JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
13 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Safari Club — Earlier national figurative mark WS Walk Safari — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑418/17,
Eduard Meier GmbH, established in Munich (Germany), represented by S. Schicker and M. Knitter, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Calzaturificio Elisabet Srl, established in Monte Urano (Italy),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 May 2017 (Case R 1158/2016-4) relating to opposition proceedings between Calzaturificio Elisabet and Eduard Meier,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 July 2017,
having regard to the response lodged at the Court Registry on 1 August 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 19 August 2014, the applicant, Eduard Meier GmbH, 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 Safari Club.
3        The goods and services in respect of which registration was sought are in Classes 3, 8, 12, 14, 16, 18, 20, 21, 24 to 28, 30, 32 to 34, 39 and 41 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 Classes 18 and 25, to the following description:
–        Class 18: ‘Leather and imitation leather goods made thereof, namely bags, baggage, bags for men, key bags, leather cases, visiting card holders, bags for spectacles, bags for stationery, pencil cases; briefcases, handbags, shopping bags, school bags, trunks and travelling bags, umbrellas, parasols, walking sticks, saddlery, saddles, game bags, backpacks, rucksacks, travelling sets (leatherware); collars for dogs, dog leashes, whips; animal skins and hides and goods made from these materials, all the aforesaid goods included in Class 18, horse blankets, saddle cloths for horses’;
–        Class 25: ‘Footwear of all types, and parts and components of shoes, in particular heels, soles, inner soles, welts, caps, legs, shoe inserts not for medical purposes; clothing, in particular outer clothing for women and men, shirts, blouses, coats, sports jackets, suits, waistcoats, jackets, knitted clothing, costumes, skirts, dresses, trousers, horse riding trousers, shawls, including of silk, ties, scarves, pocket squares, neckerchiefs, including of silk, stockings, socks, footwraps, suspenders, headgear, in particular hats and caps, gloves, belts, outer clothing for children; overalls; headgear, caps; boiler suits; garters; bed wear and night wear, night attire, sleepsuits, nighties, underwear; clothing for hunting, clothing and hunting boots, working clothes; cut resistant trousers.’
4        The trade mark application was published in European Union Trade Marks Bulletin No 2015/2011 of 19 January 2015.
5        On 31 March 2015, Calzaturificio Elisabet Srl 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 in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier Italian figurative mark No 1454232 reproduced below designating ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas and parasols; walking sticks; rucksacks; all purpose sports bags; bags; beach bags; carrying cases for documents; change purses; notecases; bags; handbags; shopping bags with wheels attached; textile shopping bags; handbags; leads for animals; school satchels; suitcases; sports bags; tote bags; shoulder bags; bum-bags; cosmetic bags (empty)’ in Class 18 and ‘Clothing; sweaters; cardigans; waistcoats; dresses; trousers; shorts; jerseys; raincoats; leather clothing; stockings; stocking suspenders; sock suspenders; anoraks; ski pants; fur coats; evening jackets; overcoats; skirts; suits; jackets; undershirts; t-shirts; clothing for gymnastics; ladies’ shirts; collars; shirts; scarves; swimming costumes; tracksuits; wedding dresses; bath robes; underwear; brassieres; corsets; slips; underpants; briefs; nightshirts; housecoats; pyjamas; gloves; shawls; mufflers; ties; bow ties; belts [clothing]; braces; hats; caps; shoes; boots; ankle boots; leather shoes; rubber shoes; rain boots; sports footwear; sandals; slippers; soles for footwear; heels; footwear uppers’ in Class 25:
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        On 27 April 2016, the Opposition Division upheld the opposition in respect of all of the contested goods.
9        On 27 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 decision of the Opposition Division.
10      By decision of 2 May 2017 the Board of Appeal dismissed the appeal as unfounded. First of all, the Board of Appeal noted that (i) the relevant territory for analysing the likelihood of confusion was Italy, (ii) the goods at issue were aimed at the general public, whose level of attention was average and (ii) the goods at issue were identical or similar to varying degrees. Next the Board of Appeal, after finding, with regard to the comparison of the signs, that the word element ‘safari’ contained in both signs had a normal level of distinctiveness in relation to the goods at issue, considered that the signs at issue were visually similar at least to a low degree on account of the common element ‘safari’, that they were phonetically similar at least to an average degree and that, for part of the relevant public, they were conceptually identical. Finally, the Board of Appeal concluded that, given those factors, namely the average degree of conceptual and phonetic similarity of the signs at issue, the fact that both signs are visually similar, and the average level of attention of the relevant consumer, there was a likelihood of confusion between those signs for all of the goods concerned.
