JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

25 June 2020 (*)

(EU trade mark — Invalidity proceedings — EU figurative mark B — Earlier international figurative mark b — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Article 60(1)(a) Regulation 2017/1001 — Misuse of power — Partial annulment)

In Case T‑114/19,

Dan-Gabriel Pavel, residing in Oradea (Romania), represented by E.-D. Nedelcu, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M.L. Capostagno, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

bugatti GmbH, established in Herford (Germany), represented by U. Ulrich, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 December 2018 (Joined Cases R 49/2018-1 and R 85/2018-1), relating to invalidity proceedings between bugatti and Mr Pavel,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, U. Öberg (Rapporteur) and O. Spineanu‑Matei, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 20 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 30 July 2019,

having regard to the response of the intervener lodged at the Court Registry on 22 July 2019,

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

 Background to the dispute

1        On 10 December 2014, the applicant, Mr Dan-Gabriel Pavel, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a trade mark was sought for the following figurative sign:

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3        The goods and services for which registration was sought are in Classes 18, 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, and correspond, for each of those classes, to the following description:

–        Class 18: ‘Leather and imitations of leather, goods made of the aforesaid materials, such as: laces, cords, braids, boxes, straps, furniture fittings, heels, purses, handbags, decorative studs for materials of leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;

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

–        Class 35: ‘Advertising; business management; business administration; office functions’.

4        On 5 May 2016, the mark was registered as an EU trade mark under No 13545181 in respect of all the goods and services referred to in paragraph 3 above. That registration was published in European Union Trade Marks Bulletin No 87/2016 of 12 May 2016.

5        On 1 July 2016, the intervener filed with EUIPO an application for a declaration of invalidity of the contested mark, in respect of all the goods and services covered by that mark, on the basis of Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

6        The application for a declaration of invalidity was based on the earlier international registration No 952 732 designating the European Union dated 11 December 2007, reproduced below:

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7        The earlier trade mark is registered for goods in Classes 18, 24 and 25, within the meaning of the Nice Agreement, and correspond to the following description:

–        Class 18: ‘Goods made of leather and imitations of leather, included in this class, in particular bags, trunks and travelling bags; suit bags, wallets, purses, key cases, cases for writing utensils, cases for cutlery; umbrellas, parasols and walking sticks’;

–        Class 24: ‘Home textiles, in particular bed and table covers, lap robes, curtains, linen for tables, beds and household’;

–        Class 25: ‘Clothing, hosiery, footwear, ties, scarves, headgear’.

8        By decision of 10 November 2017, the Cancellation Division partially granted the application for a declaration of invalidity of the contested mark for the following goods:

–        Class 18: ‘Goods made of the aforesaid materials [leather and imitations of leather], such as: laces, cords, braids, boxes, straps, furniture fittings, heels, purses, handbags, decorative studs for materials of leather and imitations of leather; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;

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

9        The Cancellation Division found that the contested mark remained registered for the following goods:

–        Class 18: ‘Leather and imitations of leather; animal skins, hides’;

–        Class 35: ‘Advertising; business management; business administration; office functions’.

10      On 8 and 12 January 2018, the applicant and the intervener each brought an appeal before EUIPO under Articles 66 to 71 of Regulation 2017/1001 against the decision of the Cancellation Division, numbered R 49/2018-1 and R 85/2018-1, respectively.

11      By decision of 14 December 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal R 49/2018-1 in its entirety and partially upheld the intervener’s appeal R 85/2018-1.

12      First of all, the Board of Appeal noted that the relevant public consisted, for the goods in Classes 18 and 25, of ‘average consumers’ who are reasonably well informed and reasonably observant and circumspect and, for the services in Class 35, of business consumers displaying an average to high level of attention.  

