JUDGMENT OF THE GENERAL COURT (Third Chamber)
20 December 2023 (*)
(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a lion’s head encircled by rings forming a chain – Earlier national figurative mark representing a lion’s head encircled by dots – Relative ground for refusal – Distinctive character of the earlier mark – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑564/22,
Pierre Balmain, established in Paris (France), represented by J.M. Iglesias Monravá and S. Mainar Roger, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Story Time sp. z o.o.,
established in Poznań (Poland),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and G. Steinfatt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 4 July 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Pierre Balmain, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2022 (Case R 96/2022-4) (‘the contested decision’).
Background to the dispute
2        On 23 November 2017, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covers goods in, inter alia, Classes 14 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
–        Class 14: ‘Lapel pins (jewellery); decorative cuff link covers; lapel badges of precious metal; precious metals and their alloys (not for dental purposes) and goods made thereof or coated therewith, not included in other classes, namely chains, necklaces, pins, ornaments, ornamental pins, rings, earrings of precious metals, tie pins; precious stones; semi-precious stones; pearls’;
–        Class 25: ‘Clothing for women, men and children, namely gowns; skirts; petticoats; culotte skirts; suits; tailleurs; dinner suits; trousers; shorts; bermuda shorts; pants; shirts; blouses; bodices; overalls; tee-shirts; sweat shirts; waistcoats; jackets (clothing); cardigans; sweaters; sweaters; pelerines; parkas; parkas; coats; gabardines; waterproof clothing; furs; stoles; sashes for wear; shawls; scarves; gloves (clothing); neckties; belts (clothing); socks; stockings; tights; lingerie; underwear; pyjamas; dressing gowns; bathing suits; bath robes; suspenders; footwear (excluding orthopedic footwear), namely shoes; sandals; pumps footwear; deck shoes; boots; ankle boots; slippers; slippers; headgear, namely hats; berets; skull caps; lingerie; sleep masks’.
4        On 22 September 2020, the other party to the proceedings, Story Time Sp. z o.o., filed a notice of opposition to registration of the mark applied for in respect of all the goods in Classes 14 and 25 referred to in paragraph 3 above.
5        The opposition was based on the earlier Polish figurative mark, reproduced below, which was filed on 13 November 2015 and registered on 25 May 2018 under the number R 310 996 in respect of goods in Classes 14 and 25 corresponding, for each of those classes, to the following description:
–        Class 14: ‘Precious metals and their alloys; goods in precious metals or coated therewith, not included in other classes; jewelery; precious stones; horological and chronometric instruments’;
–        Class 25: ‘Clothing; headgear; footwear’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
7        On 18 November 2021, the Opposition Division upheld the opposition in respect of all the contested goods in Classes 14 and 25 referred to in paragraph 3 above.
8        On 17 January 2022, the applicant filed a notice of appeal against the Opposition Division’s decision, requesting that that decision be annulled in its entirety.
9        By the contested decision, the Fourth Board of Appeal dismissed the appeal on the ground, in essence, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, with the result that the opposition brought on the basis of the earlier mark was well founded and the application for registration of the mark applied for had to be rejected in respect of all of the goods in Classes 14 and 25 referred to in paragraph 3 above. In the context of the global assessment of the likelihood of confusion, the Board of Appeal took into account that the relevant public’s level of attention varied from average to high, that the goods at issue were identical or similar to various degrees, from low to high, that the marks at issue were visually similar to an average degree and conceptually identical, since they both conveyed the concept of a lion’s head, and that the earlier mark had a normal degree of inherent distinctiveness.
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened;
–        in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, uphold the action.
Law
The issue of whether EUIPO’s alternative head of claim, seeking the annulment of the contested decision, is admissible
12      As regards the procedural position adopted by EUIPO in the alternative, seeking that the action be upheld should the Court take the view that the earlier mark has a low degree of inherent distinctiveness and therefore that the contested decision be annulled, it must be borne in mind that, while EUIPO does not have the requisite capacity to bring an action against a decision of a Board of Appeal, it cannot, however, be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed. There is nothing to prevent EUIPO from endorsing a head of claim of the applicant’s, while putting forward all the arguments that it considers appropriate for giving guidance to the Court. On the other hand, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (see judgment of 16 May 2007, Merant v OHIM – Focus Magazin verlag (FOCUS), T‑491/04, not published, EU:T:2007:141, paragraph 19 and the case-law cited).
