ORDER OF THE GENERAL COURT (Ninth Chamber)
21 December 2021 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark LUNA SPLENDIDA – Earlier EU figurative mark Luna – Relative ground for refusal – Article 53(1)(a) and Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 60(1)(a) and Article 8(1)(b) of Regulation (EU) 2017/1001) – Action manifestly lacking any foundation in law)
In Case T‑571/20,
Luna Italia Srl, established in Cantù (Italy), represented by N. Papakostas, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Luna AE, established in Agios Stefanos (Greece), represented by M. Sioufas, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 26 June 2020 (Case R 1895/2019‑5), concerning invalidity proceedings between Luna and Luna Italia,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 11 September 2020,
having regard to the response of EUIPO lodged at the Court Registry on 23 February 2021,
having regard to the response of the intervener lodged at the Court Registry on 20 September 2021,
having regard to the plea of inadmissibility raised by the intervener by document lodged at the Court Registry on 9 March 2021,
having regard to the applicant’s observations on the plea of inadmissibility, lodged at the Court Registry on 29 April 2021,
having regard to the appointment of another judge to complete the Chamber following the death of Judge Berke on 1 August 2021,
having regard to the order of 10 September 2020 reserving the decision on the plea of inadmissibility for the final judgment,
makes the following
Order
Background to the dispute
1        On 2 February 2017, the applicant, Luna Italia Srl, 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        The trade mark for which registration was sought is the figurative sign claiming the colour gold, reproduced below:
3        The goods for which registration was sought are in, inter alia, Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
‘Beach hats; Tennis sweatbands; Bathing caps; Veils [clothing]; Wimples; Clothing; Water socks; Sportswear; Athletic tights; Maillots; Running vests; Sports singlets; Sports socks; Sports shirts with short sleeves; Sports jerseys; Sports bras; Mock turtleneck shirts; Sleeveless jerseys; Swim wear for gentlemen and ladies; Moisture-wicking sports bras; Gloves [clothing]; Gloves including those made of skin, hide or fur; Fingerless gloves; Mittens; Boas [necklets]; Pelisses; Furs [clothing]; Fur muffs; Ladies’ clothing; Lingerie; Boy shorts [underwear]; Bathing costumes for women; Nighties; Coats for women; Chemises; Camisoles; Ladies’ dresses; Women’s ceremonial dresses; Knee-high stockings; One-piece playsuits; Dressing gowns; Leather waistcoats; Pedal pushers; Leather belts [clothing]; Negligees; Clothing made of fur; Clothing of imitations of leather; Clothing of leather; Dresses made from skins; Cashmere clothing; Plush clothing; Beach clothes; Leisurewear; Clothing for gymnastics; Beach wraps; Bathing suit cover-ups; Ready-made clothing; Underwear; Sweat-absorbent underwear; Maternity lingerie; Disposable underwear; Foundation garments; Thongs; Fur stoles; Stoles; Fitted swimming costumes with bra cups; Bed jackets; Stocking suspenders; Turtlenecks; Waist cinchers; Waist belts; Belts [clothing]; Girdles; Belts made from imitation leather; Wrap belts for kimonos (datemaki); Knee warmers [clothing]; Handwarmers [clothing]; Arm warmers [clothing]; Wrist warmers; Thermal underwear; Thermal socks; Thermally insulated clothing; Vest tops; Slipovers [clothing]; Socks; Sweat-absorbent stockings; Japanese style socks (tabi); Anti-perspirant socks; Stockings; Slipper socks; Footless socks; Bed socks; Trouser socks; Maillots [hosiery]; Footless tights; Ankle socks; Socks and stockings; Sock suspenders; Ear muffs [clothing]; Neckwear; Camiknickers; Baselayer bottoms; Bottoms [clothing]; Pajama bottoms; Mufflers [clothing]; Pantie-girdles; Knickers; Kimonos; Teddies [underclothing]; Leggings [trousers]; Maternity leggings; Bib tights; Crop tops; Trousers shorts; Maternity shorts; Short overcoat for kimono (haori); Short petticoats; Short-sleeved or long-sleeved t-shirts; Short-sleeve shirts; Short-sleeved T-shirts; Waist strings for kimonos (koshihimo); Bodices [lingerie]; Bodies [clothing]; Leotards; Corsets [underclothing]; Bustiers; Tap pants; Ascots; Bolo ties with precious metal tips; Functional underwear; Shoulder straps for clothing; Woo[l]len clothing; Woollen tights; Woollen socks; V-neck sweaters; Combinations [clothing]; Eye masks; Sleep masks; Bathing suits; Bikinis; Long johns; Long sleeve pullovers; Long-sleeved shirts; Polo sweaters; Bralettes; Cloaks; Muffs [clothing]; Scarves; Head scarves; Neck scarves; Bustles for obi-knots (obiage-shin); Miniskirts; Petticoats; Slips [underclothing]; Silk clothing; Silk scarves; Monokinis; Kerchiefs [clothing]; Bandanas [neckerchiefs]; Maternity