Judgment — ECLI:EU:T:2018:539
Date: 2018-09-13
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Germany

summary of the pleas in law relied on. 18 It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under the provisions, appear in the application itself (judgments of 14 September 2004, Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION), T‑183/03, EU:T:2004:263, paragraph 11, and of 4 March 2010, Mundipharma v OHIM — ALK-Abelló (AVANZALENE), T‑477/08, not published, EU:T:2010:72, paragraph 16). 19 It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19). 20 Accordingly, in so far as the application makes general reference to the observations submitted by the applicant before EUIPO, it is inadmissible to the extent that the general reference to those observations cannot be connected to the pleas and arguments set out in that application. 21 The application will therefore be examined in the light solely of the arguments which it sets out. Substance 22 The applicant relies, in essence, on two pleas in law alleging, respectively, infringement of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001) and infringement of Article 8(1)(b) of Regulation No 207/2009. The first plea in law alleging infringement of Article 42(2) of Regulation No 207/2009 23 The applicant submits that the Board of Appeal was wrong to find that the intervener had submitted proof of use of the earlier mark for the goods in Classes 9 and 25, relied on in support of the opposition. 24 According to the applicant, the case-law states that proof of use may only be accepted for the ‘coherent group of goods or services for which the trade mark has actually been used’, namely, in the present case, as regards the goods in Class 25, the ‘goods to be used as special weather protective outdoor clothing for the purpose of protection against cold, windy and/or rainy weather conditions only’. 25 However, the proof of use of the earlier mark submitted by the intervener for ‘clothing, outer clothing, underwear and headgear for wear and headwear’ referred only to protective outdoor clothing for the purpose of protection against cold, windy and/or rainy weather conditions, which can be seen as a coherent group within the general categories referred to above. 26 Therefore, the earlier mark cannot be regarded as having been used for ‘clothing, outer clothing, underwear, headgear for wear and headwear’ in general. The applicant claims, in that regard, that the same reasoning applies to ‘gloves’, ‘belts’ and ‘socks’, in Class 25. 27 EUIPO and the intervener dispute those arguments. 28 It should be recalled that, under Article 15 of Regulation No 207/2009 (now Article 18 of Regulation 2017/1001), an EU trade mark must, in order to benefit from protection, be used for the goods or services for which it is registered. According to the first sentence of Article 42(2) of Regulation No 207/2009, the earlier trade mark must have been put to genuine use in connection with the goods or services in respect of which it is registered and on which the opposition is based. The third sentence of Article 42(2) of that regulation provides that if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it is to be, for the purposes of the examination of the opposition, deemed to be registered in respect only of that part of the goods or services. 29 The provisions of Article 42 of Regulation No 207/2009 allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his registration, so they cannot be interpreted in such a way as to give rise to an unjustified limitation of the scope of protection of the earlier mark, in particular in the event that the goods or services for which that mark was registered constitute a sufficiently narrowly defined category, and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him (see, to that effect, judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraphs 51 and 53). 30 If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23). 31 However, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not result in the proprietor of that trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. It must be observed in that regard that it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46, and of 6 March 2014, Anapurna v OHIM — Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 63). 32 As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose or intended use of the goods or services in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services. In contrast, the nature of the goods at issue and their characteristics are not, as such, relevant to the definition of subcategories of goods or services (see judgment of 18 October 2016, August Storck v EUIPO — Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 32 and the case-law cited). 