Monster Energy v EUIPO - Nanjing aisiyou Clothing (Representation d'une griffure) (EU trade mark - Judgment) [2020] EUECJ T-35/20 (02 December 2020)

Judgment Background to the dispute On 22 December 2017, the applicant, Nanjing aisiyou Clothing Co. Ltd, 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 in respect of which registration was sought are in Classes 18, 25 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 18: ‘School bags; travel cases; wallets; travel bags; sports packs; sports bags; bags; suitcases; trunks [luggage]; back packs; key pouches; key bags; shopping bags; handbags; tote bags; haversacks; rucksacks; garment bags for travel; bags [envelopes, pouches] of leather for packaging’; – Class 25: ‘Underclothing; clothes; trousers; tops [clothing]; children’s clothing; clothing; t-shirts; overcoats; leggings [trousers]; kimonos; skirts; baby layettes for clothing; swim suits; footwear; hats; hosiery; socks’; – Class 35: ‘Advertising and advertisement services; advertising and publicity services; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; business organization and management consulting; public relations; business management consultancy; organization of trade fairs for commercial or advertising purposes; commercial information and advice for consumers [consumer advice shop]; import-export agency services; sales promotion for others; marketing the goods and services of others; procurement services for others [purchasing goods and services for other businesses]; advertising and marketing; provision of an on-line marketplace for buyers and sellers of goods and services; sponsorship search’. The trade mark application was published in European Union Trade Marks Bulletin No 15/2018 of 23 January 2018. On 20 April 2018, the applicant, Monster Energy Company, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. The opposition was based on the following earlier rights: – The EU figurative mark, as reproduced below (‘the earlier mark No 1’), filed on 13 November 2007 and registered on 6 November 2008 under No 6 433 817 designating, inter alia, the goods in Class 25 and corresponding to the following description: ‘Clothing, headgear; hats’; – the EU figurative mark, as reproduced below (‘the earlier mark No 2’), filed on 18 March 2014 and registered on 13 August 2014 under No 12 705 679 designating the services in Class 35 and corresponding to the following description: ‘Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others’; – the EU figurative mark, as reproduced below (‘the earlier mark No 3’), filed on 30 May 2014 and registered on 29 October 2014 under No 12 924 718 designating, inter alia, the goods in Classes 18, 25 and 32 and corresponding, for each of those classes, to the following description: – Class 18: ‘All-purpose sport bags; all-purpose carrying bags; backpacks; duffle bags in Class 18’; – Class 25: ‘Clothing, headgear and footwear in Class 25’; – Class 32: ‘Non-alcoholic beverages in Class 32’; – the EU figurative mark, as reproduced below (‘the earlier mark No 4’), filed on 30 May 2014 and registered on 29 October 2014 under No 12 924 973 designating, inter alia, the goods in Classes 18 and 25 and corresponding, for each of those classes, to the following description: – Class 18: ‘All-purpose sport bags; all-purpose carrying bags; backpacks; duffle bags in Class 18’; – Class 25: ‘Clothing, headgear and footwear in Class 25’; – the United Kingdom figurative mark, as reproduced below (‘the earlier mark No 5’), filed on 6 September 2017 and registered on 1 December 2017 under No 3 254 978 designating, inter alia, the goods and services in Classes 18, 25, 32 and 35 and corresponding, for each of those classes, to the following description: – Class 18: ‘All-purpose sport bags; all-purpose carrying bags; backpacks; duffle bags’; – Class 25: ‘Clothing, headgear and footwear’; – Class 32: ‘Energy drinks, sports drinks, fruit juice drinks, other non-alcoholic beverages and other preparations for making beverages’; – Class 35: ‘Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others’; – the United Kingdom non-registered trade mark, as reproduced below (‘the earlier mark No 6’) designating clothing, headgear and footwear; – the United Kingdom non-registered trade marks, as reproduced below (‘the earlier marks Nos 7 and 8’) designating bags, clothing, headgear, footwear and drinks. The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation 2017/1001. In support of the ground set out in Article 8(1)(b) of Regulation 2017/1001, the applicant relies on the earlier marks Nos 1 to 5; in support of the ground set out in Article 8(5) of that regulation, it relies on the earlier marks Nos 1, 3 and 5, while in support of the ground referred to in Article 8(4) of that regulation it relies on the earlier marks Nos 6 to 8. On 21 March 2019, the Opposition Division rejected the opposition. On 20 May 2019, the applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision. By decision of 13 November 