JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
1 September 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark GT RACING – Earlier EU figurative trade mark representing bold curved, vertical and horizontal lines – Earlier EU word mark GT – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Earlier non-registered national marks – Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) – Rules governing common-law action for passing off – No misrepresentation – Use in the course of trade of more than mere local significance – Agreement on the withdrawal of the United Kingdom from the European Union and from Euratom)
In Case T‑463/20,
Sony Interactive Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC and M. Maier, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Wai Leong Wong,
residing in Glasgow (United Kingdom),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 May 2020 (Case
R 1612/2019‑4), relating to opposition proceedings between Sony Interactive Entertainment Europe and Mr Wong,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, D. Gratsias and T. Perišin, Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 20 July 2020,
having regard to the response lodged at the Court Registry on 6 November 2020,
further to the hearing on 19 May 2021,
gives the following
Judgment
Background to the dispute
1        On 23 August 2017, the other party to the proceedings before the Board of Appeal, Mr Wai Leong Wong, 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 mark was sought for the word sign GT RACING.
3        The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Leather and imitations of leather and goods made of these materials (not included in other classes) namely leather bags, cases, holdalls, rucksacks, wallets, purses, luggage and suitcases; bags; sports bags; trunks and travelling bags; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, business card cases; tote bags, bottle bags, record bags, book bags; handbags; shopping bags; cases, luggage and suitcases, weekend bags; briefcases; umbrellas and walking sticks; golf umbrellas; parts, fittings and accessories for all the aforesaid goods’.
4        On 4 December 2017, the applicant, Sony Interactive Entertainment Europe Ltd (formerly Sony Computer Entertainment UK Ltd), filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        The EU figurative mark reproduced below, registered on 19 December 2002 under No 820738 for goods in Classes 9, 16 and 28 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer and video games; computer and video game programs; audio and video recordings; phonograph records, cassettes, tapes, compact discs, video discs, magnetic data media’;
–        Class 16: ‘Printed matter (excluding bicycle-related decals and bicycle-related posters); books; publications; stationery’;
–        Class 28: ‘Toys; games and playthings (excluding bicycles and bicycle accessories); electronic handheld games’.
–        The earlier EU word mark GRAN TURISMO, registered on 23 December 1999 under No 943530 covering goods in Classes 9, 16 and 28 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer and video games; computer and video game programs, audio and video recordings; phonograph records; cassettes, tapes; compact discs; video discs; magnetic data media’;
–        Class 16: ‘Printed matter; books; publications; stationery’;
–        Class 28: ‘Toys; games and playthings; electronic handheld games’.
–        The EU word mark GRAN TURISMO NETWORK, registered on 7 March 2003 under No 2261873 for goods and services in Classes 9, 16, 28, 41 and 42 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer hardware; computer and video game apparatus; computer game consoles; computer and video games; computer and video game programs; computer software; computer peripherals; audio and video tapes; cassettes; magnetic data media; compact discs; video discs; DVDs; audio and video recordings; cinematographic films; electronic apparatus and instruments; optical apparatus and instruments; cameras; films; audio and video apparatus; sunglasses; spectacles; sunglasses and spectacles frames; parts and accessories for all the aforesaid goods’;
–        Class 16: ‘Books, manuals, printed matter, publications; stationery’;
–        Class 28: ‘Toys, games and playthings, handheld electronic games’;
–        Class 41: ‘Provision of on-line entertainment; provision of computer and video games and computer and video game programs from a computer database or via the Internet’;
–        Class 42: ‘Computer design services; computer programming services; advisory and consultancy services relating to computer hardware; computer software and computer networks; web site maintenance; creation and hosting services; providing access to and leasing access time to computer networks, computer databases and the Internet; machine rental services; information provided on-line or via the Internet; advisory and consultancy services relating to all the aforesaid’.
–        The EU figurative mark reproduced below, registered on 22 April 2013 under No 12340981 for goods and services in Classes 9, 16, 28 and 41 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer and video games; computer and video game programs’;
–        Class 16: ‘Printed matter; books; stationery’;
–        Class 28: ‘Gaming apparatus; gaming apparatus for use with television receivers and/or monitors; hand-held electronic games; gaming apparatus (other than adapted for use with television receivers); bags and cases adapted or shaped to any of the aforementioned goods; parts and fittings for all the aforementioned goods’;
–        Class 41: ‘Providing on-line computer games; providing information relating to on-line computer games’.
–        The EU figurative mark reproduced below, registered on 22 April 2014 under No 12341061 for goods and services in Classes 9, 16, 28 and 41 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Computer and video games; computer and video game programs’;
–        Class 16: ‘Printed matter; books; stationery’;
–        Class 28: ‘Gaming apparatus; gaming apparatus for use with television receivers and/or monitors; hand-held electronic games; gaming apparatus (other than adapted for use with television receivers); bags and cases adapted or shaped to any of the aforementioned goods; parts and fittings for all the aforementioned goods’;
–        Class 41: ‘Providing on-line computer games; providing information relating to on-line computer games’.
–        The EU word mark GT, registered on 11 December 2000 under No 820662, for goods in Class 16 corresponding to the following description: ‘Printed matter (excluding bicycle-related decals and bicycle-related posters); books; publications; stationery’.
–        The non-registered word mark GT, used in the course of trade in the United Kingdom for the following goods: ‘Computer game software; video game software; computer game hardware; video game hardware; driving simulators; racing seats; organisation of online, virtual and live competitions and events related to motor racing; organisation of driver training and racing camps; streaming services; sound and video recordings provided online; downloadable sound and video recordings; entertainment services related to virtual and live motorsport events; designing of concept vehicles; organisation of exhibitions, conventions and festival events related to motor racing; transmission of information, sound and images via communication and computer networks; communication of information (including web pages); provision of information for or relating to education, entertainment, cultural or recreational purposes in relation to motor sport and motor vehicles; recorded films; data, images, games, graphics, text, programs or information all being provided on magnetic data carriers or other digital recording media; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; electronic games; game consoles; advertising, marketing and promotion services; retail services (including online retail services) related to audio or video recordings (in physical form, downloadable form and/ or available via online streaming), software and electronic games, all related to motorsport; provision of online entertainment relating to video games and motor sport; provision of computer and video games and computer and video game programs from a computer database or via the Internet; printed matter, books, publications, wallets, bags, clothing, sweaters, caps, hats’.
–        The non-registered word mark GRAN TURISMO, used in the course of trade in the United Kingdom for the same goods as the non-registered word mark GT referred to above.
