JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 December 2016 (*)
(EU trade mark — Opposition proceedings — Application for an EU figurative mark SHOP ART — Earlier EU figurative mark art — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑735/15,
The Art Company B & S, SA, established in Quel (Spain), represented by L. Sánchez Calderón and J. Villamor Muguerza, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Manifatture Daddato SpA, established in Barletta (Italy), represented by D. Russo, lawyer,
the other party to the proceedings before the Board of Appeal of EUIPO having been
Sabina Laurora, residing in Trani (Italy),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 8 October 2015 (Case R 3050/2014-1), relating to opposition proceedings between The Art Company B & S, on the one hand, and Manifatture Daddato and Ms Laurora, on the other,
THE GENERAL COURT (Second Chamber),
composed of M. Prek (Rapporteur), President, F. Schalin and J. Costeira, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 December 2015,
having regard to the response of EUIPO lodged at the Court Registry on 4 April 2016,
having regard to the response of Manifatture Daddato lodged at the Court Registry on 11 March 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 31 July 2013, Manifatture Daddato SpA 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).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought 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 description:
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; bags, totes, handbags, backpacks, trunks and travelling bags, key cases, key holders made of leather, pocket wallets, purses, briefcases of leather, cardholders, umbrellas’;
–        Class 25: ‘Clothing, in particular T-shirts, shirts, sweaters, trousers, skirts, jeans, jackets, swimsuits, underwear, headgear, footwear’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 175/2013 of 16 September 2013.
5        On 27 November 2013, the applicant, The Art Company B & S, 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 the goods covered by the trade mark application, namely those in Classes 18 and 25 referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the EU figurative mark filed on 4 July 2003 and registered on 14 June 2007 under number 3256435, covering, inter alia, ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, portfolios, handbags, rucksacks and wallets’ in Class 18, ‘Clothing, footwear, headgear, in particular boots, shoes, sandals and slippers’ in Class 25, and ‘retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets’ in Class 35, reproduced below:
–        the Spanish figurative mark applied for on 4 February 2004 and registered on 23 June 2004 under number 2579003, covering ‘Clothing, footwear (except for orthopaedic shoes), headgear’ in Class 25, reproduced below:
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        By decision of 29 September 2014, the Opposition Division stated, first of all, that, for reasons of procedural economy, the opposition would be examined in relation to EU trade mark No 3256435. Next, it stated that the goods covered by the signs at issue were identical. It also pointed out that the relevant territory for the analysis of the likelihood of confusion was the European Union, but that, also for reasons of procedural economy, the comparison of the signs would be carried out having regard to the English-speaking part of the relevant public. Furthermore, it found that, because of their visual, conceptual and phonetic coincidences, the signs at issue were similar. Finally, it upheld the opposition for all of the goods and services in dispute on the ground that there was a likelihood of confusion.
9        On 28 November 2014, Manifatture Daddato filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as it had upheld the opposition.
10      By decision of 8 October 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division. First, it found that the relevant territory for the analysis of the likelihood of confusion was the European Union. Second, it stated that, in view of the goods in Classes 18 and 25, the relevant public was composed of the general public. Third, it upheld the findings of the Opposition Division, which moreover were not disputed by the parties, as to the existence of an identity of the goods in Classes 18 and 25. Fourth, it compared the signs at issue. First of all, it found that, visually, there was no similarity between the signs. Next, it found that the fact that the second syllable of the mark applied for was pronounced in the same way as the sole syllable of the earlier mark was not sufficient to render the marks at issue phonetically similar. Finally, the Board of Appeal found that, conceptually, the earlier mark could be understood as a reference to the concept of ‘art’ in general whereas the mark applied for evoked the idea of a specific art. It added that the meaning of the word ‘shop’ and the more specific idea created by the expression ‘shop art’ were absent from the earlier mark. Fifth, in the context of the global assessment of the likelihood of confusion, it pointed out, first of all, that the word element ‘art’ of the marks at issue had a weak distinctive character and that the relevant public would instead concentrate on their other elements. It pointed out that, even if the word ‘shop’ was ‘weak’ as regards the goods at issue, the consumer would not ignore that element and would perceive the mark applied for as a whole. Next, it found that the visual aspect was more important in the global assessment of the likelihood of confusion on the ground that the relevant goods were generally sold in self-service stores where the consumer generally relied on the image of the mark applied to the goods chosen by him. Finally, the Board of Appeal concluded that, in view of the importance of the visual appearance of the marks at issue, and of the facts that the relevant public had a normal degree of attentiveness and that the distinctive and dominant element of the earlier mark lay in the high degree of stylisation of the letters, there was no likelihood of confusion, even if the goods in question were identical.
