JUDGMENT OF THE GENERAL COURT (First Chamber)
29 March 2017 (*)
(EU trade mark — Opposition proceedings — EU figurative mark J&JOY — Earlier national figurative mark joy SPORTSWEAR — Relative grounds for refusal — Likelihood of confusion — Similarity of the goods — Similarity of the signs — Assessment criteria — Composite mark — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑389/15,
J & Joy SA, established in Waremme (Belgium), represented by A. Maqua, C. Pirenne and C. Smits, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Joy-Sportswear GmbH, established in Ottensoos (Germany), represented by T. Kiphuth, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 April 2015 (Case R 1355/2014-2) relating to opposition proceedings between Joy-Sportswear and J & Joy,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, P. Nihoul (Rapporteur) and J. Svenningsen, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 15 July 2015,
having regard to the response of EUIPO lodged at the Court Registry on 22 December 2015,
having regard to the response of the intervener lodged at the Court Registry on 28 December 2015,
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        The present proceedings concern a dispute arising from an application for registration of the figurative mark J&JOY as an EU trade mark and an alleged likelihood of confusion with the figurative mark joy SPORTSWEAR which existed previously: The mark applied for and the earlier mark are reproduced below:
– the mark applied for:
– the earlier mark:
2        The application for registration was filed on 10 December 2012 by the applicant, J & Joy SA, 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).
3        The goods concerned by that application were 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 corresponded, for each of those classes, to the following description:
–        Class 18: ‘Goods made of these materials [leather and imitations of leather] and not included in other classes; purses; key cases; attache cases; card cases [notecases]; pouch baby carriers; briefcases; pocket wallets; sling bags for carrying infants; slings for carrying infants; handbags; bags for sports’;
–        Class 25: ‘Clothing, footwear, headgear; motorists’ clothing; bathing caps; swimsuits; bath robes; bath sandals; bath slippers; bandanas [neckerchiefs]; headbands [clothing]; stockings; stockings (sweat-absorbent -); bibs, not of paper; berets; smocks; boas [necklets]; teddies [undergarments]; hosiery; caps [headwear]; shower caps; boots; half-boots; suspenders; lace boots; collar protectors; camisoles; pants; bathing trunks; skull caps; bodices [lingerie]; hoods [clothing]; belts [clothing]; money belts [clothing]; shawls; footmuffs, not electrically heated; sweaters; hats; paper hats [clothing]; headgear for wear; chasubles; socks; slippers; footwear; football boots; beach shoes; ski boots; boots for sports; shirts; short-sleeve shirts; tights; shoulder wraps; slips [undergarments]; combinations [clothing]; wet suits for water-skiing; ready-made clothing; corselets; corsets [underclothing]; suits; masquerade costumes; ear muffs [clothing]; neckties; breeches for wear; babies’ pants [clothing]; cyclists’ clothing; dress shields; outerclothing; sashes for wear; shirt yokes; esparto shoes or sandals; fur stoles; detachable collars; sock suspenders; scarfs; furs [clothing]; gabardines [clothing]; girdles; galoshes; gloves [clothing]; ski gloves; vests; spats; wimples; gymnastic shoes; clothing; top hats; waterproof clothing; leg warmers; stocking suspenders; garters; jerseys [clothing]; skirts; skorts; petticoats; ascots; layettes [clothing]; leggings [trousers]; liveries; singlets; cuffs; muffs [clothing]; maniples; coats; mantillas; sleep masks; mittens; miters [hats]; topcoats; trousers; parkas; dressing gowns; pelerines; pelisses; beach clothes; shirt fronts; pockets for clothing; pocket squares; ponchos; pullovers; pyjamas; dresses; jumper dresses; wooden shoes; sandals; saris; sarongs; underpants; shoes; gaiter straps; underwear; underwear (anti-sweat -); brassieres; sports shoes; aprons [clothing]; tee-shirts; togas; knitwear [clothing]; turbans; uniforms; stuff jackets [clothing]; jackets [clothing]; fishing vests; clothing for gymnastics; clothing of leather; clothing of imitations of leather; paper clothing; cap peaks; veils [clothing]’.