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 action;
–        order the applicant to pay the costs.
Law
13      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 No 207/2009.
14      EUIPO disputes the applicant’s arguments.
15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16      Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), the term ‘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.
17      According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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).
18      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).
19      However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
20      It is in the light of those considerations that the legality of the contested decision must be examined.
21      At the outset, it must be recalled that, in paragraphs 9 and 10 of the contested decision, the Board of Appeal found that the relevant territory for analysing the likelihood of confusion was Italy and that the relevant public was made up of the Italian general public, whose level of attention, given the nature of the goods in question — inexpensive items purchased on a regular basis — was average. The Board of Appeal, moreover, in paragraph 11, upheld the finding of the Opposition Division that the goods at issue were identical or similar to varying degrees. Those assessments are not disputed by the applicant in the present case.
The distinctive and dominant components of the marks at issue
22      As is apparent from settled case-law, 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 (see judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).
23      In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
24      The public will not generally consider a descriptive element forming part of a composite mark to be the distinctive and dominant element of the overall impression conveyed by that mark (see, to that effect, judgment of 8 March 2017, Rafhaelo Gutti v EUIPO — Transformados del Sur (CAMISERIA LA ESPAÑOLA), T‑504/15, not published, EU:T:2017:150, paragraph 31 and the case-law cited). In that regard, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see, to that effect, judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited).
25      With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark. It follows that the determination of the dominant character of an element within a composite trade mark depends on a fact-based assessment of the various elements that go to make up the sign and is therefore not dependent on the nature of the sign in question, that is to say, on whether it is a figurative sign or a word sign (judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 35 and 36).
26      It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
27      It must also be noted that, when some components of a mark are descriptive of the goods and services for which the mark is protected or of the goods and services covered by the application for registration, those components are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52).
28      In point 14 of the contested decision, the Board of Appeal stated that the word ‘safari’ was understood by the relevant public as meaning ‘an expedition to observe or hunt animals in their natural habitat, especially in East Africa’. Although a certain theme or style including pith helmets, slouch hats and animal-skin patterns is associated with the word ‘safari’, the Board of Appeal observed that the word ‘safari’ was not directly or objectively descriptive of the goods at issue. None of the contested goods are specifically designed to be used exclusively on a safari and some of those goods, such as ‘shopping bags’ or ‘costumes’ seem rather out of place on a safari. The Board of Appeal concluded that the word element ‘safari’ had a normal level of distinctiveness with regard to the goods at issue.
29      The applicant claims, in the first place, that that approach is ‘short-sighted’, since the word ‘safari’ is a well-established term used in the fashion industry for clothing in general and not solely for clothing that may be worn on safari. The ‘safari style’ or ‘safari look’ refers to modern, casual women’s and men’s clothing featuring strong materials and certain details such as epaulettes, patch pockets and metal buttons. The applicant includes, in support of its claim, extracts from the Italian version of the search engine Google showing results obtained using the search terms ‘safari look’ and ‘safari style’. The applicant maintains that it is clear from those extracts that a search using the abovementioned key terms gives results primarily concerning fashion websites. Furthermore, the applicant refers to Italian fashion websites on which the word ‘safari’ is used to describe a style of clothing. The expression ‘safari style’ is therefore used, according to an extract from a website attached by the applicant, in relation to clothes, shoes and bags. Moreover, explanations concerning how to create a perfect safari ‘look’ feature in another extract from a website attached by the applicant.
30      In that regard, first, the website extracts referred to in paragraph 29 above, adduced for the first time before the Court by the applicant to establish that the word ‘safari’ lacks distinctive character, cannot be taken into consideration. In that regard, it should be borne in mind that, according to settled case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned website extracts must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
31      Second, given that the documents adduced are inadmissible, there is no evidence establishing awareness on the part of the Italian general public of a ‘safari style’ in respect of all the goods covered by the marks at issue.