13      It follows that the alternative head of claim by which EUIPO endorses the applicant’s claim for annulment must be declared admissible only in so far as that head of claim and the arguments set out in support of it do not go beyond the form of order sought and the pleas in law put forward by the applicant.
The subject matter of the proceedings
14      As is apparent from its response, EUIPO criticises the Board of Appeal for having, in paragraph 23 of the contested decision, in the context of the comparison of the goods at issue, taken into account, in addition to the goods covered by the earlier mark which have been referred to in paragraph 5 above, the ‘decorative cuff link covers’, ‘lapel badges of precious metal’ and ‘precious metals and their alloys (not for dental purposes)’ in Class 14 covered by the mark applied for, although, in the judgment of 5 February 2020, Pierre Balmain v EUIPO (Representation of a lion’s head encircled by rings forming a chain) (T‑331/19, not published, EU:T:2020:33), the Court had already confirmed that that mark could not be registered in respect of those goods on the basis of absolute grounds for refusal of registration. In reply to an oral question put by the Court at the hearing, EUIPO reiterated that those goods in Class 14 were excluded from the present proceedings, whereas the applicant did not expressly comment on that point.
15      In that regard, it must be stated that the judgment of 5 February 2020, Representation of a lion’s head encircled by rings forming a chain (T‑331/19, not published, EU:T:2020:33), was not the subject of an appeal and has become res judicata, with the result that it precluded the Board of Appeal from proceeding, in the contested decision, on the assumption that the mark applied for could possibly be registered in respect of the goods in Class 14 which have been referred to in paragraph 14 above and, therefore, from taking those goods into account in the context of the comparison of the goods at issue and, ultimately, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
16      On those grounds, the subject matter of the present action must be regarded as seeking the annulment of the contested decision only in so far as it was found in that decision that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in respect of the goods covered by the mark applied for which have been referred to in paragraph 3 above, with the exception of ‘decorative cuff link covers’, ‘lapel badges of precious metal’ and ‘precious metals and their alloys (not for dental purposes)’ in Class 14.
17      The goods at issue in the present action therefore consist, in addition to the goods covered by the earlier mark which have been referred to in paragraph 5 above, of the goods covered by the mark applied for which have been referred to in paragraph 3 above, with the exception of ‘decorative cuff link covers’, ‘lapel badges of precious metal’ and ‘precious metals and their alloys (not for dental purposes)’ in Class 14.
Substance
18      In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, on the ground that the Board of Appeal erred in finding, in the contested decision, that there was a likelihood of confusion within the meaning of that article. That plea is based on four complaints, alleging, first, an incorrect assessment of the relevant public’s level of attention, secondly, an incorrect assessment of the degree of visual similarity between the marks at issue, thirdly, an incorrect assessment of the degree of inherent distinctiveness of the earlier mark and, fourthly, in essence, an incorrect assessment of the scope of protection which has to be conferred on the earlier mark and an error, on the part of the Board of Appeal, in finding that there was a higher than average degree of overall similarity between those marks.
19      EUIPO disputes the applicant’s arguments.
20      Article 8(1)(b) of Regulation 2017/1001 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, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
21      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22      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 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).
23      The global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services covered by those marks 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 21 December 2022, Pharmadom v EUIPO – WellBe Pharmaceuticals (WellBe PHARMACEUTICALS), T‑644/21, not published, EU:T:2022:847, paragraph 19 and the case-law cited).
24      It is in the light of those considerations that it must, in the present case, be examined whether the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The relevant territory and the relevant public and its level of attention
25      In the first place, as regards the relevant territory, the Board of Appeal found, in paragraph 20 of the contested decision, that, as the opposition was based on an earlier Polish registration, the relevant territory was Poland. That finding, which is not, moreover, disputed by the parties, is well founded and consequently there is no need to call it into question in the context of the examination of the present action.