4        The application for registration was published in Community Trade Marks Bulletin No 5/2013 of 8 January 2013.
5        On 26 March 2013, the intervener, Joy-Sportswear GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. It based that opposition on, inter alia, the German figurative mark joy SPORTSWEAR, registered on 7 September 2011 under number 302011036716 and filed on 6 July 2011 in respect of goods in Class 25 of the Nice Agreement and corresponding to the following description: ‘Clothing, headgear’.
6        On 28 March 2014, the Opposition Division partially upheld the opposition, on the basis of Article 8(1)(b) of Regulation No 207/2009, considering that there was a likelihood of confusion between the earlier mark and the mark applied for as regards the goods referred to in paragraph 3 of the present judgment. By contrast, it rejected the opposition in respect of the other goods covered by the application for registration.
7        The applicant challenged that decision of the opposition division, on 26 May 2014, before the Board of Appeal of EUIPO.
8        By decision of 22 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In its decision, the Board of Appeal held that, given the identity or similarity between the goods in question, the overall similarity between the signs at issue and the average distinctive character of the earlier trade mark, a significant part of the relevant public could be misled into thinking, wrongly, that the goods in question bearing the mark applied for and the earlier mark come from the same undertaking or from undertakings that are economically linked.
Forms of order sought
9        In the application initiating proceedings, the applicant claims that the Court should:
–        review the decision of the Opposition Division and declare the opposition inadmissible;
–        order the intervener to bear the costs and to pay the costs incurred by the applicant in the administrative proceedings before the Opposition Division.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
11      After being asked in the context of a measure of organisation of procedure to state precisely the subject matter of its application, the applicant, after the other parties had been heard, stated that the form of order sought should be understood as a claim that the Court should:
–        annul the contested decision;
–        order the intervener to pay the costs, including the costs incurred before the Board of Appeal.
12      In the context of that measure of organisation of procedure, EUIPO stated that it did not dispute that the application could be interpreted as seeking annulment of the contested decision. It thus implicitly withdrew the objection of inadmissibility raised in its response. As regards costs, it stated that the applicant’s initial form of order sought could be interpreted, at most, as claiming that the intervener should be ordered to pay the costs incurred before the Board of Appeal.
13      Since the parties have agreed on the scope of the first head of claim, it must be held that the application is for annulment of the contested decision. As regards costs, the views of the parties differ. Their claims in respect of that point will be examined in the light of the Rules of Procedure of the General Court, after examining the substance of the case.
Law
14      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. It claims, in essence, that the Board of Appeal was wrong to conclude that there is a likelihood of confusion.
15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected, because of the identity or similarity of the two marks, or the identity or similarity of the goods or services covered by them.
16      In order to assess whether there is a likelihood of confusion, it is necessary to identify the public concerned by the potential confusion, determine the goods concerned and examine the extent to which the marks concerned may be associated, by that public and in respect of those goods, to an extent precluding registration (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).
The relevant public
17      According to the contested decision, Germany is the relevant territory to be considered for the purposes of resolving the dispute.
18      That analysis is disputed by the applicant, which claims that the relevant public should be extended to include all consumers in the European Union, Switzerland and Norway.
19      In that regard, it should be noted that, in accordance with Article 8(1)(b) of Regulation No 207/2009, it is necessary to assess the likelihood of confusion on the part of the public in the territory where the earlier trade mark is protected.
20      In the present case, the earlier mark, on which the contested decision is based, is a German trade mark.
21      It follows that, in accordance with the criterion referred to in that provision, the relevant public to be taken into consideration is, as indicated in the contested decision, made up of German consumers.
The degree of attention paid to the goods concerned
22      The Board of Appeal considered that the marks at issue were mass-consumption goods, frequently purchased and used by the average consumer in the relevant territory. It concluded that the degree of attention paid to those goods is no higher than average.