Forms of order sought
11      The applicant claims that the Court should annul the contested decision.
12      EUIPO, supported by Manifatture Daddato, contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      As a preliminary point, it should be noted that EUIPO informed the Court that Ms Sabina Laurora’s intellectual-property rights in respect of the mark applied for had been transferred to Moda Effe Srl and that that transfer had been entered in EUIPO’s register on 13 January 2016. EUIPO states that, pursuant to Article 174 of the Rules of Procedure of the Court, it should be considered that the owners of the intellectual-property rights in the mark applied for are now Moda Effe and Manifatture Daddato. In the same vein, it should be noted that the statement in intervention lodged by Manifatture Daddato also mentions the name of Moda Effe as an ‘intervening party’. That statement in intervention also indicates that Ms Laurora’s rights in respect of the mark applied for have been transferred to Moda Effe and that EUIPO was notified of that change of ownership on 13 January 2016.
14      However, the Court finds that no application for the substitution of Moda Effe for Ms Laurora was made by separate document in accordance with Article 175 of the Rules of Procedure. In those circumstances, it must be concluded that the abovementioned statement may be deemed to have been filed solely by Manifatture Daddato.
15      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16      The applicant claims that the marks at issue are similar and that the Board of Appeal erred in concluding that there was no likelihood of confusion. EUIPO and Manifatture Daddato dispute that claim.
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 cannot 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 mark.
18      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 same 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).
19      In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
20      According to 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).
21      In addition, 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).
22      As a preliminary point, the Board of Appeal found that the goods covered by the earlier marks and the mark applied for were identical. That finding, with which, moreover, the parties agree, must be approved.
23      Next, the Board of Appeal was right to find, in paragraphs 17 and 34 of the contested decision, that the relevant public was composed of the public at large as regards the goods in Classes 18 and 25 and that that public demonstrated a normal degree of attentiveness. That assessment by the Board of Appeal is, moreover, not disputed by the applicant.
24      Finally, the Board of Appeal did not commit an error in finding that the relevant territory for the analysis of the likelihood of confusion was the European Union, as the earlier mark in relation to which it assessed the likelihood of confusion was an EU trade mark.
25      With regard to the marks at issue, it must be observed that EU trade mark No 3256435 is a figurative mark in black consisting of the word element ‘art’ in a standard typeface and is preceded by the symbol of an eight-pointed star. The mark applied for is a dark blue figurative mark consisting of the word element ‘shop’ written in uppercase letters in a standard font, a five-pointed star and the word element ‘art’ in the same font as the first word element.
26      The Board of Appeal, supported in this respect by the arguments of EUIPO, held that there was no visual similarity between the signs at issue, that the presence of the word ‘art’ in the marks at issue was not sufficient to make them phonetically similar and that, conceptually, the earlier mark could be understood as a reference to the concept of art in general and that the mark applied for evoked the idea of a specific art.
27      First, the view must be taken that the Board of Appeal was wrong to find that there was no visual similarity between the signs at issue.
28      The marks at issue have the word element ‘art’ in common and also both contain a star which precedes that word element. That finding leads to the view that there is an average degree of visual similarity between the signs at issue.
29      In that regard, the differences highlighted by the Board of Appeal in paragraph 22 of the contested decision and by EUIPO in its written pleadings do not make it possible to exclude all visual similarity between the marks at issue.
30      First, it must be pointed out that the three elements which make up the mark applied for — namely the word element ‘shop’, the star and the word element ‘art’ — are not contiguous to each other, with the result that each of them is visually identifiable. Accordingly, although it is true that the word element ‘shop’ placed at the beginning of the mark applied for is not present in the earlier mark, that first element does not prevail visually over the other two elements and its presence cannot call into question the existence of an average degree of visual similarity between the earlier mark and the combination of the star and the word element ‘art’ of the mark applied for.
31      In that regard, EUIPO’s argument that the mark applied for will be perceived as a whole does not call into question the similarity existing between the marks at issue by reason of the fact that the figurative and word elements of the earlier mark are contained in the mark applied for.
32      In that context, EUIPO and Manifatture Daddato maintain that, since it is settled case-law that consumers normally attach more significance to the beginning of signs, the possible visual similarity of those signs is attenuated by the fact that a syllable common to those two marks, namely ‘art’, constitutes only the second syllable in the mark applied for. That argument cannot be accepted. The word constituting the earlier word mark and that constituting the mark applied for, which are one and two syllables in length respectively, are both short signs. In those circumstances, the identity in the two marks at issue of the syllable ‘art’ is such as to attract and retain in particular the attention of the relevant consumer (see, to that effect, judgment of 15 January 2013, Lidl Stiftung v OHIM — Lactimilk (BELLRAM), T‑237/11, EU:T:2013:11, paragraph 95). It follows that the word element ‘art’ of the mark applied for has a certain visual impact and that the view cannot therefore be taken that the same mark is visually dominated by the other word element ‘shop’.
