JUDGMENT OF THE GENERAL COURT (Third Chamber)
5 May 2017 (*)
(EU trade mark — Opposition proceedings — EU figurative mark Out Door — Earlier EU word mark OUTDOOR PRO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 76 of Regulation No 207/2009)
In Case T‑224/16,
Messe Friedrichshafen GmbH, established in Friedrichshafen (Germany), represented by W. Schulte Hemming, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 February 2016 (Case R 2302/2011-2), relating to opposition proceedings between El Corte Inglés and Messe Friedrichshafen,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 May 2016,
having regard to the response of EUIPO lodged at the Court Registry on 21 September 2016,
having regard to the response of the intervener lodged at the Court Registry on 12 September 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 9 May 2008, the applicant, Messe Friedrichshafen 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). Registration as a mark was sought for the following figurative sign:
2        The goods and services in respect of which registration was sought are in Classes 9, 16, 25, 28, 35, 37, 38, 41 to 43 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
–        Class 9: ‘Photographic, cinematographic, optical, electric, electrotechnical and electronic apparatus and equipment, included in class 9; data-processing equipment and computers; apparatus for recording, transmission or reproduction of sound or images; video, computer and other electronic games, included in class 9; electronically downloadable publications, music, ringtones, games, programs and film; game and amusement apparatus; parts of the aforesaid goods; computer game and video game cassettes, computer software, included in class 9; exposed films, recorded and unrecorded sound and/or image carriers (except unexposed films, in particular CDs, CD-ROMs, DVDs); magnetic data carriers; spectacles, sunglasses; spectacle cases, spectacle chains, spectacle cords, spectacle lenses and spectacle frames’;
–        Class 16: ‘Paper, cardboard, goods of paper and cardboard, included in class 16; printed matter, newspapers and periodicals, books; catalogues, brochures, flyers; book ends, book sleeves; photographs, posters; stationery; postcards, greetings cards, trading cards, writing paper and envelopes, postage stamps, notebooks, diaries, note papers, notice boards, address books, writing sets (stationery), file covers and folders, calendars, ring binders, writing or drawing books, student planners, albums, collectors’ albums, paperweights, letter-openers, writing pads, desk organisers (containers for writing and office implements); rulers, rubber erasers, stapling presses, staples and paper clips, books and bookmarkers; transfers (including iron-on transfers and transfers for temporary tattoos), rub-on transfers, paper and PVC stickers, paper bags; gift paper, gift tags of paper and cardboard; party articles of paper and/or cardboard, namely paper streamers, flags, table decorations, table napkins, tablecloths, place mats; black boards and white boards, chalk, adhesives for stationery and household purposes, writing implements, marker pens, cases for writing, painting and drawing utensils, pencil cases filled with marker pens, fountain pens, ball-point pens, pencils, rulers, rubber erasers and notepaper; pencil cases and containers, pencil holders, pencil extenders, pencil-sharpeners, drawing, painting and modelling goods and apparatus, paintbrushes; artists’ materials, namely crayons, chalk, palettes and canvasses; hobby kits with painting materials; typewriters and office requisites (except furniture), included in class 16; roll dispensers for adhesive tape, instructional and teaching material (except apparatus) in the form of printed matter, games, globes, drawing implements for wall boards; printers’ type and printing blocks; stamps (seals), stamp inks and inking pads, ink’;
–        Class 25: ‘Clothing, in particular T-shirts, jersey clothing; belts for clothing, braces, gloves; footwear; cap peaks, headbands (clothing); headgear (hats, caps); sun hats; knitwear, sweaters, waistcoats, jackets, polo shirts, shirts, scarves, neckerchiefs’;
–        Class 28: ‘Game cards; games and playthings, electronic games (included in class 28); toy clocks (included in class 28); console games (included in class 28); automatic gaming machines, hand-held games apparatus, included in class 28; gymnastic and sporting articles, included in class 28; toy model cars, decorations for Christmas trees’;
–        Class 35: ‘Advertising; advertising mail; business management services; business administration; office functions; distribution of leaflets and samples; newspaper subscription services for others; collating, systematic ordering and providing of information in business affairs and in the field of advertising (included in this class) by means of digital, multimedia and virtual information systems; bookkeeping; document reproduction services; employment services; file management; organization of exhibitions for commercial or advertising purposes; organisation consultancy, professional business consultancy; marketing, market research and market analysis; public relations; advertising for exhibitors; providing and rental of advertising and presentation space, including on the Internet (banner exchange) and other electronic media; rental of advertising material; renting out of advertising time in communication media; providing of addresses; providing of business and commercial contacts, including on the Internet; arranging of advertising and promotion contracts for others; arranging of contracts, for others, for the use of service agreements; mail advertising; dissemination of advertising matter; direct mail advertising (tracts, prospectuses, printed matter, samples); display services for merchandising; good and service presentations; arranging of advertisements; marketing communications, namely press publications, public relations, product advertising and