JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
12 April 2016 (*)
(European Union trade mark — Opposition proceedings — Application for European Union figurative mark Mr Jones — Earlier international figurative mark Jones — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑8/15,
Auyantepui Corp., SA, established in Panama (Panama), represented by E. Manresa Medina, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Magda Rose GmbH & Co. KG, established in Vienna (Austria), represented by R. Kornfeld, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 October 2014 (Case R 49/2014-2) relating to opposition proceedings between Magda Rose GmbH & Co. KG and Auyantepui Corp., SA,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 January 2015,
having regard to the response of EUIPO lodged at the Court Registry on 23 April 2015,
having regard to the response of the intervener lodged at the Court Registry on 30 April 2015,
having regard to the decision of 9 July 2015 refusing leave to submit a reply,
having regard to the fact that no application for a hearing was submitted by the main parties within the period of three weeks from notification of closure of the written procedure, and having therefore decided to give a ruling without an oral procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 23 February 2012, the applicant, Auyantepui Corp., SA, filed an application for registration of a European Union 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).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 18, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols, canes and walking sticks; Whips, harness and saddlery’;
–        Class 25: ‘Clothing, footwear, headgear’;
–        Class 35: ‘Commercial or industrial management assistance and consultancy; Franchise-issuing in relation to commercial or industrial management assistance; Sales promotion for others; Advertisement services; Commercial agencies, import and export; Organisation of trade fairs and exhibitions for commercial and advertising purposes; Retailing and wholesaling in shops and via global computer networks of goods of leather and imitations of leather of all kinds, Animal skins, hides, Trunks, Suit cases, Umbrellas, Parasols, Walking sticks, Whips, Saddlery, Clothing, Footwear, Headgear, Bands of leather and Handbags’.
4        The European Union trade mark application was published in Community Trade Marks Bulletin No 59/2012 of 26 March 2012.
5        On 21 May 2012, the intervener, Magda Rose GmbH & Co. KG, gave notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of some of the goods covered by the application for registration, namely, ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols’, in Class 18, and all the goods in Class 25.
6        The opposition was based on the figurative mark with international registration No 980824, designating, inter alia, the European Union, filed and registered on 22 August 2008, in respect of ‘Goods made of leather and imitation leather, not included in other classes; beach bags, purses, handbags and travelling bags, trunks and suitcases, cases, backpacks; umbrellas’, in Class 18, and ‘Clothing for women and knitted goods (clothing); scarves; collar protectors, headgear for wear, belts, shoes, boots, socks, stockings, tights’, in Class 25, reproduced below:
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        By decision of 29 October 2013, the Opposition Division concluded that there was a likelihood of confusion and upheld in part the opposition in respect of ‘goods made of these materials [Leather and imitations of leather], and not included in other classes; Trunks and travelling bags; Umbrellas, parasols’, in Class 18, and ‘Clothing, footwear, headgear; Boot uppers; cuffs; footwear uppers; soles for footwear; inner soles, studs for football boots’, in Class 25, covered by the mark applied for (‘the goods in question’). It rejected the opposition in respect of the other disputed goods, namely, ‘leather and imitations of leather’, in Class 18, and ‘Fittings of metal for footwear; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; non-slipping devices for footwear; ready-made linings [parts of clothing]; shirt yokes; tips for footwear; welts for footwear’, in Class 25.
9        On 23 December 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as it had upheld the opposition.
10      By decision of 28 October 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal found that the relevant public comprised the general public of the European Union, having an average level of attention. As regards the comparison of the goods, the Board of Appeal noted that the applicant did not dispute the Opposition Division’s assessment that the goods in question and the goods covered by the earlier mark were identical or similar and, therefore, simply referred to the Opposition Division’s assessment. As regards the comparison of the signs at issue, the Board of Appeal found that the signs were similar overall for all the relevant public. It concluded, therefore, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        register the mark applied for;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant submits that there is no similarity between the marks at issue and that the Board of Appeal erred in concluding that there was a likelihood of confusion.
15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered 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.
16      According to settled case-law, 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. 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 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 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      Moreover, it is to be remembered that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must rely on his imperfect recollection of them (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).
18      According to the 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 (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and of 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).
19      In addition, 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 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
20      First of all, the Court notes that the applicant does not dispute the Board of Appeal’s assessment that the relevant public comprises the general public of the European Union having an average level of attention, or its conclusion that the goods in question and the goods covered by the earlier mark are identical or similar.
21      As regards the marks at issue, it must be pointed out that the earlier mark is a figurative mark composed of the word ‘jones’ in a slightly stylised font. The mark applied for is a figurative mark composed of the word element ‘mr’ followed by the word element ‘jones’, in a slightly stylised font, the letter ‘o’ of the word ‘jones’ being represented in the form of a yellow circle with a black border and a hat on top of the circle.
