Jelen v EUIPO - The Animal Store, Food and Accessories (WILD INSPIRED) (EU trade mark - Judgment) [2024] EUECJ T-47/23 (17 January 2024)

Judgment By his action under Article 263 TFEU, the applicant, Mr Miłosz Jeleń, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 December 2022 (Case R 1299/2022-2) (‘the contested decision’). Background to the dispute On 9 November 2020, The Animal Store, Food and Accessories, SL filed an application for registration of an EU trade mark with EUIPO in respect of the word sign WILD INSPIRED, 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). Following the restriction made in the course of the proceedings before EUIPO, the mark applied for covers, inter alia, services in Class 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Wholesaling and retailing in shops and via global computer networks, in relation [to] the following goods: foodstuffs and beverages for animals’. On 16 March 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above. The opposition was based on the earlier word mark INSPIRED, covering, inter alia, services in Class 35 corresponding to the following description: ‘Business administration; business management; business management and business administration (office functions); personnel management; commercial or industrial management assistance; advertising; retailing, wholesaling and sale via the internet of footwear, clothing, underwear and headgear’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation 2017/1001. On 30 May 2022, the Opposition Division rejected the opposition on the ground that the services at issue were not similar and that there was therefore no likelihood of confusion. On 19 July 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision. By the contested decision, the Board of Appeal dismissed the appeal on the ground that, since the services at issue were not similar, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that a hearing is convened. Law The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. More specifically, he claims that the Board of Appeal erred in finding that the services of ‘retailing, wholesaling and sale via the internet of footwear, clothing, underwear and headgear’ covered by the earlier mark were not similar to those of ‘wholesaling and retailing in shops and via global computer networks’ in relation to the following goods: ‘foodstuffs and beverages for animals’ covered by the mark applied for. The applicant puts forward four complaints in support of the single plea. The first complaint alleges, in essence, that the Board of Appeal erred in its assessment of the nature and intended purpose of the retailing services at issue. The second complaint alleges, in essence, that the Board of Appeal erred in its assessment of the realities of the market as regards the similarity of the retailing services at issue. The third complaint alleges, in essence, that the Board of Appeal erred in its assessment of the similarity of the wholesaling services at issue. The fourth complaint alleges, in essence, that the Board of Appeal incorrectly defined the scope of protection of the services in Class 35 covered by the earlier mark. EUIPO 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, an 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 (judgment of 7 June 2023, Laboratorios Ern v EUIPO - BRM Extremities (BIOPLAN) , T‑543/22, not published, EU:T:2023:320 , paragraph 18). For the purpose 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). 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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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). More specifically, in assessing the similarity of the services covered by the marks at issue, all the relevant factors relating to those 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 services concerned (judgment of 8 July 2020, Scorify v EUIPO - Scor (SCORIFY) , T‑328/19, not published, EU:T:2020:311 , paragraph 39). In the present case, in order to determine whether the Board of Appeal erred in finding that the services at issue were not similar and, accordingly, in ruling out any likelihood of confusion between the marks at issue, it is appropriate to examine, first of all, the fourth complaint concerning, in essence, the scope of protection of the services in Class 35 covered by the earlier mark, then the first and second complaints, both concerning, in essence, the similarity of the retailing services at issue, and, lastly, the third complaint concerning, in essence, the similarity of the wholesaling services at issue. The fourth complaint, concerning the scope of protection of the services in Class 35 covered by the earlier mark The applicant submits that some of the services in Class 35 in respect of which the earlier mark had been registered, namely those relating to the sale of clothing and footwear, concern goods intended for both humans and domestic animals. According to the applicant, since the Board of Appeal does not have the power to restrict, of its own motion, the protection of those services solely to goods for humans, the terms used being too general, it should have interpreted the terms of the class list broadly. He also submits that there are specialised shops where all items for pets are offered. Consequently, the Board of Appeal should have found that the services at issue are similar. EUIPO disputes the applicant’s arguments. In that regard, it should be noted that, in order to be able to examine the identity or similarity of the goods and services at issue, the departments of EUIPO must always determine which goods and services are covered by the marks at issue and, in that context, they must, where appropriate, interpret the list of goods and services for which a mark is registered (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO - Fink (NANA FINK) , T‑39/16, EU:T:2017:263 , paragraph 26 and the case-law cited). More specifically, it follows from Article 33(5) of Regulation 2017/1001 that the terms used to designate