shirts; Tee-shirts; Hooded tops; Polo shirts; Tennis shirts; Chemise tops; Jerseys [clothing]; Yoga shirts; Jogging tops; Maternity tops; Shirts and slips; Crew neck sweaters; Roll necks [clothing]; Mock turtlenecks; Cycling tops; Tops [clothing]; Warm-up tops; Tube tops; Boas; Boleros; Bath robes; Bathwraps; Pop socks; Wedding dresses; Bridal garters; Body stockings; Full-length kimonos (nagagi); Union suits; Pram suits; Jumper suits; Unitards; One-piece suits; Coveralls; Shortalls; Rompers; Petti-pants; Yoga pants; Pyjamas; Baby doll pyjamas; Pyjamas [from tricot only]; Knitwear [clothing]; Knitted gloves; Hosiery; Knitted underwear; Cardigans; Knit shirts; Polo knit tops; Slipovers; Cyclists’ clothing; Cowls [clothing]; Aprons [clothing]; Shirts; Pullovers; Turtleneck sweaters; Hooded pullovers; Mock turtleneck sweaters; Tennis pullovers; Garments for protecting clothing; Rash guards; Scrimmage vests; Pleated skirts for formal kimonos (hakama); Frock coats; Lounging robes; Loungewear; Beach robes; Maternity clothing; Twin sets; Tightening-up strings for kimonos (datejime); Shorts; Cycling shorts; Tennis shorts; Shift dresses; Brassieres; Strapless bras; Leisure suits; Bra straps; Bandeaux [clothing]; Woven clothing; Belts made out of cloth; Fabric belts [clothing]; Sashes for wear; Volleyball jerseys; Undershirts; Undershirts for kimonos (koshimaki); Undershirts for kimonos (juban); Tank tops; Slacks; Sash bands for kimono (obi); Blousons; Swaddling clothes; Bridesmaid dresses; Maternity dresses; Tennis dresses; Playsuits [clothing]; Jogging suits; Neckerchiefs; Foulards [clothing articles]; Skirts; Tutus; Tennis skirts; Golf skirts; Sweat shirts; Hooded sweatshirts; Morning coats; Winter gloves; Polar fleece jackets; Puttees and gaiters; Inner socks for footwear; Bath slippers; Bath sandals; Bath shoes; Beach shoes’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2017/039 of 27 February 2017 and was registered on 6 June 2017 under No 016308108.
5        On 14 July 2017, the intervener, Luna AE, filed an application for a declaration of invalidity pursuant to Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001) in respect of, inter alia, the goods referred to in paragraph 3 above.
6        The application for a declaration of invalidity was based, inter alia, on the earlier EU figurative mark, registered on 19 August 2012 under No 9773896, reproduced below:
7        The goods in Class 25 designated by the earlier mark, for all of which the intervener claimed reputation in Italy and in Greece, are the following: ‘Ladies’ Underwear, Lingerie, Homewear, Swimwear, Beachwear and relative accessories; Disposable underwear; Jockstraps [underwear]; Knitted underwear; Ladies’ Underwear; Long underwear; Perspiration absorbent underwear clothing; Sweat-absorbent underclothing [underwear]; Thermal underwear; Underwear; Underwear (anti-sweat-); Underwear (Antisweat-); Woven or knitted underwear; Women’s underwear; Riding underwear’.
8        On 26 June 2019, the Cancellation Division partially upheld the application for a declaration of invalidity on account of a likelihood of confusion in respect of the goods identified in paragraph 3 above, found to be identical or similar in varying degrees to those covered by the earlier mark. Since the intervener had not furnished proof of the earlier mark’s reputation in Italy and in Greece, relied on in support of the application for a declaration of invalidity, that mark was rejected in respect of all the goods found to be different from those listed in paragraph 7 above.
9        On 25 August 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 Cancellation Division.
10      By decision of 26 June 2020 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal as unfounded, thereby confirming the decision of the Cancellation Division As a preliminary point, it confirmed the Cancellation Division’s analysis that the proprietor of the earlier mark did not have to demonstrate genuine use of that mark, since in the present case, first, the earlier mark had been registered four years and nearly eleven months before the invalidity proceedings were brought and, secondly, the applicant’s argument claiming that the five-year period had expired during the proceedings was ineffective, in so far as the period to be taken into account for the calculation of that period is the filing date of the application for a declaration of invalidity.
11      First, the Board of Appeal stated that account had to be taken of the average consumer, whose level of attention is not higher than average, having regard in particular to the nature and price of the goods at issue. As for the relevant territory, the Board of Appeal found that it would be appropriate to focus on the Spanish- and Italian-speaking parts of the relevant public, having regard to their comprehension of the meaning of the signs at issue.
