Information;Judgment — ECLI:EU:T:2025:10
Date: 2025-01-15
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

JUDGMENT OF THE GENERAL COURT (Third Chamber) 15 January 2025 (*) ( EU trade mark – Opposition proceedings – Application for a figurative EU trade mark representing a rooster – Earlier figurative EU trade mark FFF – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 ) In Case T‑104/24, Kokito I Punt, SL, established in Gandia (Spain), represented by P. Bauzá Martínez, J. Gallego Jiménez, Y. Hernández Viñes and E. Sanz Valls, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being Fédération française de football, established in Paris (France), represented by C. Bertheux Scotte, lawyer, THE GENERAL COURT (Third Chamber), composed of P. Škvařilová-Pelzl, President, I. Nõmm and D. Kukovec (Rapporteur), 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, Kokito I Punt, SL, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2023 (Case R 901/2023-4) (‘the contested decision’). Background to the dispute 2 On 11 May 2021, Ms María Didiam Suarez de Rea, the applicant’s predecessor in title, 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 in Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Headgear; footwear; clothing’. 4 On 18 September 2021, the intervener, the Fédération française de football, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. 5 The opposition was based on the earlier EU figurative mark, reproduced below, covering goods in Class 25 corresponding to the following description: ‘Clothing, footwear (except orthopaedic) and headgear; gloves (clothing), belts (clothing); parkas, sashes, raincoats; headbands (clothing), caps (headwear), caps (headwear), berets; wristbands; athletics shoes; football boots; studs for football boots; socks; singlets; shorts; gym suits; singlets; track jackets; blazers; rainwear; coats; uniforms; neckties; belts, gloves; pinafores; bibs, not of paper; pyjamas; toddler and infant playwear; socks and hosiery; suspenders; belts; sandals, thong sandals’: 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 1 March 2023, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001. 8 On 27 April 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 dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Forms of order sought 10 The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. 11 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that an oral hearing is convened. 12 The intervener contends, essentially, that the Court should: – dismiss the action; – order the applicant to pay the costs. Law 13 In support of the action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in so far as the Board of Appeal erred in finding that there was a likelihood of confusion in the present case. More specifically, the applicant submits, in essence, that the Board of Appeal erred in its assessment of the comparison of the signs and in the global assessment of the likelihood of confusion. 14 It should be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to 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. The relevant public and its level of attention 15 The Board of Appeal found that the goods in question targeted the general public, displaying an average level of attention. In addition, it found that the relevant territory was that of the European Union. 16 There is no reason to question those assessments, which are, moreover, not disputed by the applicant. Comparison of the goods in question 17 The Board of Appeal found that the goods in question were identical. 18 There is no reason to call into question that assessment, which is, moreover, not disputed by the applicant. Comparison of the signs in question 19 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). 20 In the present case, the mark applied for consists of a single figurative element, namely a stylised rooster facing to the left, depicted in black and white and in shades of grey. 21 The earlier mark is a composite mark composed of verbal and figurative elements. It contains, as does the mark applied for, a figurative element comprising a stylised rooster, depicted in white and red colours, which is facing to the right. That mark also includes a word element consisting of the three letters ‘f’ placed below that figurative element, which are depicted in golden colour and in a standard uppercase font. Those elements are placed on a hexagonal background in blue with a golden outline. 22 In accordance with the case-law cited in paragraph 19 above, before assessing the visual, phonetic and conceptual similarity of the signs in question, it is necessary to examine the distinctive and dominant elements of those signs. The distinctive and dominant elements of the signs in question 23 The Board of Appeal found that both the figurative elements representing a stylised rooster, included in the two marks at issue, and the word element of the earlier mark consisting of the three letters ‘f’ were distinctive, because they had no connection with the goods covered by those marks. It nevertheless found that, on account of the size and position of those elements, the figurative element representing a stylised rooster was the dominant element of the earlier mark, whereas the word element was only a secondary element in that mark. Furthermore, the Board of Appeal found that the impact of the blue background and its gold outline and the presentation of the letters ‘f’ in golden colour was purely decorative. 24 The applicant disputes the Board of Appeal’s findings. First, it criticises the Board of Appeal for having found that one element is more distinctive than the other because the figurative element and the word element of the earlier mark have the same distinctive character. Secondly, it submits that the word element is the dominant element of the earlier mark. 25 EUIPO and the intervener dispute the applicant’s arguments. 