JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 February 2020 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark DELTA SPORT — Earlier Spanish word mark COLCHON DELTA — Earlier EU figurative mark DELTA — Relative ground for refusal — Similarity of the goods — Similarity of the signs — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T–387/18,
Delta-Sport Handelskontor GmbH, established in Hamburg (Germany), represented by M. Krogmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Delta Enterprise Corp., established in New York, New York (United States), represented by M. Decker, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 17 April 2018 (Case R 1894/2017‑5) relating to opposition proceedings between Delta Enterprise and Delta-Sport Handelskontor,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 June 2018,
having regard to the response of EUIPO lodged at the Court Registry on 12 September 2018,
having regard to the response of the intervener lodged at the Court Registry on 19 September 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 1 July 2015, the applicant, Delta-Sport Handelskontor GmbH, filed an application for registration of a figurative 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 mark in respect of which registration was sought (‘the mark applied for’) is the figurative mark, with a colour claim (green: Pantone 335 C; blue: Pantone 286 C), as reproduced below:
3        The goods in respect of which registration was sought come within Classes 9, 10, 18, 20, 25 and 28 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:
–        Class 9: ‘Helmets for bicycles, ski helmets, skateboard helmets’;
–        Class 10: ‘Orthopedic articles; bandages for joints, anatomical; elasticated bandages for supportive use; sports bandages; tape; elastic therapeutic tape; rollators; earplugs (ear protectors)’;
–        Class 18: ‘Casual bags; sport bags; shopping bags; luggage boxes; travelling requisites, not included in other classes, namely chest pouches, money belts, belt bags, bum bags, spectacle cases, luggage straps, protective covers for suitcases, suitcase covers, travelling sets, toiletry bags, travel pouches’;
–        Class 20: ‘Furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands, cases, boxes, bins, medicine cabinets, flagpoles, coat racks, stools, cushions, neck cushions, neck roll cushions, baskets, tables, camping tables, camping chairs, camping stools, easy chairs, sleeping bags for camping, wind chimes’;
–        Class 25: ‘Clothing; footwear; headgear’;
–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees’.
4        The application was published in Community Trade Marks Bulletin
No 25/2016 of 8 February 2016.
5        On 28 April 2016, the intervener, Delta Enterprise Corp., filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of certain of the goods referred to in paragraph 3 of the present judgment, namely, in respect of all of the goods claimed in Classes 9, 18, 20, 25 and 28.
6        The opposition was based, first, on the earlier Spanish word mark No 1 523 644 COLCHON DELTA, registered on 2 November 1993, designating goods in Class 20 and corresponding to the following description: ‘Mattresses and pillows’.
7        Secondly, the opposition was based on the earlier EU figurative mark registered on 19 January 2013 under No 10 303 881, reproduced below:
8        The earlier EU trade mark covers goods in Classes 12, 16, 20 and 24, corresponding, for each of those classes, to the following description:
–        Class 12: ‘Baby strollers and baby carriages, children’s car seats’;
–        Class 16: ‘Paper height charts, children’s bookends, children’s easels’;
–        Class 20: ‘High chairs, playpens, play yards, bassinets, baby walkers, toddler beds, cribs, dressers, armoires, chest of drawers, changing tables for babies, combination changing tables and dressers, tables, chairs, director’s chairs, rocking chairs, desks, furniture toy boxes, toy chests, benches, non-metal bins, step stools, coat racks, shelves, clothes hangers, mirrors, infant bouncers, bed headboards, vanities, stools, mattresses for cribs and cradles, crib bumpers and bumper pads for cradles’;
–        Class 24: ‘Vinyl place mats and cloth wash cloths, bed blankets and children’s blankets, and sheets for beds, cribs and cradles, comforters, pillow cases, dust ruffles, bed canopies, play blankets and textile wall hangings; all the aforesaid goods being for children under the age of eighteen’.
9        The ground relied on in support of the opposition was that set out in Article 8(1) of Regulation No 207/2009 (now Article 8(1) of Regulation 2017/1001).
10      On 6 July 2017, the Opposition Division rejected the application for registration in part in respect of some of the goods in Classes 20 and 28 corresponding, for each of those classes, to the following description:
–        Class 20: ‘Furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands, cases, boxes, bins, medicine cabinets, coat racks, stools, cushions, neck cushions, neck roll cushions, baskets, tables, camping tables, camping chairs, camping stools, easy chairs, sleeping bags for camping’;
–        Class 28: ‘Games and playthings’.
11      On 30 August 2017, the applicant brought an action, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the decision of the Opposition Division, requesting that that decision be annulled in its entirety.
12      By decision of 17 April 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal in its entirety.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal;
–        take any other measures that it may consider appropriate.
14      EUIPO contends that the Court should:
–        dismiss the action in its entirety; and
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        dismiss the action as unfounded;
–        confirm the contested decision;
–        in any event, order the applicant to pay the costs, including those incurred by the intervener before the Court and before the Board of Appeal.
Law
The admissibility of the applicant’s third head of claim
16      By the third head of claim, the applicant requests the Court to take ‘any other measures that it may consider appropriate’.
17      In that regard, it should be recalled that, under Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, every application in the context of litigation relating to intellectual-property rights must contain a summary of the pleas in law relied on and that statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to give a ruling. The same must apply with regard to each head of claim, which must be accompanied by pleas in law and arguments which make it possible for both the defendant and the Court to assess its validity.
18      In order to ensure legal certainty and a sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, at the very least summarily, provided that the statement is coherent and comprehensible (see judgment of 15 March 2006, Athinaiki Oikogeniaki Artopoiia v OHIM — Ferrero (FERRÓ), T‑35/04, EU:T:2006:82, paragraph 19 and the case-law cited).
19      In that connection, the application must particularise the plea in law on which the action is based. Therefore, a mere abstract statement of that plea does not satisfy the requirements of the Rules of Procedure (see judgment of 15 March 2006, FERRÓ, T‑35/04, EU:T:2006:82, paragraph 20 and the case-law cited).
20      In the present case, the applicant does not provide any information in support of that third head of claim. It follows from the case-law cited in paragraph 19 of the present judgment that a claim requesting the Court to take unspecified measures, simply designated as ‘appropriate’, lacks the necessary precision and must, consequently, be regarded as inadmissible.
21      In any event, it should be noted that it is for EUIPO to examine the application for registration of an EU trade mark and to decide, as appropriate, on the basis of any opposition which may have been filed against it. It is then for the Court to carry out a judicial review of the assessment made by the Board of Appeal in the decision adopted by EUIPO. It is not, by contrast, for the Court to take the place of EUIPO in the exercise of the powers vested in EUIPO by Regulation 2017/1001.
The intervener’s second head of claim
22      It should be noted that, by its second head of claim, the intervener seeks to obtain a confirmatory ruling from the Court.
23      It follows, however, from Article 72(2) and (3) of Regulation 2017/1001 that the purpose of bringing actions before the Court is to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions; such an action cannot therefore have the objective of obtaining confirmatory judgments in respect of such decisions.
24      The intervener’s second head of claim is therefore inadmissible.
Substance
25      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
26      The applicant claims, in essence, that the Board of Appeal (i) erred in its assessment as to whether the goods in question are similar, (ii) erroneously found that the mark applied for, on the one hand, and the earlier trade marks, on the other, are visually, phonetically and conceptually similar, (iii) erred in its assessment as to whether the word ‘delta’ is distinctive in character’, (iv) erred in finding that the earlier marks have a normal degree of distinctiveness, and (v) erred in its assessment of the likelihood of confusion.