22      The Board of Appeal found that the marks at issue were visually and phonetically similar and that they were conceptually similar for those consumers who recognised the word ‘jones’ as a common English surname.
23      The applicant, first, concedes that the marks are phonetically similar and, secondly, does not put forward any argument seeking to challenge the Board of Appeal’s conclusion that the marks at issue are conceptually similar. It simply disputes the Board of Appeal’s assessment relating to the visual similarity of the marks at issue.
24      In that regard, the Board of Appeal found that, in the mark applied for, the figurative element depicting the letter ‘o’ of the word ‘jones’ was, due to its size and colour, as dominant as the word ‘jones’ in a global appreciation of that mark. It took the view that the element ‘mr’ of the mark applied for was the common abbreviation of the English word ‘mister’ and that it always preceded a surname. Consequently, even though that element occupied the initial position in the mark applied for, the word ‘jones’, as a surname, was the most distinctive and dominant element of the word element of that mark. The Board of Appeal noted that the word ‘jones’, which was the sole word element of the earlier mark, was fully reproduced in the mark applied for. It found that the word element of the mark applied for was not stylised enough to enable the relevant public to perceive the marks at issue differently in their overall visual impression. The Board of Appeal took the view that the differences stemming from the presence in the mark applied for of the element ‘mr’ before the word ‘jones’, the figurative elements depicting the letter ‘o’ and the hat on top of it were not sufficient in order to outweigh the similarity stemming from presence of the element ‘jones’ in the marks at issue. It concluded from this that the marks at issue were visually similar.
25      The applicant complains, in essence, that the Board of Appeal failed to take into account in its assessment of the visual similarity of the marks at issue, first, the weakly distinctive character of the element ‘jones’ and, secondly, the differences between the marks at issue.
26      In the first place, as regards the weakly distinctive character of the element ‘jones’, the applicant submits that the word ‘jones’ is a very common surname.
27      In that regard, it must be pointed out that a common surname may serve the trade mark function of indicating origin and therefore distinguish the products or services concerned where is it not subject to a ground of refusal of registration, such as, for example, the generic or descriptive character of the mark or the existence of an earlier right (judgments of 16 September 2004 in Nichols, C‑404/02, ECR, EU:C:2004:538, paragraph 30, and of 16 December 2008 in Torres v OHIM — Navisa Industrial Vinícola Española (MANSO DE VELASCO), T‑259/06, EU:T:2008:575, paragraph 46).
28      The distinctive character of a trade mark constituted by a surname, even a common one, must be specifically assessed, in accordance with the criteria applicable to any other sign. Stricter general criteria of assessment based, for example, on a predetermined number of persons with the same name, above which that name may be regarded as devoid of distinctive character, the number of undertakings providing products or services of the type covered by the application for registration, or the prevalence or otherwise of the use of surnames in the relevant trade cannot be applied to such trade marks (judgments in Nichols, cited in paragraph 27 above, EU:C:2004:538, paragraphs 25 and 26, and in MANSO DE VELASCO, cited in paragraph 27 above, EU:T:2008:575, paragraph 47).
29      It follows from this that the fact that the word ‘jones’ is a widespread surname is irrelevant to the assessment of the distinctive character of that word.
30      In addition, it must be noted that the fact that the Board of Appeal stated that the name Jones was a widespread English surname does not mean that it will be recognised as such by all the relevant public, which is that of the European Union in its entirety.
31      In addition, the applicant submits that the word ‘jones’ is used in numerous trade marks registered for goods in Classes 18 and 25. It relies on extracts from the European Union trade mark register relating to 21 registrations of marks containing the word ‘jones’ and refers to Annexes Nos 5 to 12 to the application containing results of searches carried out on the Internet concerning the use of the word ‘jones’ in trade marks.
32      First of all, EUIPO contends that Annexes Nos 5 to 12 to the application were never submitted during the administrative phase of the proceedings before EUIPO and must, therefore, be declared inadmissible.
33      In that regard, it should be borne in mind that the purpose of actions before the Court is to review the legality of a decision of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to review the facts in the light of evidence adduced for the first time before it. To admit such evidence is contrary to Article 188 of the Rules of Procedure, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (judgments of 6 March 2003 in DaimlerChrysler v OHIM (Grille), T‑128/01, ECR, EU:T:2003:62, paragraph 18, and 22 January 2015 in MIP Metro v OHIM — Holsten-Brauerei (H), T‑193/12, EU:T:2015:44, paragraph 16).
34      Consequently, Annexes Nos 5 to 12 to the application submitted by the applicant for the first time before the Court must be rejected as inadmissible, and there is no need to consider their probative value.
35      In addition, it must be pointed out that, in the proceedings before EUIPO, the applicant had relied on an argument relating to the coexistence of earlier marks containing the word ‘jones’, so that it should have lodged documents in support of that line of argument before EUIPO.
