JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
29 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a lightning bolt – Earlier EU figurative mark representing a lightning bolt – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑12/23,
Beauty Boutique sp. z o.o., established in Warsaw (Poland), represented by M. Nowakowski, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and J. Ivanauskas, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Lightningbolt Europe SA, established in São Cosme Vale (Portugal), represented by P. Sousa e Silva, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Beauty Boutique sp. z o.o., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 October 2022 (Case R 668/2022-5) (‘the contested decision’).
Background to the dispute
2        On 5 June 2020, Przedsiębiorstwo, the applicant’s predecessor-in-title, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3        The mark applied for covered goods, after the restriction made in the course of proceedings before EUIPO in the opposition proceedings B 3 130 580, in Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Parts of clothing, footwear and headgear; hats; shoes; clothing’.
4        On 11 September 2020, the intervener, Lightningbolt Europe SA, filed a notice of opposition against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on, inter alia, the earlier EU trade mark No 18 172 869, reproduced below, filed on 2 January 2020, which covers goods and services in Classes 9, 25, 28, 35 and, for the goods in Class 25, corresponding to the following description: ‘Clothing, footwear, headgear’:
6        The ground invoked in support of the opposition was that referred to in Article 8(1)(b) of 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).
7        On 23 February 2022, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001, in respect of all the goods referred to in paragraph 3 above, on the ground that there was a likelihood of confusion.
8        On 21 April 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion, in respect of all the goods referred to in paragraph 3 above. First, the Board of Appeal found that the relevant public consisted of, first, at least for ‘clothing, footwear, headgear; hats; shoes; clothing’, of the public at large likely to display an average degree of attention and, second, as regards ‘parts of clothing, footwear and headgear’, of the public at large and professionals displaying an average and higher-than-average level of attention respectively. Secondly, the Board of Appeal found that the goods at issue were in part identical and in part similar to an average degree. Thirdly, the Board of Appeal took the view that the signs at issue possessed average inherent distinctive character, that they were purely figurative, making a phonetic comparison irrelevant given the absence of verbal elements, and that they were visually similar to an average degree and conceptually identical. Fourthly, the Board of Appeal held that the earlier mark had average inherent distinctive character, and that, in the light of the above conclusions, there was a likelihood of confusion in relation to all of the goods which have been referred to in paragraph 3 above.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs incurred if a hearing is held.
12      The intervener contends that the Court should:
–        dismiss the application;
–        uphold the contested decision;
–        order the applicant to pay the costs, including those incurred in the proceedings before EUIPO.
Law
13      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal found there to be a likelihood of confusion. The applicant disputes the Board of Appeal’s assessment, first, regarding the relevant public at issue, secondly, regarding the comparison of the signs at issue, and thirdly, the global assessment of the likelihood of confusion.
14      EUIPO and the intervener dispute the applicant’s arguments.
15      In accordance with Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 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.
16      The risk that the public might believe that the goods or services at issue 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).
17      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).
18      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The relevant public
19      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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).
20      In the present case, the Board of Appeal, in paragraphs 17 to 23 of the contested decision, found that the relevant territory in this case was the European Union. It held that the relevant public for the goods at issue in Class 25 was the public at large, which is likely to display an average degree of attention, and that, among those goods, the ‘parts of clothing, footwear and headgear’ covered by the mark applied for were also aimed at professionals, who, for their part, demonstrated a higher-than-average level of attention.
21      Specifically, the Board of Appeal rejected the applicant’s claim that the goods covered by the earlier mark targeted the surfing community, whose level of attention would be higher than average, recalling that the assessment of the level consumer attention had to be based on the wording in the respective lists of goods and, also, that there was no evidence produced to that effect.
22      The applicant contests that assessment by asserting, with reference to the intervener’s documents, that the goods covered by the earlier mark are aimed at a specific and restricted group of people who form the surfing community and people interested in that environment. According to the applicant, that group of consumers will pay more attention to the details of clothing, accessories, and sports equipment, and will be able to distinguish between the marks at issue. The goods covered by the mark applied for are, for their part, aimed at a completely different group of consumers. The applicant considers that, in the present case, the relevant public is the public at large whose level of attention is high.
23      EUIPO and the intervener dispute the applicant’s arguments.
24      With regard to the applicant’s argument that the goods covered by the earlier mark target a specific and restricted group of people forming the surfing community, it is clear from settled case-law that for the purposes of assessing the existence of a likelihood of confusion, only the description of the goods for which registration of the mark has been requested is relevant, the use, actual or intended, of this mark cannot be taken into account, as long as the registration does not contain a limitation in that sense. It follows that the specific use which the proprietor of the earlier mark has made of its sign is not capable of changing the goods or services taken into account for the purposes of the assessments underlying the finding of the existence of a likelihood of confusion, such as the definition of the relevant public and its level of attention or the similarity between those goods or services on the part of that public (see judgments of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 36, and of 4 May 2022, Fidelity National Information Services v EUIPO – IFIS (FIS), T‑237/21, not published, EU:T:2022:267, paragraph 29).