27      EUIPO and the intervener dispute the applicant’s claims.
28      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the mark applied for cannot be registered if, because of its identity with, or similarity to, an earlier mark and the identity or similarity of the goods or services covered by the 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 mark.
29      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 that 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, 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).
30      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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, to that effect, 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). Furthermore, a low degree of similarity between the goods or services designated may be offset by a high degree of similarity between the marks, and vice versa (see, to that effect, judgment 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).
31      Where the protection of the earlier mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question within that territory. However, it must be borne in mind that, in order for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, VENADO with frame and others, T–81/03, T–82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
32      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal acted correctly in finding that there was a likelihood of confusion in the present case.
The scope of the appeal before the Board of Appeal and of the present action
33      As a preliminary remark, with regard to the scope of the appeal before the Board of Appeal, the latter found, in paragraph 14 of the contested decision, that, since the intervener had not filed an appeal against the decision of the Opposition Division, the part of the decision rejecting the opposition in respect of certain of the goods in Classes 9, 18 and 25 and of certain of the goods in Class 28 had become final. Consequently, in its view, the issue to be resolved was limited to, on the one hand, the assessment of the similarity between, first, the goods covered by the application for registration in respect of which the opposition had been upheld (see paragraph 10 of the present judgment), in Classes 20 and 28, and, secondly, the goods covered by the earlier marks, and, on the other hand, the assessment of the similarity of the signs and the global assessment of the likelihood of confusion. Moreover, the Board of Appeal stated that, while maintaining the approach taken by the Opposition Division, it would take into account the two earlier marks.
34      It should be noted that the reasoning of the Board of Appeal, summarised in paragraph 33 of the present judgment, has not been challenged by the parties in the present action. Thus, it must be taken into account in the assessment of the likelihood of confusion.
The territory in question and the relevant public
35      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 products 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).
36      In the present case, in paragraphs 18 and 19 of the contested decision, with regard to the relevant territory for the assessment of the likelihood of confusion, the Board of Appeal stated that, since the earlier trade marks were a Spanish mark and an EU trade mark, the Board of Appeal had to take into account, as a rule, all consumers throughout the European Union, including Spain. However, according to the Board of Appeal, it follows from the unitary character of the EU trade mark that, if a relative ground for refusal of registration applied only in one Member State, the application for registration should be refused. Thus, the Board of Appeal found that, in the present case, the Opposition Division could limit the assessment of the similarity between the marks to the Spanish-speaking part of the public. Moreover, it stated that, for reasons of procedural economy, it was appropriate to start by taking into account the most significant element and that it was not always necessary to examine the signs in question in all languages (in this case, it was necessary first to carry out the analysis in relation to Spanish).
37      In paragraphs 20 and 21 of the contested decision, the Board of Appeal held that the relevant public interested in the goods in question, namely ‘furniture, games and playthings’, was the general public, whose degree of attention with regard to those goods was average.
38      In the circumstances of the present case, as the parties have not expressed any criticism in that respect, the assessment of the likelihood of confusion must, as the Board of Appeal has correctly pointed out, be conducted with regard to the general public composed of consumers with an average degree of attention and located within the territory of the European Union, which includes the Spanish-speaking public.
The comparison of the goods
39      According to settled case-law, in the assessment of the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
40      In addition, goods can be regarded as identical when the goods designated by the earlier mark are included in a more general category designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
41      It also follows from the case-law that goods are complementary when there is a close connection between them, 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 manufacture of the two products lies with the same undertaking (judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22).
42      In the present case, the Board of Appeal took the view, in paragraphs 26 to 36 of the contested decision, in essence, that the goods in Class 20 covered by the mark applied for were, in the case of some, identical and, in the case of others, similar, or at least similar to a low degree, to the various goods covered by the earlier marks.
43      In paragraphs 37 and 38 of the contested decision, the Board of Appeal stated that the ‘games and playthings’ in Class 28 covered by the mark applied for were not complementary to the ‘toy chests’ in Class 20 covered by the earlier EU trade mark, contrary to the view taken by the Opposition Division. However, according to the Board of Appeal, they were used in combination, as games and playthings could be stored in toy chests. It found that they could, moreover, be manufactured by the same producers, namely toy producers, distributed through the same distribution channels, namely toy shops, and addressed to the same public, namely, in its view, to parents. Consequently, according to the Board of Appeal, they are similar.
44      According to the applicant, the ‘household and camping articles’ in Class 20 covered by the mark applied for and the children’s goods in Classes 16 and 20 covered by the earlier EU trade mark are neither similar nor complementary.
45      The applicant submits, by way of example, that there is no similarity between, on the one hand, the ‘picture frames’ covered by the mark applied for and, on the other hand, the ‘children’s easels’ and the ‘tables’, in Classes 16 and 20 respectively, covered by the earlier EU trade mark. According to the applicant, the mere fact that those goods may have a decorative purpose is not sufficient to make the public believe that the goods in question originate from the same undertaking or from economically linked undertakings.
46      Furthermore, according to the applicant, the Board of Appeal misunderstood the meaning of the word ‘tables’ in Class 20 covered by the earlier EU trade mark. It follows from the context and presence of the words ‘changing tables and dressers’ and ‘chairs’ before and after the word ‘tables’ in the list of goods that that word should be understood as a synonym for the word ‘desk’. As a result, there is no similarity between ‘tables’, understood in the correct meaning of ‘desks’, and the ‘picture frames’ covered by the mark applied for.
47      The applicant claims that there is also no similarity between, on the one hand, the ‘flower stands’ and ‘medicine cabinets’ covered by the mark applied for and, on the other hand, other items of furniture, such as ‘shelves’, in Class 20, covered by the earlier EU trade mark. First, those goods are marketed and distributed through different channels and to a different public. Secondly, the mere fact that those goods are types of furniture is not sufficient to make the relevant public believe that the goods in question originate from the same undertaking or from economically linked undertakings.
48      With regard to the ‘baskets’ covered by the mark applied for and the ‘toy chests’ covered by the earlier EU trade mark, both in Class 20, the former can, according to the applicant, be used, inter alia, to transport items. The applicant claims, however, that the mere fact that these goods have such a purpose is not sufficient to make the relevant public believe that the goods in question come from the same undertaking or from economically linked undertakings.
49      According to the applicant, there is no similarity between, on the one hand, the ‘sleeping bags for camping’ covered by the mark applied for and, on the other hand, the ‘mattresses for cribs and cradles’ covered by the earlier EU trade mark, and the ‘mattresses’ as covered by the earlier Spanish mark, in Class 20. The applicant argues that those goods serve completely different purposes and are marketed and distributed through different channels and to a different public. Even mattresses for outdoor use, it submits, serve a completely different purpose to that of sleeping bags and are distributed through different channels.
50      Lastly, the applicant also challenges the assessment of the Board of Appeal with regard to the goods in Class 28, namely ‘games and playthings’. According to the applicant, these are neither similar nor complementary to the goods or furniture for babies or children in Classes 12 and 20 covered by the earlier EU trade mark.
51      EUIPO and the intervener dispute the applicant’s claims.
52      The applicant’s claims can be divided into three parts. First, there are specific claims, set out in paragraphs 45 to 49 of the present judgment, relating to particular categories of goods in Classes 20 and 28. Secondly, the applicant puts forward a general argument, summarised in paragraph 44 of the present judgment, which encompasses all of the goods in Class 20 covered by the mark applied for. Thirdly, there are specific claims relating to goods in Class 28 covered by the mark applied for, namely ‘games and playthings’.