12      Secondly, the Board of Appeal found that the goods covered by the contested mark, as described in paragraph 3 above, were identical or similar in varying degrees or complementary to the goods covered by the earlier mark, identified in paragraph 7 above. The goods covered by the contested mark were either identical to those covered by the earlier mark or they were included in the broader terms used in that mark, or they shared with the goods of that mark the same immediate purpose or the same distribution and marketing channels.
13      Thirdly, as regarded the comparison of the marks at issue, the Board of Appeal found, first of all, that visually, the word elements ‘luna’ and ‘luna splendida’ were visually similar to a lower than average degree, whereas, phonetically, they were at least highly similar. Next, as for the conceptual comparison, the signs were found to be highly similar. Lastly, the distinctive character of the earlier mark was considered to be average.
14      Fourthly, as regards the global assessment of the likelihood of confusion, the Board of Appeal found that, notwithstanding the low degree of visual similarity between the signs at issue, the phonetic and conceptual identity of the dominant element ‘luna’ attenuated the visual differences and reinforced the consumer’s perception of the contested mark, identifying it as a sub-brand of the earlier mark, having regard to the current practice in the clothing sector of using sub-brands to distinguish different production lines. The Board of Appeal concluded that the conceptual relationship between the signs was sufficiently marked to mislead the average consumer into thinking that the goods came from the same manufacturer, given that the contested mark would be perceived as deriving from the earlier mark, both sharing a common dominant element. Consequently, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public, who might perceive the contested mark as designating a particular production line of the intervener, with regard to the goods referred to in paragraph 3 above.
Forms of order sought
15      The applicant contends that the Court should:
–        declare the action admissible;
–        annul the contested decision.
16      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
17      The intervener contends that the Court should:
–        declare the action inadmissible;
–        dismiss the action;
–        order the applicant to pay the costs.
Law
18      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
19      In the present case, the Court, considering that it has sufficient information from the documents in the case file, has decided to give a decision without taking further steps in the proceedings.
Determination of the substantive law applicable ratione temporis
20      Given the date on which the application for registration of the contested mark was filed, namely 2 February 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, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO,
C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
21      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 applicant, EUIPO and the intervener in their written pleadings, to Articles 8(1)(b) and 60(1)(a) of Regulation 2017/1001 must be understood as referring to the identical terms of Articles 8(1)(b) and 53(1)(a) of Regulation No 207/2009, as amended.
22      However, in so far as, according to settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed, in the present case, by the procedural provisions of Regulation 2017/1001, in particular those of Article 72(2) and (5).
Admissibility
23      As a preliminary point, it should be noted that, under Article 173(3) of the Rules of Procedure, a party to the proceedings before the Board of Appeal, other than the applicant, who has become an intervener before the Court in accordance with paragraphs 1 and 2 of that article, enjoys the same procedural rights as the main parties. That intervener may support the form of order sought by a main party as well as apply for a form of order and put forward pleas in law independently of those of the main parties. It follows that the intervener may also dispute the admissibility of the action by separate document, pursuant to Article 130(1) of the Rules of Procedure, applicable to disputes relating to intellectual property rights under Article 191 of those rules.
24      In the context of the plea of inadmissibility raised under those provisions, the intervener submits, first, that the contested decision was notified to the applicant on 9 July 2020 and that the action was brought on 11 September 2020, that is, two days after the expiry of the two-month time limit laid down in Article 72(5) of Regulation 2017/1001. Secondly, the intervener objects to the failure of the application lodged before the Court to comply with the requirements laid down in Article 177(1)(d) of the Rules of Procedure. In particular, the intervener points out that no plea relating specifically to the Board of Appeal’s decision was raised in that document and that the applicant merely reproduced in its application the arguments used before the adjudicating bodies of EUIPO. Therefore, the reasons for the applicant considering that the Board of Appeal’s decision is incorrect do not apparently concern the application initiating the proceedings. Moreover, none of the grounds listed in Article 72(2) of Regulation 2017/1001, in respect of which the action against a decision of the Board of Appeal may be brought, is referred to in the application.
25      The applicant disputes that line of argument.
26      As regards the first plea of inadmissibility raised by the intervener, alleging the lateness of the action, it must be borne in mind that, while it is true that, under Article 72(5) of Regulation 2017/1001, the time limit for bringing an action against the decision of the Board of Appeal of EUIPO is 2 months, the fact remains that, in accordance with Article 60 of the Rules of Procedure, such a procedural time limit is extended on account of distance by a single period of 10 days. In the present case, since the contested decision was notified to the applicant on 10 July 2020, as is apparent from the file, and the action was brought on 11 September 2020, it must be held that the time limit of 2 months and 10 days was complied with, there being no need to examine the merits of the force majeure relied on by the applicant.
