El Corte Ingles v EUIPO - Lloyd Shoes (LLOYD) (EU trade mark - Judgment) [2019] EUECJ T-729/18 (19 December 2019)

Judgment Background to the dispute On 25 October 2011, the intervener, Lloyd Shoes GmbH, 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)). Registration as a mark was sought for the following figurative sign: The goods and services in respect of which registration was sought are in Classes 3, 14, 18, 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. The first four classes of goods and services in respect of which registration was sought, namely Classes 3, 14, 18 and 25, cover goods corresponding to the following description: – Class 3: ‘Perfumery, cosmetics’; – Class 14: ‘Jewellery, Jewellery, Costume jewellery, Tie pins, Tie clips, Horological and chronometric instruments’; – Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, pouches and wallets (included in class 18); Travelling bags and handbags; Trunks and travelling bags; Briefcases and attaché cases’; – Class 25: ‘Clothing, footwear, headgear’. The last class of goods and services in respect of which registration was sought, namely Class 35, covers sales services relating to the goods in Classes 14, 18 and 25 referred to in paragraph 4 above and corresponding to the following description: – Class 35: ‘Wholesaling and retailing, including via the internet and through teleshopping, in the fields of jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, money pouches and pocket wallets (included in class 18), travel bags and handbags, trunks and travelling bags, briefcases and attaché cases, clothing, footwear, headgear’. The trade mark application was published in Community Trade Marks Bulletin No 2011/243 of 23 December 2011. On 27 January 2012, the applicant, El Corte Inglés, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraphs 3 to 5 above. The opposition was based on, inter alia, the following earlier EU figurative mark: According to the registration of the earlier mark, it covers goods in Class 3, 14 and 18 corresponding to the following description: – Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’; – Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’; – Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes, excluding leather used for making footwear; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’. It is clear from its registration that the earlier mark does not cover goods in Class 25. 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). By decision of 28 September 2017, the Opposition Division: – upheld the opposition and found that registration could not be granted, first, in respect of the goods in Classes 3, 14, 18 and 25 and, secondly, in respect of the sales services in Class 35 in so far as those services related to, inter alia, the goods in Class 14; – rejected the opposition by finding that registration could be granted in respect of the sales services in Class 35 in so far as those services related to, inter alia, some of the goods in Class 18 and the goods in Class 25. Both parties appealed, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. The intervener appealed in so far as the application for registration of the EU trade mark had been rejected (appeal in Case R 2431/2017-1) and the applicant appealed in so far as registration of the mark applied for had been permitted in respect of certain services (appeal in Case R 2385/2017-1). By decision of 13 September 2018 (‘the contested decision’), the First Board of Appeal of EUIPO, inter alia, partially dismissed the appeal brought by the applicant and therefore upheld the application for registration in respect of the services in Class 35 in so far as those services related to the goods in Class 25. In that regard, the Board of Appeal stated, in order to justify its position, that a similarity between goods and sales services was restricted to situations in which the goods, covered, in the present case, by the earlier mark, were actually the subject of the sales services in question. However, it found that the goods covered by the earlier mark were not, in the present case, the subject of the sales services in respect of which registration had been sought. In those circumstances, it could not, according to the Board of Appeal, be found that there was a similarity between those goods and services, which was a necessary precondition for a finding that there was a likelihood of confusion. Forms of order sought The applicant claims that the Court should: – annul the contested decision in so far as it partially confirmed the Opposition Division’s decision; – order the other party or parties to the action to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should dismiss the action ‘including the request [for it] to pay the costs of the present proceeding’. Law The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea is based, in essence, on two complaints, alleging, first, that the Board of Appeal was inconsistent in the comparison of the goods and services and, secondly, that the Board of Appeal erred in examining the likelihood of confusion. EUIPO and the intervener dispute the applicant’s complaints. Article 8(1)(b) of Regulation 2017/1001 provides that, 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, the 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. According to the 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 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, to that effect, 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). For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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, to that effect, 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 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. The average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, to that effect, 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). In the present case, the Board of Appeal confirmed the analysis carried out by the Opposition Division, which had decided to take into account the Spanish, Italian and French speakers in the European Union. Furthermore, the Board of Appeal found, first, that the leather and imitations of leather in Class 18 were aimed at a public of professionals whereas the other goods covered by the earlier mark were aimed at the general public and, secondly, that the wholesale services in Class 35 were aimed at professionals in the trade whereas the retail services in that class were aimed at the general public. Lastly, it found that, in the light of the nature of those goods and services, the level of attention of the relevant public varied from average to high. In the present case, it is necessary to uphold the Board of Appeal’s findings, which are not, moreover, disputed by the parties, that the relevant public consists of the general public and of professionals in the trade. Those findings are compatible, with regard to the various classes considered, with the nature of the goods and services concerned. The level of attention displayed by a public with such a make-up will vary from average to high, depending on whether the general public or professionals are concerned. The comparison of the goods and services According to the case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should 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 be taken into account, such as the distribution channels of the goods concerned (see, to that effect, judgment 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). In the contested decision, the Board of Appeal found that the mark applied for could be registered in so far as the sales services in Class 35 related to the goods in Class 25. That decision is criticised by the applicant, which, in the first complaint in the single plea in law, submits that, on account of their complementarity, there is a link between, on the one hand, the goods in Class 25 and, on the other hand, those in Classes 3, 14 and 18. In this connection, the applicant submits that the peculiarities of the fashion, accessories and perfumery