36      In any event, whilst it cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two marks at issue, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgments of 7 November 2007 in NV Marly v OHIM — Erdal (Top iX), T‑57/06, EU:T:2007:333, paragraph 97, and the case-law cited, and 20 January 2010 in Nokia v OHIM — Medion (LIFE BLOG), T‑460/07, ECR, EU:T:2010:18, paragraph 68).
37      However, it must be found that, in the present case, first of all, the marks containing the word ‘jones’ relied on by the applicant and the marks at issue are not identical. Next, the applicant has not showed that those marks relied on did in fact coexist on the market. Lastly, the applicant has not, in any event, showed that the coexistence of those marks was based upon the absence of a likelihood of confusion.
38      Accordingly, the mere presence in the European Union trade mark register of marks containing the element ‘jones’, without any reference to their use on the market and any challenge to those marks on account of the existence of a likelihood of confusion, does not permit the inference that the distinctive character of the surname Jones has been reduced in relation to the goods in the clothing sector (see, to that effect, judgment of 28 June 2012 in Basile and I Marchi Italiani v OHIM — Osra (B. Antonio Basile 1952), T‑134/09, EU:T:2012:328, paragraph 47).
39      In addition, it must be pointed out, as EUIPO notes, that the applicant has failed to show how the word ‘jones’, which is an English surname, is descriptive or has a weakly distinctive character with regard to the goods in Classes 18 and 25.
40      It follows that the applicant’s arguments relating to the weakly distinctive character of the element ‘jones’ must be rejected.
41      In the second place, the applicant submits that there are numerous differences between the marks at issue, stemming from the presence in the mark applied for of the element ‘mr’, the yellow letter ‘o’ with a hat on top of it and the fact that the letters are of different sizes and in diagonal. It submits that, in the light of the weakly distinctive character of the element ‘jones’, the element ‘mr’ and the graphic device of the mark applied for are very relevant elements that will catch the consumers’ attention.
42      According to the case-law, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (judgment of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 28; see also, to that effect, judgment of 4 May 2005 in Reemark v OHIM — Bluenet (Westlife), T‑22/04, ECR, EU:T:2005:160, paragraph 40).
43      In the present case, it must be pointed out, first, that the applicant’s argument is based on the misconceived premiss that the element ‘jones’ is weakly distinctive. Secondly, the applicant does not dispute that the marks at issue are perceived by the relevant public as including the word ‘jones’. Consequently, the finding that the mark applied for is composed of the word ‘jones’, which is the sole element of the earlier mark, to which the element ‘mr’ is added, is sufficient in order to conclude that there is a certain visual similarity between the marks at issue.
44      In addition, as regards the differences relied upon by the applicant, it must be pointed out, first, that the Board of Appeal rightly found that because the element ‘mr’ will be understood as an abbreviation of the word ‘mister’, which generally precedes a surname, which the applicant does not deny, it was unlikely that it will leave a lasting impression in consumers’ minds. Secondly, contrary to the applicant’s contentions, the stylisation of the letters of the word ‘jones’, other than the letter ‘o’, in the mark applied for, is not particularly striking. Thirdly, it must be held, as the Board of Appeal found, that the difference between the marks at issue arising from the graphic representation of the letter ‘o’ (yellow in colour with a hat on top of it) in the word ‘jones’ in the mark applied for is not sufficient in order to call in question the similarity between the marks at issue arising from the presence of the common element ‘jones’.
45      It follows from the foregoing that the Board of Appeal rightly found, relying on the overall impression given by the marks at issue, that, notwithstanding the differences established between them, they were visually similar because of the presence of the common element ‘jones’.
46      Accordingly, the applicant’s argument must be rejected.
47      Lastly, the applicant’s argument that the contested decision is contrary to a previous decision of the Board of Appeal, in which the latter had taken into account the clearly discernible visual differences between the marks at issue and the weakness of the word elements which coincided, in order to conclude that there was no likelihood of confusion, cannot succeed.
48      In that regard, it is sufficient to note that the decisions concerning the registration or the protection of a sign as a European Union trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47, and 29 September 2009 in The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, ECR, EU:T:2009:364, paragraph 36).
49      In any event, the decision relied upon by the applicant is irrelevant, since, first, it concerns marks that are not comparable to those referred to in the present case and, secondly, it is apparent from the foregoing that, in the present case, the word element ‘jones’, common to the marks at issue, has distinctive character and that those marks are visually similar.
50      It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, consequently, the action must be dismissed in its entirety, and there is no need to rule on the admissibility of the applicant’s second head of claim.
Costs
51      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Auyantepui Corp., SA, to pay the costs.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 12 April 2016.
[Signatures]
* Language of the case: English.