JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 December 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark SANRIO CHARACTERS – Earlier EU word mark CARACTÈRE – 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)
In Case T‑43/22,
Sanrio Co. Ltd, established in Tokyo (Japan), represented by V. Schmitz-Fohrmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Miroglio Fashion Srl, established in Alba (Italy),
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 26 October 2022,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Sanrio Co. Ltd, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 November 2021 (Case R 2460/2020-2) (‘the contested decision’).
Background to the dispute
2        On 5 February 2014, the applicant filed an application for registration of the word sign SANRIO CHARACTERS as an EU trade mark with 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)).
3        The mark applied for covered goods and services in, inter alia, Classes 9, 14, 18, 24, 25 and 35 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.
4        On 30 July 2014, Miroglio Fashion Srl filed a notice of opposition to registration of the mark applied for in respect of all the goods and services in Classes 9, 14, 18, 24, 25 and 35.
5        The opposition was based on the earlier EU word mark CARACTÈRE, registered on 6 April 2009 under number 7061922 which covered, inter alia, goods in Classes 18 and 25 corresponding, for each of those classes, to the following description:
–        Class 18: ‘Purses’;
–        Class 25: ‘Clothing’.
6        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 (EU) 2017/1001).
7        Following the applicant’s request to that effect, EUIPO invited Miroglio Fashion to furnish proof of genuine use of the earlier mark relied on in support of the opposition. Miroglio Fashion complied with that request within the prescribed period.
8        On 13 November 2020, the Opposition Division upheld the opposition in part, refusing registration of the mark applied for in respect of some of the goods and services in Classes 9, 18, 25 and 35.
9        On 22 December 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal in part dismissed the appeal, finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 for the relevant public in respect of the following goods and services covered by the mark applied for:
–        Class 9: ‘Life-saving apparatus and equipment; protection devices for personal use against accidents; divers’ masks; goggles for sports; protective helmets for sports; protective masks; ear plugs for divers; ear plugs for swimming’;
–        Class 18: ‘Bags, purses and wallets; handbags’;
–        Class 25: ‘Clothing, footwear, headgear; aprons [clothing]; beach clothes; swimwear, swimsuits; sportswear; waterproof clothing; gloves; mittens; belts; clothing for children, men and women; babies’ clothing; babies’ pants; bibs, not of paper; underclothing; sleep wear and p[y]jamas; bath robes; suspenders; hats; caps; sun visors; berets; bathing and shower caps; muffs [clothing]; ear muffs; neckwear, neck ties, cravats, bow, bow ties; socks and stockings, panty hoses; garter belts; socks, stocking and panty hose suspenders; shoes, sports shoes; slippers; beach shoes; masquerade costumes; working sleeves; kerchiefs; bandanas [neckerchiefs]; bath sandals; bath slippers; ski boots; boots; braces for clothing; brassieres; breeches; camisoles; coats; cuffs [clothing]; fur stoles; headbands [clothing]; headgear for wear; jackets; jerseys; jumpers [shirt fronts]; knitwear [clothing]; outerclothing; overcoats; pants; parkas; pullovers; sandals; scarves; shawls; shirts; slips [undergarments]; smocks; spats; boots for sports; sports jerseys; suits; bathing suits; tee-shirts; trousers; underwear; uniforms; vests; wet suits for water skiing; wristbands [clothing]; lingerie; gymnastics shoes; bodices; clothing for gymnastics; sashes for wear; cyclists’ clothing;
–        Class 35: ‘Wholesaling and retailing and mail order services relating to the sale of bags, purses and wallets; wholesaling and retailing and mail order services relating to the sale of articles of clothing, footwear and headgear; wholesaling and retailing and mail order services relating to the sale of sporting articles’.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision in so far as it upheld the opposition and dismiss the opposition in its entirety;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility
13      EUIPO contends that (i) the general reference made by the applicant to its pleadings submitted in the course of the proceedings before EUIPO, and (ii) certain annexes to the application, are inadmissible
The general reference to the pleadings submitted to EUIPO
14      In accordance with settled case-law, an application, in so far as it refers to pleadings submitted to EUIPO, is inadmissible to the extent that the general references in it cannot be linked to the pleas and arguments put forward in that application itself (judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 12; see also, to that effect, judgment of 11 September 2014, Continental Wind Partners v OHIM – Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraphs 17 to 19).
