JUDGMENT OF THE GENERAL COURT (Third Chamber)
16 October 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark KIMIKA — Earlier EU word mark KAMIK — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))
In Case T‑171/17,
M & K Srl, established in Prato (Italy), represented initially by F. Caricato, and subsequently by M. Cartella and B. Cartella, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Genfoot, Inc., established in Montreal, Quebec (Canada), represented by E. Saarmann and P. Baronikians, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 12 January 2017 (Case R 1206/2016-4), relating to opposition proceedings between Genfoot and M & K,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 March 2017,
having regard to the response of EUIPO lodged at the Court Registry on 4 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 18 September 2017,
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 5 September 2014 the applicant, M & K Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign KIMIKA.
3        The goods in respect of which registration was sought are in Classes 14, 18 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, and correspond, for each of those classes, to the following description:
–        Class 14: ‘Gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; jewellery boxes and watch boxes’;
–        Class 18: ‘Saddlery, whips and animal apparel; walking sticks; sausage skins and imitations thereof; umbrellas and parasols; luggage, bags, wallets and other carriers’;
–        Class 25: ‘Clothing; headgear; footwear’.
4        The trade mark application was published in Community Trade Marks Bulletin No 176/2014 of 19 September 2014.
5        On 28 October 2014 the intervener, Genfoot, Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for solely in respect of the goods in Class 25 referred to in paragraph 3 above.
6        The opposition was based on the EU word mark KAMIK, filed on 27 December 1996, registered on 21 January 1999 under No 439 588, and renewed until 27 December 2016, covering goods in Class 25 and corresponding to the following description: ‘Footwear, boots, shoes, overshoes, parts and fittings for all the aforesaid goods’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        During the opposition proceedings, the applicant, pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), submitted a request for the intervener to furnish proof of genuine use of its earlier trade mark as relied on in support of its opposition.
9        The intervener then provided various documents in order to show that the earlier trade mark had indeed been put to genuine use. It produced, in particular, 19 invoices drawn up during the relevant period, between 9 February 2010 and 17 September 2014, in respect of a total sum of EUR 500 000 and around 20 000 pairs of footwear sold in Germany, Denmark and Sweden. It also added a sworn statement and several press cuttings to the Opposition Division’s file, together with extracts from websites of online stores.
10      The figurative sign used in the proof of genuine use of the earlier trade mark referred to above is as follows:
11      On 4 May 2016 the Opposition Division upheld the intervener’s opposition, refusing registration of the mark applied for in respect of the goods concerned. According to that department, although proof of genuine use of the earlier trade mark had been furnished only in respect of footwear in Class 25, there was a likelihood of confusion in respect of all the goods in question because of the similarity of the goods and the visual and phonetic similarities between the signs in question.
12      On 30 June 2016 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.
13      By decision of 12 January 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the sum of EUR 1 200 by way of costs incurred in the opposition and appeal proceedings. In the first place, it considered that the relevant public was the general public, whose level of attention is average. In the second place, it held that, as genuine use of the earlier trade mark had been sufficiently proved for ‘footwear’ in Class 25, for the purpose of examining the opposition that mark was deemed to be registered solely in respect of those goods. In the third place, regarding the comparison of the goods, it considered that the goods in question were identical as regards ‘footwear’ and were similar at least to an average degree as regards ‘clothing’ and ‘headgear’. In the fourth place, it held that there was an average degree of visual and phonetic similarity between the signs at issue, whereas they had no meaning conceptually and thus a conceptual comparison was not possible. The Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public in respect of all the goods concerned.
Forms of order sought
14      The applicant claims that the Court should:
–        declare that the action is admissible and well founded;
–        alter the contested decision;
–        remit the case to EUIPO for a new decision, thereby enabling the mark applied for to be definitively registered, including in respect of the classes concerned;
–        order EUIPO to pay the costs of all three sets of proceedings.
15      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
16      In support of its action, the applicant raises, in essence, two pleas in law.
17      The first plea in law alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1) and (2) thereof (now Article 18(1) and (2) of Regulation 2017/1001). That plea is intended to establish that the proof furnished by the intervener before the departments of EUIPO regarding the genuine use of the earlier trade mark is insufficient. According to the applicant, the evidence provided by the intervener should be regarded as indicating merely a token use of that mark.