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal noted that the applicant had not challenged the Board of Appeal’s assessment of proof of enhanced distinctiveness, reputation and use in the course of trade of the earlier marks. In particular, it endorsed the finding of the Opposition Division that the applicant had adduced proof of the reputation of the earlier marks Nos 3 and 5 for ‘energy drinks’ in Class 32 and had proved use in the course of trade of the earlier marks Nos 7 and 8 for ‘energy drinks’ only. In the second place, as regards Article 8(1)(b) of Regulation 2017/1001, first, the Board of Appeal considered that the goods and services in question were directed at the public at large and European Union business customers whose degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price. Second, it assumed, for reasons of procedural economy, that all the goods and services covered by the mark applied for and those covered by the earlier marks were identical. Third, as regards the comparison of the signs, the Board of Appeal found that the figurative elements were distinctive for the goods and services covered by the marks at issue, the signs were visually similar to a very low degree and, conceptually, they were either similar to a low degree, or dissimilar, or they were not comparable and they could not be compared phonetically. Fourth, it considered that the Opposition Division was correct in finding that there was no likelihood of confusion in the present case, even when the goods were identical. In the third place, as regards Article 8(5) of Regulation 2017/1001, the Board of Appeal first of all observed that the applicant had proved the reputation of the earlier mark No 3 in the European Union and the reputation of the earlier mark No 5 in the United Kingdom only in relation to the ‘energy drinks’ in Class 32. Next, it relied on its findings relating to the opposition under Article 8(1)(b) of Regulation 2017/1001. Thus, it considered that the signs were visually similar to a very low degree. It also found that the signs could not be compared phonetically. Conceptually, according to the consumer’s perception, it found that the signs were similar to a low degree or dissimilar, or that a comparison was not possible. Finally, the Board of Appeal found that it was unlikely that the relevant public would establish a link between the marks at issue. It considered inter alia that the goods and services in question were so different that the mark applied for was unlikely to bring the earlier marks to the mind of the relevant public. Consequently, it rejected the opposition under Article 8(5) of Regulation 2017/1001. In the fourth place, the Board of Appeal rejected the opposition in so far as it was based on Article 8(4) of Regulation 2017/1001. First, it confirmed the Opposition Division’s finding that it was unlikely that the public would be misled where the goods and services covered by the mark applied for were dissimilar to those in respect of which goodwill has been acquired. Second, it maintained that the applicant had not succeeded in contesting that finding before it or in producing any evidence in this respect. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – annul the decision of the Opposition Division of 21 March 2019; – dismiss the application for registration of the mark applied for in respect of all the goods and services concerned; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The first head of claim, seeking annulment of the contested decision In support of its first head of claim, seeking annulment of the contested decision, the applicant relies on five pleas in law, the first and second alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the third and fourth alleging infringement of Article 8(5) of that regulation, and the fifth alleging infringement of Article 8(4) of that regulation. Since the first and second pleas in law are based on the infringement of Article 8(1)(b) of Regulation 2017/1001, it is appropriate to consider them together. Similarly, it is appropriate to consider together the third and fourth pleas in law, which are based on infringement of Article 8(5) of that regulation. The first and second pleas in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 In its first plea in law, the applicant alleges that the Board of Appeal erred in finding that the signs in question had only a low degree of visual similarity and submits, in particular, by referring to the judgment of 18 June 2009, LIBRO v OHIM – Causley (LiBRO) (T‑418/07, not published, EU:T:2009:208), that, since it is represented in black and white, the mark applied for extends to all colours. In its second plea in law, the applicant submits that the Board of Appeal did not carry out a proper global assessment of the likelihood of confusion and complains that it failed to have regard to the principle that the average consumer has only an imperfect recollection of the marks. It adds that, even where the goods or services in question are