Biasotto v EUIPO - Oofos (OO) (EU trade mark - Judgment) [2019] EUECJ T-454/18 (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 on the international registration designating the European Union of the figurative mark reproduced below, registered on 2 March 2015 under No 1258728 in respect of goods in Class 25 corresponding to the following description: ‘Footwear; soles for footwear; foam cushioning sold as component part of footwear’: 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 17 May 2017, the Opposition Division rejected the opposition on the ground that the marks at issue are visually distinct and not phonetically and conceptually comparable. On 15 June 2017, the intervener 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 15 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition in respect of all the goods covered in Class 25 and, consequently, refused the application for registration in respect of those goods. In particular, it found that, having regard to the ‘highly similar’ nature of the goods in question and the average degree of visual similarity and the phonetic identity of the marks at issue, which share the letters ‘OO’, and taking the imperfect recollection and interdependence principles into account, there is 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; – uphold the Opposition Division’s decision and, consequently, allow the mark applied for to proceed to registration in respect of all the goods covered; – order 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, in the first place, that, visually, the marks at issue are ‘not at all similar’ and that the difference in the visual impact between them is immediately perceptible. In his view, the overall visual impression of the marks at issue is conveyed by the totality of their figurative elements. An overall visual comparison of the marks shows the striking difference between them, given that the mark applied for is a composite mark consisting of four figurative elements, all coloured red, namely two circles and two thick lines placed on top of each of those circles, whereas the earlier mark is a composite mark not seeking any protection for a specific colour and consisting of three figurative elements, namely two ovals and a black line included in one of those ovals, the one on the right. In particular, the applicant ‘does not understand how the … Board of Appeal may be (so) certain’ that the earlier mark ‘consists of the letters “OO”’. In his view, it is difficult to imagine that the relevant consumer would certainly link the element , or even the element , with the letter ‘O’, since the latter is a circle whereas the element is evidently an oval or, at most, a flattened circle or, possibly, a flattened zero. Furthermore, figurative marks enjoy protection only and exclusively in respect of the specific graphic in which they are represented. Lastly, marks consisting of two or fewer letters/numbers/elements 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. In the second place, the applicant claims that it is not possible to compare the marks at issue phonetically given that purely figurative marks cannot be pronounced and therefore do not lend themselves to a phonetic comparison. Consequently, there is no phonetic similarity between the marks. In the third place, 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 noted in paragraphs 23 to 25 of the contested decision that the marks at issue both consist of the letters ‘OO’. Contrary to the Opposition Division’s findings, it considered that, even if the shape of the letters ‘OO’ is not exactly the same because in the earlier mark it is more ‘almond-shaped or oval’ than in the mark applied for, in which it is circular, the relevant public will perceive both signs immediately and without further reflection as the letters ‘OO’. According to the Board of Appeal, the only difference between the signs is a line in the middle of the second ‘O’ of the earlier mark and lines above each ‘O’, as well as the colour red, of the mark applied for. The Board of Appeal also 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’, an almost standard typeface and the use of the colour red, are not such as to divert the relevant public’s attention away from the word element ‘OO’, which will be more easily remembered by that public and used to identify the mark applied for. The Board of Appeal concluded that the respective lines in the marks at issue and the difference in colour are not sufficient to exclude the similarity of the signs and that there is at least an average degree of visual similarity between them. This assessment by the Board of Appeal, which is not invalidated by the applicant’s arguments, must be upheld. First, as regards the argument that the signs at issue are both purely figurative marks without any word element, it must be noted that they are both composite marks, comprising a word element as well as figurative elements. Thus, the relevant public will perceive both signs immediately and without further reflection as comprising the letters ‘OO’, which will be recognisable and identifiable in a stylised representation in capital letters, notwithstanding the slight difference between the oval and round shapes of those letters and the horizontal lines featured inside or above them, which will be perceived as decorative elements. In that regard, so far as concerns the mark applied for, it must be pointed out, as EUIPO has done, that the applicant’s argument contradicts his own application for registration. On page 2 of that application, the applicant described the mark applied for as a ‘figurative mark with verbal elements’ (‘marchio figurativo con elementi verbali’ in Italian) and he himself defined the verbal elements (‘elementi verbali del marchio’) as being ‘OO’, which he confirmed during the hearing. Moreover, that description of the mark applied for is consistent with the perception of the mark by the relevant public, which will not interpret it as two circles, but as the two letters ‘OO’. Also, so far as concerns the earlier mark, it must be pointed out that international registration No 1258728 of 2 March 2015 contains the following description: ‘The mark consists of the letters “OO” with a horizontal line centred in the middle of the second “O”’. The intervener’s position before the Court therefore corresponds with its own description of the earlier mark, which is consistent with the perception of the relevant public. 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). Furthermore, while it is true, as the applicant submits, that the marks at issue must be assessed as a whole with due regard for their figurative elements, that does not prevent some of their elements from commanding less attention than others, in particular their word element, and from being, consequently, less likely to influence the overall visual impression created by the marks (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). 