JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
10 February 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark PANTHÉ – Earlier national word and figurative marks PANTHER and earlier EU figurative mark P PANTHER – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Proof of genuine use of the earlier mark)
In Case T‑117/20,
El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
MKR Design Srl, established in Milan (Italy), represented by G. Dragotti, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 December 2019 (Case R 378/2019-5), relating to opposition proceedings between El Corte Inglés and MKR Design,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and K. Kowalik-Bańczyk, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 February 2020,
having regard to the response of EUIPO lodged at the Court Registry on 2 July 2020,
having regard to the response of the intervener lodged at the Court Registry on 9 July 2020,
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 14 February 2017, the intervener, MKR Design Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Clothing; Headgear’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2017/067 of 6 April 2017.
5        On 15 June 2017, the applicant, El Corte Inglés, SA, 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        That opposition was based on the following earlier marks:
–        the Spanish word mark PANTHER, which was registered on 21 February 1956 under the number 300031 in respect of the goods ‘tights, socks, leggings’ in Class 25 and has now been renewed until 23 December 2025;
–        the Spanish figurative mark which was registered on 5 October 1978 under the number 828854 in respect of the goods ‘stockings, socks, shirts, knitted clothing and clothing in general for men, women and children’ in Class 25 and is reproduced below:
–        the EU figurative mark which was registered on 20 August 2013 under the number 4762647 in respect of, inter alia, the goods ‘knitwear and polo shirts’ in Class 25 and is reproduced below:
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        By letter dated 15 January 2018, the intervener asked EUIPO to request that the applicant furnish proof of use of the earlier Spanish word and figurative marks, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001). On 5 February 2018, EUIPO requested that the applicant furnish that proof. On 10 April 2018, the applicant complied with that request.
9        By decision of 20 December 2018, the Opposition Division of EUIPO rejected the opposition in its entirety, finding, in the first place, that there was no likelihood of confusion between the earlier figurative marks and the mark applied for and, in the second place, that genuine use of the earlier Spanish word mark in connection with the goods on which the opposition was based had not been sufficiently proved.
10      On 13 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By decision of 5 December 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.  In the first place, as regards the two earlier figurative marks, the Board of Appeal confirmed the Opposition Division’s assessment by finding, in essence, that, on account of the visual and conceptual differences between the signs at issue, there was no likelihood of confusion, without it being necessary to assess the evidence of genuine use of the earlier Spanish figurative mark. In the second place, as regards the earlier Spanish word mark PANTHER, the Board of Appeal found that the evidence which the applicant had submitted in order to prove genuine use of that mark in connection with the goods ‘tights, socks, leggings’ in Class 25, on which the opposition was based, was insufficient.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision in so far as it allowed the application for registration of the mark applied for in respect of the goods in Class 25 at issue;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
14      It must be stated at the outset that, given the date on which the application for registration at issue was filed, namely 14 February 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
15      Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by EUIPO and the intervener in their respective responses must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
16      In support of its action, the applicant puts forward, in essence, two pleas in law, the first of which alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second of which alleges infringement of Article 42(2) and (3) of Regulation No 207/2009.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
17      By the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant submits that, in the light of the overall similarity of the signs at issue and the identity or high degree of similarity of the goods at issue, the Board of Appeal erred in finding that there was no likelihood of confusion between the two earlier figurative marks referred to in the second and third indents of paragraph 6 above and the mark applied for.
18      EUIPO and the intervener dispute that line of argument.
19      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, that 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.
20      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).
21      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).
22      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the two earlier figurative marks referred to in paragraph 6 above and the mark applied for.
23      In the present case, it must be stated, as regards the relevant public, that, since the figurative marks on which the opposition is based are an EU trade mark and a Spanish trade mark, the territories with regard to which the likelihood of confusion must be assessed are, as the Board of Appeal found, a finding which has not been disputed by the parties, that of the European Union and that of Spain respectively. Furthermore, the Board of Appeal stated, in paragraph 24 of the contested decision, that the relevant public consisted of the general public and of professionals in the clothing sector and that its level of attention varied from average to high. That definition of the relevant public is likewise not disputed by the parties.