23      The applicant, in turn, maintains that the goods concerned are aimed at ‘young and trendy’ consumers who can translate the words in the mark applied for and understand the message conveyed in a specific manner.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      In that regard, it is necessary to distinguish the category of consumers targeted by an undertaking in the context of its commercial strategy and the type of consumers to be taken into account in assessing whether there is a likelihood of confusion.
26      The commercial strategy of the trade mark applicant cannot bind the authorities responsible for assessing a likelihood of confusion for the purposes of taking a position on an opposition to registration.
27      In order to assess that likelihood of confusion, it is necessary to apply the criteria laid down in the abovementioned regulation and contained in the relevant case-law.
28      It follows from that case-law that an assessment of the likelihood of confusion must be based on the perception of the marks by the average consumer obtaining goods belonging to the category of the goods concerned. According to the case-law, that consumer must be considered reasonably well informed and reasonably observant and circumspect (see judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO — Central Hisumer (Botanic Williams & Humbert), T‑193/15, not published, EU:T:2016:266, paragraph 17 and the case-law cited).
29      That category was certainly the one taken into account by the Board of Appeal in its decision and its assessment on that point must consequently be upheld.
The goods concerned
30      According to the contested decision, the goods covered by the mark applied for and the earlier mark respectively, in so far as they fall within the scope of the action before the second Board of Appeal of EUIPO are identical or similar.
31      That assessment is disputed by the applicant, which, in support of its position, highlights differences in nature and purpose between the goods covered by its mark and the goods sold by the intervener, analyses the competitive or complementary nature of those goods and seeks to show that those goods are marketed through different intermediaries.
32      EUIPO and the intervener dispute the applicant’s arguments.
33      For the purposes of Article 8(1)(b) of Regulation No 207/2009, any similarity between the goods or services covered by the mark applied for and by the earlier mark respectively must be examined with reference to the goods or services in the classes corresponding to the marks at issue.
34      By contrast, contrary to the applicant’s claim, that similarity should not be assessed in the light of the goods or services actually marketed under those marks (see judgment of 31 January 2013, Present-Service Ullrich v OHIM — Punt Nou (babilu), T‑66/11, not published, EU:T:2013:48, paragraph 45 and the case-law cited).
35      It follows that the applicant’s arguments on that point must be rejected. Accordingly, it is necessary to uphold the Opposition Division’s findings of identity and similarity as confirmed by the Board of Appeal.
The element common to the marks at issue
36      Having identified the relevant public and compared the goods concerned, it is appropriate to compare the signs appearing in the marks at issue.
37      According to the case-law, two marks may be regarded as similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 8 September 2010, Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, not published, EU:T:2010:362, paragraph 21).
38      It is common ground between the parties that the signs at issue share a common feature, namely the presence in both marks of the element ‘joy’.
The distinctiveness of the common element
39      According to the contested decision, that element, in the earlier mark, has distinctive character which justifies the registration of that mark. In the case of that element, its inherent distinctive character is normal for a significant part of the relevant public. It is less than normal for the part of the relevant public that perceives the word ‘joy’ as having meaning.
40      That analysis is disputed by the applicant, which maintains that, in the presence of the earlier mark, the relevant public pays limited attention to the element ‘joy’ considered on its own. In the applicant’s view, consumers’ attention is rather directed at the entirety of the elements contained in that mark, namely ‘joy sportswear’.
41      In the applicant’s view, the limited attention paid by the relevant public to the word ‘joy’ derives from the generic nature of that word. It is a commonly used word in everyday speech, in which it corresponds to the idea of ‘happiness’.
42      Moreover, the word ‘joy’ is used in 59 trade marks and applications for EU trade marks which relate to goods in class 25. That everyday use in the specific context of marks applied to the goods concerned shows that that element has no distinctive character in respect of clothing and headgear.
43      It follows, for the applicant, that, since it is unremarkable, the word element ‘joy’, is not capable of significantly distinguishing the earlier mark and that, consequently, the presence of that word in the mark applied for cannot be the source of confusion between them.
44      In that regard, it should be noted that, contrary to the applicant’s claim, the presence of the element ‘joy’ in other marks, in the field concerned, is not sufficient to establish that that element has become weakly distinctive (see judgment of 16 September 2009, Hipp & Co v OHIM-Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 59 and the case-law cited).