13      Next, the Board of Appeal stated that the goods covered by the signs at issue in Class 25 were identical and the services covered by the contested mark in Class 35 were dissimilar to the goods covered by the earlier mark. As regards the goods in Class 18, it confirmed that ‘goods made of the aforesaid materials [leather and imitations of leather], such as: laces, cords, braids, boxes, straps, furniture fittings, heels, purses, handbags, decorative studs for materials of leather and imitations of leather’, ‘umbrellas and parasols; walking sticks’, ‘trunks and travelling bags’, covered by the contested mark were identically covered by the earlier mark and the goods ‘whips, harness and saddlery’ covered by the contested mark had a low degree of similarity with the ‘goods made of leather and imitations of leather’ covered by the earlier mark. However, unlike the Cancellation Division, it considered that the goods ‘leather and imitations of leather’ covered by the contested mark were similar, albeit to a low degree, to the ‘goods made of leather and imitations of leather’ covered by the earlier mark, and the goods ‘animal skins, hides’ covered by the contested mark had a certain similarity with the ‘home textiles’ in Class 24 and covered by the earlier mark.

14      Finally, the Board of Appeal noted that the signs at issue did not contain any dominant elements, were visually similar to an average degree and were phonetically and conceptually identical. It concluded that there was a likelihood of confusion on the part of the relevant public and found the contested mark invalid for the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18.

 Forms of order sought

15      The applicant claims that the Court should:

–        annul the contested decision in its entirety;

–        maintain the contested mark validly registered for all the goods and services concerned;

–        order EUIPO to pay the costs.

16      EUIPO contends that the Court should:

–        uphold the action inasmuch as the contested decision upheld the application for a declaration of invalidity in respect of the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18;

–        dismiss the action as to the remainder;

–        order each party to bear its own costs.

17      The intervener submits that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs.

 Law

18      In support of the action, the applicant relies, in essence, on three pleas in law: the first plea, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof; the second plea, alleging misuse of power within the meaning of Article 72(2) of that regulation; and the third plea, alleging lack of evidence showing that the presence of the contested mark on the market is detrimental to the public interest.

 Subject matter of the action and admissibility

19      EUIPO, without formally raising a plea of inadmissibility under Article 130 of the Rules of Procedure of the General Court, maintains, in essence, that the applicant does not have standing to bring an action before the Court and cannot request the annulment of the contested decision in full, since that decision confirmed the registration of the contested mark for the services in Class 35. In EUIPO’s view, since that decision upholds in part the applicant’s claims, the latter can contest it only in relation to the goods the invalidity of which has actually been confirmed by the Board of Appeal.

20      As regards the applicant’s first head of claim, it should be recalled that, pursuant to Article 72(4) of Regulation 2017/1001, the action is open to any party to the proceedings before the Board of Appeal adversely affected by its decision.

21      In the present case, before the Board of Appeal, both the applicant and the intervener sought partial annulment of the decision of the Cancellation Division adopted on 10 November 2017, since that division had, respectively, partially granted and partially rejected the application for a declaration of invalidity. Since the Board of Appeal dismissed the applicant’s appeal R 49/2018-1 in its entirety and upheld the intervener’s appeal in part, the applicant must be recognised as having standing to bring an action before the Court for annulment of the contested decision.

22      Furthermore, having dismissed the applicant’s appeal and upheld the intervener’s appeal R 85/2018-1 in part, the Board of Appeal declared the contested mark invalid for all the goods in Classes 18 and 25, while holding that that mark could ‘remain registered for its services in Class 35’. It must therefore be found that the applicant has an interest in bringing an action for annulment of the contested decision only to the extent that that decision declared that mark invalid for all the goods in Classes 18 and 25.

23      As regards the applicant’s second head of claim, it should be noted that it seeks alteration by the Court of the contested decision as provided for in Article 72(3) of Regulation 2017/1001, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation. However, the EUIPO bodies with jurisdiction in the matter do not adopt any formal decision declaring the registration of an EU trade mark which might be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it register an EU trade mark. In those circumstances, nor is it for the Court to take cognisance of a request for alteration requesting that it amend the decision of a Board of Appeal to that effect (order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraphs 14 and 17 to 23).

