JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
20 October 2021 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark Dormillo – Earlier EU figurative mark DORMILON – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑597/20,
Roller GmbH & Co. KG, established in Gelsenkirchen (Germany), represented by W. Zürbig, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Flex Equipos de Descanso, SA, established in Getafe (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 26 June 2020 (Case R 2847/2019‑2), relating to opposition proceedings between Flex Equipos de Descanso and Roller,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and G. Hesse, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 29 September 2020,
having regard to the response lodged at the Court Registry on 11 December 2020,
having regard to the decision of 27 April 2021 joining Cases T‑596/20 and T‑597/20 for the purposes of the oral part of the procedure,
further to the hearing on 10 June 2021,
gives the following
Judgment
Background to the dispute
1        On 16 November 2017, the applicant, Roller GmbH & Co. KG, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1407881 designating the European Union in respect of the word mark Dormillo. That international registration was notified to the European Union Intellectual Property Office (EUIPO) on 21 June 2018 pursuant to 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        The goods and services in respect of which protection was sought are in, inter alia, Classes 20, 24 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, and correspond, for each of those classes, to the following description:
–        Class 20: ‘Mattresses; spring mattresses; pocket spring mattresses; micro-pocket spring mattresses; bonnell spring mattresses; bridging between two mattresses; gel cold foam mattresses; cold foam mattresses; sets consisting of mattress and mattress base; roll-up mattresses; comfort foam roll-up mattresses; visco- and comfort foam mattresses; folding mattresses; mattress toppers; molleton mattress toppers; molleton fitted mattress toppers; molleton cross toppers; toppers (mattress toppers); reversible toppers (mattress toppers); cold foam toppers (mattress toppers); gel foam toppers (mattress toppers); visco-toppers (mattress toppers); comfort foam toppers (mattress toppers); bed bases for mattresses; beds; bedding; cushions; pillows; bed-sets (beds, bedding, mattresses, cushions and pillows); pillows; neck-supporting pillows; neck pillows; tubular cushions for the neck; neck rolls; body pillows; futon beds; upholstered beds; beds with several functions; waterbeds; box springs; beds of metal; bed arrangements; monobloc beds; bed frames; comfort beds; beds with four legs; bed frames; folding beds; futons [furniture]; canopy beds; double beds; single beds; bunk beds; guest beds; bed bases; bed bases; roll-up slatted frames; slatted bases of wood; bed bases adjusted electronically; full plate bed bases; slatted bases for beds’;
–        Class 24: ‘Mattress covers; mattress covers; ticks [mattress covers] and pillowcases; covers for cushions; bed sheets [textile]; fitted sheets; fitted sheets for box springs; topper fitted sheets; duvet covers; quilts; lightweight quilts; quilted duvet; double quilts; four seasons quilts; duvets; summer eiderdowns [down coverlets]; bed sets (bed linen); four seasons microfiber duvets; eiderdowns [down coverlets]; quilts filled with down; duvet covers; bed clothes and blankets; thermofill mattress covers; mattress covers; underblankets; mattress protectors’;
–        Class 35: ‘Retail services relating to furniture; retail services relating to furnishings’.
3        The international registration designating the European Union was published in European Union Trade Marks Bulletin No 117/2018 of 22 June 2018.
4        On 18 October 2018, Flex Equipos de Descanso, SA filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods and services referred to in paragraph 2 above.
5        The opposition was based on, inter alia, the EU figurative mark reproduced below:
6        The earlier mark had been registered in respect of goods and services in Classes 20, 24 and 35 corresponding, for each of those classes, to the following description:
–        Class 20: ‘Furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, mattresses, spring mattresses and pillows’;
–        Class 24: ‘Bed and table covers’;
–        Class 35: ‘Selling in shops and via global computer networks, of all kinds of beds, furniture, mattresses, spring mattresses, pillows and bed and table covers’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8        On 24 October 2019, the Opposition Division upheld the opposition.
9        On 11 December 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.
10      By decision of 26 June 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition;
–        grant protection to the registration of the mark applied for in respect of all the contested goods and services;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        join Cases T‑596/20 and T‑597/20;
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The applicant’s third head of claim
13      By the third head of claim, the applicant requests the Court to ‘grant protection for the … Registration’ of the mark applied for in respect of all the contested goods and services.
14      In the response, EUIPO contends that the third head of claim is inadmissible on the ground that it is not for the Court to issue directions to EUIPO.
15      However, in response to the position which EUIPO adopted at the hearing, the applicant stated, in reply to a question put to it by the Court, that that head of claim had to be understood as seeking the alteration of the contested decision.
16      In that regard, it must be pointed out that it is true that the Court has jurisdiction under Article 72(3) of Regulation 2017/1001 to alter decisions of the Boards of Appeal. However, that jurisdiction to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001, which means that the admissibility of a claim for alteration must be assessed in the light of the powers conferred on the Board of Appeal (see judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 12 and the case-law cited).