45      Moreover, it is necessary to take into account that, as indicated by the Board of Appeal, the English word ‘joy’ is not necessarily understood by average German consumers.
46      Finally, it is not certain that, in the event that they know English, German consumers will associate the word ‘joy’ with the idea of happiness. Indeed, a large number of marks used in respect of the goods concerned contain first names. In that context, it is probable, as the Board of Appeal noted, that an association will be made, by those consumers, with the female first name Joy.
47      For those reasons, the applicant’s arguments as regards the weak distinctive character of the word element ‘joy’ should be rejected and the findings of the Board of Appeal on that point upheld.
The dominance of the common element
48      The applicant claims that, contrary to the contested decision, the word element ‘joy’ of the earlier mark is not dominant.
49      In that regard, it should be noted that the earlier mark is made up of the combination of two elements, namely the words ‘joy’ and ‘sportswear’. In that combination, the first word appears in bold, italic letters with a white border. It occupies the greater part of the space. The second word appears at the bottom of the sign. It appears in a standard font with no particular figurative element. It is smaller in size.
50      On account of those findings, it should be concluded that the element ‘sportswear’ occupies a secondary position in the combination. Accordingly, it catches the eye to a lesser extent. In that context, it is unlikely that the element ‘sportswear’ will attract the attention of the relevant public and be remembered.
51      As regards those elements, it must be noted, as the Board of Appeal found, that the word ‘joy’ is likely to be perceived by the consumer, in the earlier mark, as a sign indicating the commercial origin of the goods covered and accordingly is likely to play a dominant role in the process whereby the sign is remembered by the relevant public.
Visual comparison of the marks at issue
52      The parties agree that the marks in question are visually different. As regards content, the mark applied for includes the separate letter ‘j’ and the ampersand ‘&’, which are not included in the earlier mark. The earlier mark contains the specific element ‘sportswear’. The beginning and end of the marks at issue are different.
53      As regards the structure and length of the signs, the earlier mark is made up of two words and thirteen characters, whereas the mark applied for is made up of three words and five characters.
54      The applicant submits that, contrary to the view expressed by the Board of Appeal, those visual differences are significant and confer distinctiveness on the mark applied for which is not offset by the presence of an identical word in the two marks at issue.
55      In that regard, it should be noted that the examination of potential similarity of marks must take into account the overall impression they produce (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
56      As regards that point, the Board of Appeal found that the word element ‘joy’ dominated the overall visual impression in respect of the earlier mark and appeared in full in the mark applied for.
57      It also took the view that, in the mark applied for, the elements ‘j’ and ‘&’ were not capable of holding the relevant public’s attention. That factor highlights the word element ‘joy’, which is the element common to both marks.
58      Moreover, the Board of Appeal observed that, in the earlier mark, the second element (‘sportswear’) and the figurative elements were unremarkable. That factor also serves to highlight the word ‘joy’ which is, precisely, the element common to both marks.
59      Those findings of the Board of Appeal correspond to the characteristics of the signs at issue and it must be confirmed that they are well founded.
60      The conclusion based on those findings is that the element which appears centrally in the two marks is common to both. By contrast, the elements which are different play a subsidiary role in the relevant public’s perception. It follows that, as the Board of Appeal noted, the two marks have an average degree of visual similarity, the point that they have in common not being outweighed by sufficient differences.
61      The applicant, however, claims that EUIPO has concluded, in earlier decisions, that there was no visual similarity between the marks, despite the presence of a common element.
62      In that regard, it should be noted that the lawfulness of decisions taken by that body is assessed on the basis of Regulation No 207/2009, and not on the basis of decisions that it may have adopted earlier in other cases, since each case must be assessed specifically on the basis of its own facts (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraphs 43 and 44; and judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
The phonetic comparison of the marks at issue
63      In disputing the contested decision on that point, the applicant submits that, when pronounced, the signs at issue raise, in the resulting phonetic impressions, differences which prevent any confusion between the marks concerned.