–       Preliminary observations on the admissibility of the applicant’s general request, covering all of the goods in Class 20
53      EUIPO submits, in paragraphs 12 and 13 of its response, that the applicant’s arguments are limited to ‘picture frames, flower stands, medicine cabinets, baskets, sleeping bags for camping’ in Class 20 and to ‘games and playthings’ in Class 28 and that, therefore, the applicant’s request should be rejected as inadmissible in so far as it concerns the other goods in Class 20 covered by the mark applied for, in accordance with ‘Article 76 of the Rules of Procedure’.
54      It must be noted that, contrary to what is argued by EUIPO, the applicant’s claim, set out in paragraph 44 of the present judgment, is sufficiently precise for the purpose of fulfilling the requirements of Article 177 of the Rules of Procedure, in accordance with the case-law, according to which the summary of the pleas in law must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to decide the case, if appropriate without other information in support (see, to that effect, judgment of 12 December 2002, eCopy v OHIM (ECOPY), T‑247/01, EU:T:2002:319, paragraph 15 and the case-law cited). Although that claim made by the applicant concerns a set of goods covered by the mark applied for and coming within Class 20, without any specific argument having been raised in relation to each of them, it nevertheless appears that the applicant is contesting the Board of Appeal’s arguments, by which the latter concluded that there was an identity or similarity of varying degrees between those goods and the goods covered by the earlier marks.
55      It is therefore a matter for the Court to rule on this issue (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 38 to 48).
–       The comparison of the goods in Class 20 covered by the mark applied for and the goods covered by the earlier marks
56      First, as regards the ‘picture frames’ in Class 20 covered by the mark applied for, the Board of Appeal found, in paragraph 31 of the contested decision, that these are similar to a low degree to the ‘tables’ and ‘children’s easels’ covered by the earlier EU trade mark and coming within Classes 16 and 20 respectively. The Board of Appeal took into account, inter alia, their purpose, which is decorative, for example in the case of small decorative tables. It also noted that they had the same distribution channels and were aimed at the same public.
57      That finding must be upheld as regards the ‘tables’, notwithstanding the applicant’s claims, which are set out in paragraphs 45 and 46 of the present judgment, account being taken of the fact, as correctly argued by EUIPO in paragraph 16 of its response, that that general category, namely ‘tables’, includes decorative tables. Moreover, it is not possible in the present case to deduce the meaning of a category of goods according to the goods preceding or following that category in the list of goods covered by the earlier EU trade mark, with the result that, contrary to what the applicant claims, there is no basis for taking the view that the ‘tables’ should have been understood as ‘desks’. It must therefore be noted that both picture frames and tables (including decorative tables) form part of the furnishings of a room and are designed, for the most part, for the same purposes, in so far as they are intended to furnish and decorate that room. It must thus be held that those goods have the same purpose, or, at the very least, that their respective purposes may overlap.
58      Furthermore, this conclusion is not invalidated by the fact that tables also have a more practical purpose, relating to their normal use as a surface on which various everyday items can be placed.
59      The goods being compared may be sold together in shops specialising in interior design, which offer coordinated goods making it possible to arrange a home in such a way as to achieve overall harmony (see, in this regard, for example, the evidence presented by the intervener during the administrative proceedings before EUIPO, concerning the sales on an e-commerce site of goods intended for ‘bedrooms’ and ‘decoration’). That fact is likely to facilitate the perception by the relevant consumer of the close connections between them and to strengthen the perception that the same undertaking is responsible for the production of those goods (see, by analogy, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 50 and the case-law cited). Consumers may therefore consider it customary for picture frames and tables, including decorative tables, to be sold under the same brand name.
60      Consequently, the Board of Appeal was correct in finding, in paragraph 31 of the contested decision, that there is a low degree of similarity between, on the one hand, the ‘picture frames’ covered by the mark applied for and, on the other hand, the ‘tables’ covered by the earlier EU trade mark. In those circumstances, it is only for the sake of completeness that it should also be noted, as regards the existence of a similarity between ‘picture frames’ and ‘children’s easels’ covered by the earlier EU trade mark in Class 16, that those ‘easels’ often have a wooden frame, which makes them similar to the ‘picture frames’ covered by the mark applied for. Similarly, those goods may be sold together in shops specialising in goods for artists and for decoration. Therefore, a similarity also exists between those goods, but it can be qualified only as being low.
61      Secondly, with regard to the ‘flower stands’ and ‘medicine cabinets’ covered by the mark applied for, the Board of Appeal found, in paragraph 34 of the contested decision, that those goods are types of furniture and are therefore similar to other items of furniture such as the ‘shelves’ covered by the earlier EU trade mark.
62      It must be held that, by virtue of their nature as items of furniture, their intended use in home furnishing and, inter alia, their use as a means of storage, those goods are indeed similar. That finding is not invalidated by the fact that medicine cabinets can have different shapes, since in some cases they may take the form of a medicine cupboard or other furniture-like storage receptacle that can be positioned in the same places as shelves, for example, above the wash-hand basin in the bathroom. It should also be noted that flower stands may, as EUIPO correctly submits, be very similar in their form to shelves. In addition, it cannot be ruled out that these goods may be sold together in shops specialising in decoration and furnishings and may therefore be aimed at the same public.
63      Consequently, the Board of Appeal acted correctly in finding, in paragraph 34 of the contested decision, that there is similarity between the ‘flower stands’ and ‘medicine cabinets’ covered by the mark applied for and the other items of furniture, such as ‘shelves’, covered by the earlier EU trade mark.
64      Thirdly, with regard to the ‘baskets’ covered by the mark applied for and the ‘toy boxes’ covered by the earlier EU trade mark, the Board of Appeal found, in paragraph 34 of the contested decision, that those goods are similar. Contrary to what the applicant claims (see paragraph 48 of the present judgment), it must be noted that those goods may indeed share the same purpose and the same use and may be sold in the same interior design shops, factors which constitute relevant criteria within the meaning of the case-law mentioned in paragraph 39 of the present judgment.
65      Moreover, with regard to the comparison between the ‘baskets’, coming within Class 20, as covered by the mark applied for and the ‘non-metal bins’, covered by the earlier EU trade mark, it should be noted that, according to the case-law cited in paragraph 40 of the present judgment, goods may be considered identical when the goods designated by the earlier mark are included in a more general category designated by the trade mark application. In the present case, ‘baskets’ include or may include, as a more general category, ‘non-metal bins’. Accordingly, the goods being compared are identical, and not merely similar, as found by the Board of Appeal.
66      Fourthly, as regards the ‘sleeping bags for camping’ covered by the mark applied for, the ‘mattresses for cribs and cradles’ covered by the earlier EU trade mark and the ‘mattresses’ covered by the earlier Spanish mark, all in Class 20, the Board of Appeal rightly found, in paragraph 34 of the contested decision, that those goods are similar.
67      As the Board of Appeal states in paragraphs 35 and 36 of the contested decision, sleeping bags for camping are goods that are purely functional, consisting of a warm protective bag for a person to sleep in while camping. As rightly noted by the Board of Appeal, there are also mattresses that serve the same purpose, namely for use when sleeping outdoors. Such mattresses are placed underneath sleeping bags for camping, and thus have the same purpose, being intended to provide more comfort when camping. They can be regarded as complementary, due to the close link between them, as mattresses should be considered important for the use of sleeping bags for camping, with the result that consumers may think that the responsibility for the manufacture of those two products or the provision of those services lies with the same undertaking (see, to that effect, judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22). Accordingly, the applicant’s claim that those goods serve completely different purposes (see paragraph 49 of the present judgment) must be rejected as unfounded.