27      It follows that the action was brought within the prescribed period, in accordance with Article 72(5) of Regulation 2017/1001, read in conjunction with Article 60 of the Rules of Procedure, and, therefore, that the intervener’s first plea of inadmissibility must be rejected.
28      As regards the second plea of inadmissibility, relating to the insufficiently clear content of the application, it must be noted that Article 177(1)(d) of the Rules of Procedure provides that the application is to state ‘the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law’. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 16 and the case-law cited). That requirement and the one set out in Article 72(2) of Regulation 2017/1001, relating to grounds of illegality, are satisfied in the present case.
29      It is apparent from the application, in particular from paragraphs 98 to 113, 115 to 122 and 143 thereof, that the application seeks a declaration by the Court that the contested decision is incorrect because of an incorrect application of the criteria for assessing the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in invalidity proceedings brought on the basis of Article 53(1)(a) thereof. Thus, while it should be acknowledged that the ground set out and the plea in law put forward in support of the applicant’s action are certainly not of exemplary clarity, they can nevertheless be identified and understood, as, moreover, is demonstrated by EUIPO’s response lodged at the Court Registry on 23 February 2021, as well as that lodged by the intervener on 20 September 2021, following the decision to reserve a decision on the plea of inadmissibility for the final judgment (see judgment of 10 February 2021, Biochange Group v EUIPO – mysuperbrand (medical beauty research), T‑98/20, not published, EU:T:2021:69, paragraph 27).
30      Similarly, as for the fact that, by its action, the applicant is repeating, in the application, the arguments submitted during the proceedings before EUIPO, it should be borne in mind that, according to settled case-law, the action cannot be declared inadmissible for that fact alone. The fact of repeating, wholly or in part, the arguments already invoked before EUIPO, and not simply referring to them, does not amount to an infringement of Article 21 of the Statute of the Court of Justice and of Article 76 of the Rules of Procedure. Provided an applicant contests the interpretation or application of EU law made by EUIPO, the points of law examined by EUIPO can be debated again in an action before the Court. This forms part of the review by the courts to which the decisions of EUIPO are subject under Article 72 of Regulation No 2017/1001 (judgments of 16 June 2015, Best-Lock (Europe) v OHIM – Lego Juris (Shape of a toy figure with protrusion), T‑396/14, not published, EU:T:2015:379, paragraph 19, and of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 29).
31      It follows that the application complies with the requirements relating to content and form laid down in Article 177(1)(d) of the Rules of Procedure and Article 72(2) of Regulation 2017/1001 and that the second plea of inadmissibility raised by the intervener must be rejected.
32      The action is therefore admissible.
Substance
33      In support of its action, the applicant relies, in essence, on three pleas in law, alleging (i) incorrect refusal by the adjudicating bodies of EUIPO to accept as admissible the request for proof of genuine use of the earlier mark; (ii) the abusive nature of the application for a declaration of invalidity; and (iii) infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof.
The first plea in law, alleging that the adjudicating bodies of EUIPO refused to accept as admissible the request for proof of genuine use of the earlier mark
34      The applicant submits that, even if the five-year period had not expired at the time of filing the application for a declaration of invalidity, that period subsequently expired and, therefore, it would be possible and consistent with the law for the request for proof of genuine use of the mark to be accepted. According to the applicant, any measure allowing that issue to be circumvented amounts to a deprivation of trade mark rights. Similarly, given that the Cancellation Division found in its decision that the intervener had not provided any proof of use of the mark after the expiry of the five-year period, that decision is incorrect on that point, which, according to the applicant, justifies the repetition of its request for proof of genuine use of the earlier mark.
35      EUIPO and the intervener dispute those arguments.
36      In that regard, it is apparent from paragraphs 8, 11 and 20 to 24 of the contested decision that the applicant submitted a request for proof of genuine use of the earlier mark, relying on the fact that the five-year grace period provided in Article 15(1) of Regulation No 207/2009 had expired during the invalidity proceedings. In that regard, the Board of Appeal found, like the Cancellation Division, that that grace period had not fully expired on the filing date of the application for a declaration. The Board of Appeal therefore rejected the applicant’s request as inadmissible.
37      In the present case, it must be held that the applicant’s arguments cannot succeed.
38      Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 confer on the proprietor of a trade mark a grace period within which to begin to make genuine use of that mark, during which he or she may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of that regulation, in respect of all the goods or services for which that mark is registered, without having to demonstrate such use (judgment of 26 March 2020, Cooper International Spirits and others, C‑622/18, EU:C:2020:241, paragraph 37).
39      In that context, even though Article 57(2) of Regulation No 207/2009 allows proof of genuine use of an earlier mark to be requested in the context of invalidity proceedings, such an application is subject to the condition that the earlier EU trade mark has been registered for at least five years. As the Board of Appeal correctly stated in paragraph 23 of the contested decision, the decisive date in that regard is the date on which the application for a declaration of invalidity was filed.