32      However, the applicant is right to claim that the element ‘safari’ has weak distinctive character for certain products, namely the ‘game bags’ in Class 18 and the ‘clothing for hunting, clothing and hunting boots’ in Class 25 (the ‘hunting-related goods’). As is apparent from point 14 of the contested decision, the word ‘safari’ is understood by the relevant public meaning ‘an expedition to observe or hunt animals in their natural habitat, especially in East Africa’, with the result that it necessarily has a low level of distinctiveness for bags, clothing and shoes used for hunting.
33      In that regard, it must be held that the word ‘safari’ is likely to provide the relevant public, immediately and without further thought, with information relating to the characteristics of those goods. Thus, since the element ‘safari’ alludes to those goods, it cannot be considered, with regard to them, to dominate the overall impression conveyed by the earlier mark, in accordance with the case-law referred to in paragraph 26 above (see, to that effect, judgment of 22 February 2018, International Gaming Projects v EUIPO — Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 34).
34      It follows from the foregoing that the argument alleging that the common element ‘safari’ is devoid of or has a low level of distinctiveness must be rejected, except with regard to the ‘game bags’ in Class 18 and the ‘clothing for hunting, clothing and hunting boots’ in Class 25.
35      The applicant claims, in the second place, in so far as concerns the visually dominant elements, that the most eye-catching element of the earlier mark is the element ‘ws’, on account of its position in the upper part of the label, and not the element ‘safari’, which is positioned in the lower part, since, in general, a consumer pays greater attention to the beginning of a mark than to the end, given that the first part of a mark tends to have a greater visual and phonetic impact than the final part. Furthermore, the applicant maintains that the public will also note that the letters forming the element ‘ws’ in the earlier mark are stylised, while the other words are simply made up of black upper-case letters which are not stylised in any way.
36      In accordance with well-established case-law, when assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 18 June 2013, Rocket Dog Brands v OHIM — Julius-K9 (K9 PRODUCTS), T‑338/12, not published, EU:T:2013:327, paragraph 23).
37      In the present case, as EUIPO correctly maintains, even though the element ‘ws’ is located in the top part of the earlier sign, the size and stylisation of the letters of which it is made up are essentially the same as the first letters of the word element which follows, ‘walk safari’. Accordingly, the element ‘ws’ will be perceived by the relevant public merely as an abbreviation of the element ‘walk safari’. Therefore, the applicant is wrong to claim, in essence, that the element ‘ws’ is the most ‘eye-catching’ element of the earlier mark.
38      It follows from the foregoing that the applicant is wrong to claim that the element ‘ws’ is the dominant element of the earlier mark.
The similarity of the signs
39      It has been held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46 and the case-law cited).
40      The signs to be compared are as follows:
Earlier sign
Contested sign
Visual similarity
41      In paragraph 15 of the contested decision, the Board of Appeal found that, visually, the figurative element of the earlier mark essentially consisted of a frame around the word elements which has no distinctive value as its shape is neither striking nor unexpected. The Board of Appeal added that, when it compared the distinctive elements of the signs at issue, namely the words ‘walk safari’ and ‘safari club’, it considered that they were visually similar at least to a low degree on account of the common element ‘safari’, while the element ‘ws’, representing, in the earlier sign, the initial letters of the words which follow was rather ornamental.
42      The applicant claims, first, that the signs at issue differ on account of the presence, in the mark applied for, of the word element ‘club’ and, in the earlier mark, of the word elements ‘ws’ and ‘walk’, as well as figurative elements consisting of the stylisation of the letters, the representation of the mark over two lines, and the frame. Next, it refers to the line of argument recalled in paragraph 35 above, to the effect that the element ‘ws’ constitutes the most distinctive part of the earlier mark. Furthermore, it states that the frame cannot be considered negligible in the overall visual impression conveyed by the earlier mark. The applicant submits that the main elements of the earlier mark consist of the element ‘ws’ and the element ‘walk’, whereas the main element of the sign applied for is the word element ‘club’. It follows that the element common to both signs, namely the element ‘safari’, would not attract the attention of consumers and that the degree of visual similarity is therefore very low or hardly existent.
43      However, first, it has already been stated in paragraph 37 above that the element ‘ws’ of the earlier mark would be perceived by the relevant public merely as an abbreviation of the word element ‘walk safari’. Such an abbreviation cannot constitute the distinctive and dominant element of that sign.