17      However, the Board of Appeal does not have the power to take cognisance of an application that it register an EU trade mark. The registration of an EU trade mark is a consequence of a finding that the conditions laid down in Article 51 of Regulation 2017/1001 have been met, although the departments of EUIPO which are responsible for the registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. It is apparent from the provisions of Article 51, Article 160 and Article 161 of Regulation 2017/1001 that the powers conferred on the examiner and the Opposition Division are not intended to establish whether all the conditions for registration of an EU trade mark, which are laid down in Article 51 of that regulation, are met. In those circumstances, under the provisions of Article 71(1) of Regulation 2017/1001, a Board of Appeal does not have the power to decide whether a trade mark should be registered. Consequently, it is also not for the Court to take cognisance of a claim for alteration requesting that it amend the decision of a Board of Appeal to that effect (see, to that effect, order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraphs 17 to 23).
18      It follows that, in so far as the third head of claim must be understood as meaning that the applicant is requesting that the Court decide whether the mark applied for should be registered, that head of claim must be rejected as having been brought before a Court which does not have the jurisdiction to take cognisance of it.
19      Furthermore, in so far as, by that head of claim, the applicant is requesting that the Court issue a direction to EUIPO requiring it to register the mark applied for, it is sufficient to point out that the Court does not have the jurisdiction to issue directions to European Union institutions, bodies, offices and agencies (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). It follows that, in such a situation, the third head of claim must also be rejected as having been brought before a Court which does not have the jurisdiction to take cognisance of it.
The issue of whether Annex A.6 to the application is admissible
20      EUIPO contends that Annex A.6 to the application was submitted for the first time before the Court and that, in accordance with the case-law, it must be declared inadmissible.
21      In that regard, it must be stated that the annex in question consists of website extracts which the applicant submitted in support of the argument that the goods in Class 24 and those in Class 20 are often sold in the same places, in particular via the internet, and that consequently the visual similarity between the signs at issue is of greater importance in assessing whether there is a likelihood of confusion.
22      At the hearing, in reply to a question put to it by the Court, the applicant admitted that the annex in question had not been submitted in the course of the administrative proceedings before EUIPO. However, it argued that annex was nevertheless admissible.
23      In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The evidence submitted for the first time before the Court must therefore be rejected as inadmissible and there is no need to assess its probative value (see, to that effect, judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraphs 18 and 19, and of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraphs 16 and 17).
The single plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001
24      In support of the action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that, having made errors as regards, first, the comparison of the goods and services at issue and, secondly, the comparison of the signs at issue, the Board of Appeal erred in finding that there was a likelihood of confusion.
25      EUIPO disputes the applicant’s arguments.
26      Article 8(1)(b) of Regulation 2017/1001 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.
27      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. 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).
28      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
29      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 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 2017/1001 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).
30      The Board of Appeal found that, in the light of the nature of the goods and services at issue, the relevant public consisted of professionals with specific professional knowledge or expertise and of the general public. It also found that, since the earlier mark was an EU trade mark, the relevant territory was the whole of the European Union. However, stating that it was sufficient that a likelihood of confusion existed in the minds of consumers in part of the European Union, which could consist of only one Member State, it, like the Opposition Division, assessed, without, however, providing further reasoning for making that choice, whether there was a likelihood of confusion particularly with regard to the Swedish- or Danish-speaking public, although it added that the same reasoning could apply to the public in other Member States, such as Poland, Germany, the Baltic States or Hungary.
31      Those assessments on the part of the Board of Appeal are not disputed by the applicant, which also agrees with the Board of Appeal’s finding that the relevant professional public, by definition, displays a high level of attention and that the general public, in the present case, displays an average or above-average level of attention, since some of the relevant goods, to which the retail services relate, are characterised by their expensiveness, by their impact on health and well-being and by the infrequency with which they are purchased.
The comparison of the goods and services at issue
32      In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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, paragraph 21 and the case-law cited).
33      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
34      In the present case, the Board of Appeal found that the goods and services at issue were, in part, identical, because they were identically contained in the lists of goods covered by the marks at issue or because the goods covered by one of the marks at issue were included in a more general category of goods covered by the other one of those marks, and, in part, similar to an average degree or highly similar.
35      The applicant disputes that finding on the part of the Board of Appeal and submits that, even if there were a similarity between the goods and services at issue, that similarity should have been categorised as being low in degree or, at most, average in degree.
36      EUIPO disputes the applicant’s arguments.
–       The goods in Class 20
37      The Board of Appeal found that the goods in Class 20 covered by the marks at issue were identical, similar to an average degree or highly similar.
38      First, it pointed out that ‘mattresses; spring mattresses; pillows’ were identically contained in the lists of goods covered by both of the marks at issue. Secondly, it found that the ‘sets consisting of mattress and mattress base’ included, as a broader category, the ‘mattresses’ covered by the earlier mark, whereas the ‘pocket spring mattresses; micro-pocket spring mattresses; bonnell spring mattresses; gel cold foam mattresses; cold foam mattresses; roll-up mattresses; comfort foam roll-up mattresses; visco- and comfort foam mattresses; folding mattresses’ and ‘neck-supporting pillows; neck pillows; body pillows’ covered by the mark applied for were included in the broad categories, respectively, of the ‘mattresses’ and ‘pillows’ covered by the earlier mark. Thirdly, according to the Board of Appeal, the ‘cushions; tubular cushions for the neck; neck rolls’ covered by the mark applied for were ‘at least similar’ to the ‘pillows’ covered by the earlier mark because they had the same purpose, coincided in their method of use and distribution channels, were aimed at the same end users and could be in competition with each other.