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 rather 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 marks at issue are both composite marks, composed of a word element as well as figurative elements. In the present case, the word element ‘OO’ common to the marks at issue, which is recognisable and identifiable within them, must be regarded as distinctive and as dominant compared with the figurative elements of the marks. On the other hand, as the Board of Appeal was correct to find, the graphic features of the mark applied for, namely a line above each ‘O’ and the use of a standard typeface and the colour red, and those of the earlier mark, namely the slightly oval shape of the letters ‘O’ and a horizontal line in the second ‘O’, whilst not insignificant, are nevertheless perceived as secondary decorative elements and are not sufficient to divert the relevant public’s attention away from the word element ‘OO’ that they have in common, even though the shape of the letters ‘OO’ is not exactly the same in the marks. It must therefore be held that the marks at issue have an identical word element, namely the letters ‘OO’, and that the secondary stylistic differences between their figurative elements, whilst not insignificant, are nevertheless insufficient to divert the relevant public’s attention away from the word element that they have in common. Third, as regards the applicant’s argument that figurative marks enjoy protection only and exclusively in respect of their specific graphic design, it should be recalled that, under Article 8(1)(b) of Regulation 2017/1001, registration of the trade mark applied for is to be refused not only because of its identity with an earlier trade mark, but also, even if not identical, because of its similarity to an earlier trade mark, as in the present case. Fourth, as regards the applicant’s argument that the marks at issue are short marks capable of being distinguished by small differences, it is clear from the case-law that, even in short 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 30 and 31 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 the pronunciation of the signs coincides, at least in those EU Member States where no diacritical signs are used in the alphabet, such as in English-speaking Member States, and that, consequently, the signs are identical phonetically. It is appropriate to uphold this assessment by the Board of Appeal, which is not invalidated by the applicant’s argument that it is not possible to compare the marks at issue given that purely figurative marks cannot be pronounced and therefore do not lend themselves to a phonetic comparison. In that regard, it is sufficient to recall that, as established in paragraphs 25 to 27 above, the marks at issue are composite marks comprising both an identical word element, namely the letters ‘OO’, and figurative elements. 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 marks at issue, namely the positioning of the lines in relation to the letters, the use of different typefaces and colours and the shape of the letters, are not capable of being pronounced, the overall phonetic impression given by the marks is determined exclusively by the common word element, namely the letters ‘OO’. The Board of Appeal was therefore correct in finding a phonetic identity 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 similarity and a phonetic identity, 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 19 of the contested decision, that ‘footwear’ and ‘hats and berets’ are ‘similar’, then, in paragraph 20 of that decision, that all the goods at issue are ‘highly similar’, and finally, in paragraph 28 of the decision, that those goods are ‘identical’. 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’, 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. Furthermore, he claims that a second contradiction ‘without any apparent reason’ stems from the Board of Appeal’s conclusion, in the overall assessment of the likelihood of confusion, that ‘the goods have been found to be identical’, even though it had held that all the goods in question are ‘highly similar’ in its conclusion on the comparison of the goods. 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 at issue superfluous. EUIPO disputes the applicant’s arguments. It maintains that the goods in question are highly similar and that the use of the words ‘similar’ and ‘identical’ in the contested decision is the result of two typographical errors that do not affect the conclusion reached. The intervener disputes the applicant’s arguments. It maintains that the goods in question are highly similar and that the reference to the word ‘identical’ is manifestly a clerical error that has no impact on the conclusion that there is a likelihood of confusion. 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’ 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’, 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 in question 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’ covered by the earlier mark are highly similar. Next, as regards the first alleged contradiction, between paragraphs 19 and 20 of the contested decision, it must be noted that the Opposition Division did not examine the similarity of the goods given its conclusion that the signs are different. The statement that ‘the contested decision [of the Opposition Division] was, therefore, correct to consider them similar’, in respect of three categories of goods, is clearly the result of a clerical error, which does not affect the legality of the contested decision. 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 visual similarity and the phonetic identity of the marks at issue (see paragraph 44 above). That argument of the applicant must therefore be rejected as ineffective. Moreover, with regard to the second alleged contradiction, between paragraphs 20 and 28 of the contested decision, it must be noted that the statement in paragraph 28 that ‘the goods have been found to be identical’ clearly constitutes a clerical error, which does not affect the legality of that decision. It is sufficient to note that an assessment of this passage in the context of the decision as a whole (see, by analogy, judgment of 16 September 2013, Oro Clean Chemie v OHIM — Merz Pharma (PROSEPT) , T‑284/12, not published, EU:T:2013:454, paragraph 45), and, in particular, in the light of paragraph 20 of the decision, makes clear that the Board of Appeal based its reasoning on the existence of similarity, and not identity, between the goods covered by the marks at issue. Accordingly, the error cited is not capable of altering the meaning of the decision in question, or the applicant’s understanding of that decision (see, by analogy, judgment of 23 November 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — Papouis Dairies (fino Cyprus Halloumi Cheese) , T‑416/17, not published, EU:T:2018:834 , paragraph 27 and the case-law cited). 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 visually similar to an average degree and phonetically identical, as is clear from paragraphs 22 to 44 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 similarity and the phonetic identity 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