26      In the second place, as regards the relevant public and its level of attention, the Board of Appeal, in paragraphs 18 and 19 of the contested decision, pointed out, as had the Opposition Division, that the goods at issue in Class 25 were aimed at the general public, which displayed an average level of attention, or even a high level of attention with regard to certain more expensive items which were not for everyday use, such as ‘gowns’, ‘dinner suits’ or ‘furs’. The same was true, according to the Board of Appeal, with regard to the goods at issue in Class 14, which were aimed both at the general public and at a public of professionals, such as jewellers, and, consequently, at a public the level of attention of which varied from average to high.
27      Even though the applicant states that it partially agrees with the findings of the Opposition Division and the Board of Appeal, it contends, in the context of the first complaint, that, when purchasing some of the goods at issue in Class 25, in particular ‘gowns’, ‘petticoats’, ‘tailleurs’, ‘dinner suits’, ‘pelerines’, ‘gabardines’, ‘waterproof clothing’, ‘furs’, ‘stoles’, ‘sashes for wear’, ‘stockings’, ‘lingerie’, ‘pumps footwear’, ‘lingerie’ or ‘sleep masks’, the relevant public displays a high level of attention, since those goods are, in essence, goods which cannot be regarded as being used on an everyday basis, because they are expensive, specialised or used in special circumstances or occasionally. The applicant submits that, with regard to the purchase of the goods at issue in Class 14, the relevant public’s level of attention is not average, but high, not only on account of the high price of those goods, but also on account of their specific nature as ornamental and luxury goods, the purchase of which is not usual, but occasional.
28      EUIPO disputes the applicant’s arguments.
29      According to the case-law, the relevant public consists of consumers who are likely to use both the goods protected by the earlier mark and those covered by the trade mark application (see judgment of 30 September 2010, PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28 and the case-law cited).
30      Furthermore, in the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, account should be taken, within the relevant public, of the average consumer of the category of goods 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).
31      Moreover, in the context of the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is necessary to take into account the group of goods protected by the marks at issue and not the goods actually marketed under those marks (see judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraphs 40 and 45 and the case-law cited).
32      As regards the goods at issue in Class 25, which are part of the clothing sector, it must be observed that that sector comprises goods which vary widely in quality and price and that, while it may be accepted that the consumer is more attentive to the choice of mark when he or she buys a particularly expensive item of clothing, such an approach cannot be presumed with regard to all the goods in that sector (see, to that effect, judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 43).
33      Furthermore, regarding the goods at issue in Class 14, it has already been held that they are aimed both at the general public and at a public of professionals, such as jewellers, and that, even when they are purchased by the general public, that public’s level of attention is, in most cases, high, in the light in particular of the fact that the goods concerned are generally expensive, are not purchased regularly and are generally bought through a salesperson (see, to that effect, judgments of 12 January 2006, Devinlec v OHIM – TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 63; of 25 June 2015, dm-drogerie markt v OHIM – Diseños Mireia (M), T‑662/13, not published, EU:T:2015:434, paragraphs 20 and 21; and of 9 February 2017, zero v EUIPO – Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67, paragraph 20), and, in other cases, average, since those goods are purchased to embellish the appearance of the human body (judgment of 25 June 2015, M, T‑662/13, not published, EU:T:2015:434, paragraph 21).
34      In addition, in the light of the fact that all the goods at issue in Classes 14 and 25 may be regarded as part of the fashion sector in the broad sense, it is important to bear in mind that, according to the case-law, the average consumer of the goods in that sector pays some degree of attention to his or her appearance and is therefore capable of assessing the style, quality, finish and price of those goods when he or she purchases them. However, it cannot be held that the relevant public’s level of attention is uniformly high if it is not apparent from the description of the goods concerned that they are luxury goods or goods which are so sophisticated or expensive that the relevant public will be likely to be particularly attentive with regard to them (see, to that effect, judgments of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 19, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 27). In the present case, even though the applicant submits that the goods at issue in Classes 14 and 25 are not goods which are used on an everyday basis, it is not apparent from their description that they are only very sophisticated or expensive luxury goods.