image consultancy, for others; business management/arranging commercial transactions, for others; business and personnel management consultancy; business consultancy and advisory services; secretarial services; arranging and conducting of congresses, conferences, seminars and workshops, trade fairs and exhibitions for commercial and advertising purposes, including on the Internet and other electronic media; advertising and advertising agencies; advertising sponsorship; market research; organisational consultancy via hotlines; collating and systematic ordering of data, information, images and texts relating to business affairs and in the field of advertising, on computer databases; updating of business information and information in the field of advertising contained in digital, multimedia and virtual information systems; organisation of participation in exhibitions; presentation of companies and their products and services, including on the Internet and other electronic media; sales promotion and brokering of trade, service and business contacts and commercial transactions for consumer goods and industrial products on the Internet and other electronic media, including by means of a virtual trade fair; providing and rental of floor space and exhibition stands, including associated equipment (included in this class); advertising for exhibitors; arranging of advertising services; decoration of exhibition stands and platforms; secretarial services’;
–        Class 37: ‘Construction and building of exhibition stands, stages and booths; electric installation, installation of sound and image production and reproduction systems; stand cleaning’;
–        Class 38: ‘Telecommunications; press and information agencies; communication by computer terminals; television broadcasting, radio broadcasting, cable television broadcasting; message sending; satellite transmission; operating and rental of telecommunications equipment; electronic mail services; interactive online services, namely teleshopping channels; telecommunication routing and junction services; providing telecommunications connections to a global computer network; providing Internet access; provision of information on the Internet; providing portals on the Internet; providing platforms on the Internet; operating of chatlines, chatrooms and forums; videoconferencing; conferencing; computer-aided transmission of messages and images; news agencies and press reports; rental of message sending apparatus; forwarding of messages of all kinds to Internet addresses (web-messaging); telecommunications; transmission of data, information, images and texts on computer networks and other electronic media, including the Internet; technical transmission of information using digital, multimedia and virtual information systems; providing of an e-commerce platform on computer networks and other electronic media, including the Internet; leasing access time to database servers’;
–        Class 41: ‘Education and instruction, providing of training; entertainment; arranging and conducting of events and competitions, in particular for commercial, advertising, cultural, entertainment and sporting purposes, including on the Internet and other electronic media; publication of periodicals, printed matter and books in electronic form, on intranets and on the Internet; publication, including in electronic form (in particular online publication), of books, newspapers, periodicals, catalogues, prospectuses and pamphlets, music, videos; book borrowing; animal training; production of shows and films; theatrical agencies; arranging and conducting of exhibitions for cultural, entertainment and sporting purposes, including on the Internet and other electronic media; rental of theatre sets; arranging of competitions for education or entertainment; organisation, arranging and conducting of colloquiums, conferences, congresses; organisation of exhibitions for cultural or educational purposes; reservation of seats for shows; production, reproduction (included in this class), presentation and rental of films and radio broadcasts, production and reproduction (included in this class) of sound and image recordings on other sound and/or image recording carriers, presentation and rental of the aforesaid sound and/or image recording carriers; film and sound studio services and rental of sound and film studios, including devices, apparatus and equipment for the production of sound and image recordings; rental of radios and television sets, and apparatus for recording, transmission or reproduction of sound or images; theatre productions, musical performances; arranging and conducting of sporting and outdoor events, arranging of sporting competitions; arranging and conducting of seminars and workshops, including on the Internet and other electronic media; rental of show scenery, musical instruments, sound-amplifying installations, and electronic and electrotechnical installations for creating special effects; translation and interpreting; sale of tickets for events; news reporters services; videotaping’;
–        Class 42: ‘Updating and analysing of data, information, images and texts on computer networks and other electronic media, including the Internet (included in this class); scientific and industrial research; computer programming; engineering, professional consultancy and construction drafting (non-business); engineering (not for building); material testing; laboratory services; farming equipment rental’;
–        Class 43: ‘Accommodation bureaux and hotels; accommodation and catering for guests; medical, hygienic and beauty care’;
–        Class 45: ‘Exhibitor and visitor support services (hostess services); management and exploitation of copyright and other industrial property rights; services in the licensing of software; intellectual property consultancy; licensing of industrial property rights; licensing of industrial property rights and copyright; services in the field of trademark rights and performance rights’.