33      Next, the fact that the stars in the marks at issue have certain differences — namely eight points for the earlier mark and five for the mark applied for — does not allow all visual similarity between those two figurative elements to be excluded. In both cases, it is a star. In that regard, as has been pointed out in paragraph 19 above, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
34      Finally, EUIPO maintains that the Board of Appeal was correct to find that the difference in fonts and colours of the marks at issue confirmed that there was no visual similarity between them and EUIPO submits that the structure of the mark applied for differs from that of the earlier mark.
35      While it is true that the fonts used in the signs at issue are different — in the sense that one contains uppercase letters and the other is in lowercase letters — the fact nonetheless remains that the fonts are standard and therefore are not distinguished by any particular or original stylisation. That figurative aspect of the signs at issue therefore has a very low distinctive character and thus appears rather to be decorative and not likely to be memorised (see, to that effect, judgments of 5 May 2011, Olymp Bezner v OHIM — Bellido (OLYMP), T‑204/09, not published, EU:T:2011:196, paragraph 34; of 3 July 2013, GRE v OHIM — Villiger Söhne (LIBERTE brunes), T‑78/12, not published, EU:T:2013:339, paragraph 34; and of 3 July 2013, GRE v OHIM — Villiger Söhne (LIBERTE american blend against a blue background), T‑205/12, not published, EU:T:2013:341, paragraph 40). That figurative aspect is therefore not even such as to neutralise the importance to be attached to the word elements and, to the extent described in paragraph 37 below, to the star in assessing the visual similarity of the marks at issue. In that regard, it must be borne in mind, as pointed out in paragraph 32 above, that it is the two word elements of the mark applied for that dominate it visually and that, therefore, account must also be taken of the visual impact of the word element ‘art’.
36      The dark blue colour of the mark applied for and the black colour of the earlier mark also hardly characterise the overall impression produced by that mark and, consequently, those figurative elements will be perceived by the relevant public as being decorative and not likely to be memorised (see, to that effect, judgments of 3 July 2013, LIBERTE brunes, T‑78/12, not published, EU:T:2013:339, paragraph 34, and of 3 July 2013, LIBERTE american blend against a blue background, T‑205/12, not published, EU:T:2013:341, paragraph 40) and will thus have a limited impact on the overall visual impression.
37      Finally, the figurative element represented by the star which precedes the word ‘art’ has, by its shape, its size and its position in the signs at issue, an average impact on the visual impression and will thus not appear as being merely decorative and not likely to be memorised.
38      Accordingly, the attention of the relevant public will be retained in essence by the words ‘shop’ and ‘art’ and, to a certain extent, by the star.
39      It follows that the different figurative elements consisting of the font and colour and the word element ‘shop’ are not capable of offsetting the average visual similarity of the signs resulting from the figurative element which represents a star and by the word element ‘art’. Therefore the Board of Appeal was wrong to regard the signs as being visually dissimilar.
40      Second, phonetically, it is important to note, first of all, that the mark applied for contains one syllable more than the earlier mark, that the second syllable of the mark applied for is pronounced in the same way as the single syllable of the earlier mark and that the first of the two syllables making up the mark applied for, namely ‘shop’, is distinct from that of the earlier mark. Contrary to the findings of the Board of Appeal and EUIPO, that dissimilarity is not sufficient to alter the relevant consumer’s impression that those marks, when assessed globally, present an average phonetic similarity, in view of the similar elements in them. First, those marks have an identical syllable which constitutes the only word element making up the earlier mark and is one of the two syllables which make up the mark applied for. Second, even though the view may, in principle, be taken that the consumer normally attaches more importance to the beginning of words, that is not so in the present case. As stated in paragraph 32 above, on account of the fact that the marks at issue are two short signs, the identical syllable ‘art’ in the marks at issue is such as to attract and retain the attention of the relevant consumer when pronounced (see, to that effect, judgment of 15 January 2013, BELLRAM, T‑237/11, EU:T:2013:11, paragraph 99).
41      Third, the Board of Appeal was right to find that, conceptually, the word element ‘art’ refers to something artistic and, therefore, beautiful and pleasing to the eye, that that word is comprehensible to the general public in the European Union and that the earlier mark can be understood as a reference to the concept of art in general. In this regard, it is useful to note that the word ‘art’ is an elementary word that the majority of the relevant public in the European Union will understand.
