Biasotto v EUIPO - Oofos (OOF) (EU trade mark - Judgment) [2019] EUECJ T-453/18 (10 October 2019)

Judgment Background to the dispute On 28 December 2015, the applicant, Mr Alessandro Biasotto, 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 in respect of which registration was sought are in, inter alia, Class 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, following the limitation made in the proceedings before EUIPO, correspond to the following description: ‘clothing; jerseys [clothing]; undershirts; shirts; jackets [clothing]; coats; blousons; trousers; denim jeans; trousers for children; short trousers; denim jackets; short-sleeved or long-sleeved t-shirts; gloves [clothing]; scarfs; pocket squares; neck scarfs [mufflers]; waist belts; leather belts [clothing]; belts [clothing]; gilets; cravats; hats; berets’. On 7 April 2016, OOFOS LLC, now the intervener Oofos, Inc., 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 referred to in paragraph 3 above. The opposition was based, in particular, on the EU word mark OOFOS, registered on 17 November 2011 under No 9760042 in respect of, inter alia, goods in Class 25 corresponding to the following description: ‘Footwear comprised of foam; soles for footwear comprised of foam’. 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). On 18 April 2017, the Opposition Division upheld the opposition and refused registration of the mark applied for in respect of the goods referred to in paragraph 3 above. On 15 June 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision. By decision of 10 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that, in the light of the ‘highly similar’ nature of the goods in question and the average degree of visual and phonetic similarity between the marks at issue, which share the sequence of letters ‘O-O-F’, and taking into account the principles of imperfect recollection and interdependence, there exists a likelihood of confusion on the part of the relevant public. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – allow the mark applied for to proceed to registration in respect of all the goods covered; – order EUIPO or the intervener to pay the costs, including those incurred in the proceedings before the Opposition Division and the Board of Appeal. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, he claims that the overall impression created by the marks at issue is dissimilar since they cannot be deemed sufficiently similar to create a likelihood of confusion, either visually, phonetically or conceptually. EUIPO and the intervener contend that there is a likelihood of confusion. 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 at issue 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 at issue 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 (judgments 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 of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE) , T‑183/13, not published, EU:T:2015:259, paragraph 17). 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). In the present case, as regards the relevant public, there is no reason to call into question the Board of Appeal’s assessment, which moreover is shared by the applicant, that the relevant public is the general public in the European Union with an average level of attention. The comparison of the signs The applicant submits, first, that, visually, the marks at issue are ‘not at all similar’ and are clearly different. In his view, the overall visual impression of the OOF mark applied for is conveyed by the totality of its word and figurative elements, within which the word element consisting of the letters ‘O-O-F’ does not dominate over the other elements. An overall visual comparison of the marks at issue shows the striking difference between them, given that the mark applied for is a figurative mark in colour seeking protection not only for the letters ‘O-O-F’ but also for their particular stylisation, the two thick lines above the first two letters ‘O-O’ and the colours red and white for those two lines and the three letters ‘O-O-F’, whereas the earlier mark OOFOS is, in contrast, a simple word mark. Furthermore, figurative marks enjoy protection only and exclusively in respect of the specific graphic in which they are represented. Finally, marks consisting of three or fewer letters/numbers are considered to be short marks, in accordance with a number of EUIPO’s decisions and EUIPO’s guidelines, and small differences are sufficient to distinguish them. Second, phonetically, the applicant maintains that the pronunciation of the signs at issue differs in the sound of the final sequence ‘O-S’ of the earlier mark, even though it coincides in the sound sequence of the letters ‘O-O-F’ common to both signs. He also submits that the degree of phonetic similarity between two marks is of less importance in the case of goods which, as in the present case, are marketed in such a way that the relevant public, when making a purchase, usually perceives visually the mark designating those goods. He concludes that the degree of phonetic similarity between the marks at issue is not sufficiently high to give rise, in itself, to a likelihood of confusion, even for those goods which are deemed to be identical. Third, the applicant does not dispute the Board of Appeal’s finding that, in essence, a conceptual comparison is not possible and its impact is neutral. EUIPO and the intervener dispute the applicant’s arguments. According to settled case-law, 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; judgment of 5 May 2015, SKYPE , T‑183/13, not published, EU:T:2015:259, paragraph 28). Visual comparison In the present case, from a visual standpoint, the Board of Appeal found, in paragraph 30 of the contested decision, that the compared signs share the three-letter sequence ‘O-O-F’, which