33 In the present case, it must be determined whether the articles referred to in annexes 8 to 12 to the intervener’s letter to EUIPO of 11 February 2014 (‘annexes 8 to 12’) constitute an independent subcategory in relation to the goods in Class 25, covered by the earlier mark, in so far as they refer only to weather-protective outdoor clothing. 34 In that regard, it should be noted that, on the one hand, the articles referred to in the evidence of use submitted by the intervener, which are all clothing goods, have the same purpose, since they are intended to cover the human body, to conceal, adorn and protect it against the elements (see, to that effect, judgment of 19 October 2017, Leopard v EUIPO — Smart Market (LEOPARD true racing), T‑7/15, not published, EU:T:2017:731, paragraph 39). In those circumstances, they cannot, in any event, be regarded as ‘substantially different’, within the meaning of the case-law referred to in paragraph 31 above. 35 On the other hand, the fact that the clothing referred to in annexes 8 to 12 has particular weather-protection characteristics is, in principle, irrelevant, in so far as, in accordance with the case-law referred to in paragraph 32 above, the characteristics of the goods are not, as such, relevant to the definition of subcategories of goods or services. This is particularly true since a characteristic of the ‘outer garments’, certain types of ‘underwear’ and ‘headgear’, ‘gloves’ and ‘socks’ referred to by the applicant, by nature, is protection from cold, wind or rain, so that that common characteristic of the goods referred to in the evidence of use cannot justify the definition of an independent subcategory of goods in Class 25. 36 Finally, it should be noted that, although the applicant claims in the application that the Board of Appeal was wrong to find that the opponent had submitted proof of use of the earlier mark, it acknowledged at the hearing that that argument in fact only concerned goods in Class 25, which was noted in the minutes of the hearing. 37 Consequently, the first plea in law must be rejected. The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 38 As a preliminary point, it must be recalled that, in the contested decision, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory for the purpose of assessing the likelihood of confusion was the European Union. 39 The Board of Appeal added that the relevant goods were addressed to the general public and professionals and that the consumer would pay a high level of attention when purchasing goods covered by the earlier mark and an average level of attention with regard to some of the goods in Class 25 covered by the mark applied for (clothing, footwear, headgear and bags). 40 That assessment has not been challenged by the parties. The comparison of the goods 41 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, in particular, 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). 42 As regards the goods at issue, in Class 25, which alone constitute the subject matter of the dispute before the Court, in the contested decision, the Board of Appeal, after stating that all the goods at issue, in Class 25, were clothing, footwear and headgear, found, on the one hand, that ‘clothing’ and ‘headgear’ appeared in the same way in the two lists of goods and, therefore, were identical and, on the other hand, that the ‘footwear’ in question and the ‘clothing’ and ‘headgear’ covered by the earlier mark were similar, in that, in particular, they had the same purpose, namely, to cover and protect certain parts of the human body, that they were often sold in the same retail shops and that they were complementary. The Board of Appeal added that they were fashion articles designed and produced together by many manufacturers and designers. 43 The applicant claims, in essence, that, in view of the evidence adduced by the intervener to establish genuine use of the earlier mark, it must be concluded that the goods covered by the trade mark application serve different purposes, are obviously targeted at completely different categories of consumers, and are not sold in the same retail shops as the goods covered by the earlier mark. 44 EUIPO and the intervener contest that argument. 45 In the present case, it should be noted, as a preliminary point, that, as is apparent from paragraphs 34 and 35 above, the goods listed in annexes 8 to 12 do not constitute an independent subcategory as compared with the goods in Class 25 covered by the earlier mark. Therefore, it is appropriate to compare the goods covered by the marks at issue on the basis of the wording contained in the application for registration. 46 In that regard, on the one hand, according to the case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see, to that effect, judgment of 13 December 2012, Natura Selection v OHIM — Ménard (natura), T‑461/11, not published, EU:T:2012:693, paragraph 33 and the case-law cited). In the present case, that is the case for ‘clothing’ and ‘headgear’, which appear in both lists covered by the marks at issue, with the result that they should be regarded as identical. 