15      It follows that paragraph 60 of the application, in so far as the applicant states in that paragraph that ‘it further relies and refers to all arguments it put forward in the proceedings before the EUIPO and that these arguments should be considered as also being part of the present Action’ is inadmissible.
Admissibility of the evidence adduced for the first time before the General Court
16      EUIPO disputes the admissibility of Annexes A.6, A.7 and A.8 to the application on the ground that they were not submitted by the applicant during the proceedings before the Board of Appeal.
17      The purpose of actions before the General Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter the decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
18      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
19      The position is different where the Boards of Appeal, in order to determine the perception that the relevant public will have of the marks at issue, rely on matters of common knowledge or on the particular understanding of those matters by their members. In such a case, the adversely affected party may dispute its accuracy in its action before the General Court and the evidence put forward in support of that challenge is, therefore, admissible (see, to that effect, judgment of 21 February 2013, Laboratoire Bioderma v OHIM – Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraphs 20 to 22 and the case-law cited).
20      Annexes A.6, A.7 and A.8 to the application consist of extracts from websites relating to wines, cooking and coffee, and were not submitted by the applicant during the proceedings before EUIPO.
21      It must be observed that those annexes are put forward in support of the applicant’s argument that the element ‘characters’ in the mark applied for and the word ‘caractère’ constituting the earlier mark have a low degree of distinctiveness. They support the challenge to the assessments in paragraphs 125 to 129 and 145 to 146 of the contested decision, in which the Board of Appeal found, first, that the element ‘characters’ in the mark applied for was as distinctive as the element ‘sanrio’ and, secondly, that the earlier mark had a normal degree of inherent distinctiveness.
22      It must be noted that those findings of the Board of Appeal relating to the respective distinctiveness of the elements constituting the mark applied for were not made by the Board of Appeal in the light of its perception of a well-known fact within the meaning of the case-law cited in paragraph 19 above, but in the light of the position taken by the Opposition Division and the arguments submitted by the applicant and Miroglio Fashion during the proceedings before EUIPO.
23      Consequently, Annexes A.6, A.7 and A.8 are inadmissible.
Substance
24      Given the date on which the application for registration at issue was filed, namely 5 February 2014, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).  Furthermore, in so far as, 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 dispute is governed by the procedural provisions of Regulation 2017/1001.
25      Consequently, in the present case, as regards the substantive rules, the references made by the applicant and by EUIPO in their pleadings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the content of which is identical.
26      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
27      The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in respect of the goods and services referred to in paragraph 10 above. The applicant disputes the merits of the assessments relating to (i) the degree of distinctiveness of the earlier mark, (ii) the distinctive elements of the mark applied for, (iii) the comparison of the signs at issue and (iv) the global assessment of the likelihood of confusion.
28      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
29      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. 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).
30      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be noted that, in order for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal under 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).
The relevant public
31      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
32      In the present case, the protection of the earlier trade mark extends to the entirety of the European Union. What must therefore be considered is the perception of the marks at issue by the consumer of the goods and services in question within the whole of that territory. The Board of Appeal found, in paragraphs 109 to 115 of the contested decision, in essence, that since the goods and services in question in Classes 9, 18, 25 and 35, with the exception of ‘wholesaling services’, were aimed at both a professional public and the general public, it was the perception of the general public that had to be taken into account. As regards the general public’s level of attention, the Board of Appeal found that it varied from average to above average depending on the nature and price of the goods in question. As regards ‘wholesaling services’ in Class 35, the Board of Appeal found that they were aimed at a professional public with a high level of attention. Those findings, which are not disputed by the applicant, must be endorsed.