24      Consequently, the applicant’s first head of claim must be declared admissible, in so far as it seeks annulment of the contested decision, since that decision declared the contested mark invalid for all the goods in Classes 18 and 25, and the second head of claim, in so far as it contains a request for alteration that seeks to have the Court maintain the registration of that mark, must be declared inadmissible.

 Substance

 The first plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof

25      The applicant submits, in essence, that the Board of Appeal made errors of law and of assessment in the comparison of the goods concerned and the signs at issue and, consequently, in the assessment of the likelihood of confusion.

26      EUIPO disputes the applicant’s arguments, except as regards the similarity of the goods concerned with respect to the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18, covered by the contested mark.

27      The intervener disputes the applicant’s arguments.

28      Pursuant to Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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.

29      For the purposes 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).

30      It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue on the part of the relevant public must be examined.

–       The relevant public

31      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of 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).

32      In the present case, first, since the earlier mark is an international registration designating the European Union, the Board of Appeal considered that the relevant territory for the purposes of examining the likelihood of confusion was that of the European Union. That finding is not disputed by the parties.

33      Secondly, as far as the relevant public is concerned, the Board of Appeal considered that the goods concerned in Classes 18 and 25 were aimed at ‘average consumers’ who are reasonably well informed and reasonably observant and circumspect.

34      First of all, it should be noted that neither the applicant nor the intervener disputed the definition of the relevant public established by the Board of Appeal. EUIPO, without formally contesting the Board of Appeal’s analysis in that regard, argues, however, that the goods ‘leather and imitations of leather’ and ‘animal skins, hides’ in Class 18 and covered by the contested mark are aimed primarily at a professional public.

35      In that regard, it must noted that those goods are raw materials that go to industry for further processing and are intended principally for a professional public (see, to that effect, judgment of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraph 32).

36      However, according to the case-law, even though a section of the relevant public consists of professionals with a higher level of attention, the fact remains that another section of the relevant public, in respect of which it is not claimed that it is of no significance, consists of reasonably observant and circumspect average consumers. Therefore, so far as concerns the assessment of the likelihood of confusion, the public which has the lowest level of attention must be taken into consideration (see judgment of 24 January 2013, Yordanov v OHIM — Distribuidora comercial del frio (DISCO DESIGNER), T‑189/11, not published, EU:T:2013:34, paragraph 31 and the case-law cited).

37      In the present case, account must therefore be taken of the average degree of attention paid by end consumers both in relation to the goods in Class 25 and to those in Class 18, including the goods ‘leather and imitation leather’ and ‘animal skins, hides’.

38      Therefore, it should be noted that the Board of Appeal’s assessment of the degree of attention of the relevant public is free of error.

–       The comparison of the goods

39      According to settled case-law, 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, inter alia, their nature, their intended purpose and 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 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

40      In the present case, first, the Board of Appeal considered that the goods in Class 18 and covered by the contested mark were (i) as regards ‘goods made of the aforesaid materials [leather and imitations of leather], such as: laces, cords, braids, boxes, straps, furniture fittings, heels, purses, handbags, decorative studs for materials of leather and imitations of leather’, ‘umbrellas and parasols; walking sticks’, ‘trunks and travelling bags’, identical, (ii) as regards ‘whips, harness and saddlery’, similar in part to a low degree, and (iii) as regards ‘leather and imitations of leather’, similar to a certain degree to the goods in that class covered by the earlier mark.

41      The Board of Appeal pointed out that the Nice Classification specification did not mention an exclusive list of ‘goods made of leather and imitations of leather’ and accordingly the earlier mark may include any product made of those materials included in Class 18. Therefore, it found that the semi-finished goods ‘leather and imitations of leather’ covered by the contested mark are similar, both in nature and in use, to the ‘goods made of leather and imitations of leather’ covered by the earlier mark.

42      Secondly, as regards the ‘animal skins, hides’ included in Class 18 and covered by the contested mark, the Board of Appeal stated that, although they are materials that are  less treated than leather, and therefore normally intended for professionals for further processing, they bore a certain similarity to the ‘home textiles’ in Class 24 and covered by the earlier mark.