47 On the other hand, the applicant wrongly calls into question the Board of Appeal’s finding that the ‘footwear’ covered by the mark applied for and the ‘clothing’ and ‘headgear’ covered by the earlier mark are similar. Those goods belong to the same class (Class 25), may be produced by the same operators or sold together in the same sales outlets (see, to that effect, judgment of 16 December 2009, Giordano Enterprises v OHIM — Dias Magalhães & Filhos (GIORDANO), T‑483/08, not published, EU:T:2009:515, paragraph 20 and the case-law cited). Moreover, while it is true that shoes clothe the feet, whereas the goods covered by the earlier mark in respect of which use has been proved clothe other parts of the human body, those goods nevertheless have a similar purpose, given that they are manufactured to cover the human body, to hide it, protect it and adorn it (see judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraphs 96 and 98 and the case-law cited). 48 In those circumstances, the applicant’s argument alleging a lack of similarity or, at the very least, a low degree of similarity between the goods covered by the marks at issue must be rejected. The comparison of the signs 49 It must be recalled that it was held that two marks were similar when, from the point of view of the relevant public, they were at least partially identical as regards one or more relevant aspects (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN),T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46 and the case-law cited). 50 The global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression conveyed by the marks, bearing in mind, in particular, their distinctive and dominant components (see judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47 and the case-law cited). 51 The marks to be compared are as follows: Contested sign Earlier sign tigha TAIGA – Visual similarity 52 The Board of Appeal, in point 39 of the contested decision, considered that, contrary to the findings in the decision of the Opposition Division, the signs at issue were visually highly similar. The Board of Appeal observed, in that regard, that those signs shared four out of five letters, in almost the same position, namely ‘t’, ‘i’, ‘g’ and ‘a’, and that they were also identical in length. The Board of Appeal noted that, although they differed only in terms of the letter ‘h’ of the mark applied for and the second letter of the earlier mark, namely ‘a’, taken together, they produced the same visual impression. 53 The applicant submits that the signs at issue differ clearly from one another. A consumer would easily perceive the unusual composition of the mark applied for. Although the applicant does not dispute that the signs at issue begin with the letter ‘t’ and end with the letter ‘a’, it maintains that the letter sequences ‘aig’ and ‘igh’ between the letter ‘t’ and the letter ‘a’ of the signs at issue are not at all similar. In addition, the mark applied for is clearly dominated by its two asymmetric consonants ‘g’ and ‘h’, which occupy a central position. 54 EUIPO and the intervener dispute those arguments. 55 In the present case, it must be noted that, as EUIPO states, the signs at issue are of the same length (five letters) and have four of their five letters in common, in almost the same position. 56 The differences between the signs at issue are limited to their middle sections, namely the group of letters ‘aig’ and the group of letters ‘igh’. However, as is apparent from the case-law, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 27 and the case-law cited). 57 In those circumstances, it must be concluded that, in view of the nearly identical letters making up the signs at issue and their positioning, the Board of Appeal was correct to find that the signs at issue were visually similar. – Phonetic similarity 58 The Board of Appeal took the view, in point 40 of the contested decision, that the signs at issue were phonetically identical, at least for English-speaking consumers, to the extent that it was impossible, in the English language, to pronounce the letter ‘h’ placed in the middle of the contested sign and the pronunciation of the syllables ‘ti’ and ‘tai’ was identical. 59 The applicant claims that there is no phonetic similarity between the signs at issue since the earlier mark is pronounced ‘taiga’, whereas the mark applied for is pronounced ‘tiga’. Thus, the vowel ‘i’ and the two consonants (‘gh’) that follow lead to a short pronunciation of the central parts of the mark applied for. In that regard, the applicant adds that, contrary to the Board of Appeal’s view, there is no evidence that the mark applied for is pronounced like the English word ‘tiger’. 