35      Consequently, the Board of Appeal was right in finding, in paragraph 18 of the contested decision, that the vast majority of the goods at issue in Class 25 were aimed at the general public, which displayed an average level of attention when purchasing them, even though it could not be ruled out that that public would display a high level of attention with regard to some of those goods, which were more expensive and not subject to everyday use, such as ‘gowns’, ‘dinner suits’ or ‘furs’. The Board of Appeal was also right in finding, in paragraph 19 of the contested decision, that the goods at issue in Class 14 were aimed at the general public and at a public of professionals, the level of attention of which would vary from average to high.
36      The Board of Appeal’s assessments relating to the relevant territory, the relevant public and its level of attention, which varies from average to high when purchasing the goods at issue, must therefore be upheld and, consequently, the first complaint must be rejected as unfounded.
The comparison of the goods at issue
37      In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account (see judgment of 22 June 2022, Future Motion v EUIPO – El Corte Inglés (HYPERCORE), T‑356/21, not published, EU:T:2022:380, paragraph 25 and the case-law cited).
38      In the present case, in paragraph 24 of the contested decision, the Board of Appeal found, in essence and like the Opposition Division, that the goods at issue were, in part, identical or, in part, similar to various degrees.
39      That assessment, which is not, moreover, disputed by the parties, is well founded and consequently there is no need to call it into question in the context of the examination of the present action.
The comparison of the marks at issue
40      The Board of Appeal found, in paragraph 29 of the contested decision, that the representation of the lion’s head constituted, on account of its size and position in the marks at issue, the most distinctive element of those marks. The remaining elements, such as a circular background, a dotted line or a chain, were, in its view, of an ornamental nature and played a weaker role in the overall impression created by those marks. Furthermore, in paragraph 52 of that decision, the Board of Appeal found that the representation of the lion’s head in the marks at issue was, in essence, the dominant element in those marks.
41      In paragraph 36 of the contested decision, the Board of Appeal found that the marks at issue were visually similar to an average degree and conceptually identical, the consequence of which was that it found that there was a higher than average degree, and therefore, in essence, a high degree, of overall similarity between those signs. Furthermore, it found, in paragraph 49 of the contested decision, that, even though there were certain differences in the stylisation of the marks at issue, those differences were of limited importance in the overall impression created by those marks and, consequently, did not have a significant impact in the assessment of their overall similarity, because they did not enable consumers of the goods covered by them to distinguish decisively between them.
–       The dominant or most distinctive elements in the marks at issue
42      In the context of its third complaint, the applicant indirectly disputes the Board of Appeal’s findings that the lion’s head is the dominant and most distinctive element in the marks at issue, in that it takes the view that the representation of a lion’s head is, in essence, a banal and commonplace decorative motif with regard to the goods in Classes 14 and 25, which are part of the fashion sector, a motif which is not more distinctive than the other decorative elements in those marks.
43      In support of its arguments, the applicant observes that, in a related case, the Court found that the representation of a lion’s head encircled by rings forming a chain had no distinctive character with regard to goods such as various types of ‘buttons’ or ‘jewellery’ in the fashion sector in Classes 14 and 26 (judgment of 5 February 2020, Representation of a lion’s head encircled by rings forming a chain, T‑331/19, not published, EU:T:2020:33, paragraphs 41 and 58). The applicant argues that, since that representation was thus held to be devoid of inherent distinctiveness with regard to certain goods in Classes 14 and 26, which are all part of the fashion sector, the representation of a lion’s head in the earlier mark, a representation which is similar, can only be regarded as having a low degree of inherent distinctiveness.
44      Furthermore, the applicant also relies on photographs of goods in the fashion sector containing lions’ heads placed inside circles or other basic geometric shapes and on the peaceful coexistence of numerous EU trade mark registrations representing lions’ heads and of Polish trade marks representing lions or lions’ heads to cover goods which, such as those in Classes 14 and 25, are part of the fashion sector.
