JUDGMENT OF THE GENERAL COURT (First Chamber)
20 March 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark DONTORO dog friendship — Relative ground for refusal — Likelihood of confusion — Complementarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑390/16,
Grupo Osborne, SA, established in El Puerto de Santa María (Spain), represented by J.M. Iglesias Monravá, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Daniel Ostermann, residing in Leipzig (Germany),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 28 April 2016 (Case R 2002/2015-1), relating to opposition proceedings between Grupo Osborne and Mr Ostermann,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 July 2016,
having regard to the response lodged at the Court Registry on 21 September 2016,
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 10 August 2012, Mr Daniel Ostermann filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 18, 20, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 18: ‘Clothing for animals; Nosebags; Collars for animals; Dog leads; Bands of leather; Leather leaches; Thongs; Straps for soldiers’ equipment; Muzzles’;
–        Class 20: ‘Beds for household pets; Busts of wood, wax, plaster or plastic; Boxes, cases and chests of wood or plastic; Fodder racks; Dog kennels; Kennels for household pets; Pet cushions; Trays, not of metal; Wickerwork; Scratching posts; Beds for pets; Nesting boxes for pets’;
–        Class 25: ‘Suits; Bandanas (scarves); Clothing made from imitations of leather; Clothing; Bodies; Brassieres; Ladies’ dresses; Football boots; Belts; Clothing for gymnastics; Gymnastic shoes; Neckerchiefs; Gloves; Slippers; Shirt and shorts combinations; Shirts; Trousers; Braces; Hats; Jackets; Jersey clothing; Stuff jackets [clothing]; Skull caps; Hoods; Headgear; Ties; Shortsleeved shirts; Leather clothing; Leggings (trousers); Underwear (sweat-absorbent); Coats; Dressing gowns; Caps; Outerclothing; Ear muffs; Jump suits; Mules; Parkas; Petticoats; Ponchos; Pullovers; Pajamas (am); Cyclists’ clothing; Raincoats; Skirts; Sandals; Shawls; Pyjamas, panties; Lace boots; Footwear; Ski gloves; Ski boots; Briefs; Socks; Sports shoes; Boots; Headbands; Esparto shoes or sandals; Beach clothes; Beach shoes; Stockings; Tights; Sweaters; T-shirts; Pinafore dresses; Knitwear [clothing]; Maillots; Uniforms; Underwear; Underpants; Underwear; Wet suits for water skiing; Waistcoats’;
–        Class 35: ‘Updating and maintenance of data in computer databases; Updating of advertising material; Procurement services, for others; Wholesaling and retailing, including via the Internet, in the fields of cosmetics and household goods, Clothing, Shoes and textile products, Toys, Sporting goods, Food and drink, Animal requisites, foodstuffs for animals, pet accessories; Wholesaling and retailing in the fields of cosmetics and household goods, Clothing, Shoes and textile products, Toys, Sporting goods, Food and drink, Animal requisites, foodstuffs for animals, pet accessories; Attracting customers and customer care by means of mail advertising (mailings); Catalogue mail order in the fields of: Cosmeceuticals and Housewares, Clothing, Shoes and textile products, Toys, Sporting goods, Food and drink, Animal requisites, foodstuffs for animals, pet accessories; On-line advertising in computer networks; Organisation of fairs and exhibitions for commercial or advertising purposes; Advertising; Advertising mail; Internet advertising’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 188/2012 of 2 October 2012.
5        On 28 December 2012, the applicant, Grupo Osborne, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the earlier EU word mark TORO, registered on 5 August 2010 under No 2844264, designating goods in Classes 18 and 25 and corresponding to the following description:
–        Class 18: ‘Goods of leather and imitations of leather (not included in other classes), wallets, suitcases, backpacks, briefcases, purses, umbrellas, parasols and saddlery’;
–        Class 25: ‘Clothing, footwear, headgear; belts’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        By decision of 3 August 2015, the Opposition Division partially upheld the opposition and refused to register the mark applied for in respect of the goods and services referred to in paragraph 3 above on the ground that there was a likelihood of confusion on the part of the relevant public, with the exception of the following services:
–        Class 35: ‘Updating and maintenance of data in computer databases; Updating of advertising material; Attracting customers and customer care by means of mail advertising (mailing); on-line advertising in computer networks; Organisation of fairs and exhibitions for commercial or advertising purposes; Advertising; Advertising mail; Internet advertising’.