43      The Board of Appeal also recalled that the goods concerned in Class 25 were identical.

44      The applicant and EUIPO essentially claim that the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18 and covered by the contested mark are dissimilar to the earlier ‘goods made of leather and imitations of leather’ in that class as well as the ‘home textiles’ in Class 24 and covered by the earlier trade mark.

45      The intervener disputes the arguments of the applicant and EUIPO.

46      As a preliminary point, it should be noted that neither the applicant nor EUIPO disputes the analysis of the Board of Appeal relating to the goods in Class 18, other than the goods ‘leather and imitations of leather; animal skins, hides’, and the goods in Class 25.

47      As regards the contested goods ‘leather and imitations of leather’ in Class 18, it should first of all be noted that, for the purposes of reviewing the lawfulness of the Board of Appeal’s decision in relation to the assessment of the similarity of the goods, the extent of the protection of the earlier mark must be determined.

48      In that regard, it must be recalled that the list of goods and services for which a mark is applied for must be worded in such a way as to indicate clearly the nature of those goods and services (see, to that effect, judgment of 23 November 2011, Pukka Luggage v OHIM — Azpiroz Arruti (PUKKA), T‑483/10, not published, EU:T:2011:692, paragraph 37). Thus, every applicant for an EU trade mark must provide, for each of the goods and services, a description meeting the requirements of clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection sought (see, by analogy, judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraphs 47 to 49).

49      Therefore, the applicant for an EU trade mark must word the list of goods in a way that allows the scope of the desired protection to be understood clearly and precisely (see, to that effect, judgment of 18 October 2018, Next design+produktion v EUIPO — Nanu-Nana Joachim Hoepp (nuuna), T‑533/17, not published, EU:T:2018:698, paragraph 62).

50      It should also be pointed out that a situation in which the extent of the protection conferred by the trade mark depends on the approach to interpretation adopted by the competent authority and not on the actual intention of the applicant runs the risk of undermining legal certainty both for the applicant and for third party economic operators (judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 60).

51      In the present case, the goods covered by the earlier mark are not described solely as ‘goods made of leather and imitations of leather’, but have been listed more precisely, namely, ‘in particular bags, trunks and travelling bags; suit bags, wallets, purses, key cases, cases for writing utensils, cases for cutlery; umbrellas, parasols and walking sticks’.

52      It follows that, contrary to the Board of Appeal’s assertions, the protection of the earlier mark cannot extend to all goods made of leather and imitations of leather, but only to those to which the proprietor of that mark intended to give protection at the time the application for registration was submitted.

53      As rightly argued by EUIPO, the protection of the earlier mark must therefore be understood as covering, as indicated in paragraph 51 above, articles made of leather and imitations of leather, primarily used to  carry, bring and contain small items (such as clothing, keys, coins, pens, knives and similar goods). The ‘goods made of leather and imitations of leather’ in Class 18 and covered by the earlier mark thus include finished goods intended for sale to end consumers, in a retail outlet and in very small quantities.

54      By contrast, the goods ‘leather and imitations of leather’ covered by the contested mark have a different nature and purpose than those of the goods covered by the earlier mark. Whereas the goods covered by the contested mark are used primarily to provide the raw material for manufacturers of items made of leather and imitations of leather, the ‘goods made of leather or imitations of leather’ covered by the earlier mark are, as noted in paragraph 53 above, finished goods used to carry, bring and contain small items (see, by analogy, judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 86). The raw materials covered by the contested mark are thus marketed in wholesale form and are subject to a process of transformation in order to obtain finished products.

55      On account of their different nature, the goods covered by the signs at issue are normally produced by different manufacturers and sold through different distribution channels. There is also no competitive relationship between those goods.

56      Moreover, even if the  ‘leather and imitations of leather’ covered by the contested mark are not marketed exclusively as raw or semi-manufactured goods, but can also be sold as separate goods directly to the end consumer, that situation cannot bring into question the fact that those goods are aimed primarily at a professional public (see, to that effect, judgment of 6 April 2017, NANA FINK, T‑39/16, EU:T:2017:263, paragraph 85), whereas the ‘goods made of leather or imitations of leather’ in Class 18 and covered by the earlier mark are intended for sale to end consumers.