40      In this instance, as, in essence, the Board of Appeal noted in paragraph 22 of the contested decision, the application for a declaration of invalidity of the contested mark was filed on 14 July 2017, whereas the earlier mark on which that application is based was registered on 19 August 2012. Therefore, the period of 5 years laid down in Article 15(1) of Regulation No 207/2009 had not yet expired on the filing date of the application for a declaration of invalidity, since the earlier mark had been registered for only 4 years and nearly 11 months.
41      It follows from the foregoing that the applicant’s arguments, which have not, moreover, been developed, seeking to call into question the inadmissibility of its request for proof of genuine use of the earlier mark raised by the Board of Appeal, must be rejected.
The ineffectiveness of the second plea in law of the application and the arguments put forward on matters not part of the grounds of the contested decision
42      According to settled case-law, pleas not seeking to challenge the grounds on which the Board of Appeal dismissed the appeal brought before it must be regarded as ineffective, and an action based on such pleas can only be rejected in its entirety as manifestly lacking any foundation in law (see, to that effect and by analogy, order of 16 October 2020, L. Oliva Torras v EUIPO – Mecánica del Frío (Vehicle couplings), T‑629/19, not published, EU:T:2020:506, paragraph 26 and the case-law cited).
43      In the present case, first, as is apparent from reading paragraphs 123 to 142 of the application, by the arguments put forward under the sub-heading ‘2 . Summary of Facts’, the applicant repeats the arguments put forward before the Board of Appeal so as to state (i) that the application for a declaration of invalidity was lodged abusively and in bad faith and (ii) that the intervener approved and accepted the registration of the contested mark, while ceasing its commercial activity from 2012. In that regard, it is sufficient to note, as has EUIPO, that those arguments are not relevant to the assessment of the legal criteria required for assessing the likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009, and do not form part of the grounds on which the Board of Appeal dismissed the action before it. Therefore, in accordance with the settled case-law cited in paragraph 42 above, those arguments of the applicant must be rejected as ineffective.
44      Secondly, in its arguments as to why the contested decision is wrong, the applicant makes several references, particularly in paragraphs 107, 109, 110 and 114 of the application, both to the goods designated by the contested mark in Class 24 and to an earlier national trade mark of the intervener. First, the Board of Appeal correctly found in paragraphs 8, 16, 17 and 47 of the contested decision that the subject matter of the appeal before it did not concern the goods in Class 24, which had been held by the Cancellation Division to be different and in respect of which maintenance of the registration of the contested mark had not been the subject of an action before the Board of Appeal. Secondly, it is sufficient to note that the Board of Appeal’s examination does not concern the earlier national mark relied on by the applicant. Therefore, the arguments concerning the goods in Class 24 designated by the contested mark are ineffective, as are the arguments against the earlier national mark.
The third plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
45      The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion since, first, not all of the goods designated by the contested mark are covered by the earlier mark and, secondly, the signs are not visually and conceptually similar in the absence of a second word element in the earlier mark. Moreover, the fact that the same manufacturing and distribution channels are used could not lead to the conclusion that the goods at issue designated by the contested mark are complementary to the goods protected by the earlier mark. The Board of Appeal should therefore have found that ‘even for identical goods there is no likelihood of confusion’.
46      EUIPO and the intervener dispute that line of argument.
47      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, an EU trade mark is declared invalid on application by the proprietor of an earlier trade mark if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
48      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the 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).
49      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, by analogy, 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).
50      As a preliminary point, it is apparent from paragraphs 29 to 31 of the contested decision that, according to the Board of Appeal, it was appropriate with regard to the goods at issue, namely everyday items of clothing, including sportswear and maternity clothing in Class 25, to take account of the average consumer, who is reasonably well informed and reasonably observant and circumspect. Regarding those goods, in particular their daily use and the lack of evidence of a high level of attention based on sale prices, the level of attention of the relevant public was considered not to be higher than average. Similarly, since the relevant territory is that of the European Union, the Board of Appeal decided to focus on the Italian- and Spanish-speaking parts of the relevant public when assessing the likelihood of confusion between the marks at issue, the parties agreeing on the fact that those parts of the relevant public certainly understand the meaning of the marks at issue. Those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld, given that, in the present case, the ‘average consumer’ must be understood as being the general public, whose level of attention is average.
–       Comparison of the goods
51      According to settled case-law, in assessing the similarity of the goods or services in question, 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, 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 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (Sadia), T‑309/19, not published, EU:T:2020:565, paragraph 61 and the case-law cited).
52      As regards the goods at issue in Class 25, it is apparent from paragraphs 34 to 42 of the contested decision that they are, in part, identical and, in part, similar in varying degrees to the goods covered by the earlier mark. According to the Board of Appeal, the goods for which the earlier mark was registered are either identically covered by the contested mark, or fall under a broader category of goods covered by that mark, have the same immediate purpose or the same distribution and marketing channels and are therefore complementary.