42      By contrast, the views expressed by the Board of Appeal, EUIPO and Manifatture Daddato that the mark applied for, as a whole, refers to the idea of an art in particular, since it suggests competence or aptitude related to the retail sales of goods and services, cannot be approved. The mark applied for was sought for goods in Classes 18 and 25 and not for services in Class 35. Accordingly, the conceptual perception of the relevant consumer may be that of an invitation to buy ‘art’, namely ‘shop art’ or ‘buy art’. In those circumstances, it must be held that the marks at issue have an average conceptual similarity.
43      In that context, EUIPO’s argument that the descriptive character of the word element ‘shop’ for the goods concerned has not been established cannot succeed. It is well known that the word ‘shop’ is understood throughout the European Union as a commercial establishment in which goods are sold. That word can thus be understood as the place where the ‘art’ goods referred to in paragraph 3 above are sold and is therefore descriptive in nature. Likewise, contrary to EUIPO’s submissions, the stars in the marks at issue do not differ in such a way that they can be perceived as different symbols transmitting different messages.
44      With regard to the global assessment of the likelihood of confusion, it should be recalled that this implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. 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 21 June 2012, Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T-276/09, not published, EU:T:2012:313, paragraph 52 and the case-law cited).
45      In the present case, as is apparent from paragraphs 23 to 44 above, the comparison of the signs carried out by the Board of Appeal is flawed. The Board of Appeal was wrong to take the view that there was no visual similarity between the signs at issue and it underestimated the degree of conceptual and phonetic similarity between them.
46      In that context, it must be recalled that the distinctive character of the earlier mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. The examination of the distinctive character of the earlier mark is particularly relevant in circumstances where there is only a low degree of similarity between the signs and where it is necessary to determine whether that low degree may be offset by a high degree of similarity between the goods (judgments of 22 September 2011, ara v OHIM — Allrounder (A with two triangular motifs), T‑174/10, not published, EU:T:2011:519, paragraph 34, and of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 67).
47      It must be acknowledged, as the Board of Appeal stated, that the word element common to the marks at issue is of weak distinctive character. It refers to something artistic and, therefore, beautiful and pleasing to the eye. The word element ‘art’, considered in isolation in relation to the goods and services covered by the marks at issue, evokes the idea that those goods and services are the result of an imaginative and creative process. The idea that there has been artistic design work confers a valuable aesthetic character on those goods and services. Thus, the word element ‘art’ constitutes a laudatory term for the goods concerned and has for that reason a limited distinctive character in relation to them.
48      By contrast, it must be held that the word element ‘shop’ is devoid of any distinctive character with regard to the goods at issue since it will be understood as a reference to the place where those goods are purchased. Thus, even though, as the Board of Appeal points out, the consumer will not ignore that word element, the fact nonetheless remains that the impact of that element will be even more limited in the overall assessment of the likelihood of confusion of the marks at issue.
49      It follows from the foregoing that, first of all, even though the word element ‘art’ has a weak distinctive character with regard to the goods concerned, it nevertheless remains the most distinctive word element of that mark. Next, it must be held that that mark is identical to the single word element making up the earlier mark. Furthermore, each of the marks at issue contains a similar figurative element, namely a star, which is placed in front of the most distinctive common word element ‘art’. Finally, it must be pointed out that the presence, in the mark applied for, of an element devoid of any distinctive character with regard to the goods concerned, namely ‘shop’, is not capable of offsetting even the limited overall similarity existing between the marks at issue.
50      In so far as the earlier mark does not have a very weak distinctive character, it must be held, in the circumstances of the present case, that the identity and very high similarity of the goods at issue are such as to offset the low degree of similarity between the signs at issue.
51      In so far as, first, the goods covered by the marks at issue are identical or similar and, second, the signs at issue have a certain visual, phonetic and conceptual similarity, it must be held that the Board of Appeal erred in annulling the decision of the Opposition Division and in concluding that there was no likelihood of confusion on the part of the relevant public.
52      It follows that the contested decision must be annulled.
Costs
53      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.
54      In the present case, EUIPO and the intervener have been unsuccessful in so far as the contested decision is annulled. However, the applicant has not requested that EUIPO and Manifatture Daddato should be ordered to pay the costs.
55      Consequently, each of the parties shall bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 October 2015 (Case R 3050/2014-1);
2.      Orders each party to bear its own costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 6 December 2016.
E. Coulon
M. Prek
Registrar
President
* Language of the case: English.