identical and the marks at issue are distinctive and have a low degree of similarity, it is likely that a likelihood of confusion exists, in particular since the average consumer relies on the imperfect recollection of the marks. According to the applicant, the marks at issue are very similar in the present case. As regards the applicant’s arguments invoked in the first plea in law, EUIPO contends that the Board of Appeal was right to reach the conclusion that there was only a very low degree of similarity between the signs in question since they both depict a set of stylised lines but differ in all other aspects, namely the stylisation and representation of the lines, the position and the colour of the earlier marks Nos 3 and 4. In that regard, it refers to the judgment of 14 November 2019, Société des produits Nestlé v EUIPO – Jumbo Africa (Representation of a human figure on an escutcheon) (T‑149/19, not published, EU:T:2019:789 , paragraph 31 and the case-law cited), and submits that, in the light of that case-law, the fact that some of the marks at issue are represented in different colours adds to their differences. As regards the applicant’s arguments raised in the second plea in law, EUIPO contends that the Board of Appeal took into account all the relevant factors in the case at hand, including the principle of imperfect recollection, the higher than average level of attention for part of the relevant public in respect of some of the goods and services in question, the average level of inherent distinctiveness of the earlier marks and the identical nature of the goods and services in question. As regards, in particular, the principle of imperfect recollection, the Board of Appeal clarified that that principle did not mean that marks other than those at issue had to be compared. EUIPO considers that the Board of Appeal did not err in concluding that there was no likelihood of confusion in the present case. Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, pursuant to Article 8(2)(a)(ii) of Regulation 2017/1001, the term ‘earlier trade mark’ should be understood as referring to trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU 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 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). 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). It is in the light of the abovementioned principles that the present pleas in law must be examined. – The relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In the present case, the Board of Appeal considered, in paragraph 22 of the contested decision, that the goods and services in Classes 18, 25 and 35 were directed at the public at large and business customers with specific professional knowledge or expertise. In its opinion, their degree of attention may vary from average to high depending on the specialised nature of the goods or services, the frequency of purchase and their price. The Board of Appeal added, in paragraph 23 of that decision, that the relevant territory was that of the European Union. The applicant does not dispute the Board of Appeal’s assessments relating to the determination of the relevant public and its level of attention. It must be noted that, in the light of the Board of Appeal’s findings (see paragraph 28 above), those assessments are correct and must be upheld as regards the earlier marks Nos 1 to 4. By contrast, as regards the earlier mark No 5, since that mark is a United Kingdom mark, the relevant territory for assessing the existence of a likelihood of confusion is the territory of the United Kingdom. – Comparison of the goods and services In the present case, as is apparent from paragraph 24 of the contested decision, the Board of Appeal, like the Opposition Division and for reasons of procedural economy, relied on the assumption that the goods and services covered by the mark applied for and those covered by earlier marks Nos 1 to 5 were identical. The applicant does not challenge that approach, and so its merits will have to be assessed at the stage of assessing the likelihood of confusion. – The comparison of the signs The global assessment of the likelihood of confusion, so far as the visual, phonetic or conceptual similarity of the signs at issue are concerned, must 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). In the present case, first, the mark applied for consists of a purely figurative sign, resembling, according to the Board of Appeal a claw-like scratch, accompanied by a group of four spots at the bottom. Second, the earlier marks Nos 1 to 5 are composed of the same sign, depicted in black (the earlier marks Nos 1, 2 and 5), green (the earlier mark No 3) or grey (the earlier mark No 4). That sign consists of three vertical, parallel, squiggly lines of different lengths, the upper part of which is broader. According to the Board of Appeal, that sign may be perceived as being ‘fingers’ or ‘claws’, a highly stylised representation of the letter ‘m’ or a very abstract depiction. It must