57      Furthermore, the Board of Appeal’s finding that similarity could be established because the use of raw materials is necessary to manufacture finished products cannot be upheld. Given the wide variety of goods which can be made of leather or imitations of leather, that factor alone is not sufficient to establish that the goods are similar (see, to that effect, judgments of 1 March 2005, Sergio Rossi v OHIM — Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 55, and of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 42).

58      Similarly, goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (see, to that effect, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 48 and the case-law cited). In the present case, it must be noted that the Board of Appeal failed to state the reasons why the goods concerned are indispensable or at least important for their respective uses.

59      Therefore, the Board of Appeal wrongly found that the semi-finished  goods ‘leather and imitations of leather’  in Class 18 and covered by the contested mark could be included in the finished ‘goods made of leather and imitations of leather’ in Class 18 and covered by the earlier mark.

60      As regards ‘animal skins, hides’ in Class 18 and covered by the contested mark and ‘home textiles’ in Class 24 and covered by the earlier mark, it should be noted that home textiles are functional and decorative goods and serve both practical and ornamental purposes. They are intended for the average consumer belonging to the general public. By contrast, ‘animal skins, hides’, just as ‘leather and imitations of leather’, have a different nature and purpose than those of the goods in Class 24 covered by the earlier mark and are sold through different distribution channels. They are raw materials intended for a specialised public, composed of professionals who deal primarily with those goods with a view to further processing them into finished goods. Furthermore, it is apparent from the case-law cited in paragraph 57 above that the mere finding that a product can be used for the manufacture of another is not sufficient to establish similarity.

61      It follows that the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18 and covered by the contested mark are dissimilar to the goods included in Classes 18 and 24 and covered by the earlier mark by their nature, purpose, method of use and the channels and methods of distribution used for their marketing.

62      Therefore, it must be concluded that the Board of Appeal erred in finding that the goods mentioned in paragraph 61 above were similar.

–       The comparison of the signs

63      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components (see judgment of 12 November 2008, Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, EU:T:2008:481, paragraph 34 and the case-law cited).

64      Assessing 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. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see judgment of 12 November 2008, Limoncello della Costiera Amalfitana shaker, T‑7/04, EU:T:2008:481, paragraph 40 and the case-law cited).

65      For the purposes of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking and, thus, to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 12 July 2012, Winzer Pharma v OHIM — Alcon (BAÑOFTAL), T‑346/09, not published, EU:T:2012:368, paragraph 78).

(1)    The distinctive and dominant elements of the marks at issue

66      The applicant disputes the Board of Appeal’s finding that the signs at issue did not contain any dominant elements and submits that the intervener failed to demonstrate the enhanced distinctiveness of the earlier mark.

67      It should be noted that the signs at issue consist, first, of the letter ‘b’, written in capital letters for the contested mark, and in lower case letters for the earlier mark, in a different font, and, secondly, of a crown of leaves. The overall impression is thus determined by the letter ‘b’ and the surrounding crown of leaves. There is nothing to suggest that one of those two elements is dominant in either of those signs. The relevant public will remember the sign as a whole, consisting of the letter ‘b’ surrounded by a crown of leaves.

68      First, the graphic stylisation of the word element of the signs at issue is clearly secondary and requires a more detailed examination on the part of consumers, who do not adopt a particularly attentive approach when confronted with single-letter signs; therefore the graphic stylisation of the two signs cannot be considered to be the distinctive or dominant element of those signs (see, to that effect, judgments of 7 October 2014, Tifosi Optics v OHIM — Tom Tailor (T), T‑531/12, not published, EU:T:2014:855, paragraph 62, and of 20 July 2017, Diesel v EUIPO — Sprinter megacentros del deporte (Representation of a curved and angled line), T‑521/15, not published, EU:T:2017:536, paragraph 49 and the case-law cited).

