JUDGMENT OF THE GENERAL COURT (First Chamber)
16 October 2018 (*)
(EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark representing four crossed lines — Obligation to state reasons — Article 75 and Article 76(1) of Regulation No 207/2009 (now Article 94 and Article 95(1) of Regulation 2017/1001) — No similarity between the signs — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))
In Case T‑581/17,
Asics Corporation, established in Kobe (Japan), represented by M. Polo Carreño and H. Granado Carpenter, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Van Lieshout Textielagenturen BV, established in Haaren (Netherlands), represented by P. Claassen and B. Woltering, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 June 2017 (Case R 2129/2016-4), relating to opposition proceedings between Asics Corporation and Van Lieshout Textielagenturen,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 August 2017,
having regard to the response of EUIPO lodged at the Court Registry on 4 October 2017,
having regard to the response of the intervener lodged at the Court Registry on 23 October 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 3 July 2013 the intervener, Van Lieshout Textielagenturen BV, 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 following figurative sign:
3        The goods in respect of which registration was sought are in Classes 18, 24 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 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes’;
–        Class 24: ‘Textiles and textile goods, not included in other classes’;
–        Class 25: ‘Clothing, footwear, headgear’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 144/2013 of 1 August 2013.
5        On 10 October 2013, the applicant, Asics Corporation, filed a notice of opposition, pursuant to Article 41(1)(a) of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        EU figurative mark No 3242187, reproduced below, designating: ‘bags, trunks, sacks and cases, including sports bags, trend bags, athletic bags, waist bags, shoe bags, shoulder bags, clutch bags, travelling bags, sports sacks, knapsacks, rucksacks, shoe cases; pouches; purses, wallets; parasols, umbrellas; leather and imitations of leather; goods made of leather and/or imitation leather; animal skins, hides, walking sticks; whips, harnesses, saddlery’, in Class 18; ‘clothing, gloves, socks, footwear, headgear; athletic footwear’, in Class 25, and ‘gymnastic and sporting equipment and articles; sports gloves, bands and warmers, including ear bands, ear warmers, wrist bands and hair bands; sports guards for legs; athletic supports; athletic and sports headgear, including headgear for rugby use; sports bats, rackets and clubs, including tennis rackets, table tennis bats and golf clubs; cases for rackets, bats and clubs, including table tennis bat cases, racket cases, golf bags, caddy bags and golf club head covers; sporting and athletic nets, including golf nets, volleyball nets; games and playthings; decorations for Christmas trees’, in Class 28:
–        the Spanish figurative mark registered under No 683545, for goods in Class 25 and corresponding to the following description: ‘Clothing including sports shoes, boots, slippers, sneakers and footwear in general’, reproduced below:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
8        On 22 September 2016, the Opposition Division rejected the opposition in its entirety and ordered the applicant to bear the costs of the proceedings.
9        On 21 November 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 decision of the Opposition Division.
10      By decision of 27 June 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First of all, the Board of Appeal found that the conditions for opposition under Article 8(1)(b) of Regulation No 207/2009 were not satisfied. After carrying out a comparison of the figurative sign of the mark applied for with the figurative signs of the earlier marks, the Board of Appeal stated that the signs at issue gave a different overall visual impression, the only similarity resulting from the presence of lines which crossed. It added that, as the signs at issue were purely figurative, no phonetic comparison was possible and that the conceptual comparison remained neutral. Finally, since the earlier marks are different from the mark applied for, the Board of Appeal found that the conditions for opposition under Article 8(5) of Regulation No 207/2009 were not met.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        dismiss the action as inadmissible or, in the alternative, as unfounded;
–        order the applicant to pay the costs.
Law
Admissibility
14      Without formally raising a plea of inadmissibility under Article 130 of the Rules of Procedure of the General Court, the intervener contends, as its principal argument, that the present action is inadmissible.
15      Since the intervener has not relied on a plea of inadmissibility in support of that head of claim, the latter must be rejected for non-compliance with Article 180(1)(c) of the Rules of Procedure.
Substance
16      In support of its action, the applicant relies on five pleas in law, alleging, respectively, first, infringement of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), in that the Board of Appeal committed a manifest error in the assessment of the facts and an infringement of essential procedural requirements during the comparison of the signs at issue; second, infringement of the obligation on the Board of Appeal to review the legality of the decision of the Opposition Division; third, infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) in that the Board of Appeal infringed its obligation to state reasons; fourth, infringement of Article 8(1)(b) of Regulation No 207/2009; fifth, infringement of Article 8(5) of Regulation No 207/2009.