3        The EU trade mark application was published in Community Trade Marks Bulletin No 35/2008 of 1 September 2008.
4        On 25 November 2008, the opponent, El Corte Inglés, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services with regard to which registration was sought.
5        The opposition was based on, inter alia, the earlier EU word mark OUTDOOR PRO which was filed on 14 December 2005 and registered on 22 March 2010. That mark covered goods and services in Classes 9, 12, 14, 18, 22, 24, 25, 28 and 35.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
7        On 26 September 2011, the Opposition Division partially upheld the opposition in respect of all the goods and services in Classes 9, 25, 28, 35 and 38 and in respect of the following goods and services in Classes 16, 37, 41 and 42:
–        Class 16: ‘Printed matter, newspapers and periodicals, books; book ends, book sleeves; notebooks, diaries, address books, file covers and folders, ring binders, student planners, albums, collector’s albums; books’;
–        Class 37: ‘Electric installation, installation of sound and image production and reproduction systems’;
–        Class 41: ‘Education and instruction, providing of training; entertainment; arranging and conducting of events and competitions, in particular for commercial, advertising, cultural, entertainment and sporting purposes, including on the Internet and other electronic media; arranging and conducting of exhibitions for cultural, entertainment and sporting purposes, including on the Internet and other electronic media; arranging of competitions for education or entertainment; organisation, arranging and conducting of colloquiums, conferences, congresses; organisation of exhibitions for cultural or educational purposes’;
–        Class 42: ‘Computer programming’.
8        On 8 November 2011, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the abovementioned decision of the Opposition Division in so far as it partially upheld the opposition.
9        By decision of 8 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision in so far as it had rejected the registration of the mark applied for in relation to the services in Class 41 corresponding to the following description: ‘Arranging and conducting of events and competitions, in particular for commercial, advertising, cultural, entertainment and sporting purposes, including on the Internet and other electronic media; arranging and conducting of exhibitions for cultural, entertainment and sporting purposes, including on the Internet and other electronic media; arranging of competitions for education or entertainment; organisation, arranging and conducting of colloquiums, conferences, congresses; organisation of exhibitions for cultural or educational purposes.’ The Board of Appeal confirmed the Opposition Division’s decision as to the remainder.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in so far as it refused registration of its mark in respect of the goods and services in Classes 9, 16, 25, 28, 35, 37, 38, 41 to 43 and 45;
–        in the alternative, annul the contested decision in so far as it refused registration of its mark in respect of the goods and services ‘arranging and conducting of congresses, conferences, seminars and workshops, trade fairs and exhibitions for commercial and advertising purposes, including on the Internet and other electronic media; organisation of participation in exhibitions; sales promotion and brokering of trade, service and business contacts and commercial transactions for consumer goods and industrial products on the Internet and other electronic media, including by means of a virtual trade fair; providing and rental of floor space and exhibition stands, including associated equipment (included in this class); advertising for exhibitors; decoration of exhibition stands and platforms’ in Class 35;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action for annulment;
–        order the applicant to pay the costs.
12      The intervener contends that the Court should:
–        dismiss the action for annulment;
–        order the applicant to pay the costs.
Law
13      The applicant relies on two pleas in law in support of the action. The first plea alleges infringement of Article 76 of Regulation No 207/2009. The second plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009.
14      The opposition was based on two earlier marks. However, as is apparent from paragraph 65 of the contested decision, both the Board of Appeal and the Opposition Division examined the opposition as regards only one of those two marks, namely the earlier mark OUTDOOR PRO. The Court’s review of the legality of the contested decision can therefore relate only to the examination of the opposition which the Board of Appeal carried out in the contested decision on the basis of that mark. The applicant’s arguments relating to the opponent’s other earlier mark must be rejected as ineffective.
15      Furthermore, in so far as the applicant requests the annulment of the contested decision because it refused registration of its mark in respect of the services in Classes 43 and 45, it must be stated that there was no such refusal in that decision. The Opposition Division’s decision rejected the opposition in respect of the services in those classes. The applicant’s appeal against that decision did not relate to the services in Classes 43 and 45 and the contested decision did not relate to them. Consequently, the applicant’s claim seeking the annulment of the contested decision in so far as it refused registration of its mark in respect of the services in Classes 43 and 45 must be declared ineffective.