26 As a preliminary point, it should be noted that, contrary to the applicant’s claim, the transcription of the earlier mark, by using only its word element ‘fff’, in EUIPO’s database and in the contested decision, is not relevant for determining the perception of that mark by the relevant public. It is clear from the case-law that the way in which a mark is designated by EUIPO is not decisive, since the similarity of the signs in question must be assessed in relation to the perception of the mark by the relevant public (see, to that effect, judgment of 12 July 2023, Multiópticas v EUIPO – Nike Innovate (Representation of two black geometrical shapes), T‑487/22, not published, EU:T:2023:391, paragraphs 52 and 53 and the case-law cited). 27 In the first place, it must be borne in mind that, for the purposes of assessing the distinctive character of an element making up a mark, it is necessary, according to the case-law, to examine the greater or lesser ability of that element to contribute to identifying the goods or services for which the trade mark has been registered as originating from a particular undertaking and thus to distinguishing 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 (see judgment of 1 June 2022, Krasnyj Octyabr v EUIPO – Pokój (Pokój TRADYCJA JAKOŚĆ KRÓWKA SŁODKIE CHWILE Z DZIECIŃSTWA TRADYCYJNA RECEPTURA), T‑355/20, not published, EU:T:2022:320, paragraph 41 and the case-law cited). 28 As regards the distinctive elements of the earlier mark, the applicant’s position is based, as stated by EUIPO, on a misreading of the contested decision. 29 It is apparent from the Board of Appeal’s assessments, as summarised in paragraph 23 above, that the Board of Appeal did not find that one element of the earlier mark was more distinctive than the other. On the contrary, it found that neither the word element nor the figurative element of that mark had any connection with the goods in question, with the result that the two elements were distinctive. There is no reason to call that assessment into question. 30 In the second place, as regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35). 31 In the present case, as regards the word element ‘fff’ of the earlier mark, it is true that that element, as the applicant submits, is not negligible and must be taken into account in the comparison of the signs in question. 32 However, the Court finds, as did the Board of Appeal, that the word element of the earlier mark, in relation to the figurative element thereof, depicting a stylised rooster, occupies a secondary position. As the Board of Appeal found, that figurative element dominates that mark, on account of its size and position, in the overall impression created by it. That figurative element occupies a central position in the mark in question, whereas the word element is in a lateral position. Moreover, the latter is smaller than the figurative element and none of its characteristics makes it more visible than the figurative element referred to above. Furthermore, the Court points out in that connection that, as the Board of Appeal found, the golden colour of the word element is merely decorative, especially in view of the fact that the outline of the hexagonal background of the earlier mark is also of that colour. 33 All the circumstances referred to in paragraph 32 above create the impression that, in the earlier mark, the figurative element representing a stylised rooster is more striking than the word element ‘fff’. Therefore, the applicant is not justified in claiming that that word element was the dominant element of that mark. The visual comparison of the signs in question 34 In paragraph 28 of the contested decision, the Board of Appeal found that, visually, the signs in question were ‘at least similar, to a below average degree’, which corresponds, according to the case-law, to at least a low degree of similarity (see, to that effect, judgment of 13 March 2024, Kantstraße Paris Bar v EUIPO – Superstudio21 (Bar Paris), T‑117/23, not published, EU:T:2024:163, paragraph 54). However, it should be noted that, in paragraph 38 of that decision, the Board of Appeal stated expressly that ‘the degree of visual similarity [was] not low, but at least below-average’, which allows the inference that the Board of Appeal did not intend to conclude that there was a low degree of visual similarity between the signs in question, but, on the contrary, to rule out such a classification of that similarity. Although the Board of Appeal’s assessments in question lack precision, it follows, in any event, that the Board of Appeal considered the signs in question to be similar. 35 The applicant disputes the Board of Appeal’s findings. According to the applicant, the signs in question are visually different. It complains that the Board of Appeal did not assess those signs as a whole and did not take due account of the visual differences between them. 36 EUIPO and the intervener dispute the applicant’s arguments. While EUIPO appears to argue that the visual similarity of the signs in question is ‘below average’, the intervener submits that those signs are ‘highly similar’. 37 As a preliminary point, it should be borne in mind that the average consumer only rarely has the chance to make a direct comparison between the signs and must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited). 38 In the present case, first, the visual similarities between the signs in question result from the fact that both the mark applied for and the earlier mark contain a figurative element depicting a stylised rooster which is, on the one hand, the sole element of the mark applied for and, on the other hand, the dominant element of the earlier mark. 39 It is true, as the applicant submits, that those figurative elements are not identical and that there are some differences in how they are depicted. This is because the roosters included in those elements face different directions and there are differences in the details of the representation of their bodies and heads. In addition, while, in the trade mark applied for, the rooster is depicted only in black and white and in shades of grey, the image of the rooster in the earlier trade mark contains the colours white and red. 40 However, notwithstanding those differences, the overall impression produced by those figurative elements is similar, in particular in view of the fact that the average consumer of the general public will retain only an imperfect recollection of them (see the case-law cited in paragraph 37 above). 