18      The second plea in law alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant submits, in essence, that there is no likelihood of confusion between the two signs at issue. Indeed, those signs are visually and phonetically dissimilar. Furthermore, conceptually, the contested trade mark and the earlier trade mark have their own meanings. Moreover, the goods are identical only as regards ‘footwear’, because no similarity exists in relation to the other goods.
First plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1) and (2) thereof
19      Relying for the most part on arguments submitted during the opposition proceedings, the applicant now states that the proof furnished by the intervener is clearly insufficient and demonstrates only a token and limited use of the earlier trade mark, given that that proof concerns only ‘boots’ and, consequently, does not cover ‘footwear’ in Class 25.
20      In particular, the applicant emphasises that the sign shown in the evidence provided by the intervener is different from the earlier trade mark as its dominant element is an image with its own meaning which, furthermore, is particularly representative of and closely linked to the meaning of the earlier trade mark (see paragraph 10 above). The applicant thus submits that the earlier trade mark was ultimately used as a complex mark including an additional graphical element which alters its distinctive character. The applicant concludes, contrary to the findings of the Opposition Division and the Board of Appeal, that use of the earlier trade mark in the form in which it was registered has not been proved.
21      In addition, as regards ‘footwear’ in Class 25, the applicant states that the proof furnished by the intervener consisted, in essence, of two groups of evidence. The first group consists of a sworn statement which, in its view, was produced without the necessary formal enforcement requirements, together with a certain number of invoices. The second group consists of a few press cuttings and extracts from websites of online stores. In any event, according to the applicant, the evidence in question establishes only a token use of the earlier trade mark, which, furthermore, concerns only ‘boots’.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      Having summarised those arguments, it should first of all be borne in mind that, as regards the requirement of genuine use of the earlier trade mark, the legal background governing that requirement consists, in essence, of the following elements: Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 thereof (now recital 24 of Regulation 2017/1001), together with Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(4) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)).
24      According to settled case-law, it is apparent from the provisions referred to above that the ratio legis of the provision requiring that the earlier trade mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier trade mark deriving from an actual function of the mark on the market.
25      However, the purpose of those provisions is not to assess the commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
26      In addition, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
27      As regards the assessment of whether use of the earlier trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
28      It should also be noted that the condition relating to genuine use of the trade mark requires that the mark be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
29      Moreover, concerning the extent of the use made of the earlier trade mark, account must be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and the duration of the period during which the mark was used and the frequency of those acts of use, on the other (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
30      Furthermore, the extent of the use of an earlier trade mark implies a certain interdependence between the various factors which may be taken into account. Thus, a low turnover of goods marketed under that trade mark may be offset by a high intensity or a high consistency in time of the use of that trade mark, and vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
31      As a result, use of the earlier trade mark need not always be quantitatively significant in order to be deemed genuine. Indeed, even minimal use can be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).Thus, it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to establish whether the use was genuine or not, so that a de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down beforehand (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
32      That said, genuine use of an earlier trade mark cannot be proved by means of mere probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
33      Lastly, it follows from Article 42(2) and (3) of Regulation No 207/2009 that, if a trade mark has been registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
34      It is thus in the light of those criteria that it is necessary to examine whether the Board of Appeal was correct to consider that the evidence submitted by the intervener before EUIPO demonstrated genuine use of the earlier trade mark.
35      Furthermore, as the EU trade mark application submitted by the applicant was published on 19 September 2014, the five-year period referred to in Article 42(2) of Regulation No 207/2009 runs, in the present case, from 19 September 2009 until 18 September 2014.
36      It should also be noted that it is apparent from the Opposition Division’s decision that, with a view to proving genuine use of the earlier trade mark, the intervener produced a sworn statement from its chairman, 20 invoices dated between February 2010 and 21 October 2014 (one of the invoices was not drawn up during the relevant period), several press cuttings and several extracts from websites which market its products.