be borne in mind that both the mark applied for and the earlier marks may, inter alia, be perceived as claws or scratches. The fact remains that, irrespective of their perception, all the signs are distinctive for the goods and services in question, as the Board of Appeal rightly found. As regards the visual comparison of the signs, the Board of Appeal found that they were similar in so far as they depict a certain number of stylised lines whose stylisation may be perceived as very similar. However, it observed that the signs were different for all the other elements. Thus, according to the Board of Appeal, the shape and position of the lines were different, in that the mark applied for resembles a triangle whereas the earlier marks resemble more a rectangle. Similarly, the lines in the mark applied for are curved, converge towards the bottom end and remain clearly separated, whereas those of the earlier marks are straight and are not clearly separated. It added that the earlier marks Nos 3 and 4 also differed in their colour. The differences are reinforced by the presence of four spots in the mark applied for, which have no counterpart in the earlier trade marks. In the light of the foregoing considerations, the Board of Appeal found that the signs were visually similar to a very low degree. Moreover, in order to make clear that its assessments were consistent with the case-law, the Board of Appeal referred, in paragraph 43 of the contested decision, to the judgment of 14 July 2016, Monster Energy v EUIPO – Mad Catz Interactive (Representation of a black square with four white lines) (T‑567/15, not published, EU:T:2016:408 , paragraph 28), in which the Court had held that the marks at issue presented only a very low degree of visual similarity. In that regard, it must be observed that all of the signs in question represent three vertical squiggly lines. It is true, as the Board of Appeal correctly found, that the lines of the mark applied for are curved and converge towards the bottom end, whereas the lines making up the earlier marks Nos 1 to 5 are straight. Similarly, the mark applied for contains – in addition to three squiggly lines which, as the Board of Appeal found, form the dominant element of that sign because of their size and position – four spots at the bottom which have no counterpart in the earlier marks Nos 1 to 5. However, those differences are offset by the fact that the particular stylisation of the vertical lines in all the signs in question is very similar, since those signs may recall claws or scratch marks. That particular stylisation of the lines will draw the attention of the relevant public and outweigh the differences noted by the Board of Appeal, so that the degree of visual similarity must be considered to be average. In addition, it must be added that the vertical squiggly lines, present in all of the signs at issue become thinner at the bottom, thus contributing to a similar overall impression. It follows that, contrary to the Board of Appeal’s findings, the overall impression created by the signs in question is similar. As is apparent from the case-law cited in paragraph 32 above, the global assessment of the likelihood of confusion must be based on the overall impression given by the signs in question. Moreover, the Board of Appeal, in its assessments, referred to the signs compared in the case giving rise to the judgment of 14 July 2016, Representation of a black square with four white lines (T‑567/15, not published, EU:T:2016:408 ). It considered inter alia that its findings in the present case that the signs had a very low degree of similarity were consistent with the Court’s findings in paragraph 28 of the judgment in question. However, it must be noted that the signs in question in the case which gave rise to the judgment of 14 July 2016, Representation of a black square with four white lines (T‑567/15, not published, EU:T:2016:408 ), were more dissimilar than the signs in question in the present case. The mark applied for in the abovementioned case and the mark applied for in the present case differ in the number of lines, their style, their position, their thickness and the contrast with the black background. Therefore, the Board of Appeal was wrong to consider that its conclusion in the present case that the visual similarity of the signs in question was very low was consistent with the findings of the Court in the case which gave rise to the judgment of 14 July 2016, Representation of a black square with four white lines (T‑567/15, not published, EU:T:2016:408 , paragraph 28). As regards the Board of Appeal’s finding that the earlier marks Nos 3 and 4 are of a different colour than the mark applied for, suffice it to note that the earlier marks Nos 1, 2 and 5 are represented, like the mark applied for, in black and white. Furthermore, as EUIPO observed, it must be noted that the Board of Appeal’s finding that those two earlier marks were of different colours had no effect on its finding that the degree