–        The non-registered word mark VISION GT, used in the course of trade in the United Kingdom for the following goods and services: ‘Computer game software; video game software; computer game hardware; video game hardware; designing of concept vehicles; organisation of exhibitions, conventions and festival events related to motor racing; streaming services; sound and video recordings provided online; downloadable sound and video recordings; entertainment services related to virtual and live motorsport events; transmission of information, sound and images via communication and computer networks; communication of information (including web pages); provision of information for or relating to education, entertainment, cultural or recreational purposes in relation to motor sport and motor vehicles; provision of online entertainment relating to video games and motor sport, printed matter, books, publications, wallets, bags, clothing, sweaters, caps, hats’.
–        The non-registered word mark VISION GRAN TURISMO, used in the course of trade in the United Kingdom for the same goods and services as the non-registered word mark VISION GT referred to above.
–        The non-registered figurative mark, reproduced below, used in the course of trade in the United Kingdom for the same goods and services as the non-registered word mark VISION GT referred to above:
–        The non-registered figurative mark, reproduced below, used in the course of trade in the United Kingdom for the same goods and services as the non-registered word mark VISION GT referred to above:
–        The non-registered word mark GT ACADEMY, used in the course of trade in the United Kingdom for the same goods and services as the non-registered word mark GT referred to above.
–        The non-registered figurative mark, reproduced below, used in the course of trade in the United Kingdom for the same goods and services as the non-registered word mark GT referred to above:
6        The applicant claimed that the six earlier EU trade marks had a reputation in the European Union.
7        The grounds put forward in support of the opposition were those set out in Article 8(1)(b), 8(4) and 8(5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b),
8(4) and 8(5) of Regulation 2017/1001).
8        On 17 June 2019, the Opposition Division rejected the opposition in its entirety.
9        On 24 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 8 May 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
11      In particular, as regards, in the first place, the ground of opposition based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found, as a preliminary point, that the relevant territory was, having regard to the six earlier EU trade marks, the European Union as a whole. The Board of Appeal also stated that the opposition was to be examined in the light of the general public with at most an average level of attention.
12      As regards, first, the earlier EU word mark GT, the Board of Appeal found, in essence, that the goods for which that mark had been registered differed from the goods covered by the mark applied for.
13      As regards, second, the earlier EU figurative mark, the Board of Appeal found
that, since that mark was devoid of any meaning on the part of the relevant public with regard to the goods and services at issue, it had a normal degree of distinctiveness. The Board of Appeal held, moreover, that the signs at issue were visually different and that a phonetic and conceptual comparison was not possible.
14      The Board of Appeal therefore concluded that the opposition based on that earlier mark should be rejected, as the condition relating to the existence of a similarity of the signs at issue is not satisfied in the present case. Consequently, the Board of Appeal found that it was not necessary to assess the documents produced by the applicant in support of the claims relating to the enhanced distinctiveness or to the reputation of that mark. Where there is no similarity between the signs, the renown or reputation of the earlier mark and the fact that the goods or services in question are identical are not sufficient for a finding that there is a likelihood of confusion.
15      As regards, third, the earlier EU figurative mark, the Board of Appeal found that the conclusion as to the similarity of the signs at issue could not be different from that which it had reached concerning the earlier EU figurative mark, in respect of which it had found that there was no similarity to the mark applied for.
16      As regards, fourth, the earlier EU word marks GRAN TURISMO and GRAN TURISMO NETWORK and the earlier EU figurative mark
, the Board of Appeal, referring to the Opposition Division’s decision, found that the mark applied for differed from those earlier marks and that the opposition based on those marks therefore had to be rejected, as the condition regarding the similarity of the signs at issue was also not satisfied.
17      As regards, in the second place, the ground of opposition based on Article 8(5) of Regulation No 207/2009, the Board of Appeal found, in essence, that, since the identity or similarity of the signs at issue is a necessary condition for the application of that provision, and since that condition was not satisfied in the present case in respect of the earlier EU word marks GRAN TURISMO and GRAN TURISMO NETWORK and in respect of the earlier EU figurative marks
,
and, the opposition based on those marks had to be rejected without it being necessary to examine the proof submitted by the applicant in support of their reputation.
18      The Board of Appeal also stated, in response to the arguments put forward by the applicant concerning the earlier EU figurative mark
, that it agreed with the Opposition Division’s assessment that the applicant had not shown that that mark had acquired a reputation for the goods in Class 16 in respect of which it had been registered.
19      As regards, in the third place, the ground of opposition based on Article 8(4) of Regulation No 207/2009, the Board of Appeal found, first, that the applicant’s claim of passing off had to be rejected as regards the earlier non-registered figurative marks, , , and the earlier non-registered word mark GRAN TURISMO. More specifically, the Board of Appeal rejected the applicant’s assertion that a significant part of the relevant public would be led to purchase the goods covered by the mark applied for, believing that they were the applicant’s goods, given that the signs at issue cannot be regarded as similar.
20      The Board of Appeal also stated, as regards the earlier non-registered word mark VISION GRAN TURISMO, that the assessment regarding the similarity of the signs at issue could not be different for that mark, which includes the additional word ‘vision’, from that relating to the earlier non-registered word mark GRAN TURISMO, in relation to which it had found that the mark applied for was dissimilar overall.
21      The Board of Appeal found, second, that the applicant had not proved to the requisite legal standard that it had used in the course of trade, before the date of the application for registration of the mark applied for, the non-registered word marks GT, GT ACADEMY and VISION GT, of more than mere local significance for the goods and services claimed. Consequently, the opposition based on Article 8(4) of Regulation No 207/2009 had to be rejected.
Forms of order sought
22      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.
23      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Determination of the regulation applicable ratione temporis
24      Given the date on which the application for registration at issue was filed, namely 23 August 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
25      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their arguments to Article 8(1)(b) and
8(5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and
8(5) of Regulation No 207/2009.
Substance
26      In support of its action, the applicant relies on seven pleas in law. The first plea alleges that the Board of Appeal erred as regards the specific identification of the relevant public. The second plea alleges that the Board of Appeal erred as regards the comparison of the earlier EU figurative mark
and the mark applied for. The third plea alleges that the Board of Appeal erred as regards the comparison of the goods. The fourth plea alleges that the Board of Appeal erred as regards the perception by the relevant public of the earlier EU figurative mark . The fifth plea alleges that the Board of Appeal erred in that it failed to take into consideration the other grounds of opposition set out in Article 8(1)(b) and 8(5) of Regulation No 207/2009. The sixth plea alleges that the Board of Appeal erred as regards the application of the rules relating to an action for passing off. The seventh plea alleges that the Board of Appeal erred in failing to take into consideration the other criteria of the law relating to an action for passing off.
27      The Court considers it appropriate to deal with the second and fourth pleas together, in so far as they both relate to the comparison of the mark applied for and of the earlier EU figurative mark .
28      As a preliminary point, it should be noted that, as regards opposition proceedings based on Article 8(1)(b) and
8(5) of Regulation No 207/2009, the applicant limited the scope of the present action to the earlier EU figurative mark
(‘the earlier EU figurative mark’) and to the earlier EU word mark GT (‘the earlier EU word mark’).