39      Lastly, as regards the remainder of the goods in Class 20 covered by the mark applied for (see paragraph 2 above), the Board of Appeal found that they were accessories for mattresses, beds or bed-related items. Those goods were therefore, according to the Board of Appeal, similar to an average degree, if not highly similar, to the ‘mattresses’ covered by the earlier mark because they were all used for sleeping and therefore had the same general purpose, were complementary and were usually manufactured by the same undertakings and aimed at the same consumers through the same distribution channels.
40      In the first place, the applicant submits that the ‘mattresses’ covered by the earlier mark correspond to a general generic term which cannot protect all the special types of mattresses. Consequently, according to the applicant, the ‘mattresses’ covered by the earlier mark and the special and specialised mattresses covered by the mark applied for must be considered to be similar to a low degree.
41      It puts forward a similar argument as regards the ‘pillows’ covered by the earlier mark, claiming that that term is generic and requires further definition. According to the applicant, that term cannot automatically cover the ‘pillows for special needs’ covered by the mark applied for, because their function is different. Consequently, it submits that those goods are at most similar to a low degree.
42      In that regard, it must be borne in mind that, according to settled case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
43      It follows that the Board of Appeal was right in finding, in paragraph 24 of the contested decision, that the special and specialised mattresses in Class 20 covered by the mark applied for were included in the broad category of ‘mattresses’ in the same class covered by the earlier mark and that they therefore had to be considered to be identical. The same is true as regards the Board of Appeal’s finding in paragraph 25 of the contested decision that the ‘neck-supporting pillows; neck pillows; body pillows’ covered by the mark applied for were included in the broader category of ‘pillows’ covered by the earlier mark and that those goods were therefore identical.
44      Lastly, the Board of Appeal was also right in pointing out, in paragraph 27 of the contested decision, that the ‘cushions; tubular cushions for the neck; neck rolls’ covered by the mark applied for and the ‘pillows’ covered by the earlier mark had to considered to be similar because they had the same purpose, method of use and distribution channels, were aimed at the same end users and could be in competition with each other.
45      In so far as the applicant submits that some of the pillows covered by the mark applied for have a medical purpose, claiming that those pillows are used to treat certain health problems by alleviating back and neck pain and also headaches and migraines, it must be pointed out, as the Board of Appeal stated in paragraph 26 of the contested decision, that pillows for medical purposes are classified in Class 10. However, in its application for registration, the applicant did not refer to pillows in Class 10, but to pillows in Class 20.
46      It must be stated that, if the applicant’s argument that the indications ‘mattresses’ and ‘pillows’ in the description of the goods covered by the earlier mark are generic terms were to be interpreted as meaning that it submits that those indications are too vague and imprecise to meet the requirements of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that argument cannot succeed. As the Board of Appeal pointed out in paragraphs 24 and 25 of the contested decision, those terms are sufficiently clear and precise to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the earlier mark. As EUIPO, in essence, submits, the nature and purpose of the product ‘mattress’ or of the product ‘pillow’ are unambiguously identifiable, irrespective of whether a more specific purpose may also be attributed to certain special types of mattresses or certain types of pillows for special needs, like those covered by the mark applied for.
47      In the second place, the applicant submits that the goods falling within the category of ‘mattress toppers’ covered by the mark applied for have a different function from that of the ‘mattresses’ covered by the earlier mark, since they are not necessary for lying on a bed, as is the case with mattresses, but are additional items in comparison with the latter and provide comfort, warmth and softness. The applicant argues that, consequently, contrary to what the Board of Appeal found, the ‘mattress toppers’ covered by the mark applied for and the ‘mattresses’ covered by the earlier mark must be held to be dissimilar or, at most, similar to a low degree.
48      In that regard, it must be pointed out, as observed by EUIPO, that mattress toppers are bed accessories, which the applicant, moreover, implicitly admits when it submits that mattress toppers provide additional comfort for sleeping on mattresses. Consequently, the Board of Appeal was right in finding in paragraph 28 of the contested decision that the ‘mattress toppers’ covered by the mark applied for were sufficiently closely connected with the ‘mattresses’ covered by the earlier mark, that those goods therefore had to be considered to be complementary for the purposes of the case-law referred to in paragraph 33 above and as having the same purpose, because they were used for sleeping, and that they were therefore similar to an average degree.
49      In the third place, the applicant submits that the various types of beds covered by the mark applied for are not covered by the earlier mark, which designates only ‘furniture’. It argues that the term ‘furniture’ is generic and needs to be defined by a further list of goods and services, which is lacking in the present case. It claims that ‘beds’ cannot, moreover, be considered to be similar to ‘mattresses’ because they are often sold in different shops.
50      In that regard, it must be pointed out that the Board of Appeal found, in paragraph 28 of the contested decision, that the various categories of beds and of bed bases covered by the mark applied for were similar to the ‘mattresses’ covered by the earlier mark. That finding is not called into question by the applicant’s argument that there are shops which specialise in selling mattresses or pillows, but which do not sell beds. As was pointed out, in essence, by the Board of Appeal, there are also shops which offer beds and bed bases as well as mattresses for sale, which the applicant, moreover, admits (see paragraph 21 above). Those goods can therefore have the same distribution channels. Furthermore, it must be stated that the applicant does not dispute the other factors which the Board of Appeal highlighted in order to conclude that the various categories of beds and of bed bases covered by the mark applied for and the ‘mattresses’ covered by the earlier mark were similar to at least an average degree, namely their complementary nature and the fact that they have the same general purpose, because they are used for sleeping.