The comparison of the goods and services
33      In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, point 21 and the case-law cited).
34      In paragraphs 74 to 106 of the contested decision, the Board of Appeal found that the goods and services in Classes 9, 18, 25 and 35 covered by the mark applied for were similar to varying degrees to the ‘clothing’ in Class 25 covered by the earlier mark.
35      First, the Board of Appeal found that ‘wholesaling and retailing and mail order sales services relating to the sale of bags, purses and wallets; wholesaling and retailing and mail order services relating to the sale of articles of footwear and headgear; wholesaling and retailing and mail order services relating to the sale of sporting articles’, in Class 35, covered by the mark applied for, were similar to a low degree to ‘clothing’ covered by the earlier mark.
36      Secondly, the Board of Appeal found that ‘life-saving apparatus and equipment; protection devices for personal use against accidents; divers’ masks; goggles for sports; protective helmets for sports; protective masks; ear plugs for divers; ear plugs for swimming’, in Class 9, covered by the mark applied for, were at least similar to a low degree to ‘clothing’ covered by the earlier mark.
37      Thirdly, the Board of Appeal found that ‘bags, purses and wallets; handbags’ in Class 18 and ‘shoes, sports shoes; slippers; beach shoes; bath sandals; bath slippers; ski boots; boots; sandals; boots for sports; gymnastics shoes’, ‘hats; caps; sun visors; berets; bathing and shower caps; headgear’ in Class 25, and ‘wholesaling and retailing and mail order services relating to the sale of articles of clothing’, in Class 35, covered by the mark applied for, were similar to ‘clothing’ covered by the earlier mark.
38      Fourthly, the Board of Appeal found that ‘clothing; aprons [clothing]; beach clothes; swimwear, swimsuits; sportswear; waterproof clothing; gloves; mittens; belts; clothing for children, men and women; babies’ clothing; babies’ pants; bibs, not of paper; underclothing; sleep wear and p[y]jamas; bath robes; suspenders; muffs [clothing]; ear muffs; neckwear, neck ties, cravats, bow, bow ties; socks and stockings, panty hoses; garter belts; socks, stocking and panty hose suspenders; masquerade costumes; working sleeves; kerchiefs; bandanas [neckerchiefs]; braces for clothing [suspenders]; brassieres; breeches; camisoles; coats; cuffs [clothing]; fur stoles; headbands [clothing]; jackets; jerseys; jumpers [shirt fronts]; knitwear [clothing]; outerclothing; overcoats; pants; parkas; pullovers; scarves; shawls; shirts; slips [undergarments]; smocks; spats; sports jerseys; suits; bathing suits; tee-shirts; trousers; underwear; uniforms; vests; wet suits for water skiing; wristbands [clothing]; lingerie; bodices; clothing for gymnastics; sashes for wear; cyclists’ clothing’, in Class 25, covered by the mark applied for, were identical to ‘clothing’ covered by the earlier mark.
39      Those findings, which, moreover, are not disputed by the applicant, must be upheld.
The degree of the distinctiveness of the earlier mark
40      In paragraphs 129 and 145 to 149 of the contested decision, the Board of Appeal found that the word ‘caractère’ constituting the earlier mark was neither descriptive nor devoid of any distinctiveness with regard to the goods and services in question. It concluded that the earlier mark had a normal degree of inherent distinctiveness.
41      The applicant submits that the word ‘caractère’ is simply perceived as a laudatory term as regards the ‘clothing’ covered by the earlier mark for the part of the relevant public which is capable of understanding its meaning. It states that the German Patent and Trade Mark Office and the Federal Institute of Intellectual Property in Switzerland refused to register the mark CARACTÈRE on the ground that it was devoid of distinctiveness. The applicant also emphasises that the German Patent and Trade Mark Office refused the registration of several marks containing the word ‘character’ or ‘charakter’.
42      It is true that the applicant is correct in stating, in essence, that the word constituting the earlier mark will be understood not only by the French-speaking public, but also by the English-speaking, German-speaking, Spanish-speaking and Italian-speaking public because of the existence of equivalent words in those languages.