29      The applicant also states that, as regards the opposition based on the earlier EU word mark, the present action is based only on ‘printed matter (excluding bicycle-related decals and bicycle-related posters)’ in Class 16, in respect of which it is registered. Likewise, as regards the opposition based on the earlier EU figurative mark, the present action is based solely on the following goods for which it is registered:
–        Class 9: ‘Computer and video games; audio and video recordings; phonograph records, cassettes, tapes, compact discs, video discs, magnetic data media’;
–        Class 16: ‘Printed matter (excluding bicycle-related decals and bicycle-related posters)’;
–        Class 28: ‘Electronic handheld games’.
30      It should also be recalled that, in the first place, under Article 8(1)(b) of Regulation No 207/2009, 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
31      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
32      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
33      In the second place, under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
34      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. Since the above conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 3 May 2018, Gall Pharma v EUIPO – Pfizer (Styriagra), T‑662/16, not published, EU:T:2018:242, paragraph 15 and the case-law cited).
35      The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting
of unfair advantage taken of the distinctive character or of the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
36      In the third place, under Article 8(4) of Regulation No 207/2009, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for is not to be registered where and to the extent that, pursuant to EU legislation or the law of the Member
State governing that sign:
‘(a)      rights to that sign were acquired prior to the date of application for registration of the EU
trade mark, or the date of the priority claimed for the application for registration of the EU
trade mark;
(b)      that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’
37      Pursuant to Article 8(4) of Regulation No 207/2009, the proprietor of a non-registered trade mark may oppose the registration of an EU mark if that non-registered trade mark satisfies four cumulative conditions. The non-registered trade mark must be used in the course of trade; it must be of more than mere local significance; the right to that mark must have been acquired pursuant to the law of the Member State in which the mark was used, prior to the date of application for registration of the EU trade mark; lastly, that mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark. While the first two conditions must be interpreted in the light of EU law, the last two are to be assessed in the light of the law governing the sign concerned (see judgment of 17 January 2019, Turbo-K International v EUIPO – Turbo-K (TURBO-K), T‑671/17, not published, EU:T:2019:13, paragraph 33 and the case-law cited).
The first plea in law, alleging that the Board of Appeal erred in the identification of the relevant public
38      The applicant submits, in essence, that the Board of Appeal infringed, in the present case, the obligation imposed on any body ruling on an opposition brought under Article 8(1)(b) or 8(5) of Regulation No 207/2009 to identify precisely the relevant public and its level of sophistication. According to the case-law, where the wording of the goods or services of one of the marks at issue is wider
than the wording of the other, the relevant public is defined by the narrower wording. The Board of Appeal should therefore have identified the relevant public, first, as regards the earlier EU figurative mark, as comprising consumers of video games and electronic handheld gaming devices and, second, as regards the earlier EU word mark, as comprising purchasers of printed matter in Class 16 and consumers who have an interest in printed matter associated with video games, such as posters, artwork, yearbooks, gaming magazines, collecting cards, manuals and other similar goods. Accordingly, a significant proportion of that public, comprising consumers of video games, perceives the sign
as embodying the letters ‘G’ and ‘T’ in stylised form, that sign having been used for one of the applicant’s best-selling video games for many years.
39      EUIPO disputes the applicant’s arguments.
40      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 or services 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).
41      In the present case, the Board of Appeal found, in paragraph 14 of the contested decision, that the relevant territory was, having regard to the earlier EU trade marks, the European Union as a whole. The Board of Appeal took the view, in paragraph 15 of the contested decision, that, in the light of the nature of the goods and services at issue, the relevant public, in relation to which the existence of a likelihood of confusion had to be assessed, was the general public with at most an average level of attention.
42      The applicant does not dispute the level of attention of the relevant public adopted by the Board of Appeal, but does dispute its identification of the relevant public. It submits that the Board of Appeal should have identified the relevant public as comprising, first, as regards the opposition based on the earlier EU figurative mark, consumers of video games and electronic handheld gaming devices, because they also purchase the wide variety of goods in Class 18 covered by the mark applied for and, second, as regards the opposition based on the earlier EU word mark, purchasers of printed matter
in Class 16 and consumers who have an interest in printed matter associated with video games because they also purchase merchandising goods which in theory are in Class 18 covered by the mark applied for.
43      The applicant’s argument is based on the premiss that consumers of the goods covered by the marks at issue overlap, with the result that the relevant public should have been defined by reference to the narrower wording, namely, in the present case, consumers of the goods covered by the earlier marks.
44      In the present case, the goods covered by the mark applied for are goods made of leather and imitations of leather referred to in paragraph 3 above in Class 18, such as transport bags, travelling bags, small leather goods and umbrellas. The goods in respect of which the earlier EU word mark and the earlier EU figurative mark were registered, and which the applicant takes into consideration in the present action, are the goods referred to in paragraph 29 above in Classes 9, 16 and 28, such as electronic handheld games, phonograph records, cassettes and certain printed matter.
45      Irrespective of whether consumers of the goods for which those earlier marks were registered and which the applicant takes into consideration in the present action are also consumers of the goods covered by the mark applied for, it should be noted that, in any event, the goods at issue are all aimed at the general public, as they are not goods intended for a specialist public or for a limited circle of persons. Those goods are not sold on a ‘target market’, but on a ‘general public market’. They are easily accessible to all. Special skills or knowledge are neither essential nor required for their purchase. They may therefore be treated in the same way as everyday consumer goods.
46      It follows that the Board of Appeal was correct in finding that the public in relation to which the analysis of the likelihood of confusion had to be carried out consisted of the general public with at most an average level of attention.
47      Furthermore, in so far as the applicant takes the view that the relevant public has a higher level of attention in the present case, given the nature of the goods in question, its knowledge, its experience and its involvement in the purchase of those goods, it must be stated that the higher the level of attention, the lower will be the likelihood of confusion, given that the relevant public will be better able to perceive the differences between the signs and thus not to confuse them. That line of argument is therefore ineffective.
48      Lastly, the applicant’s argument relating to the relevant public’s perception of the earlier EU figurative mark does not relate to the determination of the relevant public, but to the global assessment of the likelihood of confusion. Consequently, that argument can be examined only in the context of that assessment.
49      In the light of all of the foregoing, the present plea must be rejected as unfounded.
The second and fourth pleas in law, alleging that the Board of Appeal erred in the comparison of the signs at issue
50      The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by narrowing the perception of the earlier EU figurative mark to that of consumers ‘uneducated’ in the way of perceiving it and by entirely disregarding the applicant’s use of its mark. That approach on the part of the Board of Appeal, it argues, contradicts paragraph 37 of the judgment of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497). The applicant also submits that the Board of Appeal erred in taking an abstract approach to the question of the perception by the relevant public of the earlier EU figurative mark rather than a real-world approach. That question must always be approached from the perspective of the relevant public. The applicant argues that the relevant public, which includes video games enthusiasts, perceives the earlier mark as a stylised representation of the capital letters ‘G’ and ‘T’, which the Board of Appeal recognised when examining the opposition based on Article 8(4) of Regulation No 207/2009. In addition, the reference by the Board of Appeal, in the contested decision, to the judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM
(C‑254/09 P, EU:C:2010:488), and of 31 January 2019, Pear Technologies v EUIPO – Apple (PEAR) (T‑215/17, not published, EU:T:2019:45), is irrelevant in the light of the facts in the present case.