53      The applicant disputes the Board of Appeal’s assessment regarding the comparison of the goods covered by the signs at issue. It submits, first, that, even if some goods are identical, the intervener had ‘no right to ask the invalidity of the contested mark […] for the total of goods in a class that the earlier marks do not claim’. According to the applicant, only the goods covered identically by the marks at issue could give rise to cancellation of the contested mark. Secondly, the applicant submits that the fact that the goods at issue have the same production and distribution channels, as the Board of Appeal established, does not necessarily make them complementary.
54      In that regard, it is sufficient to state, first, that in accordance with Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, even if all the goods covered by the contested mark are not covered by the earlier mark as such, the intervener is entitled to apply for a declaration of invalidity of the contested mark in so far as, because of its identity with or similarity to the earlier mark and the identity or similarity of the goods, in the present case all in Class 25, covered by the two marks, there is a likelihood of confusion on the part of the relevant public in the territory in which the earlier mark is protected. In the present case, since the applicant does not put forward any argument intended specifically to challenge the identity or similarity in varying degrees of those goods, the Board of Appeal’s assessment regarding the comparison of those goods cannot be called into question. Moreover, even if the applicant’s argument were to be regarded as disputing the sub-categories of goods, as established by the Cancellation Division and approved by the Board of Appeal, it must be stated that no argument has been put forward in support of such a challenge.
55      Secondly, regarding the complementarity of the goods at issue, it should be borne in mind that, according to settled case-law, complementary goods are those which can be used together and between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). In the present case, as is apparent from paragraphs 40 to 42 of the contested decision, in addition to the fact that the goods at issue share the same purpose and the same production and distribution channels, they complement one another both in the style of clothing and in their function and may be offered by one and the same economic operator, such as large stores in the marketplace, which often offer them through a multitude of variations of sub-brands. Again, it must be stated that the applicant does not put forward any argument in that regard. The applicant merely submits that the use of the same manufacturing and distribution channels does not lead to the conclusion that the goods concerned are complementary. Moreover, it is sufficient to note that the manufacturing and distribution channels are only one factor among others taken into account by the Board of Appeal in order to assess the complementarity of the goods.
56      Therefore, in so far as the goods complement one another both aesthetically and functionally, they must be regarded as being complementary.
57      The Board of Appeal was therefore manifestly fully entitled to find that the goods at issue in Class 25 were in part identical and in part similar in varying degrees.
–       Comparison of the signs
58      According to settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
59      The applicant disputes the Board of Appeal’s assessment regarding the visual, phonetic and conceptual comparison of the signs at issue.
60      In the first place, as regards the visual comparison, the Board of Appeal found that there was a lower than average degree of visual similarity between the signs at issue.
61      According to the applicant, the marks at issue are not visually similar. Those marks do not coincide in any of their elements. What is more, since those marks are figurative, the written form of the word is protected and not the word as such. In that regard, according to the applicant, the letter ‘l’ of the mark at issue appears as if it is not part of the graphical part of the sign, in that it appears as a linear shape on which the letter ‘u’ is placed. That is because the horizontal and vertical lines constituting the letter ‘l’ are the same length. Similarly, in the contested mark there is no circular shape, but a second word that differentiates the whole mark. Thus, although the word element ‘splendida’ is written in smaller letters, it is an essential and dominant element, forming an integral part of the contested mark, in the present case, by differentiating it from the earlier mark.
62      EUIPO and the intervener dispute the applicant’s arguments.
63      In that regard, first of all, as is apparent from paragraphs 49 and 50 of the contested decision, first, the earlier mark consists of the sequence of letters ‘l’, ‘u’, ‘n’, ‘a’ depicted in a slightly italic, dark purple font. The horizontal line of the first letter ‘l’ of the term in question is elongated by way of being underlined in an ornamental way. Above the letter ‘n’ there is a coloured dot in the same purple shade, showing a white, half-moon shape in its lower section.
64      By contrast, the contested mark consists of the sequence of letters ‘l’, ‘u’, ‘n’, ‘a’ depicted in gold-coloured capital letters. With the exception of the letter ‘u’, all the letters are elongated into ornamental, curved lines. In particular, the middle bar of the letter ‘n’ extends so as to form ornamental shapes above and below the word element ‘luna’. The term ‘splendida, which has no equivalent in the earlier mark, is below the lower ornamental shape, is written in gold-coloured capital letters, that term bending upwards so as to follow the curve of the ornamental line. That word is significantly smaller than the term ‘luna’, so that the latter dominates the overall impression created by the contested mark.
65      Therefore, it must be stated that the distinctive and dominant word element ‘luna’ of the contested mark is clearly identical to the single word element ‘luna’ of the earlier mark, so that the signs at issue are at least partially identical in such a manner as to create a certain impression of visual similarity on the part of the relevant public (see, to that effect, judgment of 23 April 2015, Iglotex v OHIM – Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 65).