68      Finally, as the Board of Appeal states, those goods may be sold through the same distribution channels or may be aimed at the same public. In that regard, it should be noted that different types of mattresses, such as air mattresses, foam mattresses or mattresses made of other more resistant materials, are goods that are sought by people who go camping, but also by a fairly wide circle of consumers, including those who enjoy certain sports, such as hiking, or adventure travel. Those consumers may also look for sleeping bags in order to engage in those sports or travel. Thus, as the Board of Appeal found, the ‘sleeping bags for camping’ covered by the mark applied for and the ‘mattresses’ covered by the earlier Spanish mark are aimed at the same public, which may purchase them in sports stores or also in specialist stores for camping, hiking or, more generally, adventure travel.
69      Consequently, without it even being necessary to assess whether there is a similarity between the ‘sleeping bags for camping’ covered by the mark applied for and the ‘mattresses for cribs and cradles’ covered by the earlier EU trade mark, the Board of Appeal’s finding is well founded in regard to the similarity with the ‘mattresses’ covered by the earlier Spanish mark. Such a finding constitutes a sufficient basis for the assessment of the likelihood of confusion in the present case, in so far as the Board of Appeal relies, in this regard, equally on each of the two earlier marks (see paragraph 149 et seq. of the present judgment). Thus, it is sufficient if similarity between goods is found in relation to one of the marks.
70      At the present stage it is still necessary to assess, in accordance with what has been held in paragraphs 53 to 55 of the present judgment, whether the Board of Appeal was right to find that the other goods in Class 20 covered by the mark applied for, differing from those to which the applicant’s actual arguments related, were identical or similar. In that regard, the Board of Appeal noted, in paragraph 26 of the contested decision, that the applicant merely stated that the ‘household and camping’ articles in Class 20 covered by the mark applied for were neither similar nor complementary to ‘children’s products’ in that class, covered by the earlier EU trade mark. It found, in paragraph 28 of that decision, that the comparison of the goods in that class, as carried out by the Opposition Division, did not contain any error.
71      Given the lack of any more concrete argument on the part of the applicant, the Court takes the view that the assessment of the Board of Appeal is also correct with regard to the other goods in Class 20, mentioned in paragraph 70 of the present judgment, for the reasons set out below.
72      First, as indicated in paragraph 29 of the contested decision, ‘mirrors’ appear both in the goods covered by the mark applied for and in the goods covered by the earlier EU trade mark.
73      Secondly, as indicated in paragraph 30 of the contested decision, the ‘furniture’ covered by the trade mark application includes the ‘high chairs, dressers, armoires’, covered by the earlier EU trade mark, and must therefore be regarded as identical.
74      Thirdly, as the Board of Appeal found, inter alia in paragraphs 32 and 36 of the contested decision, and as also follows from the reference made in paragraph 28 thereof to the decision of the Opposition Division, the remaining goods in Class 20 are identical or similar, even though the earlier EU trade mark covers, in certain respects, goods intended for children. The remaining goods in that class, ‘not included in other classes’, made of specified material and which are listed after the introductory word ‘namely’, are either identical, since they overlap in part with each other or are reproduced as such, or very similar to the goods covered by the earlier marks. As EUIPO correctly states in paragraph 26 of its response, ‘coat racks, stools, tables’ are covered both by the mark applied for and by the earlier EU trade mark. The ‘camping tables’ covered by the mark applied for are included among the ‘tables’ covered by the earlier EU trade mark. Similarly, ‘camping chairs, easy chairs’ are included among ‘chairs’ and the ‘camping stools’ are included among ‘stools’. The ‘bins’ covered by the mark applied for include the ‘non-metal bins’ covered by the earlier EU trade mark, while the ‘boxes’ include ‘furniture toy boxes’. Finally, the ‘cushions, neck cushions, neck roll cushions’ covered by the mark applied for overlap with the ‘pillows’ covered by the earlier Spanish mark and the ‘cases’ covered by the mark applied for overlap with the ‘furniture toy boxes’ covered by the earlier EU trade mark.
–       The comparison of the goods in Class 28 covered by the mark applied for and the goods covered by the earlier marks
75      The applicant claims that, contrary to what was found by the Board of Appeal (see paragraph 43 of the present judgment), there is no similarity between ‘games and playthings’ and ‘toy chests’ on the ground that those goods could have the same producers, distribution channels and public (with reference to paragraph 38 of the contested decision). The applicant argues that this finding is unsubstantiated and that, moreover, the intervener had not submitted any example of ‘toy chests’ being sold or marketed together with ‘games and playthings’, nor did it provide any example of a manufacturer of ‘toy chests’ which also manufactured ‘games and playthings’. According to the applicant, toy chests constitute a general item of room furnishings and may be used for various storage purposes, whereas ‘games and playthings’ are used for playing as such. Consequently, those goods are conceptually different and belong to different product families. The goods in question are marketed and distributed through different channels and are aimed at different publics. The average consumer would not expect them to originate from the same undertaking.
76      In this regard, it should first of all be noted that, according to the case-law, only the consideration of the ‘objective’ circumstances in which the goods covered by the marks at issue are marketed is justified (see, to that effect, judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraphs 104 and 105). In addition, it has already been held in the case-law that, in some cases, an approach of the Board of Appeal which referred, in essence, to its experience with such ‘objective’ marketing circumstances could be regarded as coming within the scope of taking into consideration well-known facts (see, to that effect, judgment of 21 March 2012, Volkswagen v OHIM — Suzuki Motor (SWIFT GTi), T‑63/09, not published, EU:T:2012:137, paragraph 81 and the case-law cited).
77      In the present case, the Board of Appeal was right to find that ‘games and playthings’ could be used together with ‘toy chests’, as those chests can be used to store games and playthings. Similarly, it may be regarded as common knowledge that some toy stores also distribute toy chests, or that some producers of children’s furniture also sell, in the section dedicated to such furniture, to which the ‘toy chests’ belong, certain ‘playthings’. This may include situations in which ‘toy chests’ are intended for specific ‘playthings’, but also situations in which sellers take advantage of the fact that children often accompany their parents when the latter are buying children’s furniture and other items for children’s rooms. Moreover, it appears from some of the items of evidence produced by the intervener before EUIPO that the same stores may offer both furnishings for children’s rooms and playthings, in particular through online showcases (see, in that regard, for example, the websites of furniture manufacturers relating to the sale of goods such as ‘children’s bedrooms’, including ‘toy chests’, and ‘games and playthings’). Accordingly, both the public and the distribution channels may be considered, at least in some cases, to be identical. Finally, as the intervener submits in paragraph 40 of its response, ‘playpens and play yards’ in Class 20 covered by the earlier EU trade mark, in which children play and use playthings, are similar, or at least complementary, to ‘games and playthings’ covered by the mark applied for, in particular as they may contain playthings.
78      Consequently, the Board of Appeal acted correctly in finding, in paragraph 38 of the contested decision, that those goods are similar. The degree of similarity must, however, be qualified as low.
The comparison of the signs
79      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 this 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).
80      In general terms, 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, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 8 September 2010, Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, not published, EU:T:2010:362, paragraph 21).