69      Secondly, the representation of a crown of leaves or wreath of laurels is a figurative element commonly used as a laudatory sign, which corresponds, in this case, to one of the simplest stylisations, and is therefore not particularly distinctive.

70      Moreover as regards the applicant’s argument that the objective of the letter ‘b’ in the signs at issue is to refer to the company names at issue, namely ‘benvenuti’ for the contested mark and ‘bugatti’ for the earlier mark, it must be recalled that, according to the case-law, the assessment of the likelihood of confusion is to be carried out by comparing the two signs as they were registered or as they appear in the trade mark application (see, to that effect, judgments of 13 September 2007, Il Ponte Finanziaria V OHIM, C‑234/06 P, EU:C:2007:514, paragraph 62, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57), regardless of whether they are used alone or together with other marks or indications (see order of 18 October 2016, Laboratoire de la mer v EUIPO — Boehringer Ingelheim Pharma (RESPIMER), T‑109/16, not published, EU:T:2016:627, paragraph 46 and the case-law cited). The word element of the signs at issue will therefore be perceived by the relevant public as referring to the letter ‘b’.

71      In the light of the foregoing considerations, the Board of Appeal did not err in finding that the signs at issue did not contain any dominant elements. It should be added that the distinctive character of the figurative and word elements of those signs was to be regarded as average.

(2)    The visual comparison

72      The applicant challenges the assessment of the similarity of the signs at issue. It maintains that their degree of visual similarity can be regarded only as low.

73      It should be noted that the word element of the signs at issue is represented by the same letter of the alphabet, namely the letter ‘b’. Those signs also coincide by the presence of a figurative element, a wreath of laurels, surrounding the letter ‘b’.

74      However, the signs at issue differ by the use of a capital letter in the contested mark and a lower case letter in the earlier mark, which are represented in a different font. In addition, the crown of leaves of the contested mark is open at the top and bottom, forming two branches exactly opposite one another, whereas that of the earlier mark tilts slightly to the left and has a single opening to allow the vertical bar of the letter ‘b’ to pass through.

75      In this respect, while it is true that the signs at issue display graphic differences, the fact remains that those are stylistic differences of minor importance compared to the similarities between them. In order to understand those differences, the relevant public must engage in a detailed examination of those signs.

76      Those stylistic differences thus cannot dispel entirely the impression of similarity which is apparent from the overall visual comparison of the signs at issue. That impression arises from the overall shape of those signs, namely the presence of the letter ‘b’ surrounded by a wreath of laurels, which helps to give those signs the same dynamism.

77      Therefore, the Board of Appeal did not err in finding that the signs at issue are visually similar to an average degree.

(3)    The phonetic comparison

78      The applicant claims that the word element of the signs at issue constitutes the first letter of the underlying marks, namely ‘benvenuti’ for the contested mark and ‘bugatti’ for the earlier mark, with the result that those signs are phonetically dissimilar.

79      Contrary to the applicant’s claims, it follows from the case-law cited in paragraph 70 above that the signs at issue must be compared as they were registered.

80      It must be stated that the signs at issue coincide in the pronunciation of the letter ‘b’, so that it is without error that the Board of Appeal found that they are phonetically identical.

(4)    The conceptual comparison

81      The applicant maintains that the signs at issue are conceptually similar to a no more than average degree.

82      In that regard, it must be recalled that it cannot, in principle, be ruled out, that single letters of the alphabet might have their own conceptual content (judgment of 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraph 56).

83      The graphic representation of a letter is likely to recall, on the part of the relevant public, a very distinct entity, namely a specific phoneme. In that sense, a letter may refer to a concept. It follows that there may be conceptual identity between signs where those signs refer to the same letter of the alphabet (see, to that effect, judgment of 13 March 2018, Kiosked v EUIPO — VRT (K), T‑824/16, EU:T:2018:133, paragraphs 66 and 67 and the case-law cited). In the present case, it should be noted that the signs at issue refer to the same letter of the alphabet, the letter ‘b’.