64      In support of its view, the applicant submits that the marks at issue include two different syllables and have only one syllable in common. The latter syllable, moreover, is not phonetically dominant.
65      The applicant claims that the mark applied for furthermore includes a double play on words which confers distinctive character on it as regards pronunciation. On the one hand, the sound ‘jay’ (for the letter ‘j’) is associated with the word ‘joy’ to designate two first names of young and trendy consumers. On the other hand, the overall phonetic impression of those sounds corresponds to the word ‘enjoy’ which is itself recognised as a set of sounds by consumers.
66      Those phonetic characteristics are very different from those associated with the earlier mark, which the average consumer pronounces as a whole without stopping specifically at the word ‘joy’.
67      In order to take a view on those arguments, it should be noted that, in a composite mark, certain elements may attract the consumer’s attention, with the result that, when saying the name of the mark, the consumer will pronounce those elements and leave out others.
68      The visual impression created by the specific graphic features of the word elements is therefore liable to influence the phonetic perception of a composite sign (see judgment of 12 July 2011, Aldi Einkauf v OHIM — Illinois Tools Works (TOP CRAFT), T‑374/08, not published, EU:T:2011:346, paragraph 56 and the case-law cited).
69      In the present case, it should be noted that the phonetic difference between the two marks in question arises from the pronunciation of the separate letter ‘j’ and the ampersand ‘&’ at the start of the mark applied for and the absence of the word ‘sportswear’ at the end of the earlier mark.
70      In the light of its descriptive character, its size, and position in the earlier mark, it is unlikely that the word element ‘sportswear’ in the earlier mark will hold the attention of the relevant public and be pronounced by the relevant consumers when they wish to refer to the earlier mark.
71      Moreover, those differences cannot conceal the fact that the two marks share a common element which has been established as dominant, namely the word ‘joy’. As the Board of Appeal noted, that word holds the attention, on a phonetic level, when the marks are pronounced.
72      It follows from those findings that the pronunciation of the word ‘joy’ confers a degree of phonetic similarity on the two marks, although it cannot be said that they are perfectly identical in that respect.
73      It follows that the Board of Appeal did not err in taking the view that there is an average degree of phonetic similarity between the two signs at issue.
The conceptual comparison of the marks at issue
74      For the applicant, the earlier mark is perceived as designating sports clothes that the average consumer would be happy to wear. The applicant claims that that perception arises from the use, in that mark, of a generic term highlighting the idea of happiness (‘joy’) and its association with the word ‘sportswear’ which describes sports clothing.
75      The applicant submits that the mark applied for gives rise to another perception by alluding to a young couple enjoying life. That allusion is achieved through the association made in the mark applied for with the male first name ‘Jay’ and the female first name ‘Joy’. In combination, those first names bring to mind the English verb ‘enjoy’ which is an invitation to make the most of life.
76      The applicant claims that the perception thus created by the mark applied for attracts the consumer, specifically, to the goods marketed by the applicant — goods with style, in fashion and with a trendy, colourful and varied design.
77      According to the findings of the Board of Appeal, the relevant public is made up of the average German public and the level of attention paid to the goods in question is no higher than average.
78      In that context, it appears doubtful, as the Board of Appeal stated, that a significant part of the relevant public might understand the dual component which, in the applicant’s view, is inherent, on a conceptual level, in the mark applied for — even with regard to consumers who understand English.
79      Accordingly, it is unlikely, among the German public, that the average consumer who pays an average level of attention to the goods concerned would attribute significance, in the mark applied for, to a word other than ‘joy’, the common element of the marks at issue.
80      As regards the earlier mark, it is unlikely that the relevant public, defined in that manner, would pay specific conceptual attention to the word ‘sportswear’, supposing that it understands it, by considering that the clothes sold under that mark are exclusively intended for sporting use.
81      Under those conditions, it is unlikely that the actual visual and phonetic similarity between the two marks can be offset, even partially, by conceptual differences, if any, between the marks at issue.