66      Secondly, as regards the graphic representation of the marks at issue, it should be borne in mind that, according to settled case-law, contrary to what the applicant claims, the Board of Appeal was entitled to observe that, where a mark is composed of word and figurative elements, the former should, in principle, be regarded as more distinctive than the latter, since the average consumer will more easily refer to the goods in question by quoting the name rather than by describing the figurative element of the mark (see judgment of 18 February 2016, Penny-Markt v OHIM – Boquoi Handels (B!O), T‑364/14, not published, EU:T:2016:84, paragraph 24 and the case-law cited). The fact remains that, in certain cases, the figurative element of a composite mark may, due in particular to its shape, size, colour or position in the sign, rank equally with the word element (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 37). However, that is not the case here, given that the figurative element of the earlier mark is not inherently distinctive and merely embellishes the dominant word element, without playing an important role in the overall impression created by that mark.
67      Thirdly, as regards the specific graphic design of the first letter of the contested mark, it is apparent from paragraph 53 of the contested decision that, while it cannot be ruled out that a rather negligible portion of the relevant public might consider that the letter ‘l’ plays an ornamental role, the majority of the relevant consumers will nevertheless read it as the letter ‘l’. Therefore, it is more logical that Italian- and Spanish-speaking consumers will understand the expression ‘luna splendida’ to mean ‘splendid moon’, rather than ‘una splendida’ meaning ‘a splendid one’, as the latter expression is incomplete for lack of subject. It must be borne in mind that consumers tend to break down the word element in a figurative sign into words familiar to them or to interpret them in that way (see, to that effect, judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 104 and the case-law cited).
68      Therefore, it must be held that, while taking into account the stylistic differences in the visual appearance of the marks at issue, as well as the presence of a second word element, written in a much smaller font and placed under the term ‘luna’, the Board of Appeal correctly compared those marks visually in finding a lower than average degree of similarity. The Board of Appeal was therefore manifestly fully entitled to find that the signs at issue displayed a lower than average degree of similarity. Accordingly, the applicant’s argument must be dismissed as manifestly unfounded.
69      In the second place, from a phonetic standpoint, the Board of Appeal found that the signs LUNA and LUNA SPLENDIDA are highly similar phonetically if the element ‘splendida’ is pronounced, or identical if it is not.
70      According to the applicant, first, the letter ‘l’ at the beginning of the contested mark seems to be a linear element that is very unlikely to be regarded as a letter. In such a case, one can only read the phrase ‘una splendida’ or ‘l’una splendida’. Secondly, the contested mark contains a second word element with no equivalent in the earlier mark.
71      EUIPO and the intervener dispute the applicant’s line of argument.
72      In that regard, the applicant’s arguments must be dismissed. First, the Board of Appeal duly took into account the existence of a second word element in paragraph 56 of the contested decision, while stating that its pronunciation is not certain, given the tendency to shorten the pronunciation of marks in order to economise on words and, therefore, consumers tend to focus on the visually dominant elements that are easily separable from the rest when being pronounced. Secondly, the assertions in paragraphs 104, 116 and 120 of the application that ‘the pronunciation of the marks coincides in the sound of the letters /L-U-N-A/ present identically in both signs’, the distinctive and dominant elements of which each consist of ‘four letters’, seem to be in complete contradiction with the argument that the letter ‘l’ at the beginning of the contested mark appears to be a linear element which will very probably not be regarded as a letter. Lastly, since the premiss of different reading and pronunciation was taken into account and assessed in the contested decision as being likely only for a tiny portion of the relevant public, it must be rejected in light of the fact that the majority of the relevant public will read and pronounce the dominant element of the marks at issue as ‘luna’.
73      The Board of Appeal was therefore manifestly fully entitled to find that the signs at issue were highly similar, phonetically.
74      In the third place, from a conceptual standpoint, the Board of Appeal found that the signs were conceptually highly similar, given the immediate comprehension of the word ‘luna’ by the Italian- and Spanish-speaking public. The word ‘splendida’, if taken into account, merely indicates that the moon is splendid, without changing the object.
75      The applicant disputes that assessment and considers, first, that the meaning of the earlier mark is not the same as that of the contested mark, which comprises, in addition to the common element ‘luna’, a second word element ‘splendida’. Secondly, given that it is possible not to understand and read the first letter ‘L’ of the contested mark, on account of its graphic stylisation, the meaning to be given to that mark would then be different and would consist of, specifically, ‘l’una splendida’ or ‘una splendida’, that is to say ‘the/a beauty’ or ‘the/a wonderful’.