84      The signs at issue also both refer, through the presence of a wreath of laurels, to the idea of a frequently used honorary award, notoriously symbolising aspects such as glory, success or high quality.

85      Therefore, it must be held, as a Board of Appeal did, that the signs at issue are conceptually identical.

–       The likelihood of confusion

86      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C 39/97, EU:C:1998:442, paragraph 17, and 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 74).

87      In the present case, the Board of Appeal considered that the earlier mark enjoyed an average degree of inherent distinctiveness, since no enhanced distinctiveness had been proved. After stating that neither the word element, consisting of the letter ‘b’, nor the figurative element, consisting of a crown of leaves, of the signs at issue were dominant, and in the light of the visual similarity and the phonetic and conceptual identity of those signs, it concluded that there was a likelihood of confusion on the part of the relevant public for all the goods in Classes 18 and 25.

88      The applicant claims, in essence, first, that the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18 and covered by the contested mark are dissimilar to all the goods covered by the earlier mark and, secondly, that there is no likelihood of confusion between the signs at issue, in particular because of the presence of several hundred registered signs, the word element of which consists of the letter ‘b’ and which coexist on the EU market and cover goods falling under, inter alia, Classes 18 and 25.

89      EUIPO submits that there is a likelihood of confusion between the signs at issue for the goods in Class 25 and the goods in Class 18, with the exception of ‘leather and imitations of leather; animal skins, hides’ and covered by the contested mark, since they are dissimilar to the goods covered by the earlier mark.

90      The intervener disputes the applicant’s arguments.

91      In the first place, as regards the intervener’s arguments relating to the reputation of the earlier mark, it should be noted that, as rightly raised by EUIPO, the intervener’s application for a declaration of invalidity was not based on Article 8(5) of Regulation 2017/1001; accordingly those considerations are irrelevant.

92      In the second place, as noted in paragraph 29 above, a likelihood of confusion between the signs at issue presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar.

93      It follows from paragraphs 51 to 62 above that, as regards the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18 and covered by the contested mark, one of the cumulative conditions necessary for the application of Article 8(1)(b) of Regulation 2017/1001 is missing, with the result that there is no likelihood of confusion.

94      As regards the other goods concerned, it should be recalled that it has not been disputed that the goods in Class 18, other than the goods ‘leather and imitations of leather; animal skins, hides’, and the goods in Class 25 and covered by the contested mark are, respectively, similar and identical to the goods in Classes 18 and 25 and covered by the earlier mark.

95      It is also apparent from paragraphs 38, 77, 80 and 85 above that the Board of Appeal was correct in finding that the relevant public displayed an average level of attention and that the signs at issue were visually similar to an average degree and phonetically and conceptually identical.

96      As the earlier mark has an average degree of inherent distinctiveness, the relevant public will be likely to believe that the goods concerned originate from the same undertaking and, therefore, the Board of Appeal rightly found that there was a likelihood of confusion for the contested goods in Class 18, other than ‘leather and imitations of leather; animal skins, hides’, and for all of the goods in Class 25 and covered by the contested mark.

97      That conclusion cannot be called into question by the extracts  from the TmView database submitted by the applicant.

98      In that regard, it should be pointed out that it is conceivable that, in certain cases, the coexistence of marks on a particular market may possibly contribute, together with other factors, to reducing the likelihood of confusion between those marks on the part of the relevant public. The absence of a likelihood of confusion can thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market (see, by analogy, judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 82 and the case-law cited).

99      Furthermore, it was found that the extracts from the TmView database should be considered to be documents intended to establish the probative nature of the existence, validity and extent of the protection of the earlier marks (see, to that effect, judgment of 6 December 2018, Deichmann v EUIPO — Vans (V), T‑848/16, EU:T:2018:88, paragraphs 71 to 73).

100    However, the proprietor of the EU mark must be able to prove that the peaceful coexistence of the earlier marks is based on the absence of a likelihood of confusion between those marks on the part of the relevant public and that those marks are identical to the marks at issue (see, by analogy, judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 57).