25      However, in accordance with the analysis of the Board of Appeal, no clarification in the wording of the goods covered by the earlier mark allows it to be considered that those goods are essentially targeted at the surfing community or for people interested in that environment.
26      Furthermore, regarding ‘clothing’, ‘footwear’ and ‘headgear’ in Class 25, it is apparent from the case-law that those goods are considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (judgments of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraph 40, and of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easySTEP), T‑21/19, EU:T:2020:310, paragraph 40). It should be added, in that regard, that, in accordance with what is claimed/asserted by EUIPO and the intervener, the applicant’s argument according to which the relevant public for the goods covered by the earlier mark would have a high level of attention, is not supported by any evidence.
27      It follows from the above that the applicant’s arguments are not capable of calling into question the Board of Appeal’s findings concerning the relevant public and its level of attention.
The comparison of the signs
28      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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 that 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).
29      Two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more of those relevant aspects (see judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 30 and the case-law cited).
30      In the present case, in paragraphs 30 to 40 of the contested decision, the Board of Appeal found that the signs at issue had average inherent distinctive character, presented an average degree of visual similarity and were conceptually identical. It also considered that a phonetic comparison was irrelevant given the absence of verbal elements. Due to the average degree of visual similarity and the conceptual identity of the signs at issue, the Board of Appeal concluded that the signs at issue had a higher-than-average degree of similarity.
31      The applicant disputes the Board of Appeal’s findings in respect of visual and conceptual similarity.
Visual similarity
32      In respect of the visual comparison of the signs, the Board of Appeal explained that the marks at issue both represented a lightning bolt with similar proportions and angles of inclination, but that they had differences in their upper parts, as the earlier mark has a very pointed top, whereas in the mark applied for, it is wider and almost rectangular. Also, regarding their colours, the earlier mark is black whereas the mark applied for is white with black edges. The Board of Appeal found that, in view of the overall impression of the marks at issue, their common characteristics should be given more weight than their differences. Accordingly, the Board of Appeal concluded that the signs had an average degree of visual similarity.
33      The applicant disputes that analysis, asserting that, beyond the differences mentioned in the contested decision, there are visible differences between the signs at issue also in the central part of the marks, in the contours, in the proportions of the shape of the signs, in their colours and in the inclination of the signs due to the differences in the geometric shapes, angles on the contours and the thickness of the lines. The earlier mark features slender, sharp edges, while the mark applied for features simple bold lines. In doing so, in view of the overall impression, those signs differ considerably visually and have a lower than average degree of visual similarity.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      In the present case, it should be noted that the signs at issue represent a lightning bolt with similar proportions and angles of inclination. However, whereas the mark applied for has rounded edges, is white in colour with black borders and has one end of its upper part wide and rectangular, the earlier mark contains sharp borders and is entirely black in colour.
36      It must be concluded that the differences between the signs at issue are not sufficient to outweigh the visual similarity arising from the common representation of a lightning bolt and similar proportions and angles of inclination. The relevant public confronted with one or other of the marks at issue will retain the overall impression of a lightning bolt, without paying particular attention to the differences in the shape and colour of the signs at issue.
37      According to the case-law and as noted by EUIPO, the difference in the graphic stylisation of the signs is a minor element which is unlikely to remain in the memory of the relevant public (see, by analogy, judgments of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 80; of 20 October 2011, Scatizza v OHIM – Jacinto (Horse Couture), T‑238/10, not published, EU:T:2011:613, paragraph 31; and of 7 December 2022, Sanetview v EUIPO – 2boca2catering (Las Cebras), T‑159/22, not published, EU:T:2022:772, paragraph 45).
38      It follows from the above that, having regard to the overall visual impression produced by the mark applied for and the earlier mark on the relevant public, the Board of Appeal was right to conclude that the signs at issue were similar to an average degree.
Conceptual Similarity
39      Concerning the conceptual comparison of the signs, the Board of Appeal considered that the marks at issue were identical, because they both conveyed the concept of a lightning bolt.
40      The applicant criticises this analysis by maintaining that the signs at issue have different conceptual meanings. The representation of a lightning bolt in the earlier mark is used to distinguish sports clothing and is often surrounded by the English expressions ‘Lightning Bolt’ or ‘Lightning Bolt, a Pure Source’, not being a simple lightning bolt, but a lightning strike representing an electrical hazard. The mark applied for, for its part, is only associated with a lightning bolt. The applicant further stated that that mark can be drawn or superimposed on different goods, either alone or by replacing the capital letter ‘I’ in the word written in capital letters ‘EKCENTRIK’, which constitutes a mark of the applicant registered under the numbers 018 249 029 and 018 249 033.