24      It must also be stated, as regards the comparison of the goods at issue, that, in paragraph 19 of the contested decision, the Board of Appeal found that the ‘clothing’ covered by the mark applied for was identical to the ‘knitwear and polo shirts’ covered by the earlier EU figurative mark and to the ‘clothing in general for men, women and children’ covered by the earlier Spanish figurative mark. Furthermore, it is apparent from paragraph 20 of the contested decision that the goods ‘headgear’ covered by the mark applied for are similar to a high degree to the items of clothing covered by the earlier figurative marks, since they have the same purpose, the same end users, the same distribution channels and are often manufactured by the same undertakings. The parties do not dispute that finding.
The comparison of the signs
25      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).
26      In the present case, the Board of Appeal found that there was a high degree of phonetic similarity between the signs at issue for those consumers who were able to read the word ‘panther’ in the earlier figurative marks, whereas it found that those signs were not visually and conceptually similar.
27      The applicant disputes those findings on the part of the Board of Appeal.
–       The visual comparison
28      As regards the earlier EU trade mark, the Board of Appeal found that the upper-case letter ‘P’ and the figurative element representing a black feline constituted the dominant elements of that mark, whereas the word placed behind that element could hardly be read, especially not by persons who were not familiar with the English term ‘panther’. As regards the earlier Spanish figurative mark, the Board of Appeal pointed out that it included the additional word element ‘El Corte Inglés S.A. Madrid’, which could not be completely disregarded. After finding, lastly, that the mark applied for consisted of the word ‘panthé’ placed inside a frame device, the Board of Appeal concluded that the signs were visually dissimilar overall.
29      The applicant disputes that assessment. It submits that the upper-case letter ‘P’ is not a dominant element of the earlier EU trade mark because consumers will not pay much attention to a single letter, just as they will not perceive it to be the name of the trade mark. It argues that both of the earlier marks are dominated rather, in addition to the figurative element representing a black feline, by the word ‘panther’ placed behind that figurative element. Furthermore, it takes the view that that word can be read by consumers in both of the earlier marks, not only because the incomplete letters can immediately be deciphered, but also because the representation of a black feline makes it easier for consumers to identify the word placed behind it. Furthermore, the applicant states that the earlier figurative marks are well known in Spain, with the result that all Spanish consumers will know that the representation of the black feline designates the word ‘panther’ and that this is the name of those marks.
30      Next, the applicant submits that the word ‘panther’ is a common word and that it is pronounced very similarly in most EU countries.
31      Lastly, the applicant argues that the contested decision conflicts with the decision of the same Board of Appeal of EUIPO of 27 January 2020 (Cases R 1443/2019-5 and R 1449/2019-5,  El Corte Inglés v Slazengers, ‘the El Corte Inglés v Slazengers decision’), although those cases are similar to the present case, because they also related to an opposition based on, inter alia, the same EU figurative mark. In particular, the applicant submits that, in that decision, the Board of Appeal concluded that it was possible for consumers to identify the word ‘panther’ in that mark and that, consequently, there was a visual similarity between that mark and the word mark PANTHER which was at issue in the cases which gave rise to that decision.
32      EUIPO and the intervener dispute those arguments.
33      It must be pointed out that, even if, as the applicant submits, the general public could without great difficulty decipher the word ‘panther’ placed, in both of the earlier figurative marks, behind the representation of a black feline, the fact remains that there are a certain number of significant visual differences between the signs at issue.
34      In the first place, as regards the purely figurative elements, it must be pointed out that the representation of a feline, which is very important visually in the earlier figurative marks, is not present in the mark applied for. Likewise, although the rectangle has a purely decorative function and is therefore weakly distinctive, the fact remains that it is of some importance visually in the mark applied for and that it is not present in the earlier figurative marks.
35      In the second place, as regards the word elements in the signs at issue, it must be noted that there are also marked differences between those elements. Accordingly, it must be stated that the representation of a black feline covers a significant part of the word element ‘panther’ in both of the earlier figurative marks and that that element ‘panther’ and the word element ‘panthé’ in the mark applied for display differences as regards their fonts and their endings, namely, on the one hand, the sequence of letters ‘e’ and ‘r’, and, on the other hand, the letter ‘é’. Likewise, the earlier EU figurative mark and the earlier Spanish figurative mark contain additional word elements which are not present in the mark applied for, namely, the upper-case letter ‘P’ and the word element ‘El Corte Inglés S.A. Madrid’ respectively.