The alleged infringement of Article 76 of Regulation No 207/2009
16      The applicant submits that the Board of Appeal infringed Article 76 of Regulation No 207/2009 because it did not take into account the fact that the term ‘outdoor’ is generally understood in the territory of the European Union by the relevant public, including that section of the relevant public which does not have a good command of English, as a synonym for open-air leisure activities and leisure wear.
17      In support of that claim, the applicant submits, first, that the term ‘outdoor’ is an English word, with the result that a significant section of the public within the European Union is able to understand it, secondly, that the earlier marks are descriptive in relation to goods and services relating to open-air leisure activities and leisure wear for the section of the relevant public which has a command of English and for the section of the relevant public which does not have a command of English, but is interested in open-air leisure activities and leisure wear and visits the applicant’s Out Door trade fair, and, thirdly, that the descriptiveness of the term ‘outdoor’ is shown by the Opposition Division’s decision of 4 December 2007 on opposition No B889933, the view of the Deutsche Patent- und Markenamt (German Patent and Trade Mark Office) in the decision of 5 December 1997, an extract from the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office), registrations, at EUIPO, of trade marks including the word element ‘outdoor’, an extract from the opponent’s statement of grounds of appeal, an extract from the German Wikipedia website and Google search results.
18      According to the applicant, the earlier marks are, for the relevant public, descriptive in relation to the goods and services in Classes 9, 12, 14, 18, 22, 24, 25, 28 and 35 and are therefore devoid of any distinctive character within the meaning of Article 7(1) of Regulation No 207/2009. It maintains that that assessment is not called into question by the addition of the syllable ‘pro’, because first or last syllables or words give rise to particular attentiveness on the part of the consumer and the use of words from dead languages tends to preclude a requirement of availability. The applicant takes the view that the prefix ‘pro’ is also a general term which is at most weakly distinctive. Lastly, it submits that the combination of the terms ‘pro’ and ‘outdoor’ does not confer any distinctive character on the signs.
19      EUIPO and the intervener dispute those claims.
20      The applicant is thus alleging that the Board of Appeal did not sufficiently examine the fact that the term ‘outdoor’ is generally understood in the European Union as a synonym for open-air leisure activities and leisure wear. It takes the view that the Board of Appeal did not therefore take into account the descriptiveness of the earlier mark, which precludes registration of that mark.
21      Having regard to that claim, it must be pointed out that it is apparent from Articles 41 and 42 of Regulation No 207/2009 that, in the context of opposition proceedings, there is no need to examine the validity of the registration of the earlier mark.
22      In particular, there is no need to examine the absolute grounds for refusal set out in Article 7 of that regulation in opposition proceedings. Pursuant to Article 41(1) of Regulation No 207/2009, only the relative grounds for refusal set out in Article 8 of that regulation can constitute the basis for an opposition. Those are the terms on which EUIPO is required to give a decision on the opposition under Article 42(5) of Regulation No 207/2009. It follows that Article 7(1) of Regulation No 207/2009 is not one of the provisions which is to be used for assessing the lawfulness of the contested decision. An alleged infringement of Article 7(1) of that regulation must be rejected as ineffective in proceedings under Article 8 of that regulation (see judgments of 4 July 2014, Advance Magazine Publishers v OHIM — Montres Tudor (GLAMOUR), T‑1/13, not published, EU:T:2014:615, paragraph 16 and the case-law cited, and of 11 September 2014, El Corte Inglés v OHIM — Baumarkt Praktiker Deutschland (PRO OUTDOOR), T‑127/13, not published, EU:T:2014:767, paragraph 66 and the case-law cited).
23      The fact that Article 76(1) of Regulation No 207/2009 provides that, in proceedings before it, EUIPO is to examine the facts of its own motion, but that, in proceedings relating to relative grounds for refusal of registration, EUIPO is be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought, does not call into question the assessment set out in paragraph 22 above.
24      Consequently, it is necessary to reject the applicant’s claim that EUIPO infringed Article 76 of Regulation No 207/2009 by not taking into consideration the descriptiveness of the earlier mark in relation to the goods and services in Classes 9, 12, 14, 18, 22, 24, 25, 28 and 35 and thus its lack of distinctive character for the purposes of Article 7(1) of Regulation No 207/2009.