81      Furthermore, it should be noted that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that those two marks are similar (see judgment of 7 March 2013, FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31 and the case-law cited).
82      In the present case, with regard to the comparison of the marks at issue, the Board of Appeal essentially found, in paragraph 39 et seq. of the contested decision, that, since the marks share the distinctive element ‘delta’, they have an average degree of visual and phonetic similarity. Moreover, because of the presence of that distinctive element common to those marks and of the non-distinctive or ‘weak’ character of the words ‘colchon’, in the earlier Spanish mark, and ‘sport’, in the mark applied for, those marks were also found to be conceptually similar.
83      According to the applicant, the Board of Appeal erred in finding that the earlier marks and the mark applied for are visually, phonetically and conceptually similar. The applicant submits, first, that the word ‘delta’, common to those marks, has no distinctive character and, secondly, that the earlier marks themselves have, at most, a weak distinctive character.
84      EUIPO and the intervener support the approach taken by the Board of Appeal.
–       The distinctive character of the word element ‘delta’ present in the marks at issue
85      The Board of Appeal stated, in paragraph 43 of the contested decision, that the marks at issue have the word element ‘delta’ in common, which, according to the dictionary of the ‘Real Academia Espanola’ (www.rae.es), has the following meanings in Spanish: (i) the fourth letter of the Greek alphabet, which corresponds to the letter ‘d’; (ii) the symbol in mathematics of the difference between two close values of a magnitude; (iii) the terrain between the banks of a river at the river mouth. According to the Board of Appeal, the Opposition Division correctly noted that the word ‘delta’, in those meanings, does not have any connection to the goods at issue, and therefore is not descriptive, allusive or otherwise weak for the relevant goods. Consequently, it is an inherently distinctive element.
86      In paragraph 45 of the contested decision, the Board of Appeal responded to the claims of the applicant, which had drawn attention, during the proceedings before EUIPO, to the meaning of ‘delta’ derived from mathematics and its use in the business context as a synonym for the abstract concepts of ‘change’ or ‘difference’, which would lead to its use as a name for commercial companies. According to the Board of Appeal, even if it was perceived as such by average Spanish consumers, it had no connection with the goods at issue, in general terms furniture and games. Thus, the Board of Appeal took the view that the word ‘delta’, whether in its mathematical, geographical or linguistic meaning, is not descriptive, allusive or otherwise weak in relation to the goods at issue.
87      According to the applicant, the Board of Appeal overvalued the degree of distinctiveness of the word ‘delta’, common to the marks at issue. The applicant states that, although the Board of Appeal confirmed, in paragraph 43 of the contested decision, the applicant’s argument concerning the figurative meaning of the word ‘delta’, it erred in finding, in paragraph 45 of that decision, that it had no connection to the goods in question and that it was therefore not descriptive, allusive or weak in relation to the goods in question.
88      The Board of Appeal’s finding that the word ‘delta’ is not descriptive of the goods concerned ignores, in the view of the applicant, the growing figurative use of that word in the world of business. By analogy to its mathematical meaning of ‘difference’, as noted in paragraph 43 of the contested decision, that word is, according to the applicant, used by commercial undertakings wishing to present themselves or their goods as different or advantageous. The applicant claims to have demonstrated during the proceedings before EUIPO that the word in question is widely used by companies, particularly in Europe, for example in Germany, Spain, France, Portugal and the United Kingdom, but also on an international scale, in the United States of America and Mexico. The applicant refers, before the Court, to the examples given in the course of the proceedings before EUIPO and included in the application.
89      According to the applicant, this massive commercial use, as a ‘sign’, of the word ‘delta’, as a synonym for difference, underlines the almost generic understanding of the sign in question and prevents it from being described as an inherently distinctive element. On the contrary, the applicant argues, the distinctiveness of that word in the mark applied for and in the earlier marks is ‘substantially lower than normal’.
90      EUIPO and the intervener support the approach taken by the Board of Appeal.
91      It should be noted that, according to the case-law, in the context of consideration of the likelihood of confusion, assessment of the similarity between two trade marks means more than taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42 and the case-law cited; judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).
92      For the purpose of assessing whether an element of a mark is distinctive, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether or not it is at all descriptive of the goods for which the mark has been registered (see judgment of 24 May 2012, Grupo Osborne v OHIM — Industria Licorera Quezalteca (TORO XL), T‑169/10, not published, EU:T:2012:261, paragraph 24 and the case-law cited).
93      In that regard, the distinctive character of an element is affected if that element is already commonly used, as such, for the type of goods concerned. Indeed, that element, in that case, loses its ability to enable the consumer to distinguish immediately and with certainty the goods covered by a mark, in so far as it contains that element, from the goods of other undertakings (see, to that effect and by analogy, judgment of 9 October 2002, Dart Industries v OHIM (UltraPlus), T‑360/00, EU:T:2002:244, paragraph 48).
94      Moreover, according to the case-law, the public will not generally consider a descriptive or weakly distinctive element forming part of a composite mark to be the distinctive and dominant element of the overall impression conveyed by that mark (see judgment of 5 April 2006, Madaus v OHIM — Optima Healthcare (ECHINAID), T‑202/04, EU:T:2006:106, paragraph 54 and the case-law cited; judgment of 28 October 2009, CureVac v OHIM — Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 49).
95      In the present case, it is necessary to make the following observations with regard to the evidence which the applicant provided with the view to establishing that the word ‘delta’ has a weak distinctive character, perhaps even an ‘almost generic’ character, in relation to the goods at issue.
96      First, as correctly stated by the Board of Appeal in paragraphs 44 and 45 of the contested decision, the evidence submitted by the applicant relates to cases in which the word ‘delta’ was chosen by multiple undertakings as the name of the company, but without it being clarified, however, that those undertakings were active in the sector to which the goods at issue in the present case belong. In such circumstances, it cannot be concluded that that word has a weak distinctive character in relation to those goods, even irrespective of whether use as a marketing name can be assimilated, in order to demonstrate the weak distinctive character of a specific word, to use as a trade mark in the relevant market. Moreover, it cannot be ruled out that the undertakings in question use that word as a trade name or company name precisely in order to make themselves known to customers and to remain anchored in their memory, that is to say, for distinctive purposes.
97      Secondly, it is apparent from the list of undertakings at issue, to which the applicant referred before EUIPO and which it includes in the application before the Court, that the majority of those undertakings are active in Germany (which is apparent both from the ending ‘.de’ of the websites to which the applicant refers and from its own introductory statement). Some are active in France, Portugal, the United Kingdom, the United States and Mexico, and two are active ‘on an international scale’. Finally, it is possible to establish from a reading of Annex 3 to the statement of grounds before the Board of Appeal, dated 6 November 2017, and of paragraph 40 of the application that only six of the undertakings which have the word ‘delta’ in their trade name, cited by the applicant, were designated by the applicant as being active in Spain. Accordingly, and in the absence of any data making it possible to assess whether those trade names are known by a sufficiently large portion of the relevant public in Spain, it cannot be inferred from this that the word is not very distinctive, or even ‘almost generic’, in relation to the goods at issue for the Spanish-speaking public.