37      Regarding the invoices referred to above, it should be noted that each of them features the figurative sign indicated in paragraph 10 above in its heading. The sign at issue in the present case is a complex sign consisting of the word element ‘kamik’, written in lower case letters in italics, and an additional figurative element.
38      That said, the use of a mark in a different form from that in which it was registered may constitute genuine use that may be accepted, as long as any graphical additions do not alter the distinctive character of the corresponding mark. In that regard and contrary to the applicant’s assertions, it must be found that, in the present case, the figurative element added to the word ‘kamik’ cannot be classified as dominant or distinctive, as was, furthermore, correctly noted by the Board of Appeal in paragraph 12 of the contested decision.
39      The stylisation of the letters of the word ‘kamik’ in italics and the addition of a graphical element next to that word are only minor graphical variations, that is to say, variations which are not such as to alter the distinctive character of the mark as originally registered (see, to that effect, judgment of 18 November 2015, Menelaus v OHIM — Garcia Mahiques (VIGOR), T‑361/13, EU:T:2015:859, paragraph 73 (not published)).
40      The presence of a figurative element alongside the earlier trade mark, even if it might have some meaning, which is in no way the situation in the present case, is not sufficient to call in question the genuine use of that mark. Furthermore, the applicant does not put forward any arguments to show that the figurative element in question is particularly linked to the meaning of the earlier trade mark.
41      In any event, it should also be noted that, where a trade mark is composed of word and figurative elements, the word element is, in principle, more distinctive than the figurative element, because the average consumer will refer to the goods in question by quoting their name rather than by describing the figurative element, particularly where that figurative element has been added for decorative effect and is not intended to be distinctive (see, to that effect, judgment of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited).
42      Regarding the definition of the relevant territory, it is necessary to endorse the Board of Appeal’s assessment, which moreover is not contested by the applicant, that the use in respect of which it is necessary to assess the extent was observed in Germany, Denmark and Sweden. Nonetheless, the applicant contests the idea that this can be regarded as sufficient use in relation to ‘the European Union’.
43      In that regard, however, it is sufficient to point out that that argument by the applicant is not founded in law, because, according to case-law, the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to genuine use and account should be taken of all the relevant facts and circumstances, including the characteristics of the market concerned and the territorial extent of the use.
44      In the present case, it must be found, as the Board of Appeal did, that the evidence produced by the intervener shows sales which were carried out in a territory corresponding to three Member States and that that evidence is therefore sufficient, having regard to the economic and commercial context, to demonstrate sufficient use of the earlier trade mark in the European Union (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 57).
45      The invoices submitted by the intervener establish that around 20 000 pairs of footwear were sold in those three EU Member States for a total sum of almost EUR 500 000.
46      It should also be noted that those sales cover almost the entirety of the relevant period, running from 9 January 2010 until 17 September 2014, at a rate of at least three invoices per year, and that the quantity of goods thus marketed is fairly significant in view of, inter alia, the nature of those goods and the fact that the markets in question include several types of seller (retailers or wholesalers) and several types of sale (direct, online, and others).
47      Therefore, it must be concluded, as the Board of Appeal did, that the evidence referred to above provides, to the requisite legal standard, proof of genuine use which cannot be considered, within the European Union, to be ‘token use’ of the earlier trade mark.
48      Furthermore, that conclusion cannot be undermined by the argument put forward by the applicant to the effect that the evidentiary value of one of the items of evidence submitted by the intervener, namely its chairman’s sworn statement, was only minimal in the present case. Indeed, in that regard it is sufficient to note that the statement in question may be read in connection with and consistently with all the other evidence produced by the intervener, namely the invoices previously cited and the results of internet searches, the extracts from its retail site, the extracts from the retail websites of third party footwear wholesalers, the press cuttings compiled by the company Eastside, and the extract from a footwear catalogue, all of which are on file in the case at issue.
49      Moreover, it should be noted that, according to settled case-law, even where some documents are added to the case file by the party opposing the trade mark application, they may still have evidentiary value, provided that they are corroborated by other evidence (see, to that effect, judgment of 13 May 2009, Schuhpark Fascies v OHIM — Leder & Schuh (jello SCHUHPARK), T‑183/08, not published, EU:T:2009:156, paragraph 39).