51      EUIPO disputes the applicant’s arguments.
52      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 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).
53      According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).
54      In the present case, the applicant limited its objection to the earlier EU figurative mark. The marks to be compared are as follows:
–        the mark applied for is the word sign GT RACING;
–        the earlier mark is the figurative sign .
55      The Board of Appeal found, in essence, that, if the abstract figurative element of that earlier mark represents the capital letters ‘G’ and ‘T’, their depiction was so stylised that, in the absence of any clear reference or information indicating that that element represented the letters in question, it was unlikely that they would be recognised by the relevant public. The consumer would have to make significant efforts to perceive characteristics which constitute those letters in the two abstract forms and
contained in that mark. The Board of Appeal accordingly concluded that the signs at issue were visually different and that a phonetic and conceptual comparison was not possible.
56      The applicant disputes that assessment and submits that the Board of Appeal erred in limiting the examination of the similarity of the signs at issue to the ‘uneducated’ consumer in the manner in which the earlier EU figurative mark is perceived and ignored the applicant’s use of that mark. That error, it argues,
vitiates the Board of Appeal’s entire analysis.
57      In that regard, it must be borne in mind that the examination of the similarity of the marks at issue takes into consideration those marks in their entirety, as they have been registered or as they have been applied for (see judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 95 and the case-law cited).
58      In addition, although the marketing circumstances are a relevant factor in the application of Article 8(1)(b) of Regulation No 207/2009, they are to be taken into account at the stage of the global assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue.
That assessment, which is only one of the stages in the examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, involves comparing the signs at issue in order to determine whether those signs are visually, phonetically and conceptually similar. Although that comparison must be based on the overall impression made by those signs on the relevant public, account must nevertheless be taken of the intrinsic qualities of the signs at issue (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraphs 71 and 72 and the case-law cited).
59      Similarly, the reputation of an earlier mark or its particular distinctive character must be taken into consideration for the purposes of assessing the likelihood of confusion, and not for the purposes of assessing the similarity of the marks at issue, which is an assessment made prior to that of the likelihood of confusion (see judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 54 and the case-law cited).
60      Therefore, it must be held that, contrary to the applicant’s claims, the Board of Appeal’s analysis is not vitiated by an error of law because it compared the signs at issue on the basis of the perception of the ‘uneducated’ consumer in such a way as to perceive the earlier EU figurative mark and did not take into account the applicant’s use of its mark.
61      In addition, contrary to the applicant’s claims, the Board of Appeal’s analysis does not contradict
paragraph 37 of the judgment of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497). As EUIPO points out, paragraph 37 of that judgment concerns the impact of the use of the earlier mark in the global assessment of the likelihood of confusion or unfair advantage within the meaning of Article 9(1)(b) and (c) of Regulation No 207/2009 (now Article 9(1)(b) and (c) of Regulation 2017/1001), and not in the comparison of the signs at issue, as in the present case.
62      The same applies in regard to the Board of Appeal’s observation in paragraph 118 of the contested decision that ‘Exhibits 6-8
[produced by the applicant before the Opposition Division] principally confirm that “GT” is understood as an abbreviation of the [earlier EU figurative mark] by the consumers of the [applicant’s] products …, who are acquainted with such abbreviation’. Apart from the fact that it was formulated in the examination of the ground of opposition based on Article 8(4) of Regulation No 207/2009, that observation was, in any event, limited to consumers of the applicant’s goods who recognised that abbreviation. However, as observed above, that recognition is not relevant for the purposes of the comparison of the signs at issue under Article 8(1)(b) of Regulation No 207/2009.
63      Lastly, as regards the references made in the contested decision to the judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM (C‑254/09 P, EU:C:2010:488), and of 31 January 2019, PEAR (T‑215/17, not published, EU:T:2019:45), it should be noted that those judgments were referred to by the Board of Appeal in order to recall the principles governing the comparison of the signs at issue, with the result that, contrary to the applicant’s claims, the reference to the significant paragraphs of those judgments was not irrelevant in the light of the facts of the present case.
64      It follows that the applicant’s argument must be rejected.
65      Moreover, it must be held, as did the Board of Appeal, that the signs at issue are visually different.
66      As stated by the Board of Appeal, the earlier EU figurative mark consists of bold curved, vertical and horizontal lines. It contains a curved vertical line on the left, inclined towards the right, followed by two vertical lines, also inclined towards the right, the first smaller than the second, and a horizontal line which is connected by its lower left corner to the upper right corner of the second vertical line. The mark applied for is the word sign GT RACING, composed of the elements ‘GT’ and ‘RACING’.
67      Contrary to what the applicant claims, the mere fact that the earlier EU figurative mark may have been developed on the basis of the abstract concept of the capital letters ‘G’ and ‘T’ is not in itself a sufficient ground for concluding that there is a visual similarity between the signs at issue, given that the very specific graphic design of that mark has the effect of counteracting to a large extent the alleged point of similarity relating to the fact that it may be understood as a reference to the capital letters ‘G’ and ‘T’ by part of the public.
68      The curved line, the vertical lines and the horizontal line comprising the earlier EU figurative mark are configured
in such a way as to refer instead to an almost perfect arrangement of elements resting inside each other or next to each other. They thus provide a highly stylised image. In those circumstances, the consumer would have to engage in a highly imaginative cognitive process in order to ‘decipher’ that figurative sign and to perceive it as representing the capital letters ‘G’ and ‘T’. That close interconnection of the lines comprising that figurative sign will lead the relevant consumer to perceive it as an abstract and unitary shape rather than as the capital letters ‘G’ and ‘T’. As the Board of Appeal correctly pointed out, what is alleged to be the capital letter ‘G’ has neither counter nor chin. What is alleged to be the capital letter ‘T’ does not have a complete arm. The earlier EU figurative mark could also be perceived as the sequences of the upper- and lower-case letters ‘C’, ‘l’ and ‘r’ or ‘E’ and ‘r’ or as the sequence of the upper- and lower-case letters ‘C’ and ‘r’ separated by a full stop.
69      The Board of Appeal did not therefore make any error of assessment in finding that the figurative sign
would not be perceived by the relevant public as consisting of the capital letters ‘G’ and ‘T’ and, accordingly, that the signs at issue were not visually similar.