51      Those factors are sufficient for it to be held, as the Board of Appeal found, that the ‘beds; futon beds; upholstered beds; beds with several functions; waterbeds; box springs; beds of metal; bed arrangements; monobloc beds; bed frames; comfort beds; beds with four legs; bed frames; folding beds; futons [furniture]; canopy beds; double beds; single beds; bunk beds; guest beds; bed bases; roll-up slatted frames; slatted bases of wood; bed bases adjusted electronically; full plate bed bases; slatted bases for beds’ covered by the mark applied for and the ‘mattresses’ covered by the earlier mark are similar to an average degree.
52      Accordingly,
in the light of the fact that it was only for the sake of completeness, ‘for completeness sake’, that the Board of Appeal compared, in paragraph 29 of the contested decision, the ‘futons’ and ‘beds’ covered by the mark applied for and the ‘furniture’ covered by the earlier mark, it is not necessary to examine the applicant’s argument relating to the supposedly vague and imprecise nature of the indication ‘furniture’ in the description of the goods covered by the earlier mark.
–       The goods in Class 24
53      The Board of Appeal found that the goods in Class 24 covered by the mark applied for were identical to the ‘bed covers’ covered by the earlier mark, because they were included in or overlapped with that broader category of goods, or that they were ‘at least’ similar to an average degree to ‘bed covers’, as they had the same nature, the same commercial origin, the same distribution channels and the same end users.
54      The applicant submits that the goods in Class 24 covered by the marks at issue are similar to a low or, at most, average degree, since the goods covered by the earlier mark are referred to by a general expression, namely ‘bed covers’, which does not include the covers covered by the mark applied for which have special functions, such as that of providing comfort and warmth by meeting specific needs of consumers, in particular those who have health problems, functions which go beyond providing a cover for sleeping. Furthermore, it argues that the various kinds of ‘bed sheets’ covered by the mark applied for are similar to an average degree to the ‘bed covers’ covered by the earlier mark.
55      In that regard, it must be pointed out, first, that it is not apparent from the list of goods in Class 24 covered by the mark applied for that those goods meet specific consumer needs which are linked to health problems. Those goods include mattress covers, bed linen, bed clothes and bed sheets, such as pillowcases, covers and fitted sheets, and also
quilts, blankets,
duvets and eiderdowns. It is true that certain specific characteristics of those goods may be deduced from their description in the list of goods covered, namely that they are goods which make it possible to retain more heat, as could be the case with the microfibre duvets or thermofill mattress covers. However, those characteristics do not specifically meet the needs of consumers who have health problems, but are liable to provide comfort to all the consumers of the goods at issue.
56      Secondly, it must be pointed out that the goods ‘bed covers’ in Class 24 covered by the earlier mark include the ‘bed linen’ and ‘bed clothes’ covered by the mark applied for. Furthermore, the ‘pillowcases; covers for cushions; bed sheets [textile]; fitted sheets; fitted sheets for box springs; topper fitted sheets; duvet covers’ covered by the mark applied for are an enumeration of specific goods which fall within the broader category of the ‘bed covers’ covered by the earlier mark. In accordance with the case-law referred to in paragraph 42 above, those goods are therefore identical.
57      Thirdly, the other goods in Class 24 covered by the mark applied for and the ‘bed covers’ covered by the earlier mark have the same purpose, because they are used for sleeping, and have the same commercial origin, distribution channels and end users. They are therefore similar to an average degree.
58      The applicant’s arguments seeking to show that the goods in Class 24 covered by the marks at issue are similar only to a low degree must therefore be rejected.
–       The services in Class 35
59      As regards the ‘retail services relating to furniture’ in Class 35 covered by the mark applied for and the services of ‘selling in shops and via global computer networks, of all kinds of furniture’ in the same class covered by the earlier mark, the Board of Appeal found that those services were identical in spite of the different wording of their descriptions. Furthermore, according to the Board of Appeal, the ‘retail services relating to furnishings’ covered by the mark applied for and the services of ‘selling in shops and via global computer networks, of all kinds of furniture’ covered by the earlier mark were also identical, since furnishings included the furniture and accessories with which a room or a house was furnished.
60      According to the applicant, there is, at most, a low degree of similarity between the services in Class 35 covered by the marks at issue. It submits that, whereas there is a similarity between the services at issue in relation to ‘furniture’, ‘furnishings’ are not ‘furniture’ and are not therefore covered by the earlier mark, which rules out any similarity between those services.
61      In that regard, it is sufficient to point out, as observed by EUIPO, that the applicant confines itself to claiming that, contrary to what the Board of Appeal found in paragraph 33 of the contested decision, furnishings are not furniture without, however, substantiating that argument or supporting it by means of evidence that is capable of calling into question the findings which the Opposition Division made in that regard or the evidence submitted by the other party to the proceedings before EUIPO, findings and evidence on which the Board of Appeal relied in that regard. Accordingly, the applicant’s argument must be rejected.