50      In any event, the fact that the statement concerned does not contain a seal provided by a notary or that there are no other formal elements that might further corroborate that statement cannot, in the present case, affect the assessment of that item of evidence, since the Board of Appeal examined that item only as one document among others. Indeed, when assessing whether there has been genuine use of the mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real (judgment of 18 July 2017, Savant Systems v EUIPO — Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 43).
51      Therefore, having regard to the criteria referred to above, it must be found that the Board of Appeal was fully entitled to conclude, in the contested decision, that, ‘considered as a whole, the documents submitted by the [intervener] show genuine use ... for “footwear” [falling within the category concerned]’. They are, accordingly, capable of justifying the opposition to the registration of the mark applied for by the applicant.
52      Regarding the marketed goods in question, it should be emphasised that the evidence produced by the intervener during the opposition proceedings and appended to the EUIPO case file concerns not only ‘boots’, as indicated by the applicant, but also sandals or other items also falling under ‘footwear’ in Class 25. Therefore, the Board of Appeal was fully entitled to consider that the goods protected by the earlier trade mark in respect of which use has been shown cover all the types of footwear in Class 25.
53      Ultimately, in the light of the criteria laid down in the area by the EU legislature and by the relevant case-law, as genuine use of the earlier trade mark has been proved, the first plea in law must, accordingly, be rejected.
Second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
54      By its second plea, the applicant submits, in essence, that the Board of Appeal did not correctly assess the similarity of the signs and goods at issue or the likelihood of confusion, thereby infringing Article 8(1)(b) of Regulation No 207/2009.
55      EUIPO and the intervener dispute the applicant’s arguments.
56      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
57      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, 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).
58      In any event, 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. Furthermore, 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).
The relevant public
59      According to the applicable 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, namely a consumer who is reasonably well informed and reasonably observant as regards those goods. 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, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
60      On the basis of those criteria, it is necessary to endorse the Board of Appeal’s assessment in the contested decision, which moreover is not contested by the applicant, that the relevant public is, in the present case, the general public, whose level of attention is average, and that the relevant territory is the European Union.
The comparison of the goods
61      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account, so that, under Article 8(1)(b) of Regulation No 207/2009, two products are similar when, from the point of view of the relevant public, they are part of the same product family (see, to that effect, judgment of 4 November 2003, Díaz v OHIM — Granjas Castelló (CASTILLO), T‑85/02, EU:T:2003:288, paragraph 33).
62      Other factors may also be taken into account in that regard, 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).
63      The Board of Appeal considered, in paragraph 17 of the contested decision, that, in the case at hand, the goods protected by the earlier trade mark in respect of which genuine use had been shown were identical to those covered by the mark applied for with regard to ‘footwear’ and were similar at least to an average degree with regard to ‘clothing’ and ‘headgear’.
64      The applicant submits, by contrast, that those goods are similar only with regard to ‘footwear’. Regarding ‘clothing’ and ‘headgear’, it argues that those goods are different because of their different roles and distribution channels. Ultimately, those goods are neither complementary nor interchangeable.
65      EUIPO and the intervener dispute the applicant’s arguments.
66      Having summarised those arguments, it should first of all be noted that, according to the case-law concerning the similarity that may exist between clothing in general and footwear, the sufficiently close links between the respective purposes of those goods, the fact that they belong to the same commercial class and the fact that they may be produced or sold together by the same operators support the conclusion that those goods may often be associated with each other by the relevant public (see, to that effect, judgment of 13 July 2004, AVEX v OHIM — Ahlers (a), T‑115/02, EU:T:2004:234, paragraph 26).
67      The clothing, footwear and headgear in Class 25 serve a common purpose because they are all intended to meet the multiple needs of the human body, to conceal it, to protect it, or to adorn it (see, to that effect, judgments of 10 September 2008, Tsakiris-Mallas v OHIM — Late Editions (exē), T‑96/06, not published, EU:T:2008:330, paragraph 30, and of 24 March 2010, 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 33).