41 It should be noted, first of all, that the roosters included in the figurative elements of the signs in question are stylised in essentially the same manner, with the result that their presentation contains a number of similar features. The two roosters are shown in profile. The plumage represents the bodies of the roosters, the feathers being represented by a series of curves, arranged in the same way in both signs. The heads of those roosters are also depicted in a similar way, in that they contain no outline and are made up of four elements drawn in a fairly basic manner: a dot indicating the eye, a chevron shape representing the open beak and drawings of the characteristic barbel and crest of a rooster. 42 It should also be noted, as the Board of Appeal did, that the figurative elements in question representing a rooster resemble each other not only because they share the generic features of a rooster, but above all because those roosters are represented in the same very stylised manner. The result of that stylised representation is that some generic features common to roosters are not even reflected, which further increases the visual similarity of the signs in question. As the intervener submits, the roosters covered by those signs do not contain clearly visible legs, in so far as the body of the roosters appears to balance on a feather. 43 Secondly, the signs in question are distinguished by the word element consisting of the three letters ‘f’ in golden colour, which is present in the earlier mark alone. However, as stated in paragraph 32 above, that element occupies a secondary position in relation to the figurative element representing a stylised rooster that dominates that mark. Although that word element is not negligible, it is therefore less important in the overall impression of that mark. 44 Thirdly, the signs in question also differ in that the elements of the earlier mark are placed on a blue hexagonal background with a golden outline, whereas the mark applied for does not contain any particular background around its single figurative element representing the stylised rooster. As the Board of Appeal observed, it must be held that that difference is based on purely decorative elements of the earlier mark, to which consumers will not attribute a decisive role in the overall impression of that mark. 45 Thus, the differences between the signs in question, relating to the word element ‘fff’ and to the decorative elements of the earlier mark, cannot offset the similarity of the figurative elements representing a stylised rooster, even taking into account the fact that those figurative elements are not identical in those signs and themselves differ in certain respects. 46 In that regard, it must be pointed out that the applicant cannot validly criticise the Board of Appeal for not having assessed the earlier mark and the mark applied for as a whole. Contrary to what the applicant claims, the Board of Appeal did not restrict its analysis solely to the figurative elements representing a rooster, but took account of all the elements included in the signs in question, including the word element of the earlier mark. The fact that the difference created by that word element is not sufficient for a finding that there is no similarity between those signs does not in any way mean that that element was disregarded in the Board of Appeal’s analysis. 47 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that the signs in question were similar. It should nevertheless be pointed out that, in view of the similarities and differences between those signs, the Board of Appeal should have concluded, so far as concerns the visual aspect, that there was an average degree of similarity rather than an ‘at least below-average’ degree of similarity. The phonetic comparison of the signs in question 48 The Board of Appeal found that it was not possible to carry out a phonetic comparison of the signs in question because the mark applied for was purely figurative. 49 There is no reason to call into question that assessment, which is, moreover, not disputed by the applicant. The conceptual comparison of the signs in question 50 The Board of Appeal found that the signs in question coincide in the concept of a highly stylised and impressionistic rooster, with the result that they were conceptually ‘at least highly similar’, which corresponds to a high degree of similarity. 51 The applicant disputes that assessment of the Board of Appeal, arguing that any conceptual similarity is precluded by the different stylisation of the roosters. It argues that no likelihood of confusion can be established by the mere fact that two marks consist of or contain a depiction of the same animal. 52 EUIPO and the intervener dispute the applicant’s arguments. While EUIPO submits that the Board of Appeal did not err in finding a high degree of conceptual similarity, the intervener submits that the signs in question are conceptually identical. 53 According to the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 29 November 2023, Beauty Boutique v EUIPO – Lightningbolt Europe (Representation of a lightning bolt), T‑12/23, not published, EU:T:2023:768, paragraph 42 and the case-law cited). 54 First of all, the Board of Appeal found correctly that the signs in question coincided in the concept of a highly stylised and impressionistic rooster. Although the earlier mark also contains the word element ‘fff’, that element will not affect the conceptual perception of that mark, since no semantic content can be attributed to that element. 55 Next, the Court observes that, contrary to the applicant’s allegations, the differences between the signs in question in the stylisation details of the roosters are not decisive in the conceptual comparison of those signs. As EUIPO submits, and according to the case-law cited in paragraph 53 above, a conceptual comparison consists in assessing whether the signs contain images with analogous semantic content. In addition, account should be taken of the fact that the average consumer must, as a general rule, place his or her trust in the imperfect picture of the marks that he or she has kept in his or her mind (see the case-law cited in paragraph 37 above). Thus, notwithstanding the differences between the images of the roosters, the relevant public will perceive those images as conveying the concept of a highly stylised and impressionistic rooster. 