36      On account of all of those elements considered as a whole, the overall visual impression created by the earlier figurative marks clearly differs from that created by the mark applied for. It follows that the Board of Appeal did not err in finding, in paragraph 28 of the contested decision, that the signs at issue were visually dissimilar.
37      As regards the alleged conflict between the contested decision and the El Corte Inglés v Slazengers decision, which was given after the contested decision, it must be borne in mind that, according to settled case-law, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on that of EUIPO’s decision-making practice (see judgment of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 35 and the case-law cited).
38      In any event, it must be stated that, although, in the cases which gave rise to the El Corte Inglés v Slazengers decision, the opposition was based on the same EU figurative mark as in the present case and on an earlier Spanish figurative mark which is similar to that mark, the difference between the mark applied for in the cases which gave rise to that decision and the mark applied for which is at issue here is very marked, with the result that the comparison of the signs carried out in the context of that decision cannot be relevant in the context of the present case.
–       The phonetic comparison
39      From a phonetic standpoint, the Board of Appeal found that there was a high degree of similarity between the earlier figurative marks and the mark applied for for those consumers who were able to read the word ‘panther’ in the earlier marks. Furthermore, the Board of Appeal pointed out that both of the earlier figurative marks included additional elements, namely the dominant upper-case letter ‘P’ as regards the earlier EU trade mark and the word element ‘El Corte Inglés S.A. Madrid’ as regards the earlier Spanish figurative mark.
40      In the first place, the applicant submits that, since, in both of the earlier figurative marks, there is a figurative element representing a panther, it is reasonable to assume that consumers will perceive the word ‘panther’ placed behind that element and that, since the word identifying the animal in question is written and pronounced very similarly in most EU countries, the majority of consumers understand that word. It argues that, consequently, even those consumers who do not manage to read that word will have in their minds the concept of a panther and will pronounce those marks by using that word.
41      In the second place, the applicant submits that the Board of Appeal erred in finding that the upper-case letter ‘P’ in the earlier EU trade mark and the word element ‘El Corte Inglés S.A. Madrid’ in the earlier Spanish figurative mark were relevant with regard to the phonetic comparison. It argues that the upper-case letter ‘P’ will not be pronounced by consumers because it is the abbreviation of the word ‘panther’, as the same Board of Appeal pointed out in the El Corte Inglés v Slazengers decision. As regards the word element ‘El Corte Inglés S.A. Madrid’, the applicant claims that it is in such small letters that consumers will not pronounce it.
42      In the third place, the applicant submits that neither the presence of the letter ‘r’ at the end of the word element ‘panther’ in the earlier figurative marks nor the accent above the letter ‘é’ in the mark applied for introduces a significant phonetic difference, since the pronunciation of the signs at issue is very similar.
43      EUIPO and the intervener dispute those arguments.
44      In that regard, it must be pointed out that the applicant admits that the letter ‘r’ in the earlier figurative marks and the accent on the letter ‘é’ in the mark applied for are capable of creating a phonetic difference between the signs at issue, although that difference is not, in its submission, significant. It follows that the applicant’s line of argument is not capable of calling into question the Board of Appeal’s assessment that there is a high degree of phonetic similarity between those marks.
45      As regards the Board of Appeal’s assessment that that high degree of similarity exists only for the part of the public which is able to identify the word ‘panther’ placed behind the representation of a black feline in the earlier figurative marks, it must be stated that the applicant’s arguments seeking a declaration that that finding is valid with regard to the whole of the relevant public are not capable of calling the merits of the contested decision into question. As will become clear from paragraphs 58 to 65 below, the existence of a likelihood of confusion can also be ruled out with regard to the part of the relevant public which recognises the word ‘panther’ in the earlier figurative marks and for which those marks and the mark applied for are phonetically similar to a high degree.
46      Furthermore, contrary to what the applicant seems to imply, the Board of Appeal did not, in its analysis, accord any particular relevance to the upper-case letter ‘P’ in the earlier EU trade mark and to the lower-case letters comprising the word element ‘El Corte Inglés S.A. Madrid’ in the earlier Spanish figurative mark, but correctly confined itself to stating, in paragraph 29 of the contested decision, that those elements could create an additional phonetic difference.