The first plea in law, alleging infringement of Article 76(1) of Regulation No 207/2009
17      The applicant submits that the Opposition Division and then the Board of Appeal were wrong not to carry out a comparison between the earlier Spanish mark and the mark applied for. In considering that the signs represented by the earlier marks were exactly the same, the Opposition Division and subsequently the Board of Appeal committed a manifest error in the assessment of the facts. The applicant adds that the Opposition Division and the Board of Appeal thereby committed an infringement of essential procedural requirements, in that they overlooked the existence of an earlier right on which the opposition was based.
18      EUIPO and the intervener dispute the applicant’s arguments.
19      Article 76(1) of Regulation No 207/2009 provides that in proceedings before it, EUIPO is to examine the facts of its own motion. It is clear from the case-law that that provision is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see judgment of 21 February 2013, Laboratoire Bioderma v OHIM — Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraph 24 and the case-law cited).
20      In the present case, it should be noted that, contrary to what the applicant claims, it is apparent from paragraphs 11, 12 and 14 of the contested decision that the Board of Appeal did not disregard the existence of the earlier Spanish mark, but, in essence, considered that, for the purposes of their comparison with the mark applied for, it was possible to disregard the slight differences between the two earlier marks.
21      In that regard, it should be noted that the earlier EU trade mark and the earlier Spanish mark differ only in terms of the angle of orientation of the straight lines going downwards diagonally from left to right and of the curved lines going upwards diagonally from left to right; those differences are therefore irrelevant for the purpose of comparing the earlier marks with the mark applied for.
22      Moreover, as rightly pointed out by EUIPO, the applicant claimed the seniority of the earlier Spanish mark for the purposes of registration of the earlier EU trade mark, which demonstrates that the applicant itself considered that those marks were identical. In order to uphold a claim of seniority of an earlier national mark for the purposes of the application for registration of an EU trade mark, three cumulative conditions must be fulfilled: the earlier national mark and the EU trade mark applied for must be identical; the goods or services covered by the EU trade mark applied for must be identical to, or contained within, those covered by the earlier national mark; and the proprietor of the marks at issue must be the same (judgment of 19 January 2012, Shang v OHIM (justing), T‑103/11, EU:T:2012:19, paragraph 14).
23      Therefore, the Board of Appeal neither disregarded the existence of one of the applicant’s earlier rights nor committed any error in the assessment of the facts when it compared the figurative sign of the trade mark applied for and the figurative signs of the earlier marks.
24      Consequently, the first plea in law must be rejected.
The second plea in law, alleging infringement of the Board of Appeal’s obligation to review the legality of the Opposition Division’s decision
25      The applicant maintains that by disregarding decisive facts, namely, the existence of the earlier Spanish mark, the Board of Appeal infringed its obligation to review the legality of the Opposition Division’s decision.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      In the present case, as has already been stated in paragraph 20 above, the Board of Appeal did not disregard the existence of the earlier Spanish trade mark, but, for the purposes of the comparison of the signs at issue, considered that it was possible to disregard the slight differences between the two earlier marks.
28      Therefore, the Board of Appeal did not fail to fulfil its obligation to review the legality of the Opposition Division’s decision, so that the second plea has no factual basis and must be rejected.
The third plea in law, alleging infringement of Article 75 of Regulation No 207/2009
29      The applicant submits that the Board of Appeal, by not giving reasons for the failure to take into account the earlier Spanish mark, infringed its obligation to state reasons under Article 75 of Regulation No 207/2009.
30      EUIPO and the intervener dispute the applicant’s arguments.
31      In that regard, it should be noted that the third plea is factually incorrect. As has already been stated in paragraphs 20 and 27 above, the Board of Appeal did not overlook the existence of the earlier Spanish trade mark, so that a statement of reasons concerning the failure to take that earlier sign into account is not warranted.
32      The third plea in law must, therefore, be rejected.
The fourth plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
33      Under the fourth plea, which is divided into two parts, the applicant submits, in essence, that the Board of Appeal was wrong to find that the signs at issue were dissimilar overall, meaning that there is, according to the applicant, a likelihood of confusion between the signs at issue on the part of the relevant public.
34      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, 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.
35      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 judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 33 and the case-law cited, and of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).
36      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 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; judgment of 22 September 2016, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 45).
37      It is necessary to examine, in the light of those considerations, whether the Board of Appeal correctly held that the signs at issue produced a different overall impression.
38      As a preliminary point, it must be noted that the applicant does not dispute the assessment of the relevant public adopted by the Opposition Division which is, in essence, that the relevant public consists of consumers in the European Union.
–       The comparison of the signs
39      The Board of Appeal, first, noted that the comparison of the signs at issue should be limited to taking into account those signs in the form in which they were registered or applied for and, secondly, found that the signs at issue produced a completely different overall impression.