70      As regards the argument that part of the relevant public could, in spite of the assessments set out above, still perceive the earlier EU figurative mark as depicting the capital letters ‘G’ and ‘T’, it must be noted that no analysis intended to describe the relevant public’s approach to a sign can claim to be exhaustive in the sense that all members of that public adopt an identical approach without exception. In those circumstances, it is for the applicant to demonstrate, with corroborating evidence, that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of that public (see judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraph 35 and the case-law cited). However, the applicant has not adduced any evidence to that effect in the present case. Although Annexes A2 and A3 to the application may confirm the reputation of that earlier mark among consumers of the goods marketed by the applicant, they cannot in any event demonstrate that the analysis carried out by the Board of Appeal was incorrect with regard to a significant part of the relevant public.
71      Furthermore, as has been observed in paragraphs 58, 59 and 61 above, first, the signs at issue must be compared in the light of their intrinsic qualities and, second, the elements relating to the reputation of the earlier mark are not relevant for the purposes of that comparison.
72      Nor did the Board of Appeal err in finding that the signs are not phonetically similar. In view of the illegibility of the earlier EU figurative mark, that mark will not be immediately associated with a specific and concrete word, a letter or a combination of letters by the relevant public, with the result that it is not possible to compare the signs at issue in that regard.
73      Lastly, conceptually, the applicant does not dispute the Board of Appeal’s assessment that the earlier EU figurative mark does not convey any message, with the result that it does not make it possible to conclude that there is any semantic concept in common with the mark applied for. It follows that the Board of Appeal did not err in finding that a conceptual comparison of the signs at issue is not possible.
74      In the light of all of the foregoing, the present pleas must be rejected as unfounded.
The third plea in law, alleging that the Board of Appeal erred in the comparison of the goods
75      The applicant submits, in essence, that, first, the goods in Classes 9 and 28 for which the earlier EU figurative mark was registered are similar to the goods in Class 18 covered by the mark applied for. All of those goods are sold to the same consumers, often on the same occasion and with the same purpose, namely that of providing a portable and durable electronic device. They are, moreover, it submits, complementary. The case is indispensable for a device which is to be used in an outdoors environment. Second, the Board of Appeal erred in finding that the goods in Class 16 for which the two earlier marks were registered and the goods in Class 18 covered by the mark applied for were manifestly dissimilar. All of those goods could, it is argued, be used for merchandising purposes. A large number of goods covered by the mark applied for could be goods included in a wider range of goods in Class 16 covered by the two earlier EU marks.
76      EUIPO disputes the applicant’s arguments.
77      In the first place, it has been recalled, in paragraph 32 above, that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar, and, in paragraph 34 above, that the broader protection granted to the earlier mark by Article 8(5) of Regulation No 207/2009 also presupposes that several conditions are satisfied. Consequently, where one of the conditions laid down in those provisions is not satisfied, the opposition based on those provisions must be rejected without it being necessary to examine the other conditions.
78      As is apparent from the examination of the second and fourth pleas, the Board of Appeal was correct in finding, in the contested decision, that there was no similarity between the marks at issue.
79      Consequently, the Board of Appeal was fully entitled to take the view, in paragraphs 52 and 60 of the contested decision, that the opposition based on the earlier EU figurative mark under Article 8(1)(b) and 8(5) of Regulation No 207/2009 had to be rejected without there being any need to carry out a comparison of the goods at issue, since the condition relating to the similarity of the marks at issue was not satisfied in the present case.
80      It follows that the applicant’s argument relating to similarity between the goods covered by the earlier EU figurative mark and the goods covered by the mark applied for is ineffective and must therefore be rejected.
81      In the second place, the Board of Appeal found, in essence, in paragraph 20 of the contested decision, that ‘printed matter (excluding bicycle-related decals and bicycle-related posters)’ in Class 16 in respect of which the earlier EU word mark was registered was
manifestly different from the goods in Class 18 covered by the mark applied for, since they have neither the same nature nor the same purpose and are neither interchangeable nor in competition on the market.
82      As a preliminary point, it should be noted that Class 18 is entitled ‘leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’ and includes mainly, according to the explanatory note concerning that class, leather, leather imitations, goods made of these materials, travel goods and saddlery.
83      Class 16 is entitled ‘Paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint
brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks’ and includes mainly, according to the explanatory note concerning that class, paper and cardboard, goods made of those materials and office requisites.
84      The goods covered by the mark applied for are goods made of leather and imitations of leather in Class 18, such as transport bags, travelling bags, small leather goods and umbrellas. The goods in respect of which the earlier EU word mark was registered and to which the applicant refers in the present action are ‘printed matter (excluding bicycle-related decals and bicycle-related posters)’ in Class 16, such as, according to the applicant, posters, annuals, yearbooks or sticker books.
85      As a general rule, two products are considered to be similar when they have certain characteristics in common.
86      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 20 February 2013, Caventa v OHIM – Anson’s Herrenhaus (BERG), T‑224/11, not published, EU:T:2013:81, paragraph 34 and the case-law cited).
87      In the present case, it should be noted, as did the Board of Appeal, that the goods at issue have neither the same nature nor the same purpose. Those goods are neither of the same type nor intended for the same purpose or for the same use. Transport bags, travelling bags, small leather goods and umbrellas, inter alia, covered by the mark applied for cannot under any circumstances replace the printed matter in respect of which the earlier mark was registered, since they are not substitutable. Moreover, because of their different nature and intended purpose, the goods in question are normally manufactured by different undertakings and marketed through different channels. As the Board of Appeal pointed out, shops which sell bags, suitcases or umbrellas do not generally sell printed matter. Similarly, in bookshops and newspaper shops, consumers are not looking for goods made of leather or of imitation leather, such as travelling bags or transport bags.
88      The Board of Appeal therefore did not err in finding that the goods in question were different.
89      It must also be noted that, according to settled case-law, the purpose of actions brought before the Court pursuant to Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001) is to secure a review of the lawfulness of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof (now Article 95 of Regulation 2017/1001) requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO – Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 16 and the case-law cited).
90      It is apparent from that provision (Article 65(2) of Regulation No 207/2009) that facts which have not been relied on by the parties before the adjudicatory bodies of EUIPO can no longer be invoked at the stage of the action before the EU Courts. The General Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the way in which that body has applied EU law, in the light, in particular, of the facts which were place before it. By contrast, the General Court cannot carry out such a review by taking into account matters of fact which have been newly produced before it (see judgment of 29 February 2012, Certmedica International v OHIM – Lehning entreprise (L112), T‑77/10 and T‑78/10, not published, EU:T:2012:95, paragraph 23 and the case-law cited).
91      Furthermore, under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.
92      It should be noted, as did EUIPO, that the applicant’s argument relating to merchandising was not raised before the Board of Appeal.