45      EUIPO disputes the applicant’s arguments.
46      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services 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 it is at all descriptive of the goods or services for which the mark has been registered (see, to that effect, judgment of 1 June 2022, Krasnyj Octyabr v EUIPO – Pokój (Pokój TRADYCJA JAKOŚĆ KRÓWKA SŁODKIE CHWILE Z DZIECIŃSTWA TRADYCYJNA RECEPTURA), T‑355/20, not published, EU:T:2022:320, paragraph 41 and the case-law cited).
47      In that context, it is also apparent from the case-law that, if it is common for consumers of goods in a particular sector to be faced regularly with certain types of images or figurative elements in the context of the commercial presentation or the decoration of those goods and those consumers are, consequently, accustomed to seeing them in that decorative function, those images or elements lose their ability to attract their attention as elements which are capable of identifying the commercial origin of those goods and will therefore generally have a weak distinctive character with regard to those goods (see, to that effect, judgments of 12 November 2008, Nalocebar v OHIM – Limiñana y Botella (Limoncello di Capri), T‑210/05, not published, EU:T:2008:482, paragraph 35, and of 5 December 2013, Olive Line International v OHIM – Carapelli Firenze (Maestro de Oliva), T‑4/12, not published, EU:T:2013:628, paragraph 34 and the case-law cited).
48      In the present case, it is a fact which is likely to be known by anyone or which may be learnt from generally accessible sources that, in the fashion sector, it is a banal or common practice to use representations of lions or lions’ heads or, more generally, of wild, strong and exotic animals in the commercial presentation or the decoration of goods, such as those in Classes 14 and 25.
49      That fact has already been established in the judgment of 5 February 2020, Representation of a lion’s head encircled by rings forming a chain (T‑331/19, not published, EU:T:2020:33, paragraphs 33 to 37), which confirms that the representation of a lion’s head is a banal and commonplace decorative motif for a clothing accessory, such as ‘buttons’, ‘cuff links’ or ‘jewellery with lions’ heads on it’ in the fashion sector.
50      Furthermore, contrary to what the Board of Appeal found, in essence, in the contested decision and in accordance with the arguments put forward by the applicant in support of the third complaint, it must be observed that all the graphic elements in the marks at issue, which are purely figurative marks, have a low degree of inherent distinctiveness, as none of them is ‘more distinctive’ than any other.
51      In addition to the representation of a lion’s head, the banal or commonplace use of which in the commercial presentation or the decoration of goods in the fashion sector has been established in paragraph 48 above, the other graphic elements of the marks at issue, namely the black circle, the dotted line and the chain or rope motif, are inherently banal decorative motifs in that sector, with the result that the average consumer within the relevant public will not generally regard them as indications of the commercial origin of the goods which they cover, but rather as decorative elements of those goods (see, to that effect, judgments of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22 and the case-law cited, and of 20 March 2019, Grammer v EUIPO (Representation of a shape), T‑762/17, not published, EU:T:2019:171, paragraph 19).
52      By contrast, so far as concerns the overall visual impression, as the Board of Appeal pointed out, in essence, in paragraph 52 of the contested decision, the representation of the lion’s head can be considered, on account of its size and its position in the marks at issue, to be the visually dominant element within those marks, although that does not, however, make the other elements, such as the circular background consisting either of a dotted line or a chain, which play a weaker and secondary role in the overall impression created by those marks, negligible.
53      It is appropriate to continue the examination of the present action by taking into account the foregoing findings and, in particular, the error of assessment pointed out in paragraph 50 above.
–       The visual comparison
54      The Board of Appeal found, in paragraph 32 of the contested decision, that the marks at issue were visually similar to an average degree.
55      By the first part of its second complaint, the applicant disputes that finding and submits, in essence, that the degree of visual similarity between the marks at issue is low and not average. More specifically, it takes the view that the representation of the lions’ heads in each of those marks differs significantly in terms of their faces and, in particular, their muzzles, mouths, eyes, eyebrows and manes. It submits that they also differ in terms of their degree of stylisation and relief, as the representation of the lion’s head in the earlier mark appears as a simple two-dimensional sketch, whereas that in the mark applied for is more realistic, consists of complex strokes and is three-dimensional, consisting of a play on reliefs and shades. Lastly, it contends that the representation of those heads differs in the direction in which the lion is looking, which is forwards in the earlier mark and downwards in the mark applied for.