43      However, the applicant is wrong to infer that that word is devoid of any distinctiveness or has only very low degree of distinctiveness with regard to the ‘clothing’ covered by the earlier mark on account of its laudatory nature.
44      First, it should be noted that the Court, when dealing with the question of whether the earlier mark had been registered in breach of Article 7(1)(b) and (c) of Regulation No 207/2009, stated that it was neither descriptive nor devoid of distinctiveness (judgment of 12 December 2018, Bischoff v EUIPO – Miroglio Fashion (CARACTÈRE), T‑743/17, not published, EU:T:2018:911, paragraphs 42 and 55). Furthermore, it is not apparent from any of the grounds of that judgment that the earlier mark had only the minimum degree of distinctiveness allowing it to be registered, which would, where appropriate, have supported the conclusion, in that judgment, that the earlier mark had only a low degree of inherent distinctiveness. The grounds of that judgment imply, rather, that it was held that that mark had a normal degree of inherent distinctiveness.
45      Secondly, it should be noted that that finding concerning the normal degree of distinctiveness of the earlier mark is all the more applicable to the part of the relevant public of the European Union which will not understand the meaning of the word constituting that mark.
46      Thirdly, it should be noted that the applicant’s reference to the position of national offices as regards the distinctiveness of words that are equivalent to ‘caractère’ is not in itself capable of demonstrating that the Board of Appeal erred in its assessment, since the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, to that effect, judgment of 6 June 2018, Apcoa Parking Holdings v EUIPO, C‑32/17 P, not published, EU:C:2018:396, paragraph 31).
47      In the light of the foregoing, the Board of Appeal was right to find that the earlier mark had a normal degree of inherent distinctiveness.
The comparison of the signs
48      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse 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).
–       The distinctive and dominant elements of the mark applied for
49      In paragraphs 122 to 133 of the contested decision, the Board of Appeal found that the elements ‘sanrio’ and ‘characters’ had a normal degree of distinctiveness and played an equivalent role in the overall impression created by the mark applied for.
50      The applicant submits that the element ‘sanrio’ is more distinctive than the element ‘characters’, in so far as, first, it appears at the beginning of the mark applied for, secondly, the combination of those two elements will have a specific meaning for the English-speaking public – in that it will be understood as referring to ‘characters of Sanrio’ – a meaning according to which the word ‘characters’ refers to the word ‘sanrio’ and, thirdly, for the public that understands the element ‘characters’ as corresponding to the concept of ‘caractère’, it is the word ‘sanrio’, which has no meaning, that will be the most distinctive.
51      EUIPO takes the view that the Board of Appeal was right to find that the two elements constituting the mark applied for had the same distinctiveness. It submits, inter alia, that the elements constituting that mark do not form a unit whose meaning differs from the meaning of those elements when they are considered separately.
52      It is true that, as regards the English-speaking public, the applicant was correct, during the proceedings before EUIPO, to submit with supporting evidence, that the word ‘characters’ would be understood as meaning characters in the sense of, for example, figures or personalities and that, therefore, the mark applied for refers to the concept of ‘characters of Sanrio’. It follows that, for that part of the relevant public, the word ‘sanrio’ will constitute the most distinctive element of the mark applied for.
53      However, that conclusion cannot be extended to the non-English-speaking part of the relevant public, whether it does not understand the meaning of the word ‘character’ or associates it with the word ‘caractère’.
54      In the first scenario, the mark applied for will be perceived by the relevant public as consisting of two elements which have no meaning and play an equivalent role in the overall impression of the mark applied for. In the second scenario, for reasons similar to those set out in paragraphs 43 to 47 above, it must be concluded that the word ‘caractère’ does not have a low degree of distinctiveness. The Board of Appeal was therefore right to find, with regard to that part of the relevant public, that the two elements constituting the mark applied for played an equivalent role in its overall impression.