68      It is true that, as is maintained by the applicant, there is a difference between the action of ‘[slipping on] shoes’ in order to protect the feet and that of ‘dressing up’ the body. However, such an argument is not, in itself, relevant when assessing, from the legal perspective of the protection of intellectual property, the merits of an application for registration of a trade mark against which a notice of opposition has been filed concerning goods in the same class, namely, in the present case, Class 25, regardless of the fact that each of those goods has its own intended purpose or method of use, hats being designed for the head, for example, and shoes for the feet. Furthermore, it is not disputed that shoes are not merely ‘technical tools’ specific to walking but, in the same way as clothing or headgear, contribute to fashion trends and represent an expression of a stylistic choice (see, to that effect, judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 97).
69      Nevertheless, the applicant maintains that the goods in question are sold via different distribution channels, as is the case with, for example, sports shoes, which, in general, are sold in different shops from those which sell clothes.
70      That argument, like the previous argument, cannot succeed. Indeed, it is common ground that sports shoes are not exclusively sold in specialist sports shops, but may also be offered for sale in the same retail establishments as those which sell ‘footwear’ and ‘clothing’, including supermarkets, department stores and even high-end shopping centres.
71      In addition, potential differences between the distribution channels of goods in Class 25 is not an argument likely to negate, as has already been noted in paragraph 67 above, the common purpose of goods in that class.
72      Consequently, the Board of Appeal did not err in law in concluding, in the contested decision, that a part of the goods in Class 25 covered by the application for registration, namely ‘footwear’, were identical to the goods in respect of which use of the earlier trade mark had been proved, and that the other part of the goods in question, namely ‘clothing’ and ‘headgear’, were similar at least to an average degree.
73      The applicant’s arguments cannot, therefore, be upheld.
The comparison of the signs
74      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
75      Concerning that aspect, the applicant contests, in essence, the Board of Appeal’s conclusions that no conceptual comparison of the signs in question was possible in the case at hand, on the one hand, and that there was a clear visual and phonetic similarity between the signs in question, on the other. It also argues that the earlier trade mark has never been used as a word mark but only as a complex trade mark.
76      EUIPO and the intervener dispute the applicant’s arguments.
77      In that regard it is sufficient to note that, first of all, according to settled case-law, the comparison must be made in relation to the signs as they were actually registered or as they appear in the trade mark application (judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57). In the present case, contrary to the applicant’s assertions, the analysis of the existence of a likelihood of confusion must therefore be based on the earlier trade mark as registered.
–       Visual and phonetic comparison
78      Regarding, first, the visual comparison, the Board of Appeal stated in paragraph 20 of the contested decision that the signs at issue are similar to an average degree, given that the word marks concerned consist of a single word of a similar length and coincide as to the letter ‘k’, the syllable ‘mik’ and the letter ‘a’, notwithstanding the fact that that vowel occupies a different position in each of the two marks.
79      The applicant argues, however, that the signs in question have only four letters in common and that the syllables and vowels forming those signs are different.
80      Regarding, second, the phonetic comparison, the Board of Appeal noted, in paragraph 22 of the contested decision, that one of those two signs comprises two syllables, ‘ka’ and ‘mik’, and the other comprises three syllables, ‘ki’, ’mi’ and ‘ka’, and that there is also at least an average degree of similarity between those signs because they coincide as to the letter ‘k’ and the syllable ‘mik’ and contain the same vowels ‘a’ and ‘i’, even if the positions of those vowels are reversed.
81      The applicant contests that assessment, pointing to the different number of syllables in the two signs in question and the significance of the differences in the pronunciation of the first syllable of each of those signs: the mid-open vowel ‘a’ in the earlier trade mark, on the one hand, and the closed vowel ‘i’ in the mark applied for, on the other. According to the applicant, those differences allow a distinction to be made between the signs at issue, taking account above all of the fact that the word ‘kimika’ refers to the Italian word ‘chimica’ (‘chemistry’), which is pronounced identically.
82      EUIPO and the intervener also dispute those arguments put forward by the applicant.
83      It is settled case-law that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs. Indeed, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
84      In that respect, it should be noted that, first, the two signs in question have the same first letter ‘k’ and have the letter ‘k’, the syllable ‘mik’ and the letter ‘a’ in common, the first two of which occupy the same position in their respective words. It must be pointed out that the mark applied for contains all the letters of the earlier trade mark. Second, the word element ‘mik’ of the earlier trade mark is entirely reproduced in the mark applied for, thereby giving rise to a visual resemblance between the signs at issue.
