JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
20 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for registration of the EU word mark HPC POLO — Earlier EU word mark POLO — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Distinctive character — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑657/17,
Gidon Anabi Blanga, residing in Mexico (Mexico), represented by J. Sanmartín Sanmartín, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Zajfert, D. Walicka and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
The Polo/Lauren Company LP, established in New York, New York (United States), represented by R. Black, Solicitor, and S. Baran, Barrister,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 June 2017 (Case R 2368/2016-1), relating to opposition proceedings between The Polo/Lauren Company and Mr Anabi Blanga,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 September 2017,
having regard to the response of EUIPO lodged at the Court Registry on 9 January 2018,
having regard to the response of the intervener lodged at the Court Registry on 12 January 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 5 December 2014, the applicant, Mr Gidon Anabi Blanga, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The mark in respect of which registration was applied for is the word sign HPC POLO.
3        The goods in respect of which registration was applied for are in, inter alia, Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following descriptions:
–        Class 18: ‘Leather, imitations of leather, animal skins, hides and goods of leather, namely handbags or bags, briefcases, rucksacks, cases, wallets, purses, document cases; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery’;
–        Class 25: ‘Clothing; Footwear; Headgear; Leather belts [clothing]’.
4        The EU trade mark application was published in EU Trade Marks Bulletin No 42/2015 of 3 March 2015.
5        On 12 May 2015, the intervener, The Polo/Lauren Company LP, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods mentioned in paragraph 3 above.
6        The opposition was based, in particular, on the earlier EU word mark POLO, registered on 12 August 2010 under No 4049334, covering goods in Classes 18 and 25 and corresponding, for each of those classes, to the following description:
–        Class 18: ‘Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherware) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts, net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, and wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
–        Class 25: ‘Clothing, underclothing; shoes and footwear; headgear; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, wraps, jerseys, sweaters, waistcoats, dresses, jumpers, sleepwear, robes, warm-up suits, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, dress shirts, blouses; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, vests, hosiery, scarves, pajamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear; but not including shirts other than dress shirts, and not including garments with polo necks, and not including any of the aforesaid goods being sports clothing intended for use in playing polo’.
7        The grounds relied upon in support of the opposition were inter alia, those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2012/1001).
8        By decision of 31 October 2016, the Opposition Division upheld the opposition in respect of the goods referred to in paragraph 3 above, on the basis of Article 8(1)(b) of Regulation No 207/2009.
9        On 19 December 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division in respect of the goods referred to in paragraph 3 above.
10      By decision of 14 June 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal, upholding the merits of the opposition in respect of the goods referred to in paragraph 3 above, pursuant, in part, to Article 8(1)(b) of Regulation No 207/2009 and, in part, to Article 8(5) of that regulation. In that respect, according to the Board of Appeal, the relevant public is composed of the public at large in the European Union, whose level of attention is average; the goods covered by the marks at issue are identical; the signs are similar to an average degree, on account of their common element ‘polo’, which has a normal intrinsic distinctive character in the light of the goods concerned, with the exception of ‘whips, harness and saddlery’ (‘the excluded goods’); and the earlier mark enjoys, so far as concerns ‘clothing’, a distinctive character enhanced by its recognition by the public, together with a reputation. In the light of, inter alia, those findings, the Board of Appeal found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in regard to all of the goods concerned, with the exception of the excluded goods, and that, so far as the latter are concerned, the mark applied for was likely to bring the earlier mark to mind, regard being had to the latter’s reputation, and to take unfair advantage of that reputation, within the meaning of Article 8(5) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–         order EUIPO to bear its own costs and to pay those of the applicant.
12      EUIPO and the intervener contend, in essence, that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of his action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Prior to examining the merits of that plea, the Court must of its own motion raise an issue of admissibility concerning the scope of the applicant’s action for annulment.
Admissibility
14      It should be noted that, although the applicant seeks annulment of the contested decision, without further elaboration, and thus annulment of that decision in its entirety, his single plea refers only to that part of the decision in which the Board of Appeal upheld the merits of the opposition on account of the likelihood of confusion between the marks at issue with regard to the goods concerned, with the exception of the excluded goods. It follows that, as rightly pointed out by EUIPO and the intervener, the applicant has raised no plea to challenge that part of the contested decision in which the Board of Appeal held that the registration of the mark applied for in respect of the latter goods was caught by the relative ground for refusal provided for in Article 8(5) of Regulation No 207/2009.
