Les Bordes Golf International v EUIPO - Mast-Jagermeister (LES BORDES) (EU trade mark –Judgment) [2022] EUECJ T-696/21 (05 October 2022)

Judgment By its action under Article 263 TFEU, the applicant, Les Bordes Golf International, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 September 2021 (Case R 67/2021-4) (‘the contested decision’). Background to the dispute On 17 July 2019, the applicant filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to 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 for which registration was sought are in Classes 3, 14, 16, 18, 24, 25, 41 and 43 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 3: ‘Perfumery and fragrances; cleaning and fragrancing preparations; toiletries’; – Class 14: ‘Key rings and key chains, and charms therefor’; – Class 16: ‘Printed matter; paper and cardboard; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics’; – Class 18: ‘Luggage, bags, wallets and other carriers; walking sticks; umbrellas and parasols; card holders made of leather; card holders made of imitation leather; document cases of leather; golf umbrellas; umbrellas; parasols’; – Class 24: ‘Textile goods, and substitutes for textile goods; linens; household textile articles; plastic banners; streamers of textile; banners of textile or plastic; banners of textile; flags and pennants of textile; nylon flags; flags of textile or plastic; plastic flags; handkerchiefs of textile; textile tissues; wash cloths’; – Class 25: ‘Headgear; footwear; clothing; hosiery; gloves [clothing]; sports jerseys; golf pants, shirts and skirts; golf trousers; dressing gowns; golf shorts; tee-shirts; golf clothing, other than gloves’; – Class 41: ‘Organisation of conferences, exhibitions and competitions; rental services relating to equipment and facilities for education, entertainment, sports and culture; education and instruction services; Hosting [organising] awards; entertainment, sporting and cultural activities; administration [organisation] of entertainment services; entertainment in the nature of golf tournaments’; – Class 43: ‘Rental of furniture, linens, table settings, and equipment for the provision of food and drink; temporary accommodation; providing temporary accommodation; restaurant services; provision of food and drink’. The EU trade mark application was published in Community Trade Marks Bulletin No 124/2019 of 4 July 2019. On 19 September 2019, the intervener, Mast-Jägermeister SE, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for, in respect of all the goods and services referred to in paragraph 4 above. The opposition was based, inter alia, on international registration No 1311081 designating the European Union, registered on 17 November 2015, for the figurative mark reproduced below, covering, inter alia, the following goods and services: – Class 3: ‘Toiletries; animal grooming preparations; essential oils and aromatic extracts; abraders; cleaning and fragrancing preparations; tailors’ and cobblers’ wax’; – Class 14: ‘Gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; other articles of precious metals and precious stones, and imitations thereof, namely statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof, ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof, coins and tokens, works of art of precious metal, key rings (trinkets or fobs); jewellery boxes and watch boxes; parts and fittings of all the aforesaid goods, included in this class’; – Class 16: ‘Works of art and figurines of paper and cardboard, and architects’ models; decoration and art materials and media; filtering materials of paper; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; stationery and educational supplies; adhesives for stationery or household purposes; money holders; disposable paper products; printed matter; paper and cardboard; parts and fittings of all the aforesaid goods, included in this class’; – Class 18: ‘Sausage skins and imitations thereof; umbrellas and parasols; walking sticks; luggage, bags, wallets and other carriers; leather and imitation leather, pelts and hides; saddlery, whips and animal apparel; parts and fittings of all the aforesaid goods, included in this class’; – Class 24: ‘Fabrics; textile goods, and substitutes for textile goods; filtering materials of textiles’; – Class 25: ‘Headgear; clothing; footwear; parts and fittings of all the aforesaid goods, included in this class’; – Class 41: ‘Publishing and reporting; education, entertainment and sports; translation and interpretation; rental, hire and leasing in connection with the aforesaid, included in this class; advice, consultancy and information for the aforesaid, included in this class’; – Class 43: ‘Temporary accommodation; animal boarding; rental of furniture, linens and table settings; provision of food and drink; rental, hire and leasing in connection with the aforesaid, included in this class; advice, consultancy and information for the aforesaid, included in this class’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. On 17 November 2020, the Opposition Division rejected the opposition in its entirety. On 13 January 2021, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By decision of 1 September 2021 (‘the contested decision’), the Board of Appeal upheld the appeal in its entirety on the basis of the earlier international registration, which it found enjoyed the broadest protection, and did not consider it necessary to examine the opposition in respect of the other earlier rights invoked. It thereby held that there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 on account of the identity of the goods and services or the similarity between them, the average degree of visual and conceptual similarities between the signs and the fact that the inherent distinctiveness of the international registration as a whole had to be regarded as average. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – reinstate the decision of the Opposition Division; – order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. EUIPO, supported by the intervener, disputes the applicant’s arguments. Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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 settled 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 that 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). 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 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 merits of this plea in law must be examined in the light of the abovementioned principles. The relevant public and its level of attention The Board of Appeal noted, in paragraphs 21 and 22 of the contested decision, that the relevant territory was that of all the Member States of the European Union, and that the relevant public was mainly the general public, but that as some of the goods and services in Classes 3, 16, 41 and 43 could also be targeted at specialists and at a professional public, the level of attention of the relevant public could vary from average to high. There is nothing in the file capable of calling into question that conclusion of the Board of Appeal. Furthermore, it should be borne in mind that, as regards the assessment of the likelihood of confusion, the public with the lower level of attention must be taken into consideration (see judgment of 24 March 2021, Creaton South-East Europe v EUIPO – Henkel (CREATHERM) , T‑168/20, not published, EU:T:2021:160 , paragraph 24 and the case-law cited). In the present case, the likelihood of confusion must be assessed with regard to an average consumer who is reasonably well informed and reasonably observant and circumspect. The comparison of goods and services It is apparent from paragraphs 26 to 31 and 35 of the contested decision that the Board of Appeal considered that the goods and services in Classes 3, 14, 16, 18, 24, 25 and 43 and some services in Class 41 of the trade mark applied for were either identical to or included in those of the earlier mark. It also considered in paragraphs 33 and 34 of the contested decision that the other services, in Class 41, were ‘similar to an average degree’. There is nothing in the file capable of calling into question that conclusion of the Board of Appeal, and moreover, the parties do not dispute that assessment. The comparison of the signs 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 that 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). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, the result being that all the other components are negligible in the overall impression created by that mark (see judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43 and the case-law cited). Visual similarity In paragraph 39 of the contested decision, the Board of Appeal noted, first of all, that the signs at issue displayed a black and white representation of the same animal and the same part of it, namely a stag’s head with its antlers and a part of its neck facing forward; next, that, in both signs, the proportions between the parts of the stag’s head, namely the head, ears, mouth, antlers and neck, were almost identical; and lastly, that, in the earlier sign, the stag’s head was surrounded by a circle, a small cross and black lines which served rather as a background and played a decorative role. In paragraph 40 of the contested decision, the Board of Appeal stated that the representations of the stags’ heads in both signs clearly dominated them on account of their size and their visually eye-catching appearance, that that finding was not called into question by the more naturalistic style of the earlier sign, in which more details of the image of the animal could be seen, being elements of secondary importance, which the average customer was not likely to identify or remember. In the same paragraph, it added that the additional figurative elements of the earlier sign and the underlined word elements in the contested sign were likewise not sufficient in themselves to eliminate the visual similarities between the signs. It then concluded, in paragraph 41 of the contested decision, that the signs displayed visual similarity to an average degree. In the first place, the applicant submits that the figurative elements of the signs at issue display numerous and obvious differences. Whereas the earlier sign gives the details of a stag’s head and represents it as an ethereal figure in a heavenly and radiant glow, clearly making a reference to the legend of Saint Hubert, the sign of the mark applied for comprises a stag’s head depicted only as a silhouette, appearing as a solid block without any detail or reference to Christianity. In addition, it points out that the earlier sign comprises a large double circle containing a cross with lines representing a light that radiates from it like that of the sun. In the second place, the word elements ‘les bordes’ are more distinctive than the other figurative elements included in the sign of the mark applied for and, as such, are dominant. EUIPO and the intervener dispute the applicant’s claims. In addition, the intervener claims that the applicant’s argument that the earlier sign refers to the legend of Saint Hubert is inadmissible, as it was not put forward before the Board of Appeal. In the first place, as regards the figurative elements, although, as the applicant maintains, the earlier sign represents the details of a stag’s head, whereas the contested sign shows only a silhouette, it must be held, as observed by EUIPO, that since both signs contain the stylised representation of a stag’s head with antlers, ears and a part of the neck facing forward and that, in both signs, the proportions between the parts of a stag’s head are almost identical, the average consumer is not likely to focus his or her attention on the differences that exist between the two signs. Furthermore, the Court has already held, with regard to the visual comparison between marks applied for and an earlier mark with figurative elements consisting, in particular, of the representation of a stag’s head, seen from the front and enclosed in a circle, that that shared figurative element occupied a dominant position in the signs at issue, on account of its very eye-catching appearance and size, and that that finding was not