98      Thirdly, it must be borne in mind that it is apparent from the case-law that evidence which comes from websites and which does not contain any reference to the dates and places where the goods were marketed and used does not serve to show the way in which the relevant public perceives the mark affixed to those goods (see, to that effect, judgment of 16 March 2016, The Body Shop International v OHIM — Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 34 and the case-law cited). The same principle applies, a fortiori, in the case where there is merely a reference to the websites of undertakings which have the word ‘delta’ in their trade name. In that regard, in addition to the fact that it is not apparent from the websites in question whether goods covered by the mark applied for, in Classes 20 and 28, which are the subject of the present proceedings, have in fact been sold, in particular in Spain, that evidence also does not show that that word has been used for the reason invoked by the applicant, namely to refer to ‘changes’ or ‘differences’.
99      Consequently, the applicant has not shown that the element ‘delta’ is devoid of distinctive character, or even of an ‘almost generic’ character, because of the association, in the mind of the relevant public, of that word with the goods at issue.
100    More generally, even if one of the possible perceptions of the word ‘delta’ is the mathematical symbol of the difference between two close values of a magnitude, it is not established that that word is understood by a sufficiently large portion of the relevant public as an allusion to something different or advantageous, with the result that this element has a laudatory character. The case file contains no evidence which makes it possible to establish that a significant portion of the relevant public, and, more specifically, the public in Spain, understands that allusive meaning, which is based on an interpretation of mathematical language (see, to that effect and by analogy, judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 38). Thus, for a substantial portion of the relevant public, the word ‘delta’ retains a normal degree of distinctiveness.
101    It must be concluded that the Board of Appeal acted correctly in finding that the word ‘delta’ is not descriptive, allusive or ‘weak’ in relation to the goods in question.
–       The distinctive character of the word element ‘colchon’ in the earlier Spanish mark
102    The Board of Appeal stated, in paragraph 46 of the contested decision, that the word element ‘colchon’ of the earlier Spanish mark is the misspelled Spanish word ‘colchón’, which, according to the dictionary of the ‘Real Academia Espanola’ (www.rae.es), means a ‘rectangular piece of a soft or elastic material that is placed on the frame of the bed or on another support to lie on it’, in other words, a ‘mattress’. From this the Board of Appeal concluded that, since the earlier Spanish mark was registered for ‘mattresses and pillows’, the element ‘colchon’ should be regarded as a non-distinctive element for ‘mattresses’ and as having a lower than average degree of distinctiveness with regard to ‘pillows’, because of the link with the general purpose of those goods, namely making or decorating a bed.
103    In that regard, the applicant merely submits before the Court that, in the earlier Spanish mark, the public pays more attention to the word ‘colchon’ by reason of the fact that it is placed at the beginning of that mark, ‘regardless whether it refers to the Spanish word for “mattresses”’.
104    Thus, the applicant does not criticise the Board of Appeal’s analysis, summarised in paragraph 102 of the present judgment, with regard to the lack of distinctive character of the word ‘colchon’ for ‘mattresses’ and its lower than average distinctive character as regards ‘pillows’. In those circumstances, it is appropriate to rely on that analysis of the Board of Appeal, which is, moreover, well founded by reason of the specific references to the dictionary of the ‘Real Academia Espanola’.
–       The distinctive character of the word element ‘sport’ in the mark applied for
105    The Board of Appeal stated, in paragraph 49 of the contested decision, that the word element ‘sport’ in the mark applied for is an English word which will be associated by the relevant public with sport. In view of the fact that the goods at issue are, inter alia, games and playthings in Class 28, that element is, in its view, weak for those goods.
106    The applicant submits that the ‘term “sport” is not non-distinctive’.
107    In that regard, the Board of Appeal’s statement, summarised in paragraph 105 of the present judgment, must be understood as referring solely to the specifically mentioned ‘games and playthings’. Thus, it does not follow that the Board of Appeal found the word element ‘sport’ to be of weak distinctive character or devoid of distinctive character in respect of all of the goods at issue other than ‘games and playthings’.
–       The relative distinctiveness of the elements constituting each of the marks at issue and the overall distinctiveness of the earlier marks
108    In paragraph 47 of the contested decision, the Board of Appeal stated that the overall distinctive character of the earlier Spanish mark, composed of the distinctive element ‘delta’ and the ‘weak’ element ‘colchon’, must be seen as normal. Since it is a word mark, no one element could be considered to be clearly more dominant than the other.
109    In paragraph 48 of the contested decision, the Board of Appeal found that the earlier EU trade mark is composed of a distinctive word element and a less distinctive figurative element, namely a heart, used as a decorative element inside the initial letter ‘D’. Furthermore, according to the Board of Appeal, the word element ‘delta’ should be considered dominant. In this regard, the Board of Appeal refers to the case-law, according to which, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as being more distinctive than the figurative elements, or even being as dominant, since the relevant public will remember the word elements to identify the mark concerned, the figurative elements being perceived more as decorative elements (judgment of 6 December 2013, Premiere Polish v OHIM — Donau Kanol (ECOFORCE), T‑361/12, not published, EU:T:2013:630, paragraph 32).
110    The applicant submits, in essence, that the earlier EU trade mark contains a prominent heart in the letter ‘D’, which is an element which attracts attention and is distinctive and dominant in that it immediately creates an emotional impression on the public. That emotional effect is further reinforced by the fact that the earlier mark is written in black, in upper- and lower-case letters and in a rather soft shaped font. With regard to the earlier Spanish mark, the applicant states that that earlier mark begins with the term ‘colchon’, to which the public thus pays more attention, regardless of the fact that it is the Spanish word for ‘mattress’.
111    According to the applicant, the earlier marks have, at most, a weak distinctive character. The applicant submits that, in order to determine whether a mark has acquired a distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49 et seq.).
112    In the present case, according to the applicant, it follows from the total lack of information on the use of the earlier marks, on their possible importance, on evidence that their distinctive character may have increased, on the extent to which they are known on the market and on other similar information, that it was appropriate to start from the principle that the distinctiveness was ‘just barely adequate and therefore rather weak’.
113    EUIPO and the intervener dispute the applicant’s claims.
114    In the first place, concerning the question as to the degree of distinctive character of the various elements of the marks at issue, it must be noted, first, with regard to the earlier Spanish mark, that the Board of Appeal rightly found, in essence, in paragraph 47 of the contested decision, that neither of that mark’s two word elements could be considered to be dominant. In that regard, notwithstanding the fact that, for Spanish-speaking consumers, the word ‘colchon’ is either devoid of distinctive character, as regards ‘mattresses’, or has only a weak distinctive character, as regards ‘pillows’, it cannot be considered negligible or accessory in the overall impression of that mark, because it is located at the beginning of it and because of its length. By contrast, the relevant consumers would also perceive the word ‘delta’ in that mark, which has an average distinctive character, and would remember it.
115    Secondly, as regards the earlier EU trade mark, it should be pointed out that the word ‘delta’ is presented in bold, black and stylised characters, and that, because of its size, it is dominant in that mark. Contrary to what the applicant claims, the graphic element consisting of a representation of a heart, leaning to the left, inside the initial letter ‘D’ is, as the Board of Appeal stated in paragraph 48 of the contested decision, decorative in nature and, because of its small size and the very common nature of such a representation, negligible. In addition, the applicant’s claims, based on the assertion that it is an element which leaves an emotional impression upon the public, are exaggerated in relation to the small size of that graphic element and its lack of originality, or even of any striking character in its representation.
116    Thirdly, with regard to the mark applied for, as the Board of Appeal found in paragraph 42 of the contested decision, it consists of the word element ‘delta’, written in slightly inclined blue upper-case letters and the word element ‘sport’, written in slightly inclined green upper-case letters. Between those words there is a square with a thin white line dividing it vertically into two halves. The right half is light blue at the top and dark blue at the bottom and the left half is light green at the top and dark green at the bottom.