47      It follows that the Board of Appeal was right in finding that there was a high degree of phonetic similarity between the signs at issue for those consumers who were able to identify the word ‘panther’ in the earlier marks.
–       The conceptual comparison
48      From a conceptual standpoint, the Board of Appeal found that the mark applied for was perceived by the relevant public as a fanciful word without any meaning, whereas the earlier figurative marks were immediately associated with the concept of a black feline. It concluded that the signs at issue were conceptually different.
49      The applicant submits, in the first place, that the word ‘panthé’ will be capable of being perceived by consumers as a misspelt word which constitutes a reference to the term ‘panther’, because, when consumers are confronted with words which have no meaning, they tend to associate them with words they know and, in the present case, the term ‘panthé’ will be perceived as referring to the word ‘panther’, which is the closest word in most of the languages of the European Union.
50      In the second place, the applicant claims that the earlier figurative marks will not be associated, as the Board of Appeal asserts, generically with ‘a black feline’, but will be associated rather with a black panther, the concept of which is reinforced by the words placed behind the representation of that animal. The applicant concludes that the earlier figurative marks and the mark applied for are very similar conceptually.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      In that regard, it must be stated that it is not disputed that the term ‘panthé’ in the mark applied for is a fanciful term which has no meaning for the relevant public. Although the applicant claims that, in ‘most EU languages’, the word which is closest to that term is the word ‘panther’, which is contained in the earlier figurative marks, it does not identify the languages to which it is referring. Furthermore, first, it must be pointed out that the word ‘panther’ does not exist in all the languages of the European Union. Secondly, it must be stated, as pointed out by EUIPO, that, in English, Danish and Spanish, the words ‘panther’, ‘panter’ and ‘pantera’ are written and pronounced in a sufficiently different way from the word ‘panthé’ for the relevant public to be precluded from perceiving in that latter word a reference to the concept of panther.
53      Consequently, it must be held that the applicant is not justified in calling into question the Board of Appeal’s assessment that the signs at issue are not conceptually similar.
The global assessment of the likelihood of confusion
54      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).
55      In the present case, in the overall assessment of the likelihood of confusion, the Board of Appeal found that the relevant public would attach more importance to the visual aspect than to the phonetic aspect and that, as a result, although the goods at issue were in part identical and in part similar to a high degree, the phonetic similarity between the signs at issue could not offset the visual and conceptual dissimilarity between those signs.
56      First, the applicant claims that the principle of interdependence, which has been referred to in paragraph 54 above, means, contrary to what the Board of Appeal found, that, with regard to identical goods, as is the case here, a likelihood of confusion exists even if a similarity between the signs at issue is confirmed with regard to only one single relevant aspect. Secondly, it argues that the Board of Appeal erred in finding that the visual aspect was preponderant, because most consumers tend to pronounce the trade marks and not only read them. Furthermore, the applicant submits, as it has claimed with regard to the comparison of the signs at issue, that those signs are, in the present case, not only phonetically similar, but also conceptually and visually similar. Thirdly, the applicant argues that, contrary to what was found in paragraph 38 of the contested decision, the Board of Appeal should have assessed the evidential value of the evidence which it had submitted in order to prove genuine use of the earlier Spanish figurative mark.
57      EUIPO and the intervener dispute the applicant’s arguments.
58      In the first place, in so far as the applicant claims, in essence, that, in the light of the fact that the goods at issue are in part identical and in part similar, the phonetic similarity alone which was found to exist between the signs at issue ought to have led to a finding of a likelihood of confusion, it must be stated that it is true that it is conceivable that the phonetic similarity alone between the signs at issue could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. However, the existence of such a likelihood of confusion must be established as part of a global assessment of the conceptual, visual and phonetic similarities between those signs. In that regard, the assessment of any phonetic similarity is but one of the relevant factors for the purposes of that global assessment (see judgment of 23 October 2015, Calida v OHIM – Quanzhou Green Garments (dadida), T‑597/13, not published, EU:T:2015:804, paragraph 74 and the case-law cited).
59      Consequently, it cannot be inferred from the principle of interdependence referred to in paragraph 54 above that there is necessarily a likelihood of confusion each time that a mere phonetic similarity between two signs is established (see judgment of 23 October 2015, dadida, T‑597/13, not published, EU:T:2015:804, paragraph 75 and the case-law cited).