of visual similarity of the marks at issue was very low. As regards the phonetic comparison of the signs, the Board of Appeal found, in paragraph 44 of the contested decision, that there was no similarity in this respect. In particular, it noted that certain consumers may perceive the earlier marks Nos 1 to 5 as being a highly stylised letter ‘m’ and pronounce it in that way, while the mark applied for remains purely a figurative mark. In paragraph 49 of that decision, the Board of Appeal stated that the signs in question could not be compared phonetically. It must be noted that the Board of Appeal’s findings are contradictory. In that regard, it must be observed that a phonetic comparison is not relevant in the examination of the similarity of a figurative mark without word elements with another mark. A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Accordingly, there is no need to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of other marks (see judgment of 16 October 2018, VF International v EUIPO Virmani (ANOKHI) , T‑548/17, not published, EU:T:2018:686 , paragraph 74 and the case-law cited). That case-law is relevant, inter alia, should the earlier marks be perceived as the letter ‘m’ and, consequently, be pronounced, whereas the mark applied for, which is a purely figurative sign, cannot be pronounced. It follows that, in the present case, a phonetic comparison of the signs is not possible. As regards the conceptual comparison of the signs, the Board of Appeal considered, in paragraph 45 of the contested decision, first of all, that part of the relevant public will not associate the signs in question with any meaning at all but will perceive them as abstract devices. For that part of the public, no conceptual comparison is possible. Next, it held that, for the part of the relevant public which may consider the signs as being ‘claw-like scratches’, those signs were similar to a low degree. Finally, it did not rule out the possibility that, for part of the relevant public, the earlier marks Nos 1 to 5 may be perceived as a representation of the letter ‘m’, while the mark applied for is meaningless, or resembles a ‘claw-like scratch’. For the latter part of the public, the signs are dissimilar. Although the Board of Appeal’s findings on that point are not disputed by the applicant, it must be observed that, pursuant to Article 72(2) of Regulation 2017/1001, the Court is called upon to assess the legality of the decisions of the Boards of Appeal of EUIPO by reviewing their application of EU law, having regard, in particular, to the factual evidence submitted to the Boards of Appeal. Accordingly, within the limits laid down in that article, as interpreted by the Court of Justice, the General Court may carry out a full review of the legality of the decisions of the Boards of Appeal of EUIPO, if necessary examining whether the Board of Appeal concerned made a correct legal characterisation of the facts of the dispute or whether its appraisal of the facts placed before it was flawed (judgments of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraphs 38 and 39, and of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR) , T‑3/18 and T‑4/18, EU:T:2019:357 , paragraph 28). Where it is called upon to assess the legality of a decision of a Board of Appeal, the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it (judgments of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraph 48; of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO – Gianni Versace (VERSACCINO) , T‑337/16, not published, EU:T:2017:692 , paragraph 68; and of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club) , T‑44/19, not published, EU:T:2020:31, paragraph 88). In the present case, since the applicant has called into question the Board of Appeal’s assessment relating to the likelihood of confusion, by virtue of the principle of interdependence between the factors taken into account, the Court has jurisdiction to examine the Board of Appeal’s findings relating to the conceptual comparison (see, to that effect, judgment of 5 December 2019, Idea Groupe v EUIPO – The Logistical Approach (Idealogistic Verhoeven Greatest care in getting it there) , T‑29/19, not published, EU:T:2019:841 , paragraph 89). Thus, whereas the Board of Appeal’s findings relating to the part of the relevant public which will not attribute any meaning to the signs in question or which will perceive the earlier marks Nos 1 to 5 as being a representation of the letter ‘m’ are free of error, the same is not true as far as concerns those findings relating to the part of the relevant public which will perceive both the mark applied for and the earlier marks Nos 1 to 5 as ‘claw-like scratches’, as described by the Board of Appeal. Contrary to what the Board of Appeal found, for the part of the public that will perceive the signs in question as scratches or claws (see paragraph 35 above), the degree of conceptual similarity is higher than ‘low’. As regards that part of the public, the