76      EUIPO and the intervener dispute the applicant’s arguments.
77      First of all, it should be noted that the Board of Appeal found a strong conceptual similarity between the signs while taking due account of the second word element of the contested mark, which differentiates those signs to a certain extent. However, the applicant does not put forward any argument capable of calling into question the Board of Appeal’s finding, based on settled case-law, from which it is evident that consumers tend to shorten the pronunciation of marks to economise on words and, therefore, tend to focus on the visually dominant elements which are easily separable from the rest when being pronounced (see judgments of 16 September 2009, Zero Industry v OHIM – zero Germany (zerorh+), T‑400/06, not published, EU:T:2009:331, paragraph 58, and of 25 March 2009, L’Oréal v OHIM – Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited). Moreover, the Board of Appeal found that, even if that element were pronounced, it would not change the concept conveyed by those signs, which is the moon. The applicant provides no evidence in support of its arguments in those respects.
78      Furthermore, the same applies as regards the argument that the first letter ‘l’ of the contested mark may not be read, pronounced and understood due to its particular stylisation. As has already been stated in paragraph 67 above, that scenario was taken into account by the Board of Appeal, which found that, even if that occurrence could not be ruled out, it would concern only a tiny part of the relevant public, since most consumers tend to break signs down into words familiar to them or to interpret them to that effect. No additional argument supporting the applicant’s position with regard to that last-mentioned finding by the Board of Appeal’s has been put forward. In those circumstances, that argument from the applicant must also be rejected.
79      The Board of Appeal was therefore manifestly fully entitled to find that the signs at issue were conceptually highly similar.
–       Overall assessment of the likelihood of confusion
80      According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
81      In the contested decision, the Board of Appeal found that, despite the importance of the visual aspect and the relative weakness of the visual similarity of the marks at issue, there was a likelihood of confusion for goods that were identical or similar to varying degrees, due to the strong phonetic and conceptual similarity of those marks and to the identity of the dominant element ‘luna’ of those marks, combined with the fact that, in the clothing sector, the use of sub-brands, deriving from a principal mark and sharing with it a common dominant element in order to distinguish between its various production lines, is common. Accordingly, the average consumer may perceive the contested mark as designating a specific production line originating from the intervener.
82      In that regard, according to the applicant, the earlier mark does not have ‘elements which could be considered clearly more distinctive in comparison to other elements’, unlike the contested mark, which has ‘figurative elements not only for decorative purposes [which] are dominant and very important for the overall impression [made on] the public’. Consequently, the additional figurative elements undoubtedly have a major impact when assessing the likelihood of confusion between the marks, ‘because they differentiate the marks in comparison from every point of view’. However, supposing that the word elements are considered more distinctive than the figurative elements, ‘the contested trademark has as part a second word, that is also a dominant part of the trademark, since it gives a whole new meaning to the mark’. Therefore, the applicant considers that, given the importance of the visual aspects for the goods in Class 25, as well as the graphical differences between the signs at issue, visually, is appropriate to find that, even for identical goods, there is no likelihood of confusion between the marks at issue. According to the applicant, in any event, the contested mark cannot be cancelled in respect of all the goods it covers, because there may be a cancellation in respect ‘only [of] the goods [and the services] which are comprised between the two marks’.
83      EUIPO and the intervener dispute the applicant’s claims.
84      In that regard, it should be borne in mind that, as stated in paragraphs 65 and 66 above, the word element is, in principle, more distinctive and allows easier reference to a mark than the figurative elements, whether or not they are stylised. Similarly, as a general rule consumers focus on the beginning of a mark, which often has greater significance than the other word elements, constituting, as the case may be, an EU trade mark.
85      Moreover, the applicant does not put forward any argument as to the fact that, even if the second word element were pronounced, it would not change the concept conveyed by the signs at issue, which is the moon. The presence of the adjective qualifying the noun in the mark applied for cannot call into question the dominant character of the word element ‘luna’, common to both marks. Therefore, it must be held that the Board of Appeal correctly assessed the existence of a likelihood of confusion by taking due account of all the relevant factors, in the overall assessment of the marks at issue.
86      The Board of Appeal was therefore manifestly fully entitled to find that, despite the low visual similarity between the marks at issue, there was a likelihood of confusion for goods that were identical or similar to varying degrees, based, in particular, on the high phonetic and conceptual similarities of those marks and on the identity of the common distinctive and dominant element ‘luna’.
87      In the light of all the foregoing, the single plea in law relied on by the applicant must be rejected and, consequently, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
88      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. In the present case, since the applicant has been unsuccessful, it must be ordered to bear, in addition to its own costs, those incurred by EUIPO and the intervener, in accordance with the forms of order sought by them.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1.      The action is dismissed as manifestly lacking any foundation in law.
2.      Luna Italia Srl is ordered to bear, in addition to its own costs, those incurred by the European Union Intellectual Property Office (EUIPO) and Luna AE.
Luxembourg, 21 December 2021.
E. Coulon
M. J. Costeira
Registrar
President
*      Language of the case: English.