93      That argument must therefore be declared inadmissible.
94      Moreover, it must be observed that the fact that all of the goods in question may be used for merchandising purposes is not sufficient to establish similarity. To accept that fact as a decisive factor for assessing the similarity of the goods in an assessment carried out under Article 8(1)(b) of Regulation No 207/2009 would amount to depriving that criterion of all meaning. Following the logic advocated by the applicant, all of the goods could be declared similar, something which would run clearly counter to the spirit and letter of the abovementioned provision.
95      That fact is a factor which is too general to justify, in its own right, a finding that the goods at issue are similar.
96      In the light of all of the foregoing, the present plea must be rejected as unfounded.
The fifth plea in law, alleging that the Board of Appeal erred in failing to take into consideration the other grounds of opposition set out in Article 8(1)(b) and 8(5) of Regulation No 207/2009
97      The applicant submits that the Board of Appeal erred in finding that, because of the lack of similarity between the goods or marks, the opposition based on the grounds derived from Article 8(1)(b) and 8(5) of Regulation No 207/2009 failed in limine. Given that, for a significant proportion of the relevant public, the earlier EU figurative mark is understood as consisting of the capital letters ‘G’ and ‘T’ in stylised form, there is undoubtedly some similarity between the signs at issue. In those circumstances, the Board of Appeal should have assessed the other grounds of opposition based, first, on Article 8(1)(b) of Regulation No 207/2009, such as the acquisition of distinctiveness of the earlier mark through use, the similarity of the goods in question, the assessment of the global likelihood of confusion from the perspective of a significant proportion of the relevant public, as regards the earlier EU figurative mark
and the earlier EU word mark, and, second, on
Article 8(5) of that regulation, such as the link between the signs at issue, dilution, tarnishing and/or free-riding, as regards the earlier EU word mark.
98      EUIPO disputes the applicant’s arguments.
99      In that regard, in accordance with the case-law referred to in paragraph 32 above, the recognition of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 requires a finding that the conditions relating, first, to the identity or similarity of the marks at issue and, second, to the identity or similarity of the goods or services which they cover are satisfied. Those conditions are cumulative. In the present case, however, it is evident from the examination of the second and fourth pleas that the Board of Appeal was correct in finding that there was no similarity between the earlier EU figurative mark and the mark applied for. Furthermore, it is clear from the examination of the third plea that the Board of Appeal had acted correctly in finding that the goods covered by the mark applied for were different from the goods for which the earlier EU word mark had been registered.
100    It follows that, contrary to the applicant’s claims, the Board of Appeal did not err in law in rejecting the opposition based on Article 8(1)(b) of Regulation No 207/2009 without examining further the other factors in the present case, since it had found, first, that the condition relating to the similarity of the marks at issue was not satisfied as regards the earlier EU figurative mark and, second, that the condition relating to the similarity of the goods in question was not satisfied as regards the earlier EU word mark.
101    Next, as regards the opposition based on the earlier EU word mark under Article 8(5) of Regulation No 207/2009, the Board of Appeal found, in essence, in paragraph 63 of the contested decision, in agreement with the Opposition Division, that the applicant had not shown that that mark had acquired a reputation for the goods in Class 16 in respect of which it had been registered. The Board of Appeal found in that regard, in paragraph 62 of the contested decision, that, concerning the ground of opposition referred to in that provision, the applicant had put forward only arguments relating to the earlier EU figurative mark.
102    The applicant does not dispute that assessment of the Board of Appeal.
103    It has been recalled, in paragraph 34 above, that the broader protection granted to an earlier mark by Article 8(5) of Regulation No 207/2009 presupposes that several conditions, including proof of the reputation of that mark, have been satisfied, and that failure to satisfy one of those conditions is sufficient to render that provision inapplicable, as those conditions are cumulative.
104    It follows that, contrary to what the applicant asserts, the Board of Appeal did not err in law in rejecting the opposition without examining further the other factors in the present case, since it had found that one of the conditions laid down in Article 8(5) of Regulation No 207/2009 was not satisfied in the present case.
105    In the light of all of the foregoing, the present plea must be rejected as unfounded.
The sixth plea in law, alleging that the Board of Appeal erred in the application of the rules relating to an action for passing off
106    The applicant submits, in essence, that, first of all, the Board of Appeal’s errors of assessment concerning the grounds of opposition set out in Article 8(1)(b) and 8(5) of Regulation No 207/2009, concerning the manner in which the relevant public would recognise and perceive the capital letters ‘G’ and ‘T’, are also to be found in the Board of Appeal’s assessment relating to the opposition, pursuant to Article 8(4) of Regulation No 207/2009. Next, it maintains that the Board of Appeal also failed to draw conclusions from its own finding, in paragraph 118 of the contested decision, that the earlier figurative mark would be perceived by the applicant’s customers as the capital letters ‘G’ and ‘T’. It argues that that finding is both necessary and sufficient to establish the applicant’s goodwill in respect of the sign GT, which is the first condition to be satisfied in order for the rules of English law on passing off to be applicable. Lastly, it submits that the Board of Appeal misinterpreted the United Kingdom law on the common-law action for passing off by imposing on the applicant a requirement, not laid down in the rules governing such an action, to show that the non-registered sign GT was used independently.
107    EUIPO disputes the applicant’s arguments.
108    The applicant submits, in essence, that the essential conditions for applying Article 8(4) of Regulation No 207/2009 resulting from United Kingdom law, that is to say the law of ‘passing off’, were satisfied and that it had adduced the necessary and sufficient evidence to show that it had acquired goodwill in the sign GT, which is the first condition to be satisfied in order for the rules of the United Kingdom law on passing off to be applicable.
109    In that regard, to the extent to which the applicant’s argument must be understood as relying, in support of its opposition, on the rules of the United Kingdom law on passing off, it should be borne in mind that the applicable law, in the present case, is the Trade Marks Act 1994, section 5(4)(a) of which provides:
‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented:
(a)      by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade …’
110    It follows from that provision, as interpreted by the national courts, that the opponent must establish, in accordance with the legal rules governing actions for passing off, as laid down by the law of the United Kingdom, that three conditions are satisfied: namely, first, the goodwill (that is to say, the attractive force which brings in custom) acquired by the non-registered trade mark or the sign at issue, second, misrepresentation by the proprietor of the subsequent mark and, third, damage caused to that goodwill (see judgment of 17 January 2019, TURBO-K, T‑671/17, not published, EU:T:2019:13, paragraph 56 and the case-law cited).
111    It should be noted at the outset that, according to their wording, Article 8(4) of Regulation No 207/2009 and section 5(4) of the UK Trade Marks Act concern only non-registered marks.
112    In the present case, the opposition, in so far as it was founded on Article 8(4) of Regulation No 207/2009, was based on eight non-registered trade marks used in the course of trade in the United Kingdom.