appears at the beginning of the signs and forms the initial part on which the relevant public focus their attention, and differ only in the final part ‘O-S’ of the earlier sign — which has no equivalent in the sign applied for — and in the stylised aspect of the latter. It held that, whilst not insignificant in the visual impression of the mark applied for, the graphic features of that mark, namely a line above each ‘O’, a grey rectangular background, an almost standard typeface and the use of two colours for the word element (‘OO’ in red and ‘F’ in white), are not such as to divert the relevant public’s attention away from the word element ‘OOF’, which will be more easily remembered by that public and used to identify the mark applied for. This assessment of the Board of Appeal, which is not invalidated by the applicant’s arguments, must be upheld. First, as regards the argument whereby the applicant criticises the Board of Appeal for assessing the various elements of the mark applied for individually and not in their overall impression, and thereby disputes the distinctive and dominant character of the word element ‘OOF’ within that mark, it must be recalled that, while it is true, as the applicant submits, that the mark applied for must be assessed as a whole with due regard for its figurative elements, that does not prevent some of its elements from commanding less attention than others, in particular its word element, and from being, consequently, less likely to influence the overall visual impression created by the mark (see, to that effect, judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (skype) , T‑423/12, not published, EU:T:2015:260, paragraph 31). Furthermore, where a mark is composed of word 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 their name than by describing the figurative element of the mark (see judgments of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader) , T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited, and of 26 April 2018, Convivo v EUIPO — Porcesadora Nacional de Alimentos (M'Cooky) , T‑288/16, not published, EU:T:2018:231 , paragraph 69 and the case-law cited). That is so here since the mark applied for is a composite mark, composed of both a word element and figurative elements. In the present case, the word element ‘OOF’ of the mark applied for, which is easily recognisable and identifiable within the mark, must be regarded as distinctive and as dominant compared with the figurative elements of that mark. As the Board of Appeal was correct to point out, the rectangular grey background and the standard typeface are commonplace and therefore not liable to hold the relevant public’s attention. As regards the bar above each letter ‘O’ and the use of the colours red and white for the letters ‘OO’ and ‘F’, respectively, it must be held that, whilst not insignificant, they are nevertheless perceived as secondary decorative elements and even tend to draw the relevant public’s attention more to the distinctive and dominant word element ‘OOF’, which is common to the marks at issue. Thus, the fact that the Board of Appeal concluded that the figurative elements of the mark applied for are not liable to divert the relevant public’s attention away from the word element ‘OOF’ does not mean that those elements were neglected in the overall visual comparison of the marks at issue. On the contrary, the Board of Appeal duly took into account both the figurative elements of the mark applied for and its word element ‘OOF’. Consequently, the applicant’s argument that the Board of Appeal did not examine the mark applied for as a whole has no factual basis. Second, as regards the applicant’s challenge to the overall comparison of the marks made by the Board of Appeal, it must be recalled that, according to settled case-law, assessment of the similarity between two marks means more than taking 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. That 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). In the present case, it must be observed that the marks at issue share the same sequence of letters ‘O-O-F’ and that the word element ‘OOF’ of the mark applied for reproduces in full the first part of the earlier mark, which is an indication of their visual similarity. Moreover, in accordance with the case-law, the consumer normally attaches more importance to the first part of words than to the last part (judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) , T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81), that is to say, in the present case, to the ‘OOF’ part of the earlier mark, which is common to the mark applied for, as against the last part ‘OS’ of the earlier mark, which does not form part of the mark applied for. Conversely, the stylisation of the figurative elements of the mark applied for is not so highly distinctive as to be able to divert the relevant public’s attention away from its word element ‘OOF’ — which is identical to the first part of the earlier mark — and to prevent the marks at issue from being similar. Third, as regards the applicant’s argument that figurative marks enjoy protection only and exclusively in respect of their specific graphic design, it is sufficient to note that, in the present case, the earlier mark is specifically a word mark, the protection of which concerns the word ‘OOFOS’ and not particular graphic or stylistic elements which that mark, in its use on the market, might possibly have. According to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element, so that the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the particular graphic or stylistic elements which that mark might possibly have (see judgment of 25 June 2013, Aldi v OHIM — Dialcos (dialdi) , T‑505/11, not published, EU:T:2013:332, paragraph 65 and the case-law cited). On the other hand, the