56      EUIPO disputes the applicant’s arguments.
57      It must be pointed out at the outset that the average consumer only rarely has a chance to compare the various marks directly, so he or she must rely on his or her imperfect recollection of them (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
58      In the present case, it must be pointed out, as submitted by the applicant, that there are certain visual differences between the marks at issue. The earlier mark is a two-dimensional, stylised representation of a lion’s head and the inner part of the circle in which that lion’s head is placed consists of dots, whereas the mark applied for corresponds to a more realistic, in relief, three-dimensional representation of a lion’s head surrounded by a circular chain.
59      However, and as the Board of Appeal correctly found in paragraphs 29 to 32 of the contested decision, those differences are not sufficient to conclude that there is a low degree of visual similarity between the marks at issue in the context of an overall visual comparison of those marks.
60      The marks at issue both consist of the representation of a lion’s head which, as has been pointed out in paragraph 52 above, constitutes the visually dominant element within those marks. In both of those marks, the lion’s head is represented head on, is surrounded by a voluminous mane which is divided at the top of the head, has open eyes, is looking towards the front with its mouth closed and is in grey tones. The secondary graphic elements also partially coincide, since the lions’ heads are both placed in a circle or on a circular background.
61      It thus follows that the Board of Appeal did not make any error of assessment in finding that there was an average degree of visual similarity between the marks at issue. The first part of the second complaint must therefore be rejected as unfounded.
–       The phonetic comparison
62      The Board of Appeal found, in essence, in paragraphs 33 and 34 of the contested decision, that, in the light of the case-law, a phonetic comparison was not relevant in the present case, since the marks at issue were figurative marks without word elements and that, even supposing that the relevant public might seek to describe them verbally, there was nothing which made it possible to conclude that it would do so by using the same sole generic word ‘lion’ or the expression ‘lion’s head’.
63      Those findings, which are not, moreover, disputed by the applicant, are well founded and, consequently, there is no need to call them into question in the context of the examination of the present plea.
–       The conceptual comparison
64      The Board of Appeal stated, in paragraph 35 of the contested decision, that the marks at issue referred to the same concept, namely a lion’s head, and were therefore, in essence, conceptually identical, since, in accordance with the case-law, (see judgment of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 37 and the case-law cited), they used images which coincided in their semantic content, in the sense that they conveyed the same idea or concept.
65      The applicant does not dispute that the marks at issue coincide conceptually in the representation of a lion’s head, but disputes the importance of that conceptual identity, claiming that that concept is a banal and commonplace decorative motif in the fashion sector, of which the goods in Classes 14 and 25 are part, as is shown by the EU trade mark registrations reproduced in paragraph 52 of the application. It submits that the concept thus represented does not therefore confer any inherent distinctiveness on those marks. In the context of the comparison of those marks, it is necessary, according to the applicant, to attach greater importance to the visual differences between the representations of the lions’ heads in those marks.
66      EUIPO disputes the applicant’s arguments.
67      In that regard, it must be pointed out that the marks at issue consist conceptually of the representation of a lion’s head and that therefore, as the Board of Appeal correctly found in the contested decision, they must be held to be conceptually identical, without prejudice, at this stage of the examination, to the question of the weight which has to be given to that factor in the context of the global assessment of the likelihood of confusion (see paragraph 88 below).
The degree of inherent distinctiveness of the earlier mark
68      In the first place, it is important to bear in mind that, in paragraph 39 of the contested decision, the Board of Appeal observed that the distinctiveness of the earlier mark was based solely on its inherent distinctiveness. That finding, which is not, moreover, disputed by the parties, is well founded and must be upheld.
69      In the second place, in paragraph 41 of the contested decision, the Board of Appeal found, like the Opposition Division, that the earlier mark had to be recognised as having a ‘normal’ degree of inherent distinctiveness, since it had no specific meaning for the relevant public in relation to the goods at issue and the applicant had not established that the representation of a lion’s head was a decorative motif that was commonly used on the market for those goods.