The likelihood of confusion
82      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 (judgment of 29 September 1998, Canon, C-39/97, EU:C:1998:442; see, also, 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).
83      The Board of Appeal considered in essence that, in so far as the earlier mark has average distinctive character, the goods are identical or similar (to varying degrees) and the marks at issue are similar overall, a significant part of the relevant public could be misled into thinking, wrongly, that the goods in question bearing the mark applied for and the earlier mark come from the same undertaking or from undertakings that are economically linked.
The inherent distinctiveness of the earlier mark
84      The applicant claims that the intervener should have established the inherent distinctiveness of the earlier mark in order for the application for registration concerning the mark applied for to be refused.
85      In that regard, it should be noted that, according to the case-law, EUIPO is required to examine the inherent distinctiveness of an earlier mark when it examines an opposition filed against an application for registration of a new mark. Accordingly, since the assessment of inherent distinctiveness does not presuppose any matter of fact which is up to the parties to establish, EUIPO must assess its existence in the light of the earlier mark on which the opposition is based, without the parties having to put forward grounds or arguments seeking to establish that character (judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 32).
86      The intervener was not therefore required to provide evidence of the inherent distinctiveness of the earlier mark, contrary to the applicant’s claim.
87      The applicant also maintains that, in its view, that distinctiveness was not established to the requisite legal standard by the Opposition Division and then by the Board of Appeal.
88      In that regard, it suffices to note that, in the present case, the Board of Appeal examined the inherent distinctiveness of the earlier mark. In that context, it considered that the earlier mark as a whole had an average degree of distinctiveness in respect of all the goods in the relevant territory.
89      More particularly, the Board of Appeal considered that the dominant element ‘joy’ had no semantic meaning for a significant part of the relevant public and concluded that the word ‘joy’ had an average degree of distinctiveness for that significant part of the relevant public.
90      The Board of Appeal also considered that the English word ‘sportswear’ would be understood as referring to ‘sporty daywear, casual wear’ and that it has no distinctive character or, at most, rather weak distinctive character.
91      In the light of the foregoing, the Board of Appeal therefore established to the requisite legal standard that the earlier mark as a whole had an average degree of distinctiveness for all goods in the relevant territory.
92      Moreover, even supposing that the earlier mark has merely weak distinctive character, the Board of Appeal was fully entitled to conclude, in paragraph 70 of the contested decision, that a likelihood of confusion between the marks at issue could not be ruled out on the part of the relevant public in the light of the identical nature of the goods covered by the earlier mark and the mark applied for and the elements of similarity between the signs at issue (see 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).
The reputation of the earlier trade mark
93      The applicant also maintains that the mark applied for has a reputation in a significant part of the European Union and that that reputation suffices to distinguish it from the earlier mark.
94      In that regard, it should be noted that reputation is relevant in assessing whether there is a likelihood of confusion as regards the earlier mark, but that that is not the case in respect of the assessment of the distinctiveness of the mark applied for.
95      As stated in the Court’s case-law, the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 24; of 3 September 2009, Aceites del Sur-Coosur v Koipe and OHIM, C‑498/07 P, EU:C:2009:503, paragraph 84, and of 28 June 2012, I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 18).
Conclusion
96      On the basis of those considerations, it must be concluded that the Board of Appeal did not err in finding that there was a likelihood of confusion between the signs at issue in so far as they concern the goods in Class 18 and Class 25 covered by the earlier mark and the mark applied for, to the extent that they fall within the scope of the appeal before the Second Board of Appeal of EUIPO.
97      The identity or similarity of the goods covered by the marks at issue, the similarity of the signs and the average degree of attention of the relevant public, considered cumulatively, are sufficient to conclude that there is a likelihood of confusion.
98      For those reasons, the action must be dismissed in its entirety.
Costs
99      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
100    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred in the present proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener. There is therefore no need to rule on the different interpretations of the parties concerning the scope of the applicant’s head of claim relating to costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders J & Joy SA to pay the costs.
Pelikánová
Nihoul
Svenningsen
Delivered in open court in Luxembourg on 29 March 2017.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.