9        On 2 October 2015, Mr Ostermann 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.
10      By decision of 28 April 2016 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in part. To that end, it assessed whether there was a likelihood of confusion on the part of the relevant public between the mark applied for and the various trade marks relied on by the applicant, including the earlier mark. In that regard, the Board of Appeal found that the goods and services covered by the earlier mark and the mark applied for were directed at the general public of the European Union and, partially, at professionals, with an average to high level of attention. It further noted, in particular, that the goods in Class 25 covered by the mark applied for were identical to the ‘clothing, footwear, headgear; belts’ covered by the earlier mark and in the same class, but that the ‘clothing, footwear’ of the earlier mark were similar only to a low degree to certain services in Class 35 covered by the mark applied for, namely, ‘wholesaling and retailing, including via the Internet, in the fields of clothing, shoes and textile products; wholesaling and retailing in the fields of clothing, shoes and textile products; catalogue mail order in the fields of: clothing, shoes and textile products’. As regards the comparison of the signs at issue, the Board of Appeal took the view that there was some degree of visual similarity between them to the extent that they coincided in the word element ‘toro’, which constitutes in itself the earlier mark, and in so far as the Spanish- and Italian-speaking parts of the relevant public would focus their attention on that more distinctive element of the mark applied for. The Board of Appeal furthermore noted that there was a low degree of phonetic similarity between the signs at issue for the entirety of the relevant public and that there was a certain conceptual similarity only for the Spanish- and Italian-speaking parts of the relevant public. It concluded from those findings that there was a likelihood of confusion as regards the goods covered by the mark applied for in Class 25 as those goods were identical to ‘clothing, footwear, headgear; belts’ covered by the earlier mark. As regards the services in Class 35 covered by the mark applied for and which can only be regarded as similar to ‘clothing, footwear’ covered by the earlier mark, the Board of Appeal found that there was no likelihood of confusion as the low degree of similarity between the signs could not be offset by a high degree of similarity between the goods and services. The Board of Appeal extended that finding to all the goods and services covered by the mark applied for, which it considered only similar or different to the goods covered by the earlier mark.
Forms of order sought
11      The applicant claims that the Court should:
–        partially annul the contested decision in so far as the Board of Appeal allowed the mark applied for to proceed to registration for services in Class 35 which were found to be similar to the goods covered by the earlier mark;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
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 No 207/2009.
14      The applicant submits, in essence, that the goods in Class 25 covered by the earlier mark, namely ‘clothing, footwear’, have a clear connection to the services in Class 35, namely, ‘wholesaling and retailing, including via the Internet, in the fields of clothing, shoes and textile products; wholesaling and retailing in the fields of clothing, shoes and textile products; catalogue mail order in the fields of: clothing, shoes and textile products’ covered by the mark applied for. Accordingly, it argues that it is necessary to extend the refusal of the mark applied for to those services.
15      EUIPO disputes the applicant’s arguments.
16      As a preliminary point, it should be noted that, while the applicant, in the form of order sought, seeks annulment of the contested decision in that the Board of Appeal allowed the mark applied for to proceed to registration for goods and services in Classes 18, 20 and 35, it is, however, clear from a reading of the application that it seeks solely the annulment of the contested decision to the extent that the Board of Appeal accepted the mark applied for in relation to the specific services in Class 35.
17      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an 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.
18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the 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 judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 33 and the case-law cited, and of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).
19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgments 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, and of 22 September 2016, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 45).
20      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, 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 No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
The relevant public
21      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 (judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 74; see also 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).
22      In the present case, the Board of Appeal noted that the goods covered by the mark applied for were directed at the general public and, partially, at professionals, with an average to high level of attention. As regards the earlier mark, it found that the relevant territory was that of the European Union, without calling into question the finding of the Opposition Division that the relevant public was, for all of the marks relied on by the applicant, the general public, which has an average level of attention.
23      Those findings of the Board of Appeal, relating to the definition of the relevant public and its level of attention, which, moreover, are not disputed by the applicant, must be upheld.
Comparison of the goods and services
24      For the purpose of assessing the similarity between the goods and services at issue, all the relevant factors relating to those goods and services must 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, for example, the distribution channels of the goods concerned (see judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21 and the case-law cited, and of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
25      In the present case, the Board of Appeal found that ‘wholesaling and retailing, including via the Internet, in the fields of clothing, shoes and textile products; wholesaling and retailing in the fields of clothing, shoes and textile products; catalogue mail order in the fields of: clothing, shoes and textile products’, designated by the mark applied for, in Class 35, were similar to a low degree to ‘clothing, footwear’, covered by the earlier mark, in Class 25.
26      The applicant criticises the Board of Appeal on the ground that it failed to take account of the close connection between the goods and services in question. According to the applicant, the complementarity of those goods and services should have led the Board of Appeal to conclude that they were similar to a fairly high degree.