sectors lead consumers to use those various goods in combination. It adds that, in its view, those peculiarities lead consumers to regard it as indispensable that those goods be sold in the same shops and via the same distribution channels or in shops and via distribution channels that have the same origin or economically linked origins. In that context, it is, according to the applicant, inconsistent to find, as the Board of Appeal, however, did, that the application for registration: – had to be rejected in respect of the goods in Classes 3, 14, 18 and 25; – also had to be rejected in respect of the sales services relating to the goods in Classes 14 and 18; – had to be accepted in respect of the sales services relating to the goods in Class 25. In that regard, it must be borne in mind that goods and services can be considered to be complementary where there is a close connection between them, 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 manufacturing those goods and for providing those services (see, to that effect, judgment of 16 October 2013, El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.) , T‑282/12, not published, EU:T:2013:533, paragraph 34). According to the case-law, that association on the part of the consumer means that, for the purposes of the application of EU law, sales services can be considered to be similar to the goods to which they relate (see, to that effect, judgment of 16 October 2013, fRee YOUR STYLe. , T‑282/12, not published, EU:T:2013:533, paragraph 37 and the case-law cited). In that regard, it must be borne in mind that the sales services in Class 35 relate, in the present case, to the goods in Class 25. However, as was stated by the Board of Appeal, the earlier mark has not been registered in respect of goods in Class 25, but only, as has been pointed out in paragraph 9 above, in respect of goods in Classes 3, 14 and 18. The applicant submits, however, in essence, that, in the case before the Court, there is an indirect similarity between the goods covered by the earlier mark and the sales services in respect of which the Board of Appeal allowed registration. The goods covered by the mark applied for are in, inter alia, Classes 3, 14 and 18 like those covered by the earlier mark, which justified the rejection of the application for registration as regards those goods. Furthermore, registration of the mark applied for was likewise refused as regards the goods in Class 25, because those goods were considered to be similar, on account of their complementarity, to the goods in those classes. In those circumstances, having acknowledged the existence of connections between the goods in those various classes, the Board of Appeal could not, according to the applicant: – on the one hand, accept the idea of a similarity between the services in Class 35 and the goods in Classes 3, 14 and 18; – on the other hand, rule out that idea as regards those services and the goods in Class 25. In that regard, it must be pointed out that, as the applicant states in support of its line of argument, goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned (see, to that effect, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños , T‑443/05, EU:T:2007:219 , paragraph 49). In accordance with that case-law, consumers might feel, in the present case, that clothing, footwear and headgear in Class 25 are, on account of having such a common function, similar to clothing accessories such as handbags in Class 18. However, it must be pointed out that a similarity established between the goods referred to in paragraph 41 above on the basis of a function which they may together fulfil, does not, on its own, by transitivity, imply that the same similarity exists between, on the one hand, some of those goods, for example handbags in Class 18 and, on the other hand, sales services relating to clothing, footwear and headgear in Class 25. Those goods and services differ as regards their nature, intended purpose and method of use (see, to that effect, judgment of 24 September 2008, Oakley v OHIM — Venticinque (O STORE) , T‑116/06, EU:T:2008:399, paragraph 47). In the present case, the applicant confines itself to basing its line of argument on the relationship existing between the goods covered by the signs at issue although the similarity that may exist between those goods is not, on its own, sufficient to conceive of the existence of such a similarity between the goods and services at issue. In those circumstances, the first complaint which the applicant has put forward in support of its single plea in law must be rejected. The likelihood of confusion 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 (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and 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). Upholding the Opposition Division’s decision, the Board of Appeal found that there was no likelihood of confusion between the sales services relating to clothing, footwear and headgear and the goods covered by the earlier mark. That analysis is disputed in the second complaint in the single plea in law, by which the applicant submits that the Board of Appeal did not, in the contested decision, take sufficient account of the fact that the signs at issue are almost identical when it dismissed the idea of a likelihood of confusion. According to the applicant, the interdependence between the factors to be taken into account should have led the Board of Appeal to find that there was, in such circumstances, a likelihood of confusion on the basis of the identity, or virtual identity, of the signs at issue. EUIPO and the intervener dispute that complaint. In that regard, it must be pointed out that, as stated by the applicant, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. However, it must be borne in mind that, as a matter of principle, a likelihood of confusion presupposes both, first, that the marks at issue are identical or similar and, secondly, that the goods or services which they cover are identical or similar; those two conditions are, according to the case-law, cumulative (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraph 44 and the case-law cited). Consequently, an opposition must be rejected, regardless of the degree of similarity or the identity of the signs at issue, if the goods or services which they cover are different (see, to that effect, order of 3 June 2015, The Sunrider Corporation v OHIM , C‑142/14 P, not published, EU:C:2015:371, paragraph 108). That is certainly so in the present case in which, as the Court has pointed out in paragraph 44 above, the applicant’s arguments seeking a declaration that the Board of Appeal erred in finding that there was no similarity between the goods and services at issue had to be rejected. In those circumstances, the Board of Appeal was right in finding that there was no likelihood of confusion, without it being necessary for it to take into consideration the alleged similarity or identity of the signs at issue. Costs 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. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO. As regards the intervener, it must be borne in mind that, in its written pleadings, it contended that the action should be dismissed, ‘including the request [for it] to pay the costs of the present proceeding’. Such a request, made to the Court in those terms, cannot be interpreted as a head of claim seeking an order that the applicant should pay the intervener’s costs. For that reason, it must be held that, in accordance with the rule referred to in paragraph 55 above, the intervener is to bear its own costs. On those grounds, THE GENERAL COURT (Fourth Chamber) hereby: 1. Dismisses the action; 2. Orders El Corte Inglés, SA to bear its own cost and to pay those incurred by the European Union Intellectual Property Office (EUIPO); 3. Orders Lloyd Shoes GmbH to bear its own costs. Gervasoni Madise Nihoul Delivered in open court in Luxembourg on 19 December 2019. E. Coulon R. da Silva Passos Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII