China Construction Bank Corp. v European Union Intellectual Property Office.
Date: 2020-06-11
54


In the case of opposition based on an earlier individual trade mark, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, is to be understood as being the risk that the public might believe that the goods or services covered by that mark and those covered by the mark applied for come from the same undertaking or, as the case may be, from economically linked undertakings. The existence of such a risk must be assessed globally, taking into account all factors relevant to the particular case (judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 63 and 67 and the case-law cited).
55


Those factors 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 (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 64, and of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 57).
56


As regards the first part of the first ground of appeal, by which CCB alleges that the General Court erroneously took into account the reputation and, accordingly, the distinctive character of the earlier mark in its assessment of the similarity of the signs at issue, it must be recalled that the examination of the similarity of the signs at issue consists of a visual, phonetic and conceptual comparison based on the overall impression which those signs make, having regard to their intrinsic qualities, on the memory of the relevant public (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 71 and the case-law cited), whereas the distinctive character of the earlier mark concerns the ability of that mark to identify the goods or services in respect of which it was registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see, with regard to the distinctive character of EU trade marks, judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 31 and the case-law cited).
57


As regards, more particularly, the reputation, it must be borne in mind that a trade mark enjoys a reputation when it is known, in a substantial part of the relevant territory, to a significant section of the public concerned by the goods or services designated. In that regard, it is necessary to take into consideration, in particular, the market share held by the mark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 55 and 56 and the case-law cited).
61


In that regard, it must be noted that although the identification of the dominant element of a sign may be relevant for the purpose of comparing signs at issue (judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 37 and the case-law cited), it does not follow that the reputation and the degree of distinctive character of that sign, which concern it as a whole, make it possible to determine which component of that sign is dominant in the perception of the relevant public.
67


In accordance with settled case-law, the statement of the reasons on which a judgment of the General Court is based must clearly and unequivocally disclose the General Court’s reasoning, so that the persons concerned can be apprised of the justification for the decision taken and the Court of Justice can exercise its power of review (judgment of 1 December 2016, Klement v EUIPO, C‑642/15 P, not published, EU:C:2016:918, paragraph 24 and the case-law cited). Where the reasoning of the General Court is contradictory or inadequate, that raises a question of law which is amenable to judicial review on appeal (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 25 and the case-law cited)).
72


It is important to recall, in that context, that the distinctive character of a trade mark must be assessed on the basis of the goods or services covered by it and the presumed perception of the relevant section of the public. It follows that the degree of that distinctive character must be determined on the basis of, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been and the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 22 and 23, and of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraphs 39 and 41).