117    With regard to the figurative element of the mark applied for, it must be noted, first of all, that a sign which is excessively simple and composed of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, as such, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see, to that effect, judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraphs 72 and 74; and judgment of 3 December 2015, Omega International v OHIM (Representation of a white circle and a white rectangle inside a black rectangle), T‑695/14, not published, EU:T:2015:928, paragraph 18). That case-law is applicable by analogy to the assessment of a graphic element of a composite mark with regard to its distinctive character.
118    Next, in the present case, the graphic element in question, in the form of a rhombus, does not present easily memorable details or anomalies, but consists of a conventional representation of a rhombus, albeit in different colours. Thus, it could be perceived as a purely decorative element that would not be remembered.
119    The applicant submits that the graphic element in question creates a three-dimensional effect. However, such a claim cannot invalidate the fact that that element is not –– either because of its shape or its colour –– particularly complex and that it is not, as such, likely to have any enhanced distinctive character.
120    Lastly, with regard to the word elements composing the mark applied for, it must be noted, first, that the element ‘delta’ has an average degree of distinctiveness, even though the word ‘sport’ has weak distinctive character in respect of some of the goods at issue and, at the very most, average distinctive character for the others (see paragraphs 105 to 107 of the present judgment). Secondly, the word ‘delta’, presented in an easily readable font, is placed at the beginning of that mark, that is to say, in the part of the mark to which the consumer generally pays greater attention (see, to that effect, judgment of 16 September 2009, Offshore Legends v OHIM — Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green), T‑305/07 and T‑306/07, not published, EU:T:2009:335, paragraph 92).
121    Secondly, as regards the overall distinctive character of the earlier marks, it must be held that the applicant’s argument with regard to the earlier marks as a whole concerns only distinctive character acquired through use, which is not at issue in the present case. In that regard, the case-law distinguishes between distinctive character acquired through use, that is to say, recognition by the public of a mark, and the inherent distinctive character of a mark (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
122    In the present case, the earlier marks must be regarded as having a normal inherent distinctive character. So far as the earlier EU trade mark is concerned, it has already been held that the word ‘delta’ is not descriptive, allusive or ‘weak’ in so far as the goods at issue are concerned (see paragraph 101 of the present judgment). Consequently, in so far as that earlier mark is made up solely of that word and an image of a heart, there is no evidence that it has a lower than average distinctive character.
123    With regard to the earlier Spanish mark, made up of the words ‘colchon’ and ‘delta’, the Board of Appeal also rightly found, in paragraph 47 of the contested decision, that its overall distinctive character must be seen as ‘normal’, notwithstanding the fact that the word ‘colchon’ may have a lower than average distinctive character as regards ‘pillows’ and that it may be regarded as non-distinctive for ‘mattresses’. The overall assessment of the inherent distinctive character of that mark must also take into account the element ‘delta’ which forms part of it.
–       Visual similarity
124    As is apparent from paragraph 50 et seq. of the contested decision, the Board of Appeal found, in essence, first, regarding the comparison of the mark applied for and the earlier Spanish mark, that the targeted consumer would immediately recognise the word element ‘delta’ in both marks. Secondly, it stated that that same word element contained in the earlier EU trade mark is reproduced in the mark applied for, where it is clearly distinguishable within the overall impression of the mark, in particular because of the difference in colour as against the word ‘sport’ in the mark applied for. In both cases of comparison, there is thus an average degree of visual similarity.
125    The applicant submits that the differences between the marks at issue are sufficient to produce a different overall impression on the average consumer. So far as the mark applied for is concerned, it observes, first, that this consists of two word elements around a ‘rhombus’ in a horizontally balanced manner. Secondly, that mark ends with the word ‘sport’, which is not descriptive of the goods at issue. Thirdly, that mark is written in bold upper-case letters. Fourthly, that mark is composed of two colours, namely, blue and green, the upper half of the ‘rhombus’ in the middle being light blue and light green and the lower half being dark blue and dark green, creating a three-dimensional impression of the ‘rhombus’. According to the applicant, in view of those characteristics, there is a balance between the two word elements and the figurative element, without any one element being clearly dominant or, on the contrary, clearly non-distinctive.
126    So far as the earlier EU trade mark is concerned, the applicant claims that, by contrast, it is the element consisting of the representation of the heart which is ‘prominent’. As regards the earlier Spanish mark, it emphasises the crucial importance of the element ‘colchon’ due to its position at the beginning of the mark.
127    Lastly, the applicant submits that the word ‘sport’ in the mark applied for is different from the word ‘colchon’ of the earlier Spanish mark, and that this difference must be taken into account in the overall assessment. In that regard, according to the applicant, the Board of Appeal ‘surprisingly’ stated in paragraph 60 of the contested decision that it would not be justified to claim a likelihood of confusion where the signs coincide only in the non-distinctive elements. According to the applicant, that is clearly not the case here.
128    Consequently, the applicant submits, the factors mentioned in paragraphs 125 to 127 of the present judgment prevent a visual similarity between the marks at issue from being established. In any event, the applicant maintains that, even if such a visual similarity were not completely ruled out, that similarity would be of a significantly lower degree than that established by the Board of Appeal.
129    EUIPO and the intervener support the approach taken by the Board of Appeal.
130    None of the applicant’s arguments can invalidate the Board of Appeal’s assessment as to the existence of an average degree of similarity between the marks at issue.
131    With regard to the earlier Spanish mark, in so far as the distinctive character of the word ‘colchon’ has been found to be missing or weak, consumers will indeed also focus their attention on the word ‘delta’ in that mark, notwithstanding the fact that it is situated in second place. In those circumstances, they will perceive the similarity with the first word of the mark applied for, ‘delta’, even though the other two elements of that mark are not negligible in the overall assessment (see, to that effect and by analogy, judgment of 16 September 2009, OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green, T‑305/07 and T‑306/07, not published, EU:T:2009:335, paragraphs 81 to 83).
132    With regard to the comparison with the earlier EU trade mark, the fact that the word ‘delta’ appears at the beginning of the mark applied for, in, moreover, a clearly legible font, as in that earlier mark, creates a visual similarity of an average degree, which cannot be reduced or excluded either because of the presence of the small representation of a heart in that earlier mark or of the rhombus and the word ‘sport’ in the mark applied for, or because of the colours used in the mark applied for.
–       Phonetic similarity
133    The Board of Appeal found, in paragraph 57 of the contested decision, that, since the signs under comparison are identical as regards the word ‘delta’ and differentiated by the word ‘sport’ present in the mark applied for and by the word ‘colchon’ present in the earlier Spanish mark, the Opposition Division was entitled to find that there is an average degree of phonetic similarity between them.
134    According to the applicant, the phonetic comparison of the marks at issue also shows substantial differences. Despite the congruence with respect to the word ‘delta’, the additional word ‘sport’ is, it argues, phonetically different to the word ‘colchon’ and also creates a substantial phonetic difference to the word ‘delta’ in the earlier EU trade mark. Moreover, the fact that the word ‘delta’ does not appear in the same order in the signs at issue creates an additional phonetic difference.
135    EUIPO and the intervener support the approach taken by the Board of Appeal.
136    It must be held that the phonetic similarity between the mark applied for and the earlier EU trade mark must be considered to be of an average degree, as found by the Board of Appeal, by reason of the presence of the same word, namely, ‘delta’, pronounced in their respective beginnings. By contrast, unlike what was found in the contested decision by the Board of Appeal, the phonetic similarity between the mark applied for and the earlier Spanish mark can only be qualified as weak, because of the presence of the words ‘sport’ in one and ‘colchon’ in the other, which are pronounced and provide some additional differentiation, as claimed by the applicant.
–       Conceptual similarity
137    In paragraphs 58 to 61 of the contested decision, the Board of Appeal finds, in essence, that the mere conceptual difference created by the elements ‘colchon’ and ‘sport’ cannot overcome the conceptual similarity resulting from the presence of the distinctive element ‘delta’ which the marks at issue have in common. According to the Board of Appeal, since those marks refer to the word ‘delta’, with the three alternative meanings summarised in paragraph 85 of the present judgment, they are conceptually similar.
138    According to the applicant, the conceptual assessment of the signs at issue reveals a different meaning of the mark applied for in comparison with that of the earlier marks. While the mark applied for indicates that it concerns ‘sports and lifestyle related products and services’, the earlier Spanish mark refers to bedroom articles, due to the word ‘colchon’, and the earlier EU trade mark refers to goods which are associated with love and harmony, due either to the heart shape or to the font used for rounded shapes. Moreover, according to the applicant, even the argument that the conceptual difference between the words ‘sport’ and ‘colchon’ cannot overcome the conceptual similarity resulting from the presence of the common element ‘delta’ is wrong. The word ‘sport’, it argues, is not devoid of distinctive character, and so the difference between ‘sport’ and ‘colchon’ should be taken into account in the overall assessment.
139    EUIPO and the intervener support the approach taken by the Board of Appeal.
140    In this regard, the mere fact that the marks at issue contain an identical word, ‘delta’, the meaning of which will be understood by the public and which has no connection to the goods covered (see paragraph 85 of the present judgment) already allows for the conclusion that there is conceptual similarity. Contrary to what the applicant claims, the addition of the word ‘sport’ in the mark applied for cannot alter that conclusion, let alone overcome that similarity, since it is a word normally used to target the field of use of certain goods, but which does not contain such a strong semantic meaning as to make the perception of the word ‘delta’ negligible in that respect, in such a way that the relevant public would no longer memorise it. Furthermore, as regards the reference to the concept of the representation of the heart in the earlier EU trade mark, it has already been held in paragraph 115 of the present judgment that that element is negligible in the overall impression and that the applicant’s claims in that regard are exaggerated.
141    With regard to the earlier Spanish mark, it should be noted, in a similar sense, that the addition of the word ‘colchon’, which is descriptive in relation to certain of the goods covered by that mark, namely ‘mattresses’, and which is connected to the others, namely ‘pillows’, does not in any way alter the assessment of the Board of Appeal for a Spanish-speaking public, since such a reference cannot overcome the concept common to the trade marks or reduce its relevance.
142    In those circumstances, the Board of Appeal acted correctly in concluding that there is a conceptual similarity which must be qualified as average.
The likelihood of confusion
143    In view of the similarity between the marks at issue, taken as a whole, as well as the identity or similarity, to varying degrees, between the goods covered by those marks, the normal distinctive character of the earlier marks and the general public showing an average level of attention, for which the goods at issue are intended, the Board of Appeal concluded, in paragraph 62 et seq. of the contested decision, that there is a likelihood of confusion, including association in the mind of the relevant public.
144    More particularly, in paragraph 69 of the contested decision, the Board of Appeal found that the relevant criterion for determining whether there is a likelihood of confusion is that there is at least a risk that relevant consumers may confuse the marks, in particular where the comparison does not relate directly to the signs in question but rather to the image of the signs in their imperfect memory. According to the Board of Appeal, the marks at issue are likely to be linked in the minds of consumers, who, because of the shared word element ‘delta’, may interpret the mark applied for as being a variant of the earlier marks and, accordingly, as coming from the same or from economically linked undertakings.
145    The applicant submits that the Board of Appeal correctly held that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. However, it contends, the Board of Appeal reached erroneous conclusions and wrongly assessed the likelihood of confusion. In view of the interdependence of the relevant factors, the Board of Appeal incorrectly assessed, first, the lack, or at most the low degree, of similarity between the goods in question, secondly, the lack of similarity between the signs at issue and, thirdly, the weak distinctive character of the intervener’s earlier marks.
146    Moreover, according to the applicant, none of these factors can be ‘offset by a high degree of any other factor’. On the contrary, even if some of the goods at issue were to be regarded as similar, the visual, phonetic and conceptual differences between the marks at issue have much more weight than was assumed by the Board of Appeal and are sufficient to create a different overall impression.
147    EUIPO and the intervener support the approach taken by the Board of Appeal.
148    In that respect, and in the light of the case-law referred to in paragraphs 29 to 31 of the present judgment, the applicant’s claims that the Board of Appeal erred in its assessment of the likelihood of confusion, including association in the mind of the relevant public, must be rejected as unfounded.
149    First, as has been held in paragraphs 39 to 78 of the present judgment, the Board of Appeal acted correctly in finding that the goods at issue are, as regards some, identical, and, in the case of others, similar to varying degrees.
150    Secondly, it has been found that the Board of Appeal did not err in the assessment of the distinctive character of the various components of the marks at issue (see paragraphs 85 to 107 of the present judgment), their reciprocal distinctive characteristics in those marks, nor as regards the distinctive character of the earlier marks, taken as a whole (see paragraphs 108 to 123 of the present judgment).
151    Thirdly, apart from the error in its assessment of the phonetic similarity between the mark applied for and the earlier Spanish mark (see paragraph 136 of the present judgment), the Board of Appeal acted correctly in finding similarity with regard to the other aspects, namely, visual and conceptual, in respect of that earlier Spanish mark, and similarities of an average degree, for all three aspects, in relation to the earlier EU trade mark (see paragraphs 124 to 136 of the present judgment). In those circumstances, the error regarding the degree of phonetic similarity of the mark applied for with the earlier Spanish mark cannot have any bearing on the overall assessment of the likelihood of confusion, including that of association, taking into account, in particular, the visual similarities between the mark applied for and the earlier Spanish mark, as well as other factors to be taken into consideration, such as the similarity of the goods at issue.
152    Finally, taking into account the relevant public and its degree of attention (see paragraphs 35 to 38 of the present judgment), it must be held that the Board of Appeal acted correctly in finding that such a public could perceive the mark applied for as a variation of the earlier marks and, consequently, as a mark originating from the same or from economically linked undertakings.
153    Consequently, the applicant’s single plea in law must be rejected and the action dismissed in its entirety, without it being necessary to rule on the admissibility of the evidence that the intervener attaches as Annexes A 4 to A 7 to its response, which relate to specific examples of how some of the goods at issue may be marketed.
Costs
154    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
155    So far as concerns the intervener’s head of claim relating to the costs incurred in the proceedings before EUIPO, it must be pointed out that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. In that regard, it is sufficient to state that the costs incurred continue to be governed by the contested decision (see judgment of 3 April 2019, NSC Holding v EUIPO — Ibercondor (CONDOR SERVICE, NSC), T‑468/18, not published, EU:T:2019:214, paragraph 91 and the case-law cited).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Delta-Sport Handelskontor GmbH to pay the costs incurred by EUIPO and Delta Enterprise Corp. in the present proceedings.
Marcoulli
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 13 February 2020.
E. Coulon
J. Schwarcz
Registrar
President
*      Language of the case: English.