55      Since, in accordance with the case-law cited in paragraph 30 above, it is sufficient that the likelihood of confusion exists in part of the European Union, it is necessary to continue the analysis by comparing the signs in respect of the part of the relevant public for whom it is more probable that there will be a likelihood of confusion. It is therefore necessary to take into account the perception of the non-English-speaking public for which the two elements forming the mark applied for will play an equivalent role, rather than the perception of the English-speaking public, which will attribute a dominant role to the element of the mark applied for that most differs from the earlier mark.
56      Lastly, it should be noted that the applicant’s argument seeking to demonstrate the more significant role played by the element ‘sanrio’ in the mark applied for because of its placement at the beginning of that mark cannot succeed.
57      Although it follows from the case-law that consumers will generally attach greater importance to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part, that finding cannot in apply in every case, as the adverb ‘normally’ indicates (see judgment of 21 December 2021, Dr. Spiller v EUIPO – Rausch (Alpenrausch Dr. Spiller),
T‑6/20, not published, EU:T:2021:920, paragraph 136 and the case-law cited). In the present case, for reasons similar to those set out in paragraphs 54 and 55 above, there is no reason to consider that, for the non-English-speaking part of the relevant public, the element ‘sanrio’ would be more distinctive than the element ‘character’.
–       The visual comparison of the signs
58      In paragraph 137 of the contested decision, the Board of Appeal found that the signs at issue were visually similar to a below average degree.
59      The applicant highlights the more distinctive nature of the element ‘sanrio’ in the mark applied for and the differences between the earlier mark and the element ‘characters’ in the mark applied for in order to conclude that there is no visual similarity, even to a low degree, between the signs. It adds that the Opposition Division was wrong to find that the element ‘characters’ had an independent distinctive role in the mark applied for within the meaning of the case-law resulting from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594).
60      EUIPO submits that the Board of Appeal was right to find that there was a lower than average degree of visual similarity. It adds that the criticism of the Opposition Division as regards the issue of the independent distinctive role of the element ‘characters’ is ineffective, or even inadmissible, since the Board of Appeal did not reproduce that aspect of the Opposition Division’s reasoning.
61      It is true that the signs differ visually due to the presence of the element ‘sanrio’ in only the mark applied for, and due to the different spelling of the earlier mark and the element ‘characters’ in the mark applied for.
62      However, in so far as the signs at issue share the eight letters ‘c’, ‘a’, ‘r’, ‘a’, ‘c’, ‘t’, ‘e’ and ‘r’ in the same order, it cannot be held that the signs at issue are different. It must therefore be held that there is a low degree of visual similarity.
63      Furthermore, as regards the applicant’s criticism of the Opposition Division’s findings relating to the alleged independent distinctive role of the element ‘characters’ in the mark applied for, it must be pointed out that it is apparent from paragraph 127 of the contested decision that the Board of Appeal did not reproduce that aspect of the Opposition Division’s reasoning.
64      In accordance with settled case-law, actions may be brought before the Courts of the European Union only against decisions of the Boards of Appeal, with the result that it is only arguments directed against the decision of the Board of Appeal itself which are admissible in such an action (see, to that effect, judgments of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23, and of 16 May 2019, KID-Systeme v EUIPO – Sky (SKYFi), T‑354/18, not published, EU:T:2019:333, paragraph 99). EUIPO is therefore fully entitled to submit that that argument of the applicant, directed against the Opposition Division’s decision, is inadmissible.
–       The phonetic comparison of the signs
65      In paragraph 139 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to an average degree, on the ground that the common characteristics of the signs at issue outweighed their differences.
66      The applicant submits that none of the elements of the signs at issue is pronounced in the same way and reiterates that the consumer’s attention will be directed towards the beginning of the mark applied for.
67      EUIPO submits that the additional letter ‘e’ in the earlier mark and the additional letters ‘h’ and ‘s’ of the element ‘characters’ in the mark applied for do not enable the marks to be distinguished phonetically. It submits that the Board of Appeal was therefore right to find that there was an average degree of phonetic similarity.
68      It must, however, be stated that the Board of Appeal’s assessment overestimates the degree of phonetic similarity between the signs.