fact that the mark applied for is a figurative mark has no bearing on the protection of the earlier mark. That argument must therefore be rejected as ineffective. Fourth, as regards the applicant’s argument that the marks at issue are short marks capable of being distinguished by small differences, it is sufficient to note, first of all, that the earlier mark consists of five letters and cannot, in any event, be classified as a short mark in the sense relied on by the applicant (‘marks consisting of three or fewer letters/numbers’), since that is limited to marks consisting of no more than three letters or characters. Moreover, it is clear from the case-law that, even for short trade marks, some differences will be insufficient if they do not result in a visual difference capable of distinguishing the signs (see, to that effect, judgments of 18 February 2016, Penny-Markt v OHIM — Boquoi Handels (B!O) , T‑364/14, not published, EU:T:2016:84 , paragraph 49, and of 7 March 2017, Lauritzen Holding v EUIPO — DK Company (IWEAR) , T‑622/14, not published, EU:T:2017:143 , paragraph 27). That is the situation in the present case, as stated in paragraphs 26 and 29 above. Finally, as regards EUIPO’s guidelines, it should be noted that they are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken , C‑149/11, EU:C:2012:816 , paragraph 48). Similarly, as regards EUIPO’s decision-making practice, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of such a practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM , C‑412/05 P, EU:C:2007:252 , paragraph 65). The Board of Appeal was therefore correct to find an average degree of visual similarity between the marks at issue. Phonetic comparison Phonetically, the Board of Appeal found that, at least for the German-speaking public in the European Union, the pronunciation of the signs coincides in the sequence of letters ‘O-O-F’, which forms the entirety of the word element of the mark applied for and the first part of the earlier mark. It added that the pronunciation differs only in the final letters ‘O-S’ of the earlier mark. The Board of Appeal concluded that there is an average degree of phonetic similarity. This assessment of the Board of Appeal, which is not invalidated by the applicant’s arguments, must be upheld. It is clear from the case-law that, in the strict sense, the phonetic reproduction of a composite sign corresponds to that of all of its word elements, regardless of their specific graphic features, which fall instead within the scope of the visual analysis of the sign (judgment of 25 May 2005, Creative Technology v OHIM — Vila Ortiz (PC WORKS) , T‑352/02, EU:T:2005:176, paragraph 42). In the present case, since the figurative elements of the mark applied for, namely the bars above each ‘O’, the grey background, the standard typeface and the use of two different colours, are not capable of being pronounced, the overall phonetic impression given by the mark applied for is determined exclusively by its word element. In that regard, it should be noted that, even though the mark applied for is limited to one syllable whereas the earlier mark has two syllables, that difference does not call into question the average phonetic similarity resulting from the same pronunciation by the relevant public of their common syllable ‘OOF’, which forms the entirety of the mark applied for and the first part of the earlier mark. Moreover, the submissions that, first, the degree of phonetic similarity between two marks is of less importance in the case of goods marketed in such a way that the relevant public perceives the mark designating them visually and, second, the phonetic similarity between the marks at issue is not high enough to establish, in itself, a likelihood of confusion, are both based on the incorrect premiss that those marks are not visually similar. However, in the light of the average degree of visual similarity between those marks found in paragraph 36 above, a lesser importance of the degree of phonetic similarity compared with that of visual similarity, even if proved, cannot affect the visual similarity already established between those marks and the conclusions that must be drawn from it when assessing the likelihood of confusion. Those submissions must therefore be rejected as ineffective. The Board of Appeal was therefore correct to find an average degree of phonetic similarity between the marks at issue. Conceptual comparison Conceptually, the Board of Appeal found that the signs at issue have no meaning and will be perceived as fanciful terms by the relevant public. There is no reason to call into question that assessment, which is not disputed by the applicant. It is sufficient to note that, in the present case, a conceptual comparison is not possible and that its impact on the comparison of the signs is therefore neutral. In view of the above, the Board of Appeal was correct to find that the marks at issue have an average degree of visual and phonetic similarity, notwithstanding the differences between them. The comparison of the goods The applicant takes issue with the Board of Appeal for having found in turn, first of all, in paragraph 26 of the contested decision, that ‘footwear comprised of foam’ and ‘hats and berets’ are ‘similar’, then, in paragraph 27 of that decision, that all the goods at issue are ‘highly similar’. He therefore claims that the assessment of the Board of Appeal, which deemed ‘hats and berets’ to be ‘highly similar’, but also merely ‘similar’ to ‘footwear comprised of foam’, is contradictory. He adds that, if those goods were deemed to be ‘similar’ and not ‘highly similar’, a greater degree of similarity between the marks at issue would be required in order to find that there is a likelihood of confusion, in accordance with the principle of interdependence of factors. The applicant