called into question either by the more abstract and coloured style of that figurative element of the marks applied for, or by the indented outline of the circle in which that element was enclosed. The Court added that, while the word elements of the marks applied for, the insertion of two of them in a rectangular frame and the cross surrounded by a halo, in the earlier mark, did indeed constitute visible elements which differentiated the signs at issue visually, they were not dominant elements, unlike the figurative element common to those signs, namely the representation of a stag’s head facing forward and enclosed in a circle. Taking all of those elements into account, the Court then considered that the marks at issue displayed significant visual similarity (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 92). In the present case, the additional figurative elements of the sign of the earlier mark, namely the double circle, the cross and the black lines, to which the applicant refers, cannot lead to a different conclusion. What the applicant describes as a ‘double circle’ is more akin just to a round frame. As EUIPO points out, circles are a rather common element in trade marks. That is confirmed by the fact that circles also appeared both in the marks applied for and in the contested mark in the cases that gave rise to the judgment of 14 December 2006, VENADO with frame and others (T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 ). The fact that, in this instance, the circle is double is not sufficient to undermine that argument. As for the representation of the cross and the black lines, they appear to be merely decorative elements represented in the background, somewhat eclipsed by the stag’s head. In that regard, even if it is true, as the applicant submits, that the sign of the mark applied for includes a stag’s head, shown only as a silhouette, appearing as a ‘solid block’ without any detail and without any other figurative elements, whereas the sign of the earlier mark depicts all the details of a stag’s head, the fact remains, as the Board of Appeal pointed out in paragraph 39 of the contested decision, that in both signs, the proportions between the parts of the stag’s head, namely the head, ears, throat, antlers and neck, are almost identical. Lastly, contrary to the applicant’s assertion, the fact that the figurative elements of the earlier mark may allegedly be perceived as alluding to the legend of Saint Hubert is irrelevant for the purposes of the visual comparison, since that aspect falls within the scope of the conceptual comparison, analysed below. The Board of Appeal was therefore right to find, in paragraph 39 of the contested decision, that those elements served rather as a background and played a decorative role. In the second place, as regards the applicant’s argument that the word elements ‘les bordes’ are dominant because they are more distinctive, it should be borne in mind that although, according to settled case-law, where a mark consists of word elements and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the trade mark than by describing the figurative element of that mark, the same case-law nevertheless states that it does not follow that the word elements of a trade mark must always be regarded as more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, due in particular to its shape, size, colour or position in the sign, rank equally with the word element (see, to that effect, judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY) , T‑35/08, EU:T:2010:476, paragraphs 37 and 39 and the case-law cited). In the present case, the Board of Appeal was right to point out, in paragraph 40 of the contested decision, that ‘the representations of the stags’ heads clearly dominate both signs on account of their size and eye-catching appearance’. In the mark applied for, the size of the word element is much smaller than that of the figurative element, so it cannot attract more attention. Therefore, without it being necessary to rule on the intervener’s argument that the applicant cannot submit for the first time before the Court that the earlier sign refers to the legend of Saint Hubert, it must be held, as the Board of Appeal also held, that the signs at issue display an average degree of visual similarity. Phonetic similarity In paragraph 42 of the contested decision, the Board of Appeal held that it was not possible to make a phonetic comparison of the signs at issue, since the sign of the mark applied for is purely figurative. The applicant submits that the Board of Appeal erred in finding that a phonetic comparison of the signs was not possible. Whereas consumers would refer to the contested mark as LES BORDES, they would refer to the earlier mark by using, in their mother tongue, the word ‘stag’. In that regard, the applicant refers inter alia to the judgment of 7 May 2015, Cosmowell v OHIM – Haw Par (GELENKGOLD) (T‑599/13, EU:T:2015:262 ). EUIPO and the intervener dispute those arguments. In that regard, it should be noted that a phonetic comparison of the signs at issue is irrelevant in the context of examining the similarity of a purely figurative mark with another mark. A purely figurative mark cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. However, such a description necessarily coincides with either the visual perception or the conceptual perception of the mark concerned. Consequently, it is not necessary to examine separately the phonetic perception of a purely figurative mark and to compare it with the phonetic perception of other marks (judgments of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf) , T‑681/15, not published, EU:T:2017:296 , paragraphs 52 and 53, and of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree) , T‑559/19, not published, EU:T:2020:19 , paragraph 32). It is true, as the applicant submits, that according to the case-law, where a purely figurative mark represents a shape that the relevant public is easily able to recognise and to associate with a specific, concrete word, it will use that word to refer to that mark, whereas if a figurative mark