25      Furthermore, the applicant errs in claiming that the Board of Appeal did not examine the question whether and to what extent the term ‘outdoor’ is generally understood in the territory of the European Union. It is apparent from paragraph 69 of the contested decision that the Board of Appeal took the view that the elements ‘outdoor’ and ‘out door’ in the marks at issue would be understood as meaning ‘taking place, existing or intended for use in the open air’ by the English-speaking part of the public. Furthermore, in paragraph 72 of the contested decision, the Board of Appeal found that the word ‘outdoor’ did not, according to the case-law, have a meaning for the non-English-speaking part of the relevant public and that it was therefore distinctive for at least that part of the public. Lastly, the Board of Appeal rejected, as not being sufficiently conclusive, the decisions of the Opposition Division, the Deutsche Patent- und Markenamt (German Patent and Trade Mark Office) and the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office) provided by the applicant and the references to Italian and German dictionaries provided by the applicant in support of its argument that the earlier mark is not sufficiently distinctive (see paragraphs 70 to 74 of the contested decision).
26      The Board of Appeal thus examined the various items of evidence which the applicant had put forward in support of its view that the earlier mark lacks distinctiveness. The fact that the applicant disagrees with the conclusions which the Board of Appeal draws from the examination of that evidence does not mean that the Board of Appeal failed to consider sufficiently that evidence, but constitutes a challenge to the merits of the Board of Appeal’s examination. That challenge is not the subject of the present plea.
27      Furthermore, inasmuch as the applicant claims that the Board of Appeal disregarded the documents showing that the Out Door trade fair is an EU-wide trade fair in the outdoor sector at which the use of the term ‘outdoor’ has become generally accepted, it must be pointed out that, in paragraphs 92 and 93 of the contested decision, the Board of Appeal stated that, in its view, the reputation of the mark applied for is not one of the points of law that must be examined for Regulation No 207/2009 to apply in the light of the facts, evidence and arguments provided by the parties. Accordingly, in spite of the fact that there is no express reference to those documents in the contested decision, the applicant errs in claiming that the Board of Appeal did not take those documents into account.
28      Consequently, on the grounds set out above, the first plea must be rejected as unfounded.
The alleged infringement of Article 8(1)(b) of Regulation No 207/2009
Introduction
29      The applicant submits that, even if the Court were to grant the trade mark relied on in support of the opposition protection under trade mark law, the at most weak distinctive character of that mark, the visual differences between the marks at issue and the coexistence of similar marks would preclude any likelihood of confusion.
30      In that regard, it must be borne in mind that 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘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.
31      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to 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).
32      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 (judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T 316/07, EU:T:2009:14, paragraph 42, and of 11 September 2014, PRO OUTDOOR, T‑127/13, not published, EU:T:2014:767, paragraph 37).
33      It is in the light of those principles that the applicant’s arguments alleging that there is no likelihood of confusion between the signs at issue must be examined. Before beginning that examination, the following must be stated as regards the relevant public and the goods and services at issue.
The goods and services at issue
34      The Board of Appeal found in paragraphs 47 to 61 of the contested decision that the goods and services at issue were, in part, identical and, in part, similar. That assessment, which is not disputed by the parties, must be upheld. Having regard to the goods and services at issue, the Board of Appeal did not err in finding that they were, in part, identical and, in part, similar.
The relevant public
35      In the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, account should be taken of the average consumer of the category of goods or services concerned. That consumer is, in principle, reasonably well informed and reasonably observant and circumspect. His level of attention is, however, likely to vary according to the category of goods or services in question (see, to that effect, judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
36      In the present case, the earlier mark which was taken into consideration for the purposes of assessing the likelihood of confusion is an EU trade mark. Consequently, the relevant public consists of consumers in the European Union.
37      Furthermore, the Board of Appeal stated, in paragraphs 37 to 46 of the contested decision, that, in respect of the goods and services in Classes 9, 38 and 42, the level of attention of the relevant consumer varied from average to higher than average depending on the cost and specific nature of those goods and services. With regard to the goods and services in Classes 16, 25, 28 and 41, the Board of Appeal found that the level of attention of the relevant public was average or normal. With regard to the services in Class 35, the Board of Appeal found that the level of attention was normal in respect of those services which are aimed at the general public and higher in respect of those services which are aimed at business consumers. Lastly, with regard to the services in Class 37, which are aimed at specialist business consumers, the Board of Appeal found that the level of attention of those consumers was higher.
38      That assessment, which has not been disputed by the parties, must, in the light of the nature of the goods and services at issue, be upheld.