101    However, in the present case, it is apparent from the documents before the Court that the registered signs appearing in the extracts from the TmView database are not identical to the signs at issue. Furthermore, as the Board of Appeal rightly found in paragraph 48 of the contested decision, even assuming that that identity requirement has been met, the applicant failed to adduce any evidence showing that the coexistence of the earlier marks is based on the absence of a likelihood of confusion, on the part of the relevant public, of the earlier marks.

102    Therefore, the applicant’s first plea, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, should be upheld in part in so far as the Board of Appeal erred in finding that there was a likelihood of confusion for the goods ‘leather and imitation leather; animal skins, hides’ in Class 18 and covered by the contested mark. That plea is rejected as to the remainder.

 The second plea in law, alleging a misuse of power within the meaning of Article 72(2) of Regulation 2017/1001

103    The applicant essentially submits that, by considering the signs at issue to be highly similar overall, although several hundred trade marks consisting of an identical word element coexist on the EU market, the Board of Appeal misused its power within the meaning of Article 72(2) of Regulation 2017/1001.

104    EUIPO and the intervener express no view in that regard.

105    First of all, it should be recalled that, under Article 72(2) of Regulation 2017/1001, the Court may annul or alter the decision of a Board of Appeal of EUIPO only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the [Treaty on the Functioning of the European Union], infringement of this Regulation or of any rule of law relating to their application or misuse of power’.

106    In this respect, it is settled case-law that a decision may amount to a misuse of power only where it appears, on the basis of objective, relevant and consistent factors, to have been taken in order to achieve an end other than that stated (see judgment of 17 February 2017, Unilever v EUIPO — Technopharma (Fair & Lovely), T‑811/14, not published, EU:T:2017:98, paragraph 41 and the case-law cited).

107    In the present case, the Board of Appeal carried out a full and specific examination of the signs at issue in order to compare them for the purpose of assessing whether there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. The applicant does not put forward any evidence showing the existence of a misuse of power.

108    Consequently, the applicant’s argument alleging misuse of power must be rejected as unfounded.

109    Accordingly, the second plea in law must be rejected.

 Third plea in law, alleging lack of evidence showing that the presence of the contested mark on the market is detrimental to the public interest

110    The applicant claims that the Board of Appeal failed to demonstrate that the existence of the contested mark was detrimental to the public interest and maintains that the grounds for refusing registration of a mark must be interpreted in the light of the public interest.

111    EUIPO disputes the applicant’s arguments.

112    The intervener expresses no view in that regard.

113    It should be noted that the case-law cited by the applicant (judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244; of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258; and of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532) is not applicable in the present case. That case-law concerns judgments relating to absolute grounds for refusing registration of trade marks which are devoid of distinctive character, as provided for under EU law. In those judgments, the Court stressed the need to preserve the availability of certain descriptive signs so that they can be freely used by all economic operators offering the same goods or services.

114    The present case concerns invalidity proceedings brought pursuant to Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) thereof, the purpose of which is to protect the individual interest of the applicant for a declaration of invalidity in order to prevent registration of a sign that is detrimental to his or her earlier rights.

115    The third plea in law must therefore be rejected.

 Conclusions

116    Consequently, in the light of all of the foregoing considerations, the present action must be upheld in part and the contested decision annulled, in so far as the Board of Appeal declared the contested mark invalid in respect of the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18.

117    The action is dismissed as to the remainder.

 Costs

118    Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

119    In the present case, since the action has been upheld only for part of the contested goods, it is appropriate to order each party to bear its own costs.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2018 (Joined Cases R 49/2018-1 and R 85/2018-1) in so far as it concerns the goods ‘leather and imitations of leather; animal skins, hides’ in Class 18 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;

2.      Dismisses the action as to the remainder;


3.      Orders each party to bear its own costs.


Spielmann

Öberg

Spineanu-Matei

Delivered in open court in Luxembourg on 25 June 2020.


E. Coulon

 

S. Papasavvas

Registrar

 

President


*      Language of the case: English.