60 However, it should be noted, first of all, that the marks begin with the same letter (‘t’), which is followed by a vowel, next, that the applicant has adduced no evidence to suggest that the sound of the first syllables ‘ti’ and ‘tai’ is not identical for the English-speaking public and, finally, the last syllable of the signs at issue (‘gha’/‘ga’) is identical. 61 In those circumstances, there is, at least for the English-speaking public, nothing to separate the pronunciation of the two signs. 62 Thus, the Board of Appeal did not err in law in finding that the signs at issue were phonetically identical, at least for English-speaking consumers, who form a significant proportion of EU consumers. – Conceptual similarity 63 The Board of Appeal, in point 41 of the contested decision, considered that, from a conceptual perspective, the majority of the relevant public will not link the signs at issue to any concept. The Board of Appeal stated, in that regard, that, although it is true that the word ‘taiga’ refers to the coniferous evergreen forests of subarctic lands covering vast areas of North America and Eurasia, the average consumer is largely unaware of this. It added that, in any event, even if the word ‘taiga’ were understood, the signs do not share any common concept because the contested sign is devoid of any meaning. 64 Finally, the applicant submits that there is no conceptual similarity between the word ‘taiga’ and the word ‘tigha’. It submits that whereas the mark applied for does not have any meaning, the earlier mark TAIGA describes a boreal forest. However, contrary to the Board of Appeal’s finding, the meaning of this word is understood by the relevant public in many EU countries. The name of the landscape in question is ‘taiga’ in, inter alia, English, French and German. Moreover, in view of the well-known conceptual pair of terms ‘taiga’ and ‘tundra’, it must be assumed that the word ‘taiga’ is known by the relevant public. Indeed, as is clear from annex B to the opponent’s appeal against the decision of the Opposition Division (an extract from the online encyclopaedia Wikipedia), ‘the taiga is the world’s largest terrestrial biome’ and ‘in Eurasia, it covers most of Sweden, Finland, much of Norway, some lowland/coastal areas of Iceland, much of Russia’. The applicant concludes from this that the relevant public will clearly identify the meaning of the word ‘taiga’ as a well-known and significant landscape of northern Europe. By contrast, it will consider the mark applied for to be a fanciful term and, accordingly, easily distinguish it from the earlier mark. 65 According to the applicant, even if it were the case that the words ‘taiga’ and ‘tigha’ were visually or phonetically similar, it could not be concluded that the signs at issue are similar. According to settled case-law, conceptual differences may counteract to a large extent visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning. That is the case here. 66 EUIPO and the intervener dispute those arguments. 67 In the present case, it must be noted that the applicant, in claiming that the meaning of the word ‘taiga’ is ‘understood by the relevant public in many [EU] countries’, has failed to demonstrate that that word has, in accordance with the case-law, from the point of view of the relevant public made up of EU consumers, as a whole, a clear and specific meaning so that the public is capable of grasping it immediately (see, to that effect, judgments of 14 October 2003, BASS, T‑292/01, EU:T:2003:264, paragraph 54, and of 1 June 2016, Wolf Oil v EUIPO — SCT Lubricants (CHEMPIOIL), T‑34/15, not published, EU:T:2016:330, paragraph 46). 68 As EUIPO correctly maintains, the extract from the online encyclopaedia Wikipedia submitted by the applicant in annex B to its appeal against the decision of the Opposition Division does not demonstrate that the semantic connotations relating to the word ‘taiga’ are well-known facts likely to be known by consumers in all parts of EU territory. 69 It is settled case-law that an earlier EU trade mark, given its unitary nature, can be relied on in opposition proceedings against any subsequent trade mark application which adversely affects its protection, even if only in relation to the perception of consumers in part of the European Union (see, to that effect, judgment of 15 July 2015, Westermann Lernspielverlag v OHIM — Diset (bambinoLÜK), T‑333/13, not published, EU:T:2015:490, paragraph 44 and the case-law cited and order of 1 December 2016, Market Watch Franchise & Consulting v EUIPO, C‑402/16 P, not published, EU:C:2016:924, paragraph 7 and the case-law cited). 70 In the present case, it is very likely that, as the applicant claims, that part of the relevant public will perceive the element ‘taiga’ as referring to the boreal forest; that might, in particular, be the case in northern countries and, to a lesser extent, in the east of the European continent. 