The comparison of the signs
39      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).
40      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, 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).
41      As regards the visual comparison, the Board of Appeal found that the signs at issue were similar. In support of that assessment, the Board of Appeal stated that those signs have the group of letters ‘outdoor’ in common, that consumers generally pay greater attention to the beginning of a mark than to the end and that the element ‘pro’ was considered to be weak for part of the relevant public (see paragraphs 80 and 81 of the contested decision).
42      The applicant disputes that assessment, claiming that, visually, the signs under comparison create clearly different overall impressions. According to the applicant, the mark applied for is in colour and the words ‘out’ and ‘door’ are arranged one staggered below the other and are written in a typeface which contains figurative elements. Furthermore, the applicant observes that the mark applied for contains only two separate words, ‘Out’ and ‘Door’, in which only the letters ‘O’ and ‘D’ are in upper case. The applicant states that the earlier mark, by contrast, contains the word elements ‘outdoor’ and ‘pro’ and has no distinctiveness from a graphic standpoint because it is a word mark. In the applicant’s view there is therefore no likelihood of visual confusion.
43      Those arguments do not make it possible to call the Board of Appeal’s assessment into question. It is true that the signs at issue differ for the reasons put forward by the applicant. However, the relevant public will perceive them as being visually similar on account of the fact that they both contain the group of letters ‘outdoor’.
44      As regards the phonetic comparison, the Board of Appeal found that the signs at issue were highly similar since the pronunciation of the signs coincided in the sound of the group of letters ‘outdoor’ and the additional element ‘pro’ in the earlier mark was considered to be weak for part of the relevant public, with the result that its influence could not be overestimated (see paragraph 82 of the contested decision). The applicant does not dispute that assessment and it must be held to be correct. The pronunciation of those marks will be very similar on account of the group of letters ‘outdoor’, which they have in common (see, by analogy, judgment of 11 September 2014, PRO OUTDOOR, T‑127/13, not published, EU:T:2014:767, paragraph 54). The group of letters ‘pro’ in the earlier mark does not affect that assessment.
45      As regards the conceptual comparison, the Board of Appeal found that, for the English-speaking public, the signs at issue were similar to the extent that they both included a semantic content relating to the concept ‘Outdoor’, which means ‘taking place, existing or intended for use in the open air’ in English. The Board of Appeal also found that part of the relevant English-speaking and non-English-speaking public would perceive the term ‘pro’ in the earlier mark as an abbreviation of the adjective ‘professional’ and that that term would be perceived as laudatory. However, with regard to the part of the relevant public which does not understand the meaning of the terms of which the signs at issue consist, the Board of Appeal took the view that those signs were meaningless and, consequently, that the conceptual comparison did not influence the assessment of the similarity between the signs at issue (see paragraphs 75 to 77 and 83 of the contested decision).
46      The applicant takes the view that the particularly distinctive figurative elements of the mark applied for also reinforce the descriptiveness of the word element ‘out door’ for the observer by emphasising the semantic content of the sign — ‘in the open air’.It maintains that the upper case letter ‘O’ in a red-gold colour thus evokes a stylised sun and the upper case letter ‘D’ accentuated by the colour yellow evokes the moon. The applicant submits that for the sections of the public which do not have any basic knowledge of English, there will therefore also be no conceptual similarities. In addition, the applicant takes the view that the designation ‘outdoor’ is used as a general term and is assumed to be well known. The applicant also states that it is a company which belongs to the municipality of Friedrichshafen and organises trade fairs. According to the applicant, the chairman of the company’s supervisory board is the mayor of Friedrichshafen. The applicant states that its sole purpose as a business is the organisation of trade fairs and that it has organised the Out Door trade fair, which has gained acceptance throughout the European Union, for the eighteenth time.