also includes a word element, it will be in general by using that word element that the relevant public will refer to the mark (judgments of 7 May 2015, GELENKGOLD , T‑599/13, EU:T:2015:262 , paragraph 53, and of 3 May 2017, Representation of the head of a wolf , T‑681/15, not published, EU:T:2017:296 , paragraph 53). However, the case-law has made clear that that presupposes that the semantic content of the purely figurative mark might immediately be associated with a specific and concrete word (judgments of 7 May 2015, GELENKGOLD , T‑599/13, EU:T:2015:262 , paragraph 62; of 3 May 2017, Representation of the head of a wolf , T‑681/15, not published, EU:T:2017:296 , paragraph 53; and of 30 January 2020, Representation of a tree , T‑559/19, not published, EU:T:2020:19 , paragraph 33). Thus, in paragraph 65 of the judgment cited by the applicant itself, namely that of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262 ), the Court found that, taking into account the fact that the relevant public would refer to the mark applied for by uttering its word element ‘gelenkgold’, whereas in relation to the earlier mark, it could only utter the word ‘tiger’, it had to be held that the signs at issue were phonetically different, contrary to the conclusion reached by the Board of Appeal. However, in the present case, it should be noted that the purely figurative mark, in addition to the fact that it could be uttered by the word ‘stag’ as well as by the word ‘reindeer’, contains other elements, namely a cross, a double circle and black lines, so that it may be uttered in different ways and it is therefore impossible to attribute to it a specific and concrete word, within the meaning of the case-law referred to in paragraph 49 above. The Fourth Board of Appeal was therefore correct in finding that the signs at issue could not be compared phonetically. Conceptual similarity In paragraph 43 of the contested decision, the Fourth Board of Appeal found that the signs at issue were conceptually similar to an average degree, since the idea underlying the figurative elements of both signs was that of a stag’s head in which the antlers and a part of the neck were facing forward and the additional, less distinctive figurative elements of the earlier sign and the word elements ‘les bordes’ of the contested sign would not alter that perception. The applicant submits that, although it is true that the signs at issue have in common the representation of the same animal, the conceptual similarity must be regarded as merely weak overall, since the mere fact that a generic word exists which may serve to describe part of the semantic content of the signs at issue is not sufficient to establish a conceptual similarity. It adds that the contested mark also includes the word element ‘les bordes’, which cannot be neglected, and that the conceptual similarity is further reduced because of the cultural and religious significance of the earlier mark, emphasised by the intervener in its own publicity materials. EUIPO and the intervener dispute those arguments. The applicant does not dispute that the signs share the identical concept of a stag’s head in which the antlers and part of the neck are facing forward. In addition, the other figurative elements present in the earlier sign, in particular the cross and the beams of light, are not such as to preclude conceptual similarity between the signs at issue (see, by analogy, judgment of 14 December 2006, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 108). Furthermore, contrary to the applicant’s submission, the word element ‘les bordes’ in the contested sign cannot influence the conceptual comparison between the signs, as it will be perceived by the majority of the relevant public as a meaningless term. Indeed, it must be stated that the applicant itself does not propose any meaning. Moreover, regarding the applicant’s argument that the mere fact that a ‘generic word’ exists which serves to describe part of the semantic content of the signs at issue is not such as to establish conceptual similarity, suffice it to say that the Fourth Board of Appeal did not allude to the existence of such and did not rely on such a finding in its examination of the conceptual similarity. Therefore, the Fourth Board of Appeal was correct in finding that the signs at issue were conceptually similar to an average degree. Distinctive character of the earlier mark In paragraph 44 of the contested decision, the Fourth Board of Appeal found that the inherent distinctive character of the earlier mark as a whole had to be regarded as average, given that it was neither descriptive nor evocative as regards the relevant goods and services. According to the applicant, if the Fourth Board of Appeal had taken into account the well-known legend of Saint Hubert, to which the earlier mark clearly refers, or the popular use of a ‘stag’ motif on the market, it would have found that the earlier mark had only a low degree of distinctiveness. In EUIPO’s trade mark register alone, there are almost 10 000 trade marks consisting of a stylised stag motif, although most of them are not associated with the other mark at issue. Also, an internet search reveals that the stag motif can be found on a wide range of different products. EUIPO and the intervener dispute those arguments. Further, EUIPO and the intervener submit that, since the evidence derived from an internet search was produced by the applicant for the first time before the Court, it must be declared inadmissible. Furthermore, according to the intervener, the same is true as regards the evidence taken from EUIPO’s trade mark register, since that evidence was not produced before the Fourth Board of Appeal either. Lastly, according to the intervener, those latest pieces of evidence must also be declared inadmissible, given that the applicant has not divulged all the search criteria used, which goods are protected by the trade marks displayed, whether the trade marks are in force and whether they are used in the course of trade. As a preliminary point, it should be noted that the applicant does not call into