15      In that regard, it should be recalled that, according to settled case-law, in the case where the applicant does not submit a plea in law in support of a head of claim, the requirement set down in Article 177(1)(d) of the Rules of Procedure of the General Court that there must be a summary of the pleas in law relied upon will not have been satisfied (see, by analogy, judgments of 12 April 2013, Koda v Commission, T‑425/08, not published, EU:T:2013:183, paragraph 71, and of 16 September 2013, Dornbracht v Commission, T‑386/10, EU:T:2013:450, paragraph 44).
16      Consequently, the action for annulment of the contested decision is manifestly inadmissible so far as concerns the part of that decision in which the Board of Appeal applied Article 8(5) of Regulation No 207/2009.
Substance
17      So far as concerns the substance of the action, it should be noted that, by his single plea, the applicant criticises the Board of Appeal, in essence, for having committed errors when comparing the signs, inasmuch as it allegedly failed to assess them in their entirety and to take due account of the weak distinctive character of the word ‘polo’. It is argued that those errors led the Board of Appeal to recognise, wrongly, that there was a likelihood of confusion.
18      EUIPO and the intervener take issue with the applicant’s arguments.
Preliminary observations
19      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition from the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity or similarity with an earlier 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
20      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
21      So far as concerns the definition of the relevant public and the similarity of the goods, it is necessary to uphold the Board of Appeal’s findings — which, moreover, are not disputed by the parties — that, first, this was the public at large located in the European Union, with an average degree of attentiveness; and, secondly, the goods were identical.
The comparison of the signs and the likelihood of confusion
22      In paragraphs 39 to 41 of the contested decision, the Board of Appeal held that the signs at issue were visually, phonetically and conceptually similar to an average degree, on account of the common element ‘polo’ and by reason of the fact that the element ‘hpc’ of the mark applied for was not sufficient to introduce differences neutralising that common element. Having noted, in paragraphs 46 to 51 of the contested decision, that the intervener had proved the enhanced distinctive character of the earlier mark by reason of the public’s familiarity with it, the Board of Appeal recognised the existence of a likelihood of confusion between the signs at issue for the goods referred to in paragraph 3 above, with the exception of the excluded goods.
23      In that regard, first, the applicant claims that the Board of Appeal failed to take proper account of all of the elements of the mark applied for and to apply the case-law concerning the comparison of short signs.
24      Secondly, the applicant maintains that the word ‘polo’ has weak intrinsic distinctive character in regard to the goods concerned, in particular ‘clothing’, given that that word refers, in several official languages of the European Union including English, to a type of clothing. Moreover, the presence on the markets of numerous registered trade marks containing that word further weakens that distinctive character.
25      EUIPO and the intervener dispute the applicant’s arguments.
26      It should be recalled that 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 produced by those signs, taking account, in particular, of 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).
27      Assessment of the similarity between two marks means more than taking merely 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42 and the case-law cited, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
28      Lastly, it should be borne in mind that the greater or lesser degree of distinctiveness of the elements common to a mark applied for and to an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgments of 26 March 2015, Royal County of Berkshire Polo Club v OHIM — Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited, and of 10 November 2016, Polo Club v EUIPO — Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraph 49).
29      So far as concerns the first group of arguments put forward by the applicant, it is clear, contrary to the latter’s submissions, that the Board of Appeal, in concluding that the signs HPC POLO and POLO were visually, phonetically and conceptually similar to an average degree, took the mark applied for into consideration as a whole, including therefore its element ‘hpc’, which is expressly mentioned in paragraphs 31, 37 and 39 of the contested decision. Were it otherwise, the Board of Appeal could have found only that the signs at issue were identical. The applicant is therefore wrong to claim that the Board of Appeal omitted to take the element ‘hpc’ into account.
30      In this context, it should be recalled that, according to the case-law, when the sole component of the earlier mark is included in its entirety within the mark applied for, the signs at issue are partially identical in such a manner as to create a certain impression of visual similarity in the mind of the relevant public (see, to that effect, judgments of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 92, and of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 65). That case-law was delivered with regard to signs comprising a number of letters comparable to that of the signs concerned in the present case; the Board of Appeal cannot, therefore, be criticised for having applied that principle.
31      Furthermore, as EUIPO has observed, it must be noted that the facts of the present case differ from those of the case which gave rise to the judgment of 12 November 2009, Spa Monopole v OHIM — De Francesco Import (SpagO) (T‑438/07, EU:T:2009:434), on which the applicant relies. In the mark applied for by the applicant, the elements ‘hpc’ and ‘polo’ are clearly separate from one another, whereas, in the case cited, the Court emphasised, in essence, that the Benelux public would not split the neologism ‘spago’, which made up the mark applied for, into two words, ‘spa’ and ‘go’, the first of which matched the earlier mark (see, to that effect, judgment of 12 November 2009, SpagO (T‑438/07, EU:T:2009:434, paragraphs 24, 26 and 34).