56 Lastly, it should be borne in mind that it is true that, according to the case-law, the mere fact that there is a generic term which would make it possible to describe the semantic content of the signs in question is not such as to establish conceptual similarity (see, to that effect, judgment of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 39). 57 However, in the present case, as EUIPO points out, the signs in question were not considered by the Board of Appeal to be conceptually similar on account of the fact that they were grouped under a generic term or that they belonged to the same general category. On the contrary, it is apparent from paragraphs 30 and 37 of the contested decision that the Board of Appeal found that those signs were conceptually similar not only on the ground that those signs both depicted the generic features of a rooster, but also on the ground that they conveyed the same precise and specific concept, namely that of a highly stylised and impressionistic rooster. 58 In the light of the foregoing, the applicant’s criticism that the Board of Appeal did not rule out any conceptual similarity between the signs in question is not justified. What is more, having regard to the fact that both signs refer to the same concept, namely that of a highly stylised and impressionistic rooster, the Board of Appeal should have found that those signs were conceptually identical rather than highly similar. 59 Consequently, for the purposes of the global assessment of the likelihood of confusion, account must be taken of the conceptual identity of the signs in question. The distinctiveness of the earlier mark 60 The Board of Appeal found that the earlier mark had no meaning in relation to the goods covered by that mark and therefore had an average degree of inherent distinctiveness. 61 There is no reason to call into question that assessment, which is, moreover, not disputed by the applicant. The global assessment of the likelihood of confusion 62 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 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). 63 The Board of Appeal found that, in view of the identity of the goods, the ‘below-average’ degree of visual similarity between the signs in question, the high degree of conceptual similarity between them and the impossibility of comparing them phonetically and the average degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion on the part of the relevant public, whose level of attention was average. 64 The applicant disputes the Board of Appeal’s finding. It submits, in essence, that the differences between the signs in question, compared as a whole, are such as to rule out any likelihood of confusion. In addition, it criticises the Board of Appeal for not having taken into account EUIPO’s previous decision-making practice, which, in its view, is comparable to the present case. 65 EUIPO and the intervener dispute the applicant’s arguments. 66 First of all, it must be pointed out that, contrary to the applicant’s claims, the Board of Appeal did not fail to take into account the marks at issue as a whole or the differences between them. By contrast, it found that, in the light of all the factors taken into account, as referred to in paragraph 63 above, those differences were not sufficient to rule out a likelihood of confusion. 67 Next, as has been stated in paragraphs 47 and 59 above, for the purposes of the global assessment of the likelihood of confusion, it is necessary to take into account the fact that the signs in question were visually similar to an average degree and conceptually identical. Having regard to those circumstances and to the impossibility of comparing those signs phonetically (see paragraphs 48 and 49 above), to the identity of the goods in question (see paragraphs 17 and 18 above) and to the average degree of distinctiveness of the earlier mark (see paragraphs 60 and 61 above), the Court finds, as the Board of Appeal did, that there is a likelihood that the relevant public, which has an average level of attention (see paragraphs 15 and 16 above), may be led to believe, when purchasing the goods concerned, that they come from the same undertaking or from undertakings economically linked to it. 68 In addition, it is necessary to dismiss the applicant’s claim that the contested decision has the effect of prohibiting, in a general manner, the use of a representation of a rooster in a composite sign. As EUIPO submits correctly, the likelihood of confusion does not arise, in the present case, from the mere fact that the signs in question contain a representation of a rooster, but rather from the specific way in which those roosters are represented. 69 Lastly, as regards the applicant’s argument concerning the alleged deviation from EUIPO’s previous decisions, it should be borne in mind that the lawfulness of EUIPO’s decisions must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice (judgment of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53). 70 In those circumstances, the Board of Appeal was correct to find that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001. 71 Accordingly, the single plea in law must be rejected and the action dismissed in its entirety. Costs 72 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. 73 Since the applicant has been unsuccessful, it must be ordered to pay the intervener’s costs, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Kokito I Punt, SL to bear its own costs and to pay those incurred by the Fédération française de football; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Škvařilová-Pelzl Nõmm Kukovec Delivered in open court in Luxembourg on 15 January 2025. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English.