62      It follows from the foregoing that the Board of Appeal was right in finding that the goods and services covered by the marks at issue were, in part, identical and, in part, similar to an average degree.
The comparison of the signs at issue
63      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).
64      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 in question 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
65      The Board of Appeal pointed out that, in the overall impression created by the earlier sign, most ‘weight’ had to be attributed to the word element
‘dormilon’ in that sign, but that the figurative element of that sign, which consisted of a representation of a sleeping child, was not, however, to be considered to be negligible. It also pointed out, in the context of the overall assessment, that the signs at issue were visually similar to an average degree, that they were highly similar phonetically and that they were conceptually dissimilar.
66      The applicant disputes the Board of Appeal’s assessments regarding the inherent distinctiveness of the elements comprising the earlier sign and their respective weight in the overall perception of that sign and also disputes the conclusions which the Board of Appeal drew from the visual and phonetic comparison of the signs at issue. By contrast, it agrees with the Board of Appeal’s finding in paragraph 78 of the contested decision that the signs at issue are conceptually dissimilar.
67      As was pointed out, in essence, by the Board of Appeal, the earlier sign is a composite sign consisting of the word element ‘dormilon’ written in upper-case letters, of the word elements ‘el placer de dormir’ written in smaller letters below the term ‘dormilon’ and of a figurative element representing a sleeping child, which has a line below it that is capable of evoking a cover. Those elements are set out in a rectangle which is divided into two parts. The word elements are in white on a green background and are situated in the lower part of the sign. The figurative element, which is in green, beige and red on a white background, is situated in the upper part of the sign.
68      The sign applied for consists of a single word element, ‘dormillo’.
69      It is necessary, first of all, to examine the Board of Appeal’s assessments regarding the inherent distinctiveness and dominant nature of the elements comprising the earlier sign.
–       The distinctive and dominant elements of the earlier sign
70      The Board of Appeal found, in essence, that,
since the figurative element in the earlier sign, representing a sleeping child, alluded to the goods and services at issue and therefore had a weak inherent distinctive character, more weight had to be attributed,
in the Swedish- or Danish-speaking public’s perception of the earlier sign, to the word element ‘dormilon’ in that sign,
in view of the normal inherent distinctiveness of that element with regard to the relevant goods and services and its position and size within that sign.
71      In that regard, the applicant submits that, even if the members of the Swedish- or Danish-speaking public do not speak Spanish, they will be able to associate the terms ‘pleasure’, ‘please’ and ‘dorm’ or ‘plaisir’ and ‘dormir’, the meanings of which in English or French are known to them, with the word elements ‘placer’ and ‘dormir’ in the earlier sign. It argues that the word elements in the earlier sign, word elements which must be taken as a whole, namely ‘dormilon el placer de dormir’, are not distinctive or are only weakly distinctive for the relevant public, with the result that the figurative element of that sign is more important than the word elements. It submits that the relevant public therefore remembers the earlier mark as that which contains the ‘face of the extremely happy sleeping child’.
72      EUIPO disputes the applicant’s arguments.
73      As regards the assessment of whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
74      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
75      Furthermore, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
76      However, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32).
77      In the present case, the Board of Appeal correctly identified the word element ‘dormilon’ in the earlier sign as being the dominant element
in the perception of that sign by the Swedish- or Danish-speaking relevant public.
78      In the first place, the Board of Appeal was right in pointing out that that element had an average degree of distinctiveness. In that regard, it observed that, although the word elements in the earlier sign, namely the term ‘dormilon’ and the terms ‘el placer de dormir’ would be understood by the Spanish-speaking public, they would, however, be meaningless for the Swedish- or Danish-speaking public.
79      The applicant’s arguments cannot call that finding into question.
80      In so far as the applicant claims that the relevant public which speaks Swedish or Danish, but not Spanish, will be able to make an association between the word elements of the earlier sign and the English words ‘dorm’, ‘pleasure’ and ‘please’ as well as the French words ‘dormir’ and ‘plaisir’ and that, consequently, the word elements of that sign are not distinctive, it must be pointed out that knowledge of a language in a territory can be assumed only as regards the native language in that territory. Linguistic knowledge of a foreign language may exceptionally be regarded as a well-known fact and must, as to the remainder, be put forward and proved by the party on whom the burden of proof lies (see judgment of 23 September 2020, Brillux v EUIPO – Synthesa Chemie (Freude an Farbe), T‑402/19, not published, EU:T:2020:429, paragraph 28 and the case-law cited).
81      First, since the applicant has not proved that the Swedish- or Danish-speaking relevant public has a knowledge of French, it cannot therefore be assumed that that public knows the meaning of the French terms ‘plaisir’ and ‘dormir’ and that it is, as a result, able to understand the meaning of the Spanish terms ‘placer’ and ‘dormir’.
82      Secondly, since it has already been recognised by the case-law that a basic understanding of English on the part of the Scandinavian public is a well-known fact (see, to that effect, judgment of 22 May 2012, Kraft Foods Global Brands v OHIM – fenaco (SUISSE PREMIUM), T‑60/11, not published, EU:T:2012:252, paragraph 50), it must be accepted that the Swedish- or Danish-speaking relevant public knows the meaning of the English terms ‘pleasure’ or ‘please’. However, those English terms are sufficiently different from the Spanish term ‘placer’, as the Board of Appeal correctly pointed out in paragraph 56 of the contested decision, for that public to be incapable of attributing a meaning to that term of Spanish origin as a result of knowing the meaning of the terms ‘pleasure’ and ‘please’ in English.