70      In that regard, it must be borne in mind that, in the context of the assessment of the degree of inherent distinctiveness of the earlier mark, the Board of Appeal’s classification of ‘normal’ is not unambiguous, since the minimum degree of distinctiveness of any trade mark can, in the light of the case-law, vary in intensity according to the degree of distinctiveness of the mark in question (judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 66). It must therefore be held that, by that classification, the Board of Appeal attributed, in essence, an average degree of inherent distinctiveness to the earlier mark (see, to that effect, judgment of 8 March 2023, Société des produits Nestlé v EUIPO – The a2 Milk Company (A 2), T‑759/21, not published, EU:T:2023:108, paragraph 45).
71      By the third complaint, which has been set out in paragraphs 42 to 44 above, the applicant claims that the Board of Appeal incorrectly assessed the degree of inherent distinctiveness of the earlier mark which must, according to the applicant, be considered to be low. The applicant relies in particular on paragraph 58 of the judgment of 5 February 2020, Representation of a lion’s head encircled by rings forming a chain (T‑331/19, not published, EU:T:2020:33), in which the Court held that the mark applied for had no inherent distinctiveness with regard to various types of ‘buttons’ or ‘jewellery’ in the fashion sector in Classes 14 and 26.
72      EUIPO disputes the applicant’s arguments and contends that the third complaint should be rejected as unfounded.
73      As is apparent from paragraph 47 above, figurative elements which are commonly found in the commercial presentation or the decoration of the goods concerned and which consumers are, consequently, accustomed to seeing in that decorative function will generally have a weak distinctive character with regard to those goods. Consequently, unless the proprietor of an earlier mark which consists of a sign with a low degree of inherent distinctiveness in relation to the goods concerned, because that sign is based on a concept which is commonly used for the commercial presentation or the decoration of those goods, shows that that sign has acquired enhanced distinctiveness as a result of the intensive or extensive use which he or she has made of it, which is not the case here, that proprietor cannot claim excessive protection for that mark, which would be liable, in practice, to give him or her a quasi-monopoly over the commonly used concept on which it is based (see, to that effect, Opinion of Advocate General Saugmandsgaard Øe in EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2019:974, point 83).
74      Furthermore, as has been stated in paragraphs 50 and 51 above, the earlier mark consists of graphic elements which have only a low degree of inherent distinctiveness, in the light, in particular, of the fact that the representation of lions or lions’ heads or, more generally, of wild animals in the commercial presentation or the decoration of goods in the fashion sector is a banal and common practice. Consequently, taken as a whole, the earlier mark serves only to a limited extent to identify the goods in respect of which it is registered as coming from a particular undertaking and to distinguish those goods from those of other undertakings.
75      The Board of Appeal therefore erred in finding, in paragraph 41 of the contested decision, that the earlier mark had, in essence, an average degree of inherent distinctiveness in relation to the goods which it covered, since that degree of inherent distinctiveness must be regarded as low.
76      On those grounds, the applicant’s third complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.
The global assessment of the likelihood of confusion
77      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
78      Furthermore, the degree of distinctiveness of the earlier mark, which determines the scope of the protection conferred by that mark, is one of the relevant factors to be taken into account in the context of the global assessment of the likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, with the result that marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; see also judgment of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167, paragraph 96 and the case-law cited). However, in the light of the interdependence between the factors to be taken into account, the existence of a likelihood of confusion cannot automatically be ruled out where the distinctive character of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
79      In practice, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121). Where the elements of similarity between two signs at issue arise from the fact that they have a component with a low degree of inherent distinctiveness in common, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
80      In paragraphs 45 to 50 of the contested decision, the Board of Appeal found that, in the light of the identity or various degrees of similarity, from low to high, of the goods at issue, the average degree of visual similarity and conceptual identity between the marks at issue and the average degree of inherent distinctiveness of the earlier mark, the relevant public, the level of attention of which varied from average to high, was likely to believe that the goods covered by those marks came from the same undertaking or, as the case may be, from economically linked undertakings. It added, in paragraph 52 of that decision, that its assessment would not have been different if it had found that the figurative element representing a lion’s head in the earlier mark, or even that mark taken as a whole, had only a low degree of inherent distinctiveness, in the light of the dominant nature of that element in that mark and the interdependence between the various factors to be taken into account in the global assessment of the likelihood of confusion. It took the view that those assessments were not contrary, in the circumstances of the case, to the case-law of the Court of Justice and the General Court.