goods and services are to be interpreted as including all the goods and services clearly covered by their literal meaning. In the present case, it is not clear from the literal meaning of the terms ‘footwear’ and ‘clothing’ that they refer, respectively, to footwear for animals and clothing for animals. Moreover, it follows from the Nice Classification, and more specifically from the headings of Classes 18 and 25, that those terms refer to ‘clothing, footwear and headwear for human beings’, unless it is expressly stated that those items are for animals. Consequently, the Board of Appeal cannot validly be criticised for finding that the services in Class 35 covered by the earlier mark did not include services relating to the sale of footwear for animals and clothing for animals. The fourth complaint must therefore be rejected as unfounded. The first and second complaints, concerning the similarity of the retailing services at issue In the contested decision, the Board of Appeal found, in the first place, that the retailing services at issue had to be seen as the bringing together, for the benefit of others, of a variety of goods enabling customers conveniently to view and purchase those goods, including all activity carried out by the trader for the purpose of encouraging the conclusion of the transaction. Accordingly, it stated that the nature and intended purpose of the retailing service had to be defined from the point of view of the end consumer who is interested in the respective goods. In that regard, it observed that the nature of the services offered by a retailer to the end consumer was the selection of an assortment of goods offered for sale and that those services therefore had in common that they were ancillary to those goods. In the second place, the Board of Appeal found that, in the present case, the services of retailing and sale via the internet of footwear, clothing, underwear and headgear mostly targeted different consumer needs from that of wishing to purchase edible goods for the survival of their animals and that, even in large supermarkets, hypermarkets or shopping centres, those two types of goods were offered in different sections. It stated that those services had a different intended purpose and that the purchasers of the goods to which those services related had different objectives. Furthermore, the Board of Appeal found that it was well known, inter alia, that the goods in question were sold in different specialised shops and that the undertakings providing the services at issue were not the same. Those services had a different subject matter and were therefore not in direct competition with each other. Thus, the Board of Appeal concluded that, since the goods in question were not commonly retailed together in the same outlets and did not target the same public, there was no similarity between the retailing services at issue. By his first complaint, the applicant claims, in essence, first, that the Board of Appeal disregarded the nature and intended purpose of the retailing services at issue, which are important factors in the assessment of their similarity, and, second, that retailing services for specific goods and retailing services for other specific goods have the same nature since they are both retailing services. He also submits that the retailing services at issue have the same intended purpose, namely to enable consumers conveniently to satisfy different purchasing needs, and the same method of use. By his second complaint, the applicant submits that the Board of Appeal made an error of assessment with regard to the development and reality of the market on account of the fact, first, that the goods to which the retailing services at issue relate are nowadays present in the same shops and on the same online platforms and, second, that consumers are now accustomed to shops selling very diversified goods. According to the applicant, given the specific nature of the market and the fact that the goods at issue are sold together in the same outlets, while targeting the same public, the Board of Appeal should have found, at the very least, that there was a low degree of similarity between the retailing services at issue. EUIPO disputes the applicant’s arguments. As regards the first part of the applicant’s first complaint, it must be borne in mind that the grounds of the contested decision, set out in paragraphs 28 and 29 above, include express considerations regarding the nature and intended purpose of the retailing services at issue. Therefore, contrary to what the applicant claims, the Board of Appeal did not disregard those factors in its assessment of the similarity of those services. Consequently, that part of the first complaint must be rejected as unfounded. As regards the second part of the applicant’s first complaint, it should be noted that, according to settled case-law, the comparison of the services for the purpose of applying Article 8(1)(b) of Regulation 2017/1001 in opposition proceedings before EUIPO must be based on the list of services referred to, on the one hand, in the registration of the earlier mark relied on by the opponent and, on the other, in the application for registration of the mark applied for (see, to that effect, judgment of 12 March 2020, Sumol + Compal Marcas v EUIPO - Heretat Mont-Rubi (SUM011) , T‑296/19, not published, EU:T:2020:93 , paragraph 44 and the case-law cited). Therefore, if, as in the present case, the registration and the application for registration specify the goods to which the retailing services at issue relate, that specification must be taken into account as a relevant factor in the comparative assessment of the nature, the intended purpose and the method of use of those services. It follows that the Board of Appeal was fully entitled to find, in essence, first, that the goods to which the retailing services at issue related had to be taken into account when it defined the nature and intended purpose of those services and, secondly, that those services were ancillary to