27      EUIPO argues that the applicant has not put forward any specific argument in support of its claims. Contrary to the applicant’s assertions, the Board of Appeal states that it accepted that the goods and services in question were similar but correctly took the view that their degree of similarity was low.
28      According to settled case-law, complementary goods are those which are closely connected 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 both (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
29      In that regard, it should be noted that the goods covered by the earlier mark, namely, clothing and footwear, are identical to those that are the subject of the services at issue.
30      It is thus evident, in the present case, that the relationship between the services provided in connection with the wholesaling, retailing and mail order sales and the goods covered by the earlier trade mark is close in the sense that the goods are indispensable to or, at the very least, important for the provision of those services, which are specifically provided when those goods are sold (see, by analogy, judgment of 24 September 2008, Oakley v OHIM — Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 54 and the case-law cited).
31      Furthermore, that relationship is also characterised by the fact that those services play, from the point of view of the relevant consumer, an important role when that consumer comes to buy the goods offered for sale (see, by analogy, judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraph 55).
32      It follows that the Board of Appeal made an error of assessment in finding, in paragraph 31 of the contested decision, that the wholesaling, retailing and mail-order sales of goods identical to the ‘clothing, footwear’ covered by the earlier mark were similar only to a low degree to those goods.
33      Inasmuch as those goods and services are complementary, but differ in their nature, intended purpose and method of use, they have a certain degree of similarity (see, to that effect, judgment of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 33; see also, by analogy, judgment of 24 September 2008, O STORE, T‑116/06, EU:T:2008:399, paragraphs 46 to 48).
Comparison of the signs
34      According to the case-law, 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 relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).
35      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by those signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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 2012, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
36      The assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2012, 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 2012, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).
37      In the present case, the Board of Appeal took the view that the signs at issue coincided visually, phonetically and conceptually due to the common element ‘toro’. According to the Board of Appeal, that element is the most distinctive element of the mark applied for with regard to the Spanish- and Italian-speaking parts of the relevant public and would have an identical meaning, from the point of view of those consumers, as regards each of the signs at issue. However, the Board of Appeal found that the signs at issue were similar only to a low degree, taking account of their visual, phonetic and conceptual differences, due to the presence of other elements in the mark applied for.
The distinctive and dominant elements of the signs at issue
38      The applicant argues, in essence, that the element ‘toro’ is the dominant element of the mark applied for. In support of that argument, it invokes, in particular, the greater size and the representation of the element ‘dontoro’ in bold type in the mark applied for, as well as the weak distinctive character of the initial part of that element.
39      It is clear from paragraphs 38 to 42 of the contested decision that the word element ‘dontoro’ of the mark applied for cannot be regarded as dominant to the extent of rendering negligible the other word and figurative elements of that sign. The Board of Appeal found, by contrast, that that element was more likely to hold the consumer’s attention, in particular due to its representation in bold type, with letters in upper case, in contrast to the expression ‘dog friendship’ in the mark applied for, printed in italics with smaller letters, which would be perceived as a secondary element of that mark.
40      In this respect, it must be recalled that, even if an element common to the signs at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks in so far as it constitutes in itself the earlier mark and retains an independent distinctive role in the mark composed of, inter alia, that element and in respect of which registration is sought. Where a common element retains an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue derive, at the very least, from undertakings which are linked economically, in which case the likelihood of confusion must be held to be established (see judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38 and the case-law cited).
41      In the present case, as the Board of Appeal noted in paragraph 41 of the contested decision, the Spanish- and Italian-speaking parts of the relevant public will perceive the term ‘don’ as a mere prefix and will concentrate on the term ‘toro’ in the mark applied for, which constitutes in itself the earlier mark and to which those parts of the relevant public will attach a specific meaning.
42      As is clear from paragraph 39 of the contested decision, the coincidence of the signs at issue in their word element ‘toro’ will, furthermore, have a stronger impact on the relevant public’s overall impression than the figurative elements of the mark applied for, namely, in particular, the crown represented at the top of the sign. According to case-law, where a sign is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the product in question by citing the name rather than describing the figurative element of the mark (see judgment of 22 September 2016, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 61 and the case-law cited).
43      It follows from all of those considerations that the element ‘toro’ retains, at the very least for the Spanish- and Italian-speaking parts of the relevant public, an independent distinctive role in the mark applied for. However, inasmuch as the applicant does not present any argument to show that the other elements of the contested sign are negligible and not merely secondary, it is not necessary to call into question the finding of the Board of Appeal, contained, in substance, in paragraph 38 of the contested decision, that that element cannot be regarded as so dominant that the assessment of the similarity of the signs at issue could be carried out on the basis of that element alone.