40      The applicant complains that the Board of Appeal incorrectly assessed the overall visual similarities of the signs at issue. The applicant maintains that the signs at issue, consisting of crosses formed by two parallel lines crossing two other longer lines, display significant similarities, which the minor differences are unable to offset. It adds that the form in which the trade mark applied for may appear on the goods covered cannot be excluded from the comparison.
41      EUIPO and the intervener dispute the applicant’s arguments.
42      First of all, it should be noted that it is clear from the case-law that the assessment of the likelihood of confusion is to be carried out by comparing the signs as they were registered, or as they appear in the trade mark application (see, to that effect, judgments of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 62, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57).
43      Therefore, as EUIPO correctly submits, and contrary to what the applicant claims, the comparison that the applicant makes of the signs at issue as they might appear on sports footwear is irrelevant.
44      Next, it should be noted that the mark applied for is composed of four thin straight black lines with a serrated outline. Two of those lines, placed in parallel, go upwards diagonally from left to right and cross, in their middle, two other shorter parallel lines, going downwards diagonally from left to right.
45      As regards the earlier marks, they are composed of four thick black lines. Two straight lines go downwards diagonally from left to right, while moving slightly apart from each other, and cross two converging curved lines which go upwards from left to right. The convergence and crossing of the straight lines and the curved lines give the earlier marks, which may be perceived as the letter ‘x’ superimposed on the letter ‘v’ or on the character ‘’, an impression of movement.
46      Thus, even if the consumer does not recall details such as the size or thickness of the lines, the overall impression between, on the one hand, thick lines and curves forming a letter ‘x’ superimposed on a character ‘’ and, on the other hand, thin straight lines that can be perceived as a character ‘#’ inclined backwards to 45 degrees is so different that the consumer will not make a connection between the signs at issue solely on the basis that they are both composed of parallel lines crossing two other longer lines.
47      In the light of the foregoing, the Board of Appeal found correctly that the overall impression given by the marks at issue was different, which leads to the conclusion that there is no visual similarity.
48      As regards the phonetic and conceptual comparison, it should be noted that the Board of Appeal, in paragraph 16 of the contested decision, stated that it was not possible to compare the signs at issue phonetically and that the conceptual comparison remained ‘neutral’. In view of the fact that the signs at issue are figurative marks without word elements and that none of the graphic forms have a conceptual content, which the applicant, moreover, does not dispute, it is appropriate to confirm the Board of Appeal’s analysis.
49      It must be concluded, therefore, that the Board of Appeal was correct to find that the signs at issue were not similar.
–       The likelihood of confusion
50      The Board of Appeal held that, as the similarity of the signs is a necessary condition for finding a likelihood of confusion, the opposition had to be rejected.
51      According to the applicant, since the signs at issue are similar and given the identity, similarity or overlap of the goods covered by the signs at issue and the enhanced distinctiveness of the earlier marks, there is a likelihood of confusion on the part of the relevant public.
52      EUIPO and the intervener dispute the applicant’s arguments.
53      As noted in paragraph 36 above, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative.
54      In the present case, the first of those conditions is lacking.
55      Therefore, the applicant’s arguments, summarised in paragraph 51 above, are unfounded.
56      It should be added that, where there is no similarity between the earlier marks and the mark applied for, the enhanced distinctiveness of the earlier marks and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the signs at issue (see, to that effect, judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 53, and of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 44).
57      Furthermore, the finding that the overall impression given by the signs at issue is different is valid regardless of whether the public’s degree of attention is low, average or high (judgment of 25 November 2015, Sephora v OHIM — Mayfield Trading (Representation of two undulating vertical lines), T‑320/14, not published, EU:T:2015:882, paragraph 63).
58      The arguments put forward by the applicant concerning the identity of the goods and relating to the existence of a likelihood of confusion, particularly because of the enhanced distinctiveness of the earlier marks, are therefore ineffective.
59      The fourth plea in law must, therefore, be rejected.
The fifth plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
60      The applicant, taking the view that the signs at issue are similar, adds that it is necessary to examine the other conditions of Article 8(5) of Regulation No 207/2009, in that the mark applied for would take unfair advantage of the distinctive character and reputation of the earlier marks.
61      EUIPO and the intervener dispute the applicant’s arguments.
62      Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) of that regulation (now Article 8(2) of Regulation 2017/1001), the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
63      The identity or similarity of the signs at issue is therefore a necessary condition for the application of that provision. In the present case, it is sufficient to recall that it is clear from examination of the fourth plea that the signs at issue are not similar.
64      Therefore, as the first of the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not fulfilled, the Board of Appeal rightly decided to reject the opposition filed by the applicant on the basis of that provision.
65      It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
66      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.
67      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 (First Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Asics Corporation to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 16 October 2018.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.