60      Furthermore, it must be borne in mind that, according to the case-law, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate to examine the objective conditions under which the marks may be present on the market (see judgments of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49 and the case-law cited, and of 16 December 2015, Perfetti Van Melle Benelux v OHIM – Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 103 and the case-law cited). Accordingly, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (see judgment of 16 December 2015, TRIDENT PURE, T‑491/13, not published, EU:T:2015:979, paragraph 103 and the case-law cited).
61      Moreover, it must be borne in mind that, generally in clothes shops customers can either themselves choose the clothes they wish to buy or be assisted by sales staff. Whilst oral communication in respect of the goods and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks designating such goods will generally take place prior to purchase. The visual aspect thus plays a greater role in the global assessment of the likelihood of confusion (judgment of 6 October 2004, NLSPORT, NLJEANS, NLACTIVE and NLCollection, T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50).
62      In the light of the case-law referred to in paragraphs 60 and 61 above, the Board of Appeal’s findings in paragraph 34 of the contested decision as regards the major significance of the visual aspect of the marks at issue in the global assessment of the likelihood of confusion in the present case must be upheld.
63      Lastly, it must be borne in mind that, according to the case-law, conceptual differences may be capable of counteracting visual and phonetic similarities if at least one of the marks at issue has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see, to that effect, judgment of 14 October 2003, Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54). Having regard to that case-law, it must be pointed out that, in the present case, the earlier figurative marks are clearly associated with the concept of a black feline, whereas the applicant has not established that the mark applied for conveys a specific concept that is capable of being perceived by at least part of the relevant public. Consequently, it must be held that the lack of conceptual similarity between the signs at issue is, in the present case, capable of counteracting the phonetic similarity between those signs.
64      In the second place, in so far as the applicant claims that the Board of Appeal should have assessed the evidence submitted in support of genuine use of the earlier Spanish figurative mark, it must be held that, as EUIPO has correctly pointed out, the Board of Appeal did not err in not carrying out that assessment. Since it concluded that there was no likelihood of confusion, any genuine use of the earlier Spanish figurative mark which might have been duly established would not have been capable of altering the Board of Appeal’s decision.
65      It follows from all of the foregoing that the Board of Appeal did not err in finding that there was no likelihood of confusion between the earlier figurative marks and the mark applied for. The present plea must therefore be rejected.
The second plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009
66      By the second plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, the applicant disputes the Board of Appeal’s assessment that the evidence which the applicant had submitted in order to prove genuine use of the earlier Spanish word mark PANTHER in connection with the goods ‘tights, socks, leggings’, which were concerned by the opposition in so far as it was based on that mark, was insufficient. It argues that the declaration signed by its legal representative together with the other evidence submitted in the course of the opposition proceedings proves genuine use of that mark in connection with those goods.
67      It should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and to Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions referred to above, appear in the application itself (see judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 20 and the case-law cited).
68      Accordingly, it is not for the General Court to seek and identify, in the annexes and the written pleadings, or even in EUIPO’s administrative file, the pleas on which it may consider the action to be based (judgment of 13 May 2020, Peek & Cloppenburg v EUIPO – Peek & Cloppenburg (Peek), T‑534/18, not published, EU:T:2020:188, paragraph 28).
69      It is not, in addition, for the Court to assume the role of the parties by seeking to identify the relevant material in the documents to which they refer (judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19).
70      In the present case, as EUIPO correctly points out, it is clear from the application that the applicant confines itself to referring to the evidence that was submitted in the context of the administrative proceedings, without stating the reasons why, in its view, the Board of Appeal erred in finding that that evidence was insufficient to prove genuine use of the earlier Spanish word mark PANTHER in connection with the goods concerned by the opposition in so far as that opposition was based on that mark. It follows that the present plea must be rejected as inadmissible.
71      It is clear from all of the foregoing considerations that the action must be dismissed in its entirety.
Costs
72      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
73      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 (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders El Corte Inglés, SA, to pay the costs.
Kornezov
Buttigieg
Kowalik-Bańczyk
Delivered in open court in Luxembourg on 10 February 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.