The visual comparison
44      With regard to the visual comparison, it should be recalled, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
45      In the present case, it is clear from paragraphs 41 and 42 of the contested decision that, to the extent that the element ‘toro’ is the most distinctive element of the mark applied for as regards the Spanish- and Italian-speaking parts of the relevant public and constitutes in itself the earlier mark, the signs at issue have a certain degree of visual similarity for the whole of the relevant public.
46      However, since the other elements of the mark applied for, namely, the word elements ‘don’ and ‘dog friendship’ and the figurative element representing a crown, are not negligible in the overall impression of that sign, due account must be taken of them for the purposes of the visual comparison of the signs.
47      It follows from this, without it being disputed by the parties before the Court, that the signs at issue have only a certain degree of visual similarity.
The phonetic comparison
48      With regard to the phonetic aspect, the Board of Appeal found, in paragraph 43 of the contested decision, that the signs at issue coincide in the element ‘toro’, but that they have a different pronunciation due, in particular, to the presence of the expression ‘dog friendship’ in the mark applied for. It noted that the mark applied for was composed of three words and six syllables, in contrast to the earlier mark, which consists of one word and two syllables. The Board of Appeal concluded from this that the signs at issue were phonetically similar to a low degree.
49      According to the applicant, there is a strong degree of phonetic similarity due to the dominant and distinctive nature of the element ‘toro’.
50      Since it is clear from paragraphs 38 to 43 above that the element ‘toro’ cannot be regarded as dominant in the mark applied for to the extent of rendering its other elements negligible, due account must be taken of the phonetic differences connected to the presence of those elements. The applicant’s argument therefore cannot be accepted.
51      In those circumstances, and in the absence of any other arguments put forward by the applicant, it must be held that the Board of Appeal acted correctly in law in finding that the signs at issue were phonetically similar to a low degree.
The conceptual comparison
52      With regard to the conceptual aspect, the Board of Appeal noted that the word element ‘toro’ will be perceived by the Spanish- and Italian-speaking parts of the relevant public as designating a bull or as a family name, but that the phrase ‘dog friendship’ of the contested sign would have no meaning for those parts of the relevant public. It therefore concluded that, for those consumers, the signs at issue had only a certain degree of conceptual similarity. Furthermore, it is clear from the contested decision that, for the part of the relevant public which speaks neither Spanish nor Italian, no particular meaning other than that of a family name would be attributed to the elements ‘toro’ or ‘dontoro’ of the signs at issue.
53      In its written pleadings, the applicant repeats the findings made by the Board of Appeal, without making any specific claim as to the degree of conceptual similarity between the signs at issue.
54      In that regard, it must be held that the word ‘toro’, which is present in both signs, will in fact be perceived by the Spanish- and Italian-speaking parts of the relevant public as the precise name of the animal in Spanish, which draws the signs at issue conceptually closer.
55      However, although that common reference to the concept of a bull is evident from the signs at issue, the figurative element representing a crown and the phrase ‘dog friendship’ in the mark applied for convey a concept which is distant from the classic concept of a bull as an animal or as a family name.
56      Consequently, following the example of the Board of Appeal, the conceptual similarity between the signs at issue must be relativised, and must be regarded, at the most, as average or even low.
The likelihood of confusion
57      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and in particular between the similarity of the marks and the similarity 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).
58      In the present case, after stating that the distinctiveness of the mark applied for had to be regarded as normal, the Board of Appeal found, in paragraph 55 of the contested decision, that there was no likelihood of confusion between the signs at issue in respect of the goods and services in question in Classes 25 and 35. It took the view that the low degree of similarity between the signs at issue was not offset by a high degree of similarity between the goods and services in question.
59      On that point, it should be noted that the Board of Appeal erred in so far as it should have found that there was a certain degree of similarity, and not a low degree of similarity, between the wholesaling, retailing and mail-order sales of goods covered by the mark applied for and the ‘clothing, footwear’ covered by the earlier mark.
60      However, that error by the Board of Appeal cannot call into question the finding that there is no likelihood of confusion on the part of the relevant public as regards the goods and services covered. The visual, phonetic and conceptual differences between the signs at issue are sufficient for the services covered by the mark applied for not to appear, in the eyes of the relevant public, as originating from the undertaking which is the proprietor of the earlier mark.
61      It follows that, even if the word element ‘toro’ constitutes in itself the earlier mark and retains an independent distinctive role in the mark applied for, that sole similarity between the signs at issue cannot by itself offset the differences between those signs.
62      In light of all the foregoing, the Board of Appeal acted correctly in law in finding that there was no likelihood of confusion between the signs at issue.
63      The action must therefore be dismissed in its entirety.
Costs
64      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.
65      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 (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Grupo Osborne, SA to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 20 March 2018.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.