83      Furthermore, even if the Swedish- or Danish-speaking relevant public understood the English word ‘dorm’, the expression ‘el placer de dormir’ and the term ‘dormilon’ which comprise the earlier sign do not, as a whole, have any meaning in English and do not therefore have
any meaning for that public.
84      It follows that the Board of Appeal did not make any error of assessment in finding, in paragraph 59 of the contested decision, that,
in the perception of the Swedish- or Danish-speaking relevant public,
the word elements of the earlier sign were inherently distinctive to a normal degree with regard to the relevant goods and services.
85      In that context, it must also be pointed out, as the Board of Appeal stated in paragraph 60 of the contested decision, that, since the expression ‘el placer de dormir’ in the earlier sign is written in smaller letters than those of the element ‘dormilon’, it will have less of an impact on the relevant public’s perception of the earlier sign than the element ‘dormilon’.
86      In the second place, the Board of Appeal was also right in pointing out, in paragraph 63 of the contested decision, that the distinctive character of the figurative element in the earlier sign, which consists of a representation of the face of a ‘sweet, or happy, sleeping child’, was weak with regard to the goods and services covered by the earlier mark which related to beds, since it alluded to the message that the goods and services covered by the earlier mark enabled the consumer to sleep happily.
87      It is important to point out, first of all, that, in line with the Board of Appeal, the applicant takes the view that the figurative element in the earlier sign is a representation of the face of an ‘extremely happy sleeping child’.
88      In addition, the applicant submits that the figurative element in the earlier sign is more important in the overall impression conveyed by that sign, in particular on account of the weak distinctive character of the word elements in that sign and the size of, and colours used in, the figurative element, which therefore holds the consumer’s attention more than the word elements.
89      In that regard, it must be stated, first, that, as is apparent from paragraph 84 above, the applicant errs in claiming that the word element ‘dormilon’ in the earlier sign has a weak inherent distinctive character with regard to the goods and services at issue.
90      Secondly, contrary to the applicant’s arguments, the size and colours of the figurative element in the earlier sign are not such as to make it the most important element in the relevant public’s perception of that sign. On account of its size, the word element ‘dormilon’ in the earlier sign prevails over the figurative element in that sign in the perception of the sign.
91      Furthermore, the colours used in the figurative element representing a sleeping child do not make that element more powerful in the overall impression created by the earlier sign. The green colour used in that figurative element is also present in the lower part of that sign as the background and thus strengthens the perception of the word element ‘dormilon’, which is in white.
92      In the light of the foregoing, having regard to the inherent distinctiveness of the various elements comprising the earlier sign and the size and position of those elements, the Board of Appeal was right in finding that, for the Swedish- or Danish-speaking public, the overall impression created by the earlier sign was dominated by the word element ‘dormilon’, although the figurative element of that sign was not, however, to be regarded as negligible.
93      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the signs at issue were visually and phonetically similar, findings which the applicant disputes.
–       The visual similarity
94      The Board of Appeal observed that, in the light of the fact that the word element ‘dormilon’ in the earlier sign and the only word element in the sign applied for ‘dormillo’ coincided in the first six letters and were the same length, because they each contained eight letters, the signs at issue were visually similar to an average degree. The Board of Appeal also took into account the existence of other aspects in which those word elements differed, namely the endings ‘-on’ with regard to the earlier sign and ‘-lo’ with regard to the sign applied for and also the presence of the double consonant ‘ll’ in the word element of the sign applied for.
95      The applicant submits that, contrary to what the Board of Appeal found, the signs at issue are not visually similar, since the overall impression created by the earlier sign
is,
in particular in the light of the colours used, dominated by the figurative element in that sign, the word elements will be perceived as a whole, namely as a whole slogan meaning ‘Sleepyhead – the pleasure of sleeping’, and
the signs at issue differ in the way in which the word elements in those signs are written and spelt.
96      EUIPO disputes the applicant’s arguments and submits, as the Board of Appeal found, that the signs are visually similar.
97      In that regard, it must be pointed out that the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually similar to an average degree because the word element ‘dormilon’ in the earlier sign, the element which is dominant in the relevant public’s perception of that sign (see paragraph 92 above), and the only word element, ‘dormillo’, in the sign applied for had in common seven out of the eight letters of which they consisted, the first six of which were in the same order.
98      In so far as the applicant submits, first, that there is an obvious visual difference between the signs at issue on account of the double consonant ‘ll’ in the word element ‘dormillo’ of the sign applied for, a double consonant which is lacking in the earlier sign, it is important to point out, as the Board of Appeal found, that that difference will be diluted in the relevant public’s memory, first, because of that public’s imperfect recollection of the signs at issue and, secondly, because of the fact that, in both signs, the letter ‘l’ is followed by the letter ‘o’.
99      Secondly, contrary to what the applicant claims, the other visual differences between the signs at issue, namely the different endings and the different stylisations of the word elements ‘dormilon’ and ‘dormillo’, are not sufficient to counteract the visual similarity between the signs considered as a whole.