44      Second, as EUIPO correctly maintains, the graphical representation of the earlier mark, which is confined merely to the use of a frame and a slightly stylised font, will not detract the relevant public’s attention from its word elements. In accordance with settled case-law, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing their figurative element (see judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and 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).
45      However, as regards hunting-related goods, the word element ‘safari’, which is common to the signs at issue, must be accorded less importance, in the visual perception of the signs at issue, given that it alludes to those goods (paragraph 33 above). Accordingly, the visual attention of the relevant public, as regards those goods, will be drawn to the other elements of the signs at issue, inter alia the element ‘walk’ of the earlier mark and the element ‘club’ of the mark applied for, which are two completely different words that will not be regarded as evoking hunting. It follows that the signs at issue, despite sharing the element ‘safari’, are different from a visual point of view as regards hunting-related goods.
46      In those circumstances, the Board of Appeal was right to consider that the common presence of the word element ‘safari’ in the signs at issue was sufficient to consider them to be visually similar, at least to a low degree.
Phonetic similarity
47      In point 16 of the contested decision, the Board of Appeal indicated that the element ‘ws’ would be understood by the relevant public as an abbreviation of the element ‘walk safari’ that follows it and would not be pronounced when referring to the mark orally. The Board of Appeal added that the words ‘walk’ and ‘club’ were monosyllabic words, whereas the common element ‘safari’ was pronounced as three syllables. It inferred that, with three identical syllables out of four, the signs at issue were phonetically similar, at least to an average degree.
48      As regards hunting-related goods, the degree of similarity must be regarded as low, in so far as the word element ‘safari’, which is common to the signs at issue of which it accounts for three out of the four syllables in each, alludes to those goods, which is not the case for the other elements which will be pronounced by the relevant public, namely the element ‘walk’ of the earlier mark and the element ‘club’ of the mark applied for.
49      The applicant claims that, phonetically, the earlier sign is pronounced as six syllables, whereas the contested sign is made up of four. Accordingly, the rhythm and intonation of the signs are very different. It adds that the pronunciation of the beginning of the signs at issue is different. It submits that, overall, the signs at issue are phonetically similar to a very low degree
50      In the present case, it must be noted that the Board of Appeal did not err in considering that the element ‘ws’ of the earlier mark would not be pronounced, in so far as it would be perceived as an abbreviation of the element ‘walk safari’ and, consequently, in so far as the signs at issue had at least three identical syllables out of four, that they were phonetically similar, at least to an average degree.
Conceptual similarity
51      In point 17 of the contested decision, the Board of Appeal found that, conceptually, the two signs referred to the concept of a safari, that the word element ‘club’ was generally understood as group or association of two or more people united by a common interest or goal and that a significant part of the Italian general public would understand the English word ‘walk’. The Board of Appeal noted, in that regard, that a ‘safari club’ may offer safari-related events such as a walking safari, so that, for a part of the relevant public, the signs at issue were conceptually similar.
52      The applicant claims that the signs are conceptually similar, in so far as they have the word ‘safari’ in common. However, the word combinations ‘walk safari’ and ‘safari club’ also evoke additional different associations. Therefore, for consumers who understand the word ‘walk’, the words ‘walk safari’ mean a walk during a safari, whereas the words ‘safari club’ mean a group of persons united by a common interest in safaris. Furthermore, the goods covered by the marks at issue, namely clothing, shoes, and bags are irrelevant for the purposes of describing the events to which the Board of Appeal refers, namely a ‘safari club’ which offers safari-related events such as a walking safari. The applicant submits that the marks are conceptually sufficiently separate and are not likely to be confused.
53      However, it must be held that the word ‘safari’ which appears in both signs conveys an identical concept, which the applicant does not dispute, despite the existence of necessary conceptual differences, albeit weak, between the words ‘walk’ and ‘club’.
54      However, as regards hunting-related goods, the element ‘safari’ which is common to both marks will have only weak distinctive character for the relevant public (paragraph 32 above), so that the attention of that public will be drawn, at least in part, to the differences between the signs, namely, first, the element ‘walk’ of the earlier mark and, second, the element ‘club’ of the mark applied for, elements which have different semantic content.
The global assessment of the likelihood of confusion
55      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. 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 (judgment of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).