question the Fourth Board of Appeal’s assessment that the earlier mark is neither descriptive nor evocative as regards the relevant goods and services. Next, as regards the argument from EUIPO and from the intervener that the evidence derived from an internet search and showing various images representing a stag or parts thereof must be declared inadmissible, having been produced by the applicant for the first time before the Court, it must be borne in mind that the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, within the meaning of Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of documents produced before it for the first time. In addition, according to Article 188 of the Rules of Procedure, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal (judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton) , T‑284/20, not published, EU:T:2021:218 , paragraph 23). Therefore, the evidence derived from an internet search must be rejected as inadmissible. As regards the applicant’s argument relating to the number of trade marks ‘consisting of a stylised stag’ and featuring in EUIPO’s trade mark register – and contrary to the intervener’s contention – it is apparent from the case-law that extracts from the European Union trade mark register are not evidence per se but concern EUIPO’s decision-making practice, to which a party must be able to refer for the first time before the General Court, where the plea is not that the Board of Appeal failed to take into account the factual aspects of a particular judgment or decision but that it infringed a provision of Regulation 2017/1001, and to rely on the case-law or on a decision-making practice in support of that plea (see judgment of 26 June 2018, Sicignano v EUIPO – IN. PRO. DI (GiCapri “a giacchett’e capri” ), T‑619/16, not published, EU:T:2018:385 , paragraph 31 and the case-law cited). However, it should be borne in mind that the relevant factor for the purposes of disputing the distinctiveness of an element is its actual presence on the market and not in registers or in databases (see judgment of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean beach club ibiza) , T‑5/15, not published, EU:T:2016:311 , paragraph 35 and the case-law cited). In the present case, the applicant has not demonstrated that the relevant public has indeed been confronted with an actual presence on the market of trade marks ‘consisting of a stylised stag’. Therefore, without it being necessary to rule on the intervener’s argument alleging a lack of precision as to the search method used, the applicant’s argument must be rejected as irrelevant. Lastly, it must be held that the applicant has not demonstrated that the relevant public will associate the legend of Saint Hubert with the earlier mark. Therefore, the Fourth Board of Appeal rightly found that the inherent distinctive character of the earlier mark as a whole had to be regarded as average. 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 of the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a greater 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, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In the present case, the Fourth Board of Appeal found, in paragraph 49 of the contested decision, that the identity of the goods and services or the similarity between them, the average degree of visual and conceptual similarity between the signs and the average degree of inherent distinctiveness of the earlier mark were sufficient to result in a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even taking into account the consumer’s higher level of attention for part of the relevant goods and services. The applicant disputes that finding. It submits, first, that the Fourth Board of Appeal erred in law by overestimating the degrees of visual and conceptual similarity between the signs at issue, having wrongly ignored the phonetic differences between them and, secondly, that the visual and phonetic differences between two signs may counteract the conceptual similarities they present. In addition, it wrongly concluded that the earlier mark has an average degree of distinctiveness and ignored the fact that, where an earlier mark and the sign for which registration is sought coincide in a weakly distinctive element with regard to the goods at issue, the global assessment of the likelihood of confusion rarely leads to a finding that such a likelihood exists. EUIPO and the intervener dispute those arguments. As a preliminary point, it should be noted that, as regards the assessment of the likelihood of confusion, the public with the lowest level of attention must be taken into consideration and that, in the present case, the likelihood of confusion must be assessed in consideration of an average consumer who is reasonably well informed and reasonably observant and circumspect (see paragraph 22 above). As regards the degrees of visual, phonetic and conceptual similarity, it follows from paragraphs 27 to 60 above that the Board of Appeal was right to find that the marks at issue presented an average degree of visual and conceptual similarity and that it was not possible to make a phonetic comparison between them. As for the inherent distinctiveness of the earlier mark as a whole, it follows from paragraphs 61 to 72 above that the Board of Appeal was right to consider that it was average. Therefore, it must be held, having regard to all the evidence referred to in paragraphs 77 to 79 above, that the Board of Appeal did not err in holding that there was a likelihood of confusion. It follows that the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected as unfounded. In the light of all the foregoing, the action must be dismissed, without it being necessary to rule on the admissibility of the heads of claim seeking to reinstate the decision of the Opposition Division. Costs 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Les Bordes Golf International to bear the costs. Marcoulli Frimodt Nielsen Norkus Delivered in open court in Luxembourg on 5 October 2022. E. Coulon M. van der Woude 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