81      By its fourth complaint, the applicant disputes, in essence, the Board of Appeal’s assessment that there is a likelihood of confusion in the present case. It submits that the marks at issue, although they both consist of the representation of the same concept, namely a lion’s head, create a different overall impression in the mind of the relevant public. In that regard, it relies on the fact that the representation of such a concept is banal and commonplace in the fashion sector and that the earlier mark has only a low degree of inherent distinctiveness, which, in combination with the other factors in the present case, should have led the Board of Appeal to rule out the existence of a likelihood of confusion.
82      EUIPO disputes the applicant’s arguments. However, in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, it states, in essence, that it endorses the applicant’s claim for annulment on the basis of the single plea in law relied on by the applicant, in accordance with the case-law of the Court of Justice and the General Court which ensures that marks with a low degree of inherent distinctiveness are not overprotected (see paragraph 79 above).
83      In that regard, it must, first, be borne in mind that the Board of Appeal made an error of assessment in finding that the earlier mark had an average degree of inherent distinctiveness, whereas that degree of inherent distinctiveness could only be categorised as low (see paragraph 75 above).
84      As regards the applicant’s argument that the Board of Appeal gave undue importance, in the contested decision, to the conceptual identity between the marks at issue in the context of the global assessment of the likelihood of confusion, it must be borne in mind that, according to the case-law, the purchase of goods in Classes 14 and 25 is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in ‘bricks and mortor’ shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer’s choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50 and the case-law cited).
85      In the present case, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal, by finding that there was a higher than average degree of overall similarity between the marks at issue, attached more importance, in paragraph 49 of the contested decision, to the conceptual comparison of those marks than to the visual comparison, in particular in so far as it found that the differences in the stylisation of the marks were of limited importance in the overall impression created by those marks and therefore did not have sufficient impact to assist consumers in decisively distinguishing between the marks.
86      In so doing, it attached too much importance to the conceptual identity between the marks at issue, since, first, and as is apparent from the case-law cited in paragraph 84 above, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept represented in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.
87      Consequently, the second part of the second complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.
88      In the light of the case-law cited in paragraphs 78 and 79 above and the finding, made in paragraphs 50 and 51 above, that the representation of a lion’s head is a banal and commonplace decorative motif in the fashion sector, in which consumers are regularly faced with such a motif in the commercial presentation or the decoration of the goods, with the result that that motif has lost its capacity to identify the commercial origin of those goods, it must be held that, even though the marks at issue are conceptually identical, that can be of only limited importance in the global assessment of the likelihood of confusion, since the concept in common to which those marks refer is only weakly distinctive in relation to the goods at issue and can therefore contribute only to a very limited extent towards the function of a mark, which is to identify the origin of those goods and to distinguish them from those with a different origin (see paragraphs 47 and 52 above).
89      In view of the weak distinctive character of the concept which is common to the marks at issue and the weak distinctive character of the earlier mark, considered as a whole, the fact that the marks at issue are visually similar to an average degree was not sufficient to enable the Board of Appeal to find, in the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the goods at issue were identical.
90      Consequently, the applicant’s fourth complaint must be upheld, inasmuch as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
91      In view of all of the foregoing considerations, the single plea put forward by the applicant must be upheld, in so far as it is based on the third complaint (see paragraph 76 above), on the second part of the second complaint (see paragraph 87 above) and on the fourth complaint (see paragraph 90 above) and the contested decision must therefore be annulled in so far as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Costs
92      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
93      Since the contested decision is being annulled, EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2022 (Case R 96/2022-4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Pierre Balmain.
Schalin
Škvařilová-Pelzl
Steinfatt
Delivered in open court in Luxembourg on 20 December 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.