the goods to which they related. Accordingly, the Board of Appeal cannot validly be criticised for taking into consideration the specific goods to which the retailing services at issue relate when it examined their similarity. Furthermore, as is apparent from paragraphs 3, 5 and 26 above, the retailing services covered by the earlier mark relate to clothing goods for humans (and not for animals), whereas the retailing services covered by the mark applied for concern edible goods for animals. Thus, the Board of Appeal was correct in finding that the retailing services at issue had a different subject matter and intended purpose and that they were therefore not in direct competition with each other. The Board of Appeal cannot therefore be validly criticised for taking into consideration the specific goods to which the retailing services at issue relate when it ruled out their similarity. Consequently, the second part of the applicant’s first complaint cannot succeed. As regards the applicant’s second complaint, it must be stated that the Board of Appeal did take account of the fact that the goods to which the retailing services at issue relate could be sold in the same shops or outlets. The Board of Appeal noted that ‘retail and sale via the internet of footwear, clothing, underwear, and headgear services mostly target different consumer needs than that of wishing to purchase edible goods for the survival of their pets’ and that ‘even in large supermarkets/hypermarkets or shopping malls, clothing apparel is offered in different sectors from foodstuffs and beverages for animals’. It therefore found that the specific points or places where the retailing services at issue would be provided were clearly distinct, including within the same department store or shopping centre in which the respective goods could be found. That consideration, which is applicable mutatis mutandis to internet retail platforms, given that the retailing services at issue are usually offered on different pages, is not disputed, concretely and specifically, by the applicant. Furthermore, although the fact that the goods covered by the retailing services at issue are sold in the same multi-purpose shops or on the same multi-purpose online sales platforms is a relevant factor, in so far as it relates to the distribution channels of those services, it is not, in itself, such as to justify a finding that those services are similar without taking into consideration or evaluating the other relevant factors, including that of the specific nature of the goods to which those services relate. Moreover, the abovementioned fact does not, in itself, mean that the services at issue target the same public, whose interest is in the specific purchase of the respective goods to which those services relate, which are intended to meet different needs. Consequently, the applicant’s second complaint must be rejected. In the light of all of the foregoing, the first and second complaints must be rejected as unfounded. The third complaint, concerning the similarity of the wholesaling services at issue The Board of Appeal found, in paragraph 47 of the contested decision, that, by analogy with the retailing services at issue, the wholesaling services at issue, relating, on the one hand, to footwear, clothing, underwear and headgear and, on the other, to foodstuffs and beverages for animals, were dissimilar. In support of that conclusion, it stated that the respective subject matters of the wholesaling services at issue were different and that the applicant had not proved that wholesalers market goods that are usually very diversified and, in particular, had not shown that a clothing wholesaler also brings together goods from clearly distinct sectors. The applicant claims that the Board of Appeal erred in not drawing a distinction between the retailing services at issue and the wholesaling services at issue. He submits that those services have the same nature and intended purpose, relating to the sale of goods with a view to their resale by undertakings or professional entities that purchase a large quantity of usually very diversified goods. EUIPO disputes the applicant’s arguments. It should be noted that, like the goods to which the retailing services at issue relate, which are a relevant factor in examining the similarity of those services (see paragraph 35 above), the goods to which the wholesaling services at issue relate are a relevant factor in examining the similarity of those services. Therefore, in the present case, the Board of Appeal cannot validly be criticised for taking into consideration the specific goods to which the wholesaling services at issue relate when it examined their similarity. Furthermore, having regard to the different nature and intended purpose of those goods (clothing goods for humans, on the one hand, and edible goods for animals, on the other), the Board of Appeal was correct in finding that the services at issue had a different subject matter. Thus, the Board of Appeal cannot validly be criticised for taking into consideration the subject matter of the wholesaling services at issue when it ruled out their similarity. Moreover, the applicant has not challenged, concretely and specifically, the Board of Appeal’s finding that he had not proved that wholesalers market goods that are usually very diversified and that a clothing wholesaler also brings together goods from clearly distinct sectors. In fact, the applicant repeated those arguments in support of his third complaint without substantiating them with evidence. Consequently, the third complaint must be rejected as unfounded. In the light of the foregoing considerations, the single plea must be rejected and, consequently, the action must be dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders each party to bear its own costs. Kowalik-Bańczyk Dimitrakopoulos Ricziová Delivered in open court in Luxembourg on 17 January 2024. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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