69      Although, as has been held in respect of the visual comparison of the signs, the presence of eight letters in common in those signs means that they cannot be regarded as being different overall, the fact remains that significant differences exist in those signs, which may have an impact on the way in which they are perceived phonetically. Both the presence of the element ‘sanrio’ in only the mark applied for and the relatively different pronunciation of the elements ‘caractère’ and ‘characters’ mean that there is only a low degree of phonetic similarity.
–       The conceptual comparison of the signs
70      In paragraph 140 of the contested decision, the Board of Appeal found, first, that the element ‘sanrio’ had no meaning and, secondly, that the words ‘caractère’ and ‘characters’, depending on the part of the relevant public in question, referred either to the same concept or did not refer to any concept. In paragraph 157 of that decision, it stated that the signs were conceptually similar for a significant part of the relevant public.
71      The applicant submits that any conceptual comparison is impossible for the part of the relevant public that does not understand the meaning of the earlier mark. It adds that the signs are conceptually different for the part of the relevant public that will understand the meaning of the word ‘characters’ as the English word referring to characters in the sense of, for example, figures or personalities, and submits that it defended that point of view during the proceedings before EUIPO.
72      EUIPO is also of the opinion that the conceptual comparison is impossible for the part of the relevant public that does not understand the meaning of the word ‘caractère’ which constitutes the earlier mark. It takes the view, however, that there is a conceptual similarity for the rest of the relevant public that will associate the words ‘caractère’ and ‘characters’. As regards the conceptual difference relating to the perception of the element ‘characters’ as the English word referring to characters in the sense of, for example, figures or personalities, EUIPO contends that this is an unsubstantiated assertion.
73      As a preliminary point, it should be noted that EUIPO is wrong to argue that the applicant has not adduced any evidence in support of its argument based on the understanding of the mark applied for as meaning ‘characters of Sanrio’. As stated in paragraph 52 above, the applicant developed that argument in the course of the proceedings before EUIPO, supporting it with evidence.
74      Thus, for the relevant English-speaking public, there is a clear conceptual difference between the signs at issue, since the earlier mark is understood as a reference to ‘character’ whereas the mark applied for will have a different conceptual content, namely that of a reference to ‘characters of sanrio’. However, for the reasons set out in paragraph 55 above, it must be held that the conceptual difference for the English-speaking part of the relevant public is not decisive in the present case, since it is sufficient that there is a likelihood of confusion with regard to the non-English-speaking part of the relevant public.
75      As regards the non-English-speaking public, the Board of Appeal was right to find that, for the part of that public which is not capable of perceiving the reference to the concept of ‘character’ in the earlier mark and in the element ‘characters’ of the mark applied for, no conceptual comparison is possible.
76      By contrast, the Board of Appeal erred in finding that the signs were conceptually similar for the part of the relevant public likely to perceive a link with the concept of ‘character’. Even with regard to that part of the public, the conceptual comparison remains a neutral element, since the mark applied for has no meaning.
77      As regards the mark applied for, although it could be understood as including a reference to the concept of ‘character’, it will be perceived, as a whole, on account of the presence of the element ‘sanrio’, which has no meaning, as a fanciful word combination without any particular meaning. Consequently, as regards that part of the relevant public, the conceptual comparison of the signs at issue remains a neutral element (see, to that effect and by analogy, judgments of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraphs 69 and 70, and of 21 December 2021, Alpenrausch Dr. Spiller, T‑6/20, not published, EU:T:2021:920, paragraph 140).
78      In the light of all the foregoing, it must be held that there is a low degree of visual and phonetic similarity between the signs at issue, whereas the conceptual comparison is neutral.
The likelihood of confusion
79      A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
80      In paragraphs 154 to 160 of the contested decision, the Board of Appeal found that there was a likelihood of confusion for the relevant public, since the earlier mark had a normal degree of distinctiveness and the goods and services in question were similar or identical to varying degrees. It also found that the fact that, on the one hand, in view of the way in which the goods in Classes 18 and 25 are marketed, the visual comparison plays a predominant role and, on the other hand, the relevant public could display a higher than average level of attention did not preclude the existence of such a likelihood of confusion.