100    First, as is apparent from the case-law, even though the signs at issue must be compared as a whole, the consumer normally attaches more importance to the first part of words (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 27 October 2005, Editions Albert René v OHIM – Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 75). Consequently, in the present case, the difference in the endings of the word elements ‘dormilon’ and ‘dormillo’ in the signs at issue will be less capable of being perceived by the relevant public than the coincidence in the first six letters of those elements.
101    Secondly, as regards the differences in the way in which the word elements in the signs at issue are written, it must be borne in mind that the mark applied for is a word mark. As is apparent from the case-law, the protection which results from the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might have (see judgment of 12 December 2014, Groupe Canal + v OHIM – Euronews (News+), T‑591/13, not published, EU:T:2014:1074, paragraph 30 and the case-law cited). Accordingly, the differences in the use of upper or lower case or the use of a different font in the signs at issue has no impact on the visual comparison of those signs, as the Board of Appeal pointed out, in essence, in paragraph 72 of the contested decision.
102    Thirdly, as regards the applicant’s argument that the differences between the signs at issue result from the presence of the figurative element in the earlier sign, the importance of which prevails over that of the word elements, it must be pointed out, as the Board of Appeal found, that, even though that figurative element is not negligible in the overall impression created by that signs, it has less of an impact on the relevant public’s perception of that sign than the word element ‘dormilon’.
103    Consequently, contrary to what the applicant claims, in the overall assessment of the visual similarity between the signs at issue the differences which it has highlighted cannot outweigh the similarity resulting from the presence of the word elements ‘dormilon’ in the earlier sign, a word element which dominates the overall impression created by that sign, and ‘dormillo’ in the sign applied for. Its claim must therefore be rejected.
–       The phonetic similarity
104    The Board of Appeal found that, in the light of the fact that the word elements ‘dormilon’ in the earlier sign and ‘dormillo’ in the sign applied for had the same number of syllables and the double consonant ‘ll’ in the term ‘dormillo’ was pronounced as a single consonant ‘l’, the signs at issue were highly similar phonetically. It added that, to economise on words, consumers would not pronounce the word elements ‘el placer de dormir’ in the earlier sign and that, even if those words were pronounced, the signs at issue were nevertheless phonetically similar to a high degree.
105    According to the applicant, the signs at issue are not phonetically similar or, at least, not phonetically similar to a high degree. It submits that, contrary to what the Board of Appeal found, the consumer perceives the earlier sign as a whole, namely as ‘dormilon el placer de dormir’, and not only as the term ‘dormilon’ on its own. Consequently, it argues that there is no phonetic similarity between the slogan in the earlier sign, which consists of several words, and the sole word element ‘dormillo’ in the sign applied for.
106    Furthermore, the applicant submits that, even if only the words ‘dormilon’ and ‘dormillo’ were to be compared, they would be pronounced differently.
107    EUIPO disputes the applicant’s arguments and takes the view that the signs are phonetically similar to a high degree.
108    In that regard, it must be pointed out first of all that the Board of Appeal was right
in taking into account only the word elements of the signs at issue when carrying out the phonetic comparison of those signs, since the figurative elements of the signs cannot, by definition, be pronounced and their visual or conceptual content can, at most, be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Consequently, it is not necessary to examine separately the phonetic perception of the figurative elements of a composite mark (see, to that effect, judgments of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 67, and of 7 February 2012, Dosenbach-Ochsner v OHIM – Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraphs 45 and 46).
109    Next, in the first place, it must be pointed out, as stated by the Board of Appeal that, according to the case-law, a trade mark which includes several words will generally be abbreviated orally to something easier to pronounce (see judgment of 2 February 2011, Oyster Cosmetics v OHIM – Kadabell (Oyster cosmetics), T‑437/09, not published, EU:T:2011:23, paragraph 45 and the case-law cited). Furthermore, it is important to point out that the expression ‘el placer de dormir’ occupies a secondary position in relation to the word element ‘dormilon’ in the earlier sign, since it is written in smaller letters and is situated below that word element.
110    It follows that, contrary to what the applicant submits, the relevant public, when referring orally to the earlier mark, will pronounce only the word element ‘dormilon’ in that mark, a word element which can easily be separated from the expression ‘el placer de dormir’ by virtue of its size and its position within the earlier sign, and will omit that expression, which is more difficult for a non-Spanish-speaking public to pronounce.
111    In the second place, as regards the applicant’s argument that the signs at issue are phonetically different because the word element ‘dormilon’ in the earlier sign ends in a closed consonant, ‘n’, whereas the word element ‘dormillo’ in the sign applied for ends in an open vowel, ‘o’, it must be pointed out, as is apparent from the case-law referred to in paragraph 100 above, that the public normally attaches more importance to the first part of words. The terms ‘dormilon’ and ‘dormillo’ in the signs at issue have the same number of syllables, the first two of which will be pronounced in the same way. The difference in the pronunciation of the last syllables in those signs, ‘lon’ and ‘llo’, which is pointed out by the applicant, is negligible in the assessment of the pronunciation of those word elements. Consequently, it must be held, as the Board of Appeal found, that the mere fact that the endings of the word elements ‘dormilon’ and ‘dormillo’ in the signs at issue are different is not sufficient to reduce the high degree of phonetic similarity between those signs.