85      Therefore, the Board of Appeal was correct to conclude that the signs are visually similar to an average degree, due to the presence of several elements common to both signs.
86      Regarding the phonetic similarity, although the vowel sequence is reversed in the present case, it should be considered, as the Board of Appeal did, that, in view of the coincidence of the letter ‘k’ and the letter sequence ‘m’, ‘i’ and ‘k’, there is at least an average degree of similarity between the two signs. The fact that the number of syllables which begin with the letter ‘k’ is the same and the presence of the same sequence ‘m’, ‘i’, ‘k’ enhances that phonetic similarity.
87      Furthermore, that conclusion cannot be gainsaid by the applicant’s argument that the word ‘kimika’ refers to the Italian word ‘chimica’, the pronunciation of which is identical to that of the sign in question in the present case. Even if, taking the most generous view, the pronunciation of those two words is identical in Italian, it is not necessarily identical in the other official languages of the European Union falling within the scope of Regulation No 207/2009.
88      Therefore, the Board of Appeal was correct to conclude that the signs in question are visually and phonetically similar at least to an average degree, due to the presence of several alphabetic elements common to both signs.
–       Conceptual comparison
89      The applicant contests the Board of Appeal’s assessment that no conceptual comparison of the signs in question is possible from a logical point of view, when those signs each have, in its view, their own precise meaning.
90      EUIPO and the intervener dispute the applicant’s arguments.
91      It should be borne in mind that the global assessment of the likelihood of confusion implies that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that, from the point of view of the relevant public, there is a clear and specific meaning, so that that public is capable of grasping it immediately (see judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98 and the case-law cited).
92      In the present case, the Board of Appeal considered, in paragraph 23 of the contested decision, that, since neither of the signs had a clear and specific meaning, a conceptual comparison was, in essence, impossible.
93      According to the applicant, however, the earlier trade mark designates a pair of boots known as ‘mukluks’, a term equivalent to the specific name ‘kamik’, that is to say, traditional boots made of reindeer or seal skin and used by the inhabitants of Arctic regions. As a result, the applicant also considers that the earlier trade mark was registered in breach of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), in view of the fact that it is descriptive of the products it designates.
94      First of all, it should be borne in mind that, according to the relevant case-law, the validity of earlier trade marks may not be called into question in opposition proceedings concerning an application for registration of an EU trade mark, but only in the context of invalidity proceedings (see, to that effect, judgment of 24 September 2015, Primagaz v OHIM — Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 96). Consequently, the applicant’s argument concerning the illegality of the registration of that mark must be rejected as ineffective.
95      Next, regarding the applicant’s argument referring to ‘mukluk’ boots, a synonym for ‘kamik’, it should be noted that it is true that, as the Wikipedia page appended to the application shows, the traditional boots of peoples living in Arctic regions may be so named.
96      However, it must be pointed out that the fact that the population of those regions may understand the word ‘kamik’ as referring to specific footwear, which, furthermore, is also the case in certain Member States located in the north of the European Union, such as Denmark, is irrelevant as regards the conceptual comparison between the signs KAMIK and KIMIKA. First, the relevant territory covered by the mark in question is the European Union as a whole and not a specific region or Member State thereof, and, second, the consumers living in the European Union cannot compare conceptually, as the relevant public (see paragraph 60 above), the word ‘kamik’ with the word ‘kimika’, the footwear designated using the word ‘kamik’ being produced or marketed in only a part of the Union market. In any event, the applicant has not proved that the word ‘kimika’ had, for the relevant public capable of understanding the word ‘kamik’, any plausible meaning in connection with the goods concerned.
97      In that context, the applicant’s argument that the word ‘kimika’ also has a precise etymological meaning, namely ‘chemistry’ (‘chimica’ in Italian), and that the Italian-speaking consumers in the various EU Member States would, consequently, be capable of grasping the semantic connection between the sign and the corresponding word is also irrelevant. Such an argument cannot be sufficient to demonstrate, in itself, that a part of consumers in the European Union will perceive the term ‘kimika’ as connected exclusively with the science of chemistry and the word ‘kamik’ as having its own conceptual meaning.