maintains, moreover, that the outcome of the comparison of the goods is wholly irrelevant in the present case, on the ground that the signs at issue are different and that the resulting lack of a likelihood of confusion makes the comparison of the goods concerned superfluous. EUIPO disputes the applicant’s arguments. It maintains that the goods at issue are highly similar and that the use of the word ‘similar’ in the contested decision is the result of a typographical error, which does not affect the conclusion reached. The intervener disputes the applicant’s arguments. It maintains that the goods at issue are highly similar and that the Board of Appeal only specified the degree of similarity without altering the Opposition Division’s finding that they are similar. According to settled 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 also be taken into account, such as the distribution channels of the goods concerned (judgments 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 of 25 September 2018, Grendene v EUIPO — Hipanema (HIPANEMA) , T‑435/17, not published, EU:T:2018:596 , paragraph 43). In the present case, the Board of Appeal found that the goods covered by the marks at issue relevant to the present action, namely those in Class 25, are highly similar. In particular, it considered that all the articles in the ‘clothing’ category covered by the mark applied for are highly similar to the ‘footwear comprised of foam’ covered by the earlier mark, since they are used for the same purpose, namely to cover and protect various parts of the human body, they can be manufactured in whole or in part from the same materials, their distribution channels and manufacturers are often the same, they target the same final consumers and they are complementary. It added that that reasoning may be applied by analogy to ‘hats and berets’ and ‘footwear’, regardless of whether the footwear is made of ‘foam, fabric, leather, or the skin of a crocodile or snake’, since headgear also shares the same nature and purpose as footwear, albeit for a different part of the human body, many retailers offer all three categories of product, ‘footwear, headgear and clothing’, together in their shops and many manufacturers and designers design and produce both clothing and shoes. The Board of Appeal’s assessment — which is not vitiated by error — that the goods at issue are similar, at least to an average degree, should be upheld, without it being necessary to rule on the question of whether the goods are similar to a high degree. That assessment is in line with the case-law of the Court (see judgment of 16 December 2009, Giordano Enterprises v OHIM — Dias Magalhães & Filhos (GIORDANO) , T‑483/08, not published, EU:T:2009:515, paragraph 20 and the case-law cited; judgment of 7 September 2016, Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR) , T‑204/14, not published, EU:T:2016:448 , paragraphs 96 and 98) and is not invalidated by the applicant’s arguments. First of all, it must be noted that the applicant does not dispute the assessment that the articles in the ‘clothing’ category covered by the mark applied for and ‘footwear comprised of foam’ covered by the earlier mark are highly similar. Next, as to the alleged contradiction between paragraphs 26 and 27 of the contested decision, it must be held that, in relation to the comparison of ‘hats and berets’ with ‘footwear’, the Board of Appeal confirmed the similarity found by the Opposition Division and, rather than denying the existence of such similarity, specified that the degree of similarity is high. In any event, it need only be stated that, even if some of the goods covered by the mark applied for, such as articles of headgear, were found to be merely ‘similar’, and not ‘highly similar’, to the footwear covered by the earlier mark, the fact remains that, in accordance with the principle of interdependence of the factors regarding the likelihood of confusion, such similarity of the goods, of an average and not high degree, would be sufficient to establish the existence of a likelihood of confusion on the part of the relevant public, having regard to the average degree of visual and phonetic similarity between the marks at issue (see paragraph 46 above). That argument of the applicant must therefore be rejected as ineffective. Finally, it must be held that the outcome of the comparison of the goods is by no means irrelevant to the examination of the likelihood of confusion in the present case, given that the marks at issue are not different but similar to an average degree, as is clear from paragraphs 22 to 46 above. The likelihood of confusion According to settled case-law, 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 17 April 2008, Ferrero Deutschland v OHIM , C‑108/07 P, not published, EU:C:2008:234, paragraph 45). In the present case, in view of the average degree of visual and phonetic similarity between the marks at issue and the similarity of the goods in question, which is average at the very least, it must be concluded, in a global assessment of those factors and in the light of the principles of interdependence and imperfect recollection, that the Board of Appeal was correct to find that there exists a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001. In the light of all the foregoing considerations, the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility, which is contested by EUIPO, of the applicant’s second and third heads of claim. 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, he 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 (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Alessandro Biasotto to pay the costs. Collins Kancheva De Baere Delivered in open court in Luxembourg on 10 October 2019. E. Coulon A. M. Collins 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