41      EUIPO and the intervener dispute the applicant’s arguments.
42      In that respect, first, it should be remembered that it is settled case-law that conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 37 and the case-law cited; judgment of 9 November 2022, Société Elmar Wolf v EUIPO – Fuxtec (Representation of the head of an animal), T‑596/21, not published, EU:T:2022:697, paragraph 45). In the present case, as found by the Board of Appeal, the marks at issue refer to the same concept, namely, a lightning bolt, and thus convey the same idea to the relevant public.
43      Secondly, it must also be borne in mind that, when assessing identity or similarity, the signs must be compared in the form in which they are protected, that is, as they were registered or as they appear in the application for registration. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (see judgment of 20 April 2018, Mitrakos v EUIPO – Belasco Baquedano (YAMAS), T‑15/17, not published, EU:T:2018:198, paragraph 34 and the case-law cited).
44      Therefore, contrary to what the applicant maintains, the elements which are added to the mark applied for on the goods, such as the term in capital letters ‘EKCENTRIK’, in which the representation of a lightning bolt replaces the capital letter ‘I’, are irrelevant for the purposes of assessing the conceptual similarity of the signs at issue. The same applies to the fact that the sign of the earlier mark can often be used surrounded by the English expressions ‘Lightning Bolt’ or ‘Lightning Bolt, a Pure Source’.
45      Consequently, it must be concluded that the Board of Appeal was right to consider that the signs at issue were conceptually identical.
46      It follows that the Board of Appeal did not err in concluding that the signs at issue had a higher than average degree of similarity, due to their average degree of visual similarity and their conceptual identity.
The overall assessment of the likelihood of confusion
47      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 (see 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 74 and the case-law cited).
48      The distinctive character of the earlier mark is another relevant factor which needs to be considered in the context of the global assessment of likelihood of confusion (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
49      In the present case, the Board of Appeal, in paragraphs 45 to 49 of the contested decision, held that the goods at issue were in part identical and in part similar to an average degree, that the signs at issue had a higher-than-average degree of overall similarity and that the earlier mark had a normal degree of distinctiveness. The Board of Appeal thus held that, regarding those elements, a significant part of the relevant public may be misled into thinking that the goods of the two brands come from the same undertaking or economically linked undertakings.
50      The Board of Appeal therefore concluded that there was a likelihood of confusion, even taking into account the higher-than-average level of attention of part of the relevant public.
51      The applicant contests that assessment by asserting that the overall impression of the signs at issue, as well as the differences between them, is sufficient to eliminate a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. The applicant asserts that those signs do not present significant visual similarities and that, due to the differences existing as regards the target audience, the visual appearance of the signs at issue and the concept conveyed by them, the relevant public confronted with these signs will not think that the goods at issue come from the same undertaking or economically linked undertakings.
52      EUIPO and the intervener dispute the applicant’s arguments.
53      In that regard, as EUIPO correctly recalls, it should be noted that this complaint is based on the hypothesis that the Board of Appeal made several errors in the definition of the relevant public and in the comparison of the signs at issue. However, as is apparent from the examination of the applicant’s arguments in paragraphs 19 to 46 above, the applicant’s arguments do not allow the analysis of the Board of Appeal to be called into question in that regard.
54      Furthermore, the applicant does not dispute that the goods covered by the marks at issue are partly identical and partly similar to an average degree, nor that the earlier mark has an average inherent distinctive character.
55      Therefore, the applicant has not presented any argument capable of invalidating the overall assessment of the likelihood of confusion carried out by the Board of Appeal in the contested decision.
56      In view of the foregoing, it is appropriate to reject the applicant’s argument on the overall assessment of the likelihood of confusion and consequently, to dismiss the action in its entirety, without there being any need to respond to the intervener’s second form of order sought by which it requests the Court to uphold the contested decision. Since ‘upholding’ the contested decision is tantamount to dismissing the action, it is appropriate to consider the intervener’s first two forms of order sought as seeking solely the dismissal of the action (see judgment of 13 July 2018, Star Television Productions v EUIPO – Marc Dorcel (STAR), T‑797/17, not published, EU:T:2018:469, paragraph 75 and the case-law cited).
Costs
57      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.
58      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the latter. In contrast, EUIPO having concluded that the applicant should be ordered to pay costs only in the event of the organisation of a hearing, it is appropriate, in the absence of the organisation of a hearing, to decide that EUIPO is to bear its own costs.
59      The intervener also claimed that the applicant should be ordered to pay the costs incurred in the proceedings before EUIPO. In that regard, without it being necessary to refer to Article 190(2) of the Rules of Procedure, under which only the essential costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraphs 193 and 194 and the case-law cited).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Beauty Boutique sp. z o.o. to bear its own costs and to pay those incurred by Lightningbolt Europe SA for the purposes of the proceedings before the General Court;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk
Hesse
Ricziová
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.