98      Consequently, the Board of Appeal was fully entitled to consider that a conceptual comparison of the two marks was impossible for the relevant public.
99      Lastly and in any event, the contested decision, according to the applicant, is vitiated by inadequate reasoning because the Board of Appeal did not examine its arguments correctly.
100    Regarding the duty to provide a statement of reasons, it should first of all be noted that the Boards of Appeal are not required to provide an account which follows exhaustively and point by point all the arguments which the parties have put forward before them. Indeed, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review. Consequently, it is sufficient if the Boards of Appeal clearly set out the facts and legal considerations having decisive importance in the context of the decision taken (see, to that effect, judgment of 2 July 2015, BH Stores v OHIM — Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraphs 29 to 31).
101    It is apparent from the contested decision that the Board of Appeal provided a succinct but sufficient indication of the reasons why it considered that it was not possible to carry out a conceptual comparison of the signs. It stated its position on the argument concerning the meaning of the Italian word ‘chimica’ and on the perception of the word ‘kamik’. Accordingly, having regard to the criteria established by the relevant case-law, the contested decision is not vitiated by inadequate reasoning.
The likelihood of confusion
102    As has already been stated in paragraph 57 above, 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. 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).
103    The applicant argues, in essence, that the Board of Appeal erred in its analysis of the global assessment of the likelihood of confusion. In support of its views, it invokes the case-law of certain Italian courts, on the one hand, and the case-law of the General Court, on the other.
104    In addition, the applicant argues that the differences between the marks at issue are sufficient to rule out the possibility that a part of the public may believe that the goods in question come from the same undertaking, or at least from economically-linked undertakings.
105    EUIPO and the intervener dispute the applicant’s arguments.
106    In the first place, regarding the reference to the case-law of the Italian courts and to the recent decisions of the Italian Patent and Trade Mark Office, it should be noted that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature (see, to that effect, judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 36). The reference to national case-law is therefore not decisive in the present case. In the second place, concerning the case-law of the General Court cited by the applicant, in particular the judgments of 23 October 2013, Bode Chemie v OHIM — Laros (sterilina) (T‑114/12, not published, EU:T:2013:551), and of 30 November 2015, Hong Kong Group v OHIM — WE Brand (W E) (T‑718/14, not published, EU:T:2015:916), it is sufficient to note that the applicant provides no clarification to support its argument and does not establish that the circumstances of those cases are sufficiently comparable to the present case for an identical solution to be adopted in the case at hand. Furthermore, the applicant’s interpretation of those judgments cannot, in any event, constitute a criterion which is automatically laid down in all cases, because the assessment of the similarity of signs depends on a set of factors which must be analysed according to the circumstances of each individual case.
107    Ultimately, in view of the visual and phonetic similarities between the signs at issue and having regard to the fact that the goods designated by the earlier trade mark, on the one hand, and the mark applied for, on the other, are identical in part and similar in part, the Board of Appeal did not make an error of assessment in concluding that there was a likelihood of confusion and refusing to register the mark applied for in respect of the goods in question.
108    Lastly, by reason of the interdependence between all the factors analysed, it should be noted that there is a likelihood of confusion on the part of the relevant public inasmuch as it may believe that the goods in question come from the same undertaking or from economically-linked undertakings, especially in a situation where there is an average degree of visual and phonetic similarity between the signs and they have no proved conceptual meaning for the public concerned.
109    Consequently, the arguments which the applicant has put forward in that regard must be rejected and it must be held that the Board of Appeal was correct to conclude that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public between the mark applied for and the earlier trade mark.
110    Having regard to all of the foregoing, as neither of the pleas in law relied on by the applicant are well founded, the action must be dismissed in its entirety, without it being necessary to give a ruling on the admissibility of the second and third heads of claim contested by EUIPO (see, to that effect, judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto !Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 70).
Costs
111    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. 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.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders M & K Srl to pay the costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 16 October 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.