71 However, there is nothing in the file to establish that the word ‘taiga” has a specific and immediate meaning for average consumers who are located in the parts of the territory of the European Union other than the north and east of the European continent, who constitute a significant proportion of EU consumers. That is the case, inter alia, for average consumers in southern parts of the European continent and English-speaking consumers. 72 In that regard, it should be noted, for the sake of completeness, that, for English-speaking consumers, for whom the word ‘taiga’ has a clear and specific meaning, the signs at issue convey the same concept when spoken aloud, since they are pronounced identically in English (see paragraph 62 above). Far from offsetting the likelihood of confusion, such conceptual similarity can only, on the contrary, reinforce it. 73 In conclusion, given that, for English-speaking consumers, the word ‘taiga” is not associated with any particular concept, the applicant is wrong to claim that the meaning of that word is such as to offset the visual and phonetic similarities between the signs at issue. Global assessment of the likelihood of confusion 74 The Board of Appeal concluded, in point 44 of the contested decision, that the earlier mark had an average degree of distinctive character, that the marks at issue were phonetically identical and that they bore a high degree of visual similarity. In that regard, the Board of Appeal recalled the case-law according to which a consumer usually chooses goods visually relying on his imperfect recollection of the mark. It concluded, in point 45 of the contested decision, that even an attentive consumer will regard the goods at issue, which are considered similar or identical and bear the mark tigha, as coming from the same entity as the outdoor and safety clothing bearing the mark TAIGA or from an entity linked to it. Accordingly, it concluded, in paragraph 46 of that decision, that there was a likelihood of confusion. 75 The applicant submits, first, that in the framework of the global assessment required by Article 8(1)(b) of Regulation No 207/2009, any potential phonetic or visual similarities between the mark applied for and the earlier mark are counteracted by the evident conceptual differences, such as those in the present case. Second, the applicant maintains that even if it was assumed that there was no counteraction, both signs are marketed for respectively ‘outer clothing’ (in the case of the earlier mark) and ‘clothing’ (in the case of the mark applied for), which are usually sold in self-service shops where consumers choose the goods themselves. In these circumstances, in accordance with the case-law, the visual dissimilarity between the signs at issue is more important than any potential or presumed phonetic similarity. Therefore, taking into account moreover, the low degree of similarity regarding the list of the goods, there is no likelihood of confusion between the signs at issue. 76 EUIPO and the intervener dispute that argument. 77 In the first place, in so far as the applicant claims that any potential phonetic or visual similarity between the mark applied for and the earlier mark is offset by evident conceptual differences such as those in the present case, it must be noted, as was stated in paragraphs 71 to 73 above, that the ‘evident conceptual differences’ alleged by the applicant have not been established throughout the relevant territory, namely the territory of the European Union as a whole. 78 In the second place, the fact that the goods covered by the marks at issue are usually sold in self-service shops where a consumer chooses the goods himself and that, therefore, in accordance with the case-law, the visual aspect is more important than the phonetic aspect, on the contrary, points to the existence of a likelihood of confusion, as is apparent from point 44 of the contested decision (see paragraph 74 above). It was held that the Board of Appeal was right to consider that the signs at issue were visually similar (see paragraph 57 above). 79 In the third place, the applicant is wrong to claim that there is no similarity or, at the very least, a low degree of similarity between the goods covered by the marks at issue, as was held in paragraph 48 above. 80 In those circumstances, taking account of the visual and phonetic similarity of the signs at issue, their lack of clear and specific meaning for a significant part of the relevant public, and the similarity or identity of the goods concerned, the Board of Appeal was right to find that there was a likelihood of confusion. 81 The second plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety. Costs 82 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders ACTC GmbH to pay the costs. Gervasoni Madise Da Silva Passos Delivered in open court in Luxembourg on 13 September 2018. E. Coulon S. Gervasoni Registrar President * Language of the case: English.