56      Moreover, it is apparent from the case-law that when the elements of similarity between two signs derive from the fact that they share a component with weak distinctive character, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 74).
57      In points 19 and 20 of the contested decision, the Board of Appeal found that the earlier mark had an average degree of inherent distinctive character and that, given the average degree of conceptual and phonetic similarity, since the two marks were similar both visually and in respect of the average level of attention of the relevant consumer, there was a likelihood of confusion on the part of the relevant public for all of the goods concerned.
58      The applicant submits that there is no likelihood of confusion between the marks. It maintains, in that regard, that the similarities deriving from the common element ‘safari’ are insufficient to counteract the differences between the other elements of the signs at issue, since the earlier mark, just like that element, has inherently weak distinctive character for the goods covered by the signs at issue. The applicant reiterates, moreover, that the dominant, eye-catching element of the earlier marks is the element ‘ws’. The presence of that dominant element, along with the other elements of the earlier sign, thus rules out any possibility of confusion. The applicant maintains that this is all the more true, in the present case, since clothing is usually chosen visually. Consequently, the differences identified between the signs at issue and more particularly the great importance that consumers attach to visual appearances, characterised, as regards the earlier mark, by the significant role played by figurative elements, and by the different word elements, ‘club’, ‘ws’ and ‘walk’, are sufficient to rule out the existence of a likelihood of confusion.
59      EUIPO disputes the applicant’s arguments.
60      As has previously been stated, contrary to what the applicant claims, the element ‘ws’ cannot be regarded as the dominant element of the earlier mark (paragraph 38 above), nor can the graphic representation of that mark divert the attention of the relevant public from its word elements (paragraph 44 above).
61      In those circumstances, in view of the visual similarity between the signs at issue, albeit of a low degree, their phonetic and conceptual similarities and the identity or similarity of the goods covered by the marks at issue, the Board of Appeal was right to find that there was a likelihood of confusion between the signs at issue as regards those goods.
62      However, as regards hunting-related goods, namely ‘game bags’ in Class 18 and ‘clothing for hunting, clothing and hunting boots’ in Class 25, it was held, in paragraph 32 above, that the word element ‘safari’ which is common to the signs at issue, had weak distinctive character. That element will not therefore be perceived as an indication of commercial origin (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 74).
63      Therefore, as regards the goods referred to in paragraph 62 above, the public’s attention will focus on the differences between the signs at issue, namely, first, the presence, at the beginning of the sign, of the element ‘ws’, which will influence the visual perception of the signs at issue (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 59 and the case-law cited), and, second, the words ‘walk’ and ‘club’, which are devoid of any visual or phonetic similarity.
64      Those differences, in particular from a visual perspective, will play a specific role in so far as the hunting-related goods covered by the mark applied for are usually sold in self-service shops in which the consumer chooses the product himself and must, accordingly, rely on his recollection of the mark applied to the product. In that regard, clothing and clothing accessories are usually selected in a visual manner. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (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, paragraphs 49 and 50).
65      It follows that the visual differences relating to elements other than the word element ‘safari’ which has weak distinctive character, will prevail in the overall impression conveyed by the signs at issue to the relevant public. Accordingly, those differences will counteract the phonetic and conceptual similarities which derive from the presence of the word element ‘safari’ in both signs and the idea to which it refers (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 75).
66      In those circumstances, the Board of Appeal was wrong to consider that there was also a likelihood of confusion between the signs at issue as regards both the ‘game bags’ in Class 18 and the ‘clothing for hunting, clothing and hunting boots’ in Class 25.
67      Consequently, the contested decision must be annulled to that extent and the action must be dismissed as to the remainder.
Costs
68      Under Article 134(3) of the Rules of Procedure of the General Court, each party is to bear its own costs where each party succeeds on some and fails on other heads. In this case, since the contested decision must be annulled only in part, it is appropriate to order the parties to bear their own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 May 2017 (Case R 1158/2016-4), in so far as it upheld the opposition to registration of the EU word mark Safari Club for the goods ‘game bags’ and ‘clothing for hunting, clothing and hunting boots’;
2.      Dismisses the remainder of the action;
3.      Orders each party to bear its own costs.
Gervasoni
Madise
Da Silva Passos
Delivered in open court in Luxembourg on 13 September 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.