European Union Intellectual Property Office v Equivalenza Manufactory, SL.
Date: 2020-03-04
25


As a preliminary point, it must be borne in mind that the question whether the grounds of a judgment of the General Court are contradictory or inadequate is a question of law which is amenable to judicial review on appeal (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 74, and of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 63).
57


In that respect, it must be recalled that, in accordance with the settled case-law of the Court, the existence of a risk of confusion in the mind of the public must be assessed as a whole by taking account of all the relevant factors of the case in question (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 22, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 20), which include inter alia the degree of similarity between the signs at issue and the goods or services in question and also the strength of the earlier mark’s reputation and its degree of distinctive character, whether inherent or acquired through use (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 64).
60


That being said, where there is no similarity between the earlier mark and the sign for which registration is sought, the reputation of or the well-known nature attaching to the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgments of 12 October 2004, Vedial v OHIM, C‑106/03 P, EU:C:2004:611, paragraph 54, and of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 53). Since it is a necessary condition for the application of Article 8(1)(b) of Regulation No 207/2009 that the signs at issue be identical or similar, that provision is manifestly inapplicable where the General Court has ruled out any similarity between the signs at issue. It is only if there is some similarity, even faint, between those signs that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion in the mind of the relevant public (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 65 and 66 and the case-law cited).
71


As the Advocate General observed in points 69, 73 and 74 of his Opinion, the assessment of the similarity of the signs at issue, which is only one of the stages in the examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, involves comparing the signs at issue in order to determine whether those signs are visually, phonetically and conceptually similar. Although that comparison must be based on the overall impression made by those signs on the relevant public, account must nevertheless be taken of the intrinsic qualities of the signs at issue (see, by analogy, judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 46).
74


Second, in so far as the General Court also emphasises, at the stage of its assessment of the similarity of the signs at issue as a whole, their conceptual dissimilarity, it must be borne in mind that, in accordance with the case-law of the Court, the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98; see also, to that effect, judgments of 12 January 2006, Case C‑361/04 P, Ruiz-Picasso and Others v OHIM, EU:C:2006:25, paragraph 20, and of 23 March 2006, Mülhens v OHIM, C‑206/04 P, EU:C:2006:194, paragraph 35).
75


In that regard, the Court has held, in paragraph 44 of the judgment of 5 October 2017, Wolf Oil v EUIPO (C‑437/16 P, not published, EU:C:2017:737), that the assessment of the conditions of such a counteraction forms part of the assessment of the similarity of the signs at issue which follows the assessment of the visual, phonetic and conceptual similarities between them. However, it should be noted that that consideration is intrinsically linked to the exceptional case in which at least one of the signs at issue has, from the perspective of the relevant public, a clear and specific meaning which can be grasped immediately by that public. It follows that it is only if those conditions are satisfied that, in accordance with the case-law cited in the preceding paragraph of the present judgment, the General Court may dispense with the global assessment of the likelihood of confusion on the ground that, by reason of the marked conceptual differences between the signs at issue and the clear and specific meaning which can be grasped immediately by the relevant public of at least one of those signs, those signs produce a different overall impression, despite the existence, between them, of certain elements of similarity visually or phonetically.
76


By contrast, in the absence, in the case of either of the signs at issue, of such a clear and specific meaning which can be grasped immediately by the relevant public, the General Court cannot counteract it by dispensing with a global assessment of the likelihood of confusion. In such a case, rather, it falls to the General Court to carry out a global assessment of that likelihood taking into account all the similarities and differences noted in the same way as the other relevant elements, such as the level of attention of the relevant public (see, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraphs 21 and 23) or the degree of distinctive character of the earlier mark.