113    In the contested decision, the Board of Appeal assessed the conditions for the application of Article 8(4) of Regulation No 207/2009 in regard to each of those marks.
114    However, the arguments put forward by the applicant for the purposes of the present plea do not make it possible to identify with the required degree of clarity and precision the earlier non-registered marks on which that plea is based. The applicant refers in the alternative to the ‘GT sign’ or to the
‘letters “GT”’ or to ‘GT’, without ever indicating precisely the earlier non-registered trade marks being referred to. The only mark expressly relied on in support of that plea is the earlier EU figurative mark, which is not a non-registered mark.
115    At the hearing, the applicant stated, in response to a question from the Court, that the non-registered marks referred to in that plea were solely the earlier non-registered word mark GT and the earlier non-registered figurative mark .
116    Thus, the signs at issue are the following:
–        the word mark applied for, GT RACING;
–        the earlier non-registered word mark GT (‘the earlier non-registered word mark’) and the earlier non-registered figurative mark
(‘the earlier non-registered figurative mark’).
117    At the hearing, the applicant was also invited to submit its observations on the argument raised by EUIPO in its written pleadings that, as from the expiry, on 31 December 2020, of the transitional period laid down in Article 126 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7), the opposition under Article 8(4) of Regulation No 207/2009, based on various non-registered marks used in the course of trade in the United Kingdom and the law of passing off laid down in the law of the United Kingdom, is devoid of purpose.
118    In that regard, it has previously been held that, in order to assess whether there is a genuine relative ground for opposition, it is appropriate to look at the time of filing of the application for an EU trade mark against which a notice of opposition has been filed on the basis of an earlier trade mark. It is thus necessary to examine the various aspects of the earlier mark as they were at the time of filing of the application for an EU trade mark which is opposed by the earlier mark
(see judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 19 and the case-law cited).
119    The EU trade mark application at issue was filed with EUIPO on 23 August 2017, that is to say, prior to the withdrawal of the United Kingdom from the European Union.
120    Thus, the fact that the opposition under Article 8(4) of Regulation No 207/2009 is based in the present case on non-registered marks used in the course of trade in the United Kingdom and on the law of passing off laid down in the law of the United Kingdom is irrelevant to the outcome of the opposition
(see, to that effect, judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 35 and the case-law cited).
121    As regards the earlier non-registered figurative mark, the Board of Appeal found, in essence, in paragraph 77 of the contested decision, that it had not been established that a significant part of the relevant public would be led to purchase the goods covered by the mark applied for, believing that they were in fact the applicant’s goods, given that the signs at issue could not be regarded as similar.
122    The Board of Appeal also added, in paragraph 78 of the contested decision, that the applicant had not submitted any of the evidence usually relied on by parties in actions for passing off, namely opinion surveys on the use of the marks at issue, first judicial impressions or evidence of actual confusion amongst members of the public.
123    Consequently, the Board of Appeal took the view, in paragraph 79 of the contested decision, that the distance between the signs at issue was sufficient to avert confusion, with the result that there was, in the present case, neither a likelihood of confusion nor misrepresentation. It found that the opposition based on the earlier non-registered figurative mark, pursuant to Article 8(4) of Regulation No 207/2009, had to be rejected.
124    Contrary to the applicant’s claims, that finding by the Board of Appeal must be upheld.
125    First, it should be recalled that, according to the national case-law (decision of the House of Lords, Reckitt & Colman Products Ltd v Borden Inc. (1990) R.P.C. 341, 406 HL), misrepresentation by a defendant in an action for passing off, whether or not it is intentional, is a representation which is likely to lead the claimant’s customers to attribute to it the commercial origin of the goods and services offered by the defendant (see judgment of 17 January 2019, TURBO-K, T‑671/17, not published, EU:T:2019:13, paragraph 73 and the case-law cited).
126    The existence of a likelihood of confusion is therefore a condition common to Article 8(1)(b) of Regulation No 207/2009 and to the action for passing off (judgment of 11 June 2009, Last Minute Network v OHIM – Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 93).
127    Second, it should be noted that the earlier non-registered figurative mark is identical to the earlier EU figurative mark. As is apparent from the examination of the second and fourth pleas, the Board of Appeal was correct in finding that there was no similarity between the earlier EU figurative mark and the mark applied for. Furthermore, also regarding that latter mark, it is apparent from the examination of the fifth plea that the Board of Appeal did not err in law in rejecting the opposition based on Article 8(1)(b) of Regulation No 207/2009, since it had found that the condition relating to the similarity of the marks at issue was not satisfied.
128    Third, it must be observed that the applicant does not dispute the Board of Appeal’s observation that it did not adduce any of the evidence usually relied on by parties in actions for passing off, namely opinion surveys on the use of the marks at issue, first judicial
impressions or evidence of actual confusion amongst members of the public.
129    Therefore, it must be held, as did the Board of Appeal, that it was not possible to conclude that there was misrepresentation in the present case.
130    Consequently, contrary to the applicant’s contentions, the Board of Appeal’s analysis is not vitiated by error.
131    Similarly, that analysis does not contradict the Board of Appeal’s observation in paragraph 118 of the contested decision that ‘Exhibits 6-8 [produced by the applicant before the Opposition Division] principally confirm that “GT” is understood as an abbreviation of the [earlier EU figurative mark] by the consumers of [the applicant’s] products …, who are acquainted with such abbreviation’. It is sufficient to note, as is apparent from paragraph 84 of the contested decision, that that observation by the Board of Appeal did not concern the opposition based on the earlier non-registered figurative mark, but rather the oppositions based on the earlier non-registered word marks.
132    As regards the earlier non-registered word mark GT, the Board of Appeal took the view, after analysing the evidence adduced by the applicant in order to demonstrate use of that mark in the course of trade in the United Kingdom of more than mere local significance for the goods and services claimed, that, first, although that evidence suggested that the word sign GT had been put to some use, that sign did not, however, appear on the goods themselves, but merely in texts in which those goods were referred to, those goods in fact being branded with a different sign, namely a figurative logo which corresponds to the earlier non-registered figurative mark, the word sign GRAN TURISMO or a combination of both. Second, it found that that evidence also suggested that the capital letters ‘G’ and ‘T’ were used in combination with other elements, as apparent in the word signs GT Academy, Vision GT and GT Sports app, or in combination with a number. According to the Board of Appeal, the documents produced did not provide sufficient information concerning the commercial volume corresponding to the use of the word sign GT as such, which merely appeared on some documents to designate the earlier non-registered figurative mark or the game ‘GRAN TURISMO’, but not strictly speaking as a trade mark in use itself. The Board of Appeal thus found, after examining that evidence, that the applicant had not demonstrated to the requisite legal standard that it had, inter alia, used the word sign GT in the course of trade in the United Kingdom of more than mere local significance.