32      Lastly, it should be noted that, while arguing that the element ‘hpc’ has normal distinctive character, the applicanthas in no way claimed that that element, when combined with the element ‘polo’, results in a sign the overall meaning of which is completely different to that of the latter element, taken alone, which meaning might be sufficient to counteract the similarity arising from the presence of the same word in the signs at issue. It follows, as rightly pointed out by EUIPO, that the references made in the application to the case-law concerning such counteractions are irrelevant in the present case.
33      So far as concerns the second set of arguments put forward by the applicant, relating to the distinctive character of the word ‘polo’, it should, as a preliminary point, be recalled that the case-law has recognised that the expression ‘polo club’ has normal, or even enhanced, intrinsic distinctive character, with regard to the goods in Classes 18 and 25 which are not specifically linked to the playing of polo (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 49).
34      Even if it were to be assumed that the case-law cited in paragraph 33 above may not be transposed to the word ‘polo’, taken alone, inasmuch as that word corresponds, in some languages of the European Union, to a very specific type of clothing, that word nevertheless retains a minimum degree of distinctive character with regard to the goods concerned, since it corresponds to a sign registered as an EU trade mark, the validity of which cannot be challenged in opposition proceedings (see, to that effect, judgments of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 64 and the case-law cited, and of 12 December 2014, Selo Medical v OHIM — biosyn Arzneimittel (SELOGYN), T‑173/13, not published, EU:T:2014:1071, paragraph 66).
35      In addition, and above all, it should be recalled that, in paragraphs 46 to 51 of the contested decision, the Board of Appeal noted that the evidence submitted by the intervener demonstrated intensive use of the earlier mark for clothing, in particular, in catalogues, magazines, on websites owned by the intervener or third parties and in promotional material. The Board of Appeal also observed that it had been demonstrated that the earlier mark had been chosen to be the official outfitter of international events such as The Wimbledon Championships, the Open Championship golf tournament in Scotland, the American team for the Olympic and Paralympic Games in London (United Kingdom) in 2012 and in Sochi (Russia) in 2014, and that the ranking, by an independent company, of the earlier mark for the years 2012 to 2014 positioned it respectively as the 91st, 88th and 83rd most influential trade mark in the world. Lastly, the Board of Appeal emphasised that, even though the evidence submitted included the mark RALPH LAUREN, it also proved the intensive use of the earlier mark POLO, which, whilst being associated with the other mark, played an independent role, given that it was positioned above the other mark and was in a larger font.
36      On the basis of those documents, the Board of Appeal’s findings, with regard to which, moreover, the applicant does not put forward any argument capable of refuting them, must be approved.
37      In those circumstances, all of the applicant’s arguments concerning the allegedly weak intrinsic distinctive character of the element ‘polo’ must be declared ineffective.
38      It should be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). Moreover, the more distinctive the earlier mark, the greater will be the risk of confusion, and therefore trade marks with a highly distinctive character, either intrinsically or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see order of 17 January 2013, Del Prete v Armani and OHIM, C‑261/12 P, not published, EU:C:2013:26, paragraph 36 and the case-law cited).
39      Thus, the goods being identical and the level of attention of the public being average, the fact that the similarity of the signs may play a less important role, where it derives from an element with possibly weak distinctive character in regard to certain goods (see, to that effect, judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraph 73), is amply offset, in the present case, by the enhanced distinctive character that the earlier mark has acquired through the public’s familiarity with it.
40      Moreover, for the sake of completeness, it should be noted that, whilst it is true that, in paragraph 63 of the contested decision, the Board of Appeal expressly limited the examination of the opposition to the excluded goods in so far as it was based on Article 8(5) of Regulation No 207/2009, its reasoning in that regard (see paragraph 10 above), which the applicant does not dispute, also applies to the other goods concerned, as the intervener points out. The connection between ‘clothing’, for which the earlier mark’s reputation has been proved, and those goods is even more apparent than that between ‘clothing’ and the excluded goods.
41      In light of the foregoing, the applicant’s single plea must be rejected and the action dismissed in its entirety.
Costs
42      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, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Gidon Anabi Blanga to pay the costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 20 June 2018.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.