112    In the third place, as regards the applicant’s argument that the phonetic dissimilarity between the signs at issue is a result of the pronunciation, in some languages, of the double consonant ‘ll’ in the term ‘dormillo’ in the sign applied for as a ‘j’, it must be pointed out that the applicant does not claim that part of the Swedish- or Danish-speaking relevant public will pronounce it that way. However, it is with regard to that part of the relevant public that the Board of Appeal assessed whether there were any similarities, including any phonetic similarity, between the signs at issue, a point which the applicant does not dispute. The applicant’s argument, even if it were well founded as regards the pronunciation of the term ‘dormillo’ by the other consumers in the relevant public, in particular by part of the Spanish-speaking public, is ineffective in the present case.
113    The applicant’s claim must therefore be rejected.
The likelihood of confusion
114    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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
115    In the present case, the Board of Appeal found that the earlier mark had a normal distinctive character. It also pointed out that, as the goods and services at issue were often marketed by means of self-service, the visual comparison between the signs at issue might be of more importance, although the phonetic aspect was not, however, irrelevant, since those goods and services could also be advertised orally or be the subject of oral discussion relating to the characteristics of the goods and their marks. It found, in the context of its global assessment, that, in the light of the fact that the goods and services covered by the marks at issue were, in part, identical and, in part, similar and in the light of the fact that the signs at issue were visually similar to an average degree and phonetically similar to a high degree and those similarities were not weakened by the concept conveyed by the figurative element of the earlier sign, which was weak with regard to the goods and services at issue, there was a likelihood that a significant part of the public consisting of Swedish- or Danish-speaking consumers would be led to think that the goods and services at issue, which bore similar signs, came from the same undertaking or, as the case may be, from economically linked undertakings, in spite of the fact that that public displayed a high or above-average level of attention. It therefore found that there was a likelihood of confusion.
116    The applicant argues that the average consumer, who must rely on his or her imperfect recollection of a mark, will remember rather the figurative element of the earlier mark, the importance of which for the proprietor of the mark is, according to the applicant, confirmed by the fact that the same image is used in its various trade marks. Consequently, according to the applicant, the visual differences between the signs at issue resulting from the presence of that important figurative element of the earlier sign must lead to the conclusion that the signs are dissimilar or, at most, visually similar to a low degree and to the conclusion that, owing to the greater importance which must, in the present case,
in the light of the goods and services covered, be attached
to the visual comparison of the signs, a likelihood of confusion must be ruled out.
117    EUIPO disputes the applicant’s arguments.
118    In that regard, first, it must be pointed out, as is apparent from paragraphs 97 and 103 above, that the Board of Appeal correctly assessed the visual similarity between the signs at issue in finding that there was an average degree of visual similarity.
119    Secondly,
it must be pointed out that, contrary to what the applicant suggests, the Board of Appeal took into account the fact that, since the goods and services at issue were often marketed by means of self-service, the visual comparison could be of more importance in the context of the global assessment of the likelihood of confusion. Nevertheless, it was right in adding that the phonetic comparison was not, however, irrelevant and could be as important as the visual comparison with regard to
the goods in respect of which an oral discussion of their characteristics was also likely to take place at the time of purchase or which could be advertised orally. Accordingly, taking those factors into account, the Board of Appeal correctly concluded that there was a likelihood of confusion as there was an average degree of visual similarity between the signs at issue.
120    Contrary to what the applicant claims, in the light of the similarity or identity of the goods and services at issue and the average degree of visual similarity and high degree of phonetic similarity between the signs at issue,
the difference between the signs at issue resulting from the presence of the figurative element in the earlier sign cannot, on its own or taken together with the factor of the importance which must be attached to the visual comparison of the signs, rule out the existence of a likelihood of confusion in the present case.
121    Thirdly, the applicant’s argument that the figurative element in the earlier sign is used by the proprietor of the earlier mark in some of its other marks is, in the present case, irrelevant. As EUIPO rightly points out, the assessment of the likelihood of confusion must be carried out with regard to each earlier right taken individually, except in cases in which a party claims that it is the proprietor of a series of trade marks. However, in the present case, the Board of Appeal rejected the argument of the other party to the proceedings before EUIPO based on the existence of a series of trade marks of which it was the proprietor, since it had not provided proof of use on the market. Consequently, it did not examine whether there was, in the present case, a likelihood of confusion by taking into account the existence of a series of trade marks.
122    It follows that the Board of Appeal was right, taking into account all of the relevant factors, in finding that there was a likelihood of confusion in the present case.
123    Furthermore, it must be pointed out, as observed by EUIPO, that the Board of Appeal examined whether there was a likelihood of confusion with regard solely to the earlier mark reproduced in paragraph 5 above. The applicant’s arguments regarding the lack of any likelihood of confusion as regards other earlier rights which the other party to the proceedings before EUIPO relied on in support of the opposition are therefore ineffective.
124    In view of all of the foregoing considerations, the single plea on which the applicant relied must be rejected and the action must therefore be dismissed in its entirety.
Costs
125    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 form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Roller GmbH & Co. KG to pay the costs.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 20 October 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.