133    Contrary to the applicant’s claims, that assessment by the Board of Appeal must be upheld.
134    In the first place, it should be noted that, according to the case-law, a sign is used in the course of trade where such use is made in the context of commercial activity with a view to economic advantage and not in the private sphere (see judgment of 21 September 2017, Repsol YPF v EUIPO – Basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 47 and the case-law cited).
135    Examination of the requirement that the significance of the sign relied on must not be merely local requires account to be taken, first, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify
its proprietor’s economic activity. Account must be taken, second, of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet. Therefore, in order to demonstrate the genuine and actual significance of the sign relied on in the relevant territory, one must not confine oneself to a purely formal assessment, but must examine the impact of that sign in the territory in question after it has been used as a distinctive element (see judgment of 30 November 2016, Fiesta Hotels & Resorts v EUIPO – Residencial Palladium (PALLADIUM PALACE IBIZA RESORT & SPA), T‑217/15, not published, EU:T:2016:691, paragraph 23 and the case-law cited).
136    Furthermore, the words ‘used in the course of trade’ need not be understood as referring to genuine use, by analogy with the provision made in Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) in relation to earlier marks within the meaning of Article 8(2) of Regulation No 207/2009 relied on in support of an opposition (see, to that effect, judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraphs 142 to 146).
137    In the second place, it should be noted that, for the purposes of assessing the scope of the earlier non-registered word mark GT, the Board of Appeal relied on the following evidence, provided by the applicant, as described in paragraphs 4 and 7 of the contested decision:
–        press articles relating to wearable technology and gaming;
–        background information on the PlayStation Vita handheld console;
–        a statement by the person in charge of the applicant’s trade mark and the applicant’s anti-piracy management, including eight annexes, described as follows:
–        Annex 1: ‘Background’;
–        Annex 2: ‘Sales and invoices’;
–        Annex 3: ‘Peripherals and merchandise’;
–        Annex 4: ‘Marketing material’;
–        Annex 5: ‘“GT” reviews and rankings’;
–        Annex 6: ‘GT Academy’;
–        Annex 7: ‘Vision GT’;
–        Annex 8: ‘GT Sport app’;
–        a statement by the UK Interactive Entertainment (UKIE) Intellectual Property Coordinator;
–        a statement by the Senior Legal Counsel of the Interactive Software Federation of Europe (ISFE);
–        a statement by the President and Managing Director of Guillemot Corporation (Thrustmaster);
–        a statement by the person in charge of Nissan’s marketing and communication;
–        a survey carried out in Germany, Spain, France, Italy and the United Kingdom concerning the perception by consumers of video games of the earlier EU figurative mark;
–        an expert opinion;
–        press clippings.
138    In the third place, it must be held, as the Board of Appeal did, that those documents do not refer, strictly speaking, to the word sign GT and its use in connection with the goods and services claimed. Those documents refer primarily to the figurative sign
and to the word signs GRAN TURISMO, GT Academy, VISION GT and, although only occasionally, to the word sign GT. Moreover, those documents do not provide any specific information as to the commercial volume, the duration and frequency of use of the word sign GT in connection with the goods and services claimed. The only document provided by the applicant containing figures relating to the use of that sign in the course of trade is the statement of the person in charge of the applicant’s anti-piracy management. However, that declaration, apart from the fact that it comes from an employee of the applicant and essentially concerns the sign GRAN TURISMO, does not make it possible to assess the actual and real significance of the word sign GT in connection with the goods and services claimed. The same is true of the other statements submitted, the survey and the expert’s opinion. Those documents relate above all to the way in which the figurative sign
is perceived by consumers of the applicant’s goods. However, in order to demonstrate that an earlier sign is used in a sufficiently significant manner in the course of trade, within the meaning of the case-law, it is not sufficient to adduce evidence showing the existence of an earlier right or the possibility of relying on it in relation to third parties. It is necessary to prove the existence of actual and sufficient commercial activities. In any event, those documents do not make it possible to prove use ‘of more than mere local significance’, within the meaning of the case-law, of the earlier non-registered word mark GT. It is in fact not possible to infer the existence of actual commercial activities from those documents, and even less to infer the existence of activities which have a certain economic dimension in connection with that mark.
139    It follows from the foregoing that the Board of Appeal did not make an error of assessment in finding that the evidence provided by the applicant, taken as a whole, did not demonstrate sufficiently significant use in the course of trade of more than mere local significance of the earlier non-registered word mark GT.
140    In addition, it should be noted that the applicant’s argument to the effect that, in the present case, the Board of Appeal misinterpreted the law on passing off relates more specifically to the third and fourth conditions laid down in Article 8(4) of Regulation No 207/2009, as set out in paragraph 37 above, rather than to the conditions relating to the use of the non-registered mark in the course of trade of more than mere local significance, in the light of which the opposition under Article 8(4) of Regulation No 207/2009 was examined and rejected by the Board of Appeal.
141    It follows that the applicant’s arguments are ineffective.
142    It should also be observed that, contrary to the view that the applicant appears to take, the opposition was not rejected by the Board of Appeal on the ground that the evidence submitted did not show that the word sign GT had been used alone, but because the documents produced, first, did not refer, strictly speaking, to the sign GT and to its use in connection with the goods and services claimed, and, second, did not provide any specific information as to the commercial volume, duration and frequency of use of that sign in connection with the goods and services claimed.
143    In the light of all of the foregoing, the present plea must be rejected as unfounded.
The seventh plea in law, alleging that the Board of Appeal erred in failing to take into consideration the other criteria of the law relating to an action for passing off
144    The applicant submits, in essence, that the Board of Appeal erred in finding that the opposition, in so far as it was based on the ground set out in Article 8(4) of Regulation No 207/2009, was ineffective in limine, with the result that it incorrectly failed to examine the other criteria of the law on passing
off, namely the risk of misrepresentation and damage caused by the use of the contested sign for the goods and services in question. It argues that, in view of the acquisition of goodwill as regards the sign GT, it was clear that registration of the mark applied for would be prohibited by the law on passing off.
145    EUIPO disputes the applicant’s arguments.
146    In that regard, it should be noted that it follows from the case-law referred to in paragraphs 37 and 110 above that the conditions relating to the application of Article 8(4) of Regulation No 207/2009 and to an action for passing off are cumulative.
147    It follows that, contrary to what the applicant claims, the Board of Appeal did not err in law in rejecting the oppositions based on the earlier non-registered word mark GT and on the earlier non-registered figurative mark without examining further the other conditions laid down by that provision or by the legal rules governing that action, since it had correctly found, as is apparent from the examination of the sixth plea, that one of the conditions for the application of that provision or for the merits of that action was not satisfied in the present case.
148    In the light of all of the foregoing, the present plea must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.
Costs
149    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.
150    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sony Interactive Entertainment Europe Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).
Costeira
Gratsias
Perišin
Delivered in open court in Luxembourg on 1 September 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.