81      The applicant disputes the merits of that analysis by highlighting, inter alia, the significant differences between the signs and the low degree of distinctiveness of the earlier mark, both of which, it claims, prevent any likelihood of confusion. It also states that the visual comparison plays a major role and that any conceptual similarity is not decisive. Furthermore, the absence of a likelihood of confusion is all the more marked with regard to the goods and services in respect of which there is only a low degree of similarity with the ‘clothing’ covered by the earlier mark. In addition, as regards some of those services, the Board of Appeal did not take into account the relevant public’s high level of attention when purchasing them.
82      EUIPO submits that, in the light of the normal degree of distinctiveness of the earlier mark and in accordance with the principle of interdependence between the various relevant factors, the Board of Appeal was right to find that there was a likelihood of confusion for the relevant public. It also emphasises, first, that the degree of conceptual similarity cannot be considered low, secondly, that although the visual comparison is more important in view of the method of marketing the goods in Classes 18 and 25, the degree of phonetic similarity cannot be ignored and, thirdly, that the Board of Appeal took into account the higher level of attention of a part of the relevant public.
83      It follows from all of the foregoing that the relevant factors for the assessment of the likelihood of confusion are as follows: first, a relevant public with a level of attention varying from average to high for the goods and services in question and high for a category of those services; secondly, goods and services which are in part similar to a low degree, at least slightly similar, similar or identical; thirdly, an earlier mark with a normal degree of distinctiveness; and, fourthly, signs at issue which are visually and phonetically similar only to a low degree.
84      In the light of all those factors, the Board of Appeal was right to find that registration of the mark applied for in respect of the goods and services referred to in paragraphs 37 and 38 above would give rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 for the relevant public.
85      By contrast, the contested decision is vitiated by an error of assessment in so far as it finds that registration of the mark applied for in respect of goods and services which have only a low degree of similarity with the goods covered by the earlier mark could give rise to a likelihood of confusion, since, notwithstanding the high level of attention of part of the relevant public and the normal degree of inherent distinctiveness of the earlier mark, the signs at issue are, in themselves, similar visually and phonetically only to a low degree.
86      In that regard, it should be noted that, although it does not have a low degree of distinctiveness, the earlier mark does not have a high degree of distinctiveness capable of giving it broader protection that might justify a finding that there is a likelihood of confusion in a configuration marked both by the low degree of similarity between the signs at issue and the goods and services in question.
87      It follows that the Board of Appeal erred in finding that there was a likelihood of confusion with regard to the services referred to in paragraph 35 above.
88      The same is true of the goods referred to in paragraph 36 above in respect of which the Board of Appeal found that there was ‘at least’ a low degree of similarity, in view of the notable differences between ‘clothing’ covered by the earlier mark, and ‘life-saving apparatus and equipment; protection devices for personal use against accidents; divers’ masks; goggles for sports; protective helmets for sports; protective masks; ear plugs for divers; ear plugs for swimming’  in Class 9 covered by the mark applied for.
89      In the light of the foregoing, the applicant’s single plea in law must be upheld only in so far as the Board of Appeal refused to grant the application for registration of the mark applied for in respect of the goods and services referred to in paragraphs 35 and 36 above.
Costs
90      Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
91      In the present case, since the action has been upheld only in respect of part of the goods and services in question, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 November 2021 (Case R 2460/2020-2) in so far as it concerns:
–        ‘wholesaling and retailing and mail order sales services relating to the sale of bags, purses and wallets; wholesaling and retailing and mail order services relating to the sale of articles of footwear and headgear; wholesaling and retailing and mail order services relating to the sale of sporting articles’, in Class 35 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;
–        ‘life-saving apparatus and equipment; protection devices for personal use against accidents; divers’ masks; goggles for sports; protective helmets for sports; protective masks; ear plugs for divers; ear plugs for swimming’ in Class 9;
2.      Dismisses the action as to the remainder;
3.      Orders Sanrio Co. Ltd and EUIPO to bear their own costs.
Tomljenović
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 21 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.