Board of Appeal found that the signs referred to the same concept without having noted any conceptual difference. In the circumstances of the present case, given that the signs at issue are capable of referring to the same concept, the Board of Appeal had to conclude that there was an average degree of conceptual similarity. In the light of all the foregoing, contrary to the Board of Appeal’s findings, the degree of visual similarity and, so far as concerns part of the relevant public, the degree of conceptual similarity are average. – The likelihood of confusion A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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 74). The Board of Appeal found, in essence, that there was no likelihood of confusion in the present case, even when the goods in question were identical. It found, in paragraph 49 of the contested decision, that the signs displayed a very low degree of visual similarity, could not be compared phonetically and, conceptually, depending on the consumer’s perception, a comparison was not possible or that, in any event, the signs were similar to a low degree or even dissimilar. Likewise, it noted that the earlier marks Nos 1 to 5 had average inherent distinctiveness. In conclusion, the Board of Appeal found that the differences between the signs at issue clearly outweighed the very low similarities between them. However, in the present case, as is apparent from the findings above (see paragraphs 38, 39 and 52 above), the Board of Appeal’s visual and conceptual comparison of the signs is vitiated by errors. The degree of visual similarity and, for a part of the relevant public, of conceptual similarity, is average. As regards the distinctiveness of the earlier marks Nos 1 to 5, since the applicant has not demonstrated the existence of enhanced distinctiveness for the goods and services covered by the earlier marks on which it relies in the present case, the inherent distinctiveness of those marks must be taken into account. As is apparent from paragraph 35 above, the earlier marks Nos 1 to 5 are distinctive for the goods and services which they cover and, accordingly, their inherent distinctiveness is average, as the Board of Appeal rightly found. Therefore, by virtue of the principle of interdependence referred to in paragraph 24 above, in the light of the average degree of visual similarity of the signs and, for a part of the relevant public, conceptual similarity, the average level of attention, at least in relation to some of the goods and services in question, and the average degree of inherent distinctiveness of the earlier marks, the Board of Appeal could not, relying on the assumption that the goods and services concerned were identical (see paragraph 30 above), rule out the existence of a likelihood of confusion in the present case. Admittedly, as stated by both the Opposition Division and the Board of Appeal, the applicant had trade mark rights in the specific representation of the earlier marks Nos 1 to 5 as registered and not in any type of scratch-like lines or signs. The fact remains that, in the present case, the stylisation of the signs in question is very similar, with the result that the Board of Appeal’s conclusion that the similarity of the signs as a whole was too weak to give rise to confusion is incorrect. As regards the fact, noted by the Board of Appeal in paragraph 52 of the contested decision, referring to the judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) (T‑117/03 to T‑119/03 and T‑171/03/03, EU:T:2004:293, paragraphs 50 to 53), that, as regards the goods in Classes 18 and 25, the overall visual aspect plays a decisive role in the global assessment of the likelihood of confusion since the consumers’ choice is generally made visually, it cannot call into question the finding concerning the existence of a likelihood of confusion. First, the signs in question have an average degree of visual similarity and, second, no phonetic comparison is possible in the present case. Therefore, there is no need to apply the case-law cited by the Board of Appeal, according to which, as regards the goods in Classes 18 and 25, the visual aspect of the signs takes precedence over their phonetic aspect. It follows that the Board of Appeal erred in finding that there was no likelihood of confusion, at least in a situation where the goods and services were identical. Moreover, in so far as, in the present case, the Board of Appeal did not carry out an assessment of the similarity of the goods and services in question, but, for reasons of procedural economy, relied on the assumption that all the goods and services in question were identical (see paragraph 30 above), the Court is not in a position to identify those for which there is a likelihood of confusion. Therefore, the first and second pleas in law must be upheld in respect of all the goods and services in question and the contested decision must be annulled in so far as it rejected the opposition based on Article 8(