separately. As part of a whole sentence, the word “joy” is conjoined with other words in such a way that the independent distinctive role of the earlier sign is removed in the contested sign. In the contested sign, the word “joy” is perceived as an inseparable part of a slogan, illustrating the dominant word “hispanitas”. Moreover, the [signs at issue] are similar only to a very low degree. They clearly differ in their length and the composition of the signs. Therefore, the signs at issue maintain the necessary distance so that there is no likelihood of confusion although the [goods] at issue are identical, the [relevant public’s] level of attention is for some goods high and the earlier mark enjoys an enhanced distinctiveness’.

54      Although the applicant criticises the Board of Appeal for not sufficiently taking into account the enhanced distinctive character of the earlier mark in its assessment of the likelihood of confusion, it does not, however, in its application, make any clear and specific complaint against the Board of Appeal’s assessments, set out in paragraph 53 above, which led the latter to find that, despite the identity of the goods in question and the presumed enhanced distinctive character of the earlier mark, the marks at issue produce a significantly different overall impression in the minds of the relevant public, particularly because, in the mark applied for, the word element ‘joy’ cannot be disassociated from the phrase it forms part of and plays only a secondary role in that mark.

55      In paragraph 61 of the application the applicant states that the error it alleges in the third part of its plea flows from that set out in the first part of its plea. It thus merely refers to the arguments set out in the context of the first part of its pleas, in which it alleges that, in the contested decision, the Board of Appeal failed to carry out a global assessment of the likelihood of confusion taking into account all the factors relevant to the circumstances of the case, particularly the enhanced distinctive character, acquired through use, of the earlier mark.

56      In that regard, for the same reasons as those already set out in the context of the first part of the plea in paragraphs 40 to 47 above, and particularly the fact that, for the sake of completeness, in paragraphs 35 to 42 of the contested decision the Board of Appeal did carry out a global assessment of the likelihood of confusion, the third part of the plea must be rejected as unfounded.

57      The three parts of the single plea in law relied on thus being rejected, the action must be dismissed in its entirety.

 Costs

58      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

59      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Jean Patou Worldwide Ltd to pay the costs.


Pelikánová

Valančius

Öberg

Delivered in open court in Luxembourg on 30 January 2018.


E. Coulon

 

I. Pelikánová

Registrar

 

President


*      Language of the case: English.