47      Contrary to what the applicant claims, at least part of the relevant public, will not associate the red colour of the capital letter ‘O’ with the sun and the yellow colour of the capital letter ‘D’ with the moon. Furthermore, as is stated in the contested decision, the term ‘outdoor’ will be understood by the part of the relevant public with a command of English, with the result that, for that part of the relevant public, the marks at issue will be perceived as conceptually similar (see, by analogy, judgment of 11 September 2014, PRO OUTDOOR, T‑127/13, not published, EU:T:2014:767, paragraphs 59 and 63). Whether that same public perceives the term ‘pro’ in the earlier mark as the abbreviation of the term ‘professional’ or understands it as ‘for’ does not affect the existence of a conceptual similarity between the signs since the addition of the term ‘pro’ does not alter the meaning of the term ‘outdoor’ and that laudatory term is ancillary without being negligible. Furthermore, part of the relevant public will not understand either the term ‘pro’ or the term ‘outdoor’, with the result that, for that part of the relevant public, there will be no conceptual similarity between the signs at issue. The fact that the applicant has been privatised by the municipality of Friedrichshafen and that it is a company which organises trade fairs, including the trade fair Out Door, is not sufficient to show that the whole of the relevant public will understand the term ‘outdoor’. Furthermore and in any event, even if that public were to understand the meaning of the term ‘outdoor’, that would confirm that there is a conceptual similarity between the marks at issue.
The existence of a likelihood of confusion
48      As has been stated in paragraph 31 above, 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. 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). Furthermore, 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 judgment of 23 September 2009, Viñedos y Bodegas Príncipe Alfonso de Hohenlohe v OHIM — Byass (ALFONSO), T‑291/07, not published, EU:T:2009:352, paragraph 26 and the case-law cited).
49      In the contested decision, the Board of Appeal found, in essence, that, with regard to the goods and services in Classes 9, 16, 25, 28, 35, 37, 38 and 42 as referred to in paragraph 7 above and the ‘education and instruction, providing of training; animal training; arranging and conducting of seminars and workshops, including on the Internet and other electronic media; entertainment’ in Class 41 covered by the mark applied for, which goods and services it had found to be identical or similar to the goods and services covered by the earlier mark, there was a likelihood of confusion with the earlier mark given, inter alia, the visual and phonetic similarities between the signs and the fact that the earlier mark had a normal degree of distinctiveness at least for part of the public.
50      The applicant disputes the existence of a likelihood of confusion in the light of the weak distinctive character of the earlier mark, the coexistence of similar trade marks, the priority of the protection of its mark and the non-use of the earlier mark.
51      As regards distinctive character, the applicant takes the view that, as the earlier mark is descriptive in relation to the goods and services in the classes referred to in the application for registration, it is at most extremely weakly distinctive and consequently the scope of its protection is rather limited. It submits that the distinctiveness of the earlier mark is, furthermore, weakened by the large number of identical or similar third-party trade marks which have been registered in respect of the same or related categories of goods and are used on the market.
52      In that regard, it must be borne in mind that the term ‘outdoor’ in the earlier mark will not be understood by the non-English-speaking part of the relevant public (see paragraph 47 above). Furthermore, of that part of the public, a part will not perceive the term ‘pro’ as an abbreviation of the term ‘professional’ or as meaning ‘for’. For that part of the relevant public, the earlier mark will not have any meaning with regard to the goods and services covered. Consequently, the Board of Appeal was right in finding in paragraphs 76 and 77 of the contested decision that the earlier mark had to be deemed to be distinctive to a normal degree, at least for the public that does not understand the word ‘outdoor’, despite the presence of the element ‘pro’.
53      That assessment is not called into question by the alleged large number of identical or similar third-party trade marks which have been registered in respect of the same or related categories of goods and services and which are used on the market. The list of similar marks provided by the applicant does not show that those marks are actually used. Furthermore, the fact that those marks also contain the term ‘outdoor’ is not sufficient for it to be held that that term has no distinctive character. Lastly, since that term on its own and in conjunction with the term ‘pro’ has no meaning with regard to the goods and services at issue for a part of the relevant public, the Board of Appeal did not err in finding that the earlier mark was distinctive to a normal degree.
54      As regards the coexistence of the marks at issue, the applicant submits that there is a coexistence of trade marks which affects the assessment of the likelihood of confusion. It relies in that regard on the trade mark register, in which identical or similar third-party trade marks in respect of the same or related categories of goods, trade marks which are used on the market, have been entered. It maintains that, on account of the coexistence of similar trade marks, the public will pay attention to minimal differences and that, in the present case, the consequence of this is that the visual differences between the marks at issue set out in paragraph 42 above will be sufficient to create a clearly different overall impression for the relevant public.
55      Those arguments must be rejected. In opposition proceedings brought by the proprietor of an earlier mark on the basis of Article 8(1)(b) of Regulation No 207/2009, it is true that the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical. In that regard, the mere production by the trade mark applicant of a list containing its earlier marks which it claims coexisted on the market with the opponent’s earlier mark is insufficient to show that the likelihood of confusion between the marks at issue is reduced, still less eliminated (see judgments of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraphs 86 and 87 and the case-law cited, and of 5 October 2012, Lancôme v OHIM — Focus Magazin Verlag (COLOR FOCUS), T‑204/10, not published, EU:T:2012:523, paragraphs 46 and 47 and the case-law cited; judgment of 1 December 2016, Universidad Internacional de la Rioja v EUIPO — Universidad de la Rioja (UNIVERSIDAD INTERNACIONAL DE LA RIOJA uniR), T‑561/15, not published, EU:T:2016:698, paragraph 87).
56      First, the applicant merely provided a list of trade marks, which is not sufficient to show that that coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks on which it relies and the earlier mark on which the opposition is based. Secondly, the earlier marks reproduced on that list are not identical to the marks at issue, with the result that the applicant cannot, on that basis, claim that the marks coexist.
57      As regards the priority of the mark applied for, the applicant submits that, if the General Court were to hold that the term ‘outdoor’ as a word sign has even a weak distinctive character, it could claim priority over the opponent’s trade marks because it had the sign Out Door protected as an EU trade mark for Classes 12, 16, 20, 22, 25 and 35 on 19 April 1999, in particular in respect of trade fairs (application number 000870840). According to the applicant, that is particularly so because its mark has an above-average level of distinctiveness owing to the high degree of renown that its trade fair enjoys within the European Union.
58      In that regard, it must be borne in mind that the rules regarding the grant of a right of priority are set out in Articles 29 to 31 of Regulation No 207/2009. That right confers upon the trade mark applicant for a limited period of time immunity from the effects of any other applications for registration of the same trade mark that may be made by third parties during the priority period (see, to that effect, judgment of 15 November 2001, Signal Communications v OHIM (TELEYE), T‑128/99, EU:T:2001:266, paragraphs 40 and 43). A claim of priority presupposes that, within the period of priority, an application for the same mark covering goods or services which are identical to or contained within those concerned by the first application is filed (judgment of 16 May 2013, Verus v OHIM — Performance Industries Manufacturing (VORTEX), T‑104/12, not published, EU:T:2013:256, paragraph 40).
59      In the present case, the applicant bases it claim of priority on the earlier figurative mark reproduced below:
60      That mark is not the same as the mark applied for, with the result that one of the conditions for claiming priority is not satisfied and that that claim must be rejected.
61      Furthermore, the applicant’s claim that its earlier mark, which is reproduced in paragraph 59 above, has an above-average level of distinctiveness on account of the renown of its trade fair within the European Union, even if it were proved, would not confer priority on that mark since the distinctiveness of the applicant’s earlier mark does not constitute a criterion for conferring priority on that mark.
62      As regards the non-use of the earlier mark, the applicant raises the plea of non-use referred to in Article 42(2) of Regulation No 207/2009 and requests that the opponent provide proof of use of its earlier mark because that mark has not, in the applicant’s view, been used by the opponent in respect of trade fairs since it was registered on 22 March 2010. The applicant states that it already pointed that out in the course of the administrative proceedings and refers in that regard to paragraph 48 of the contested decision.
63      Article 42(2) of Regulation No 207/2009 provides that, if the applicant so requests, the proprietor of an earlier trade mark who has given notice of opposition must furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier trade mark has at that date been registered for not less than five years.
64      In the present case, the application for the earlier mark was filed on 14 December 2005 and the earlier mark was registered on 22 March 2010. On 9 May 2008, the date of filing of the applicant’s EU trade mark application, the earlier mark had not been registered for at least five years. Consequently, Article 42(2) of Regulation No 207/2009 does not apply and the applicant’s request must be rejected.
65      In view of the relevant public, the partially identical and partially similar nature of the goods and services at issue, the absence of any dominant elements in the marks at issue, the visual and phonetic similarities between the signs at issue on account of the element ‘outdoor’, which those signs have in common, the lack of any meaning of the signs at issue for part of the relevant public and the normal degree of distinctiveness of the earlier mark, the Board of Appeal was right in finding that it was apparent from an overall assessment of the marks at issue that there was a risk that part of the relevant public might believe that the goods and services in question come from the same undertaking or from economically linked undertakings. Consequently, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.
66      For all of the foregoing reasons, the applicant’s first head of claim must be rejected. As the second head of claim is contained in the first head of claim, it must also be rejected for those reasons and the action must be dismissed in its entirety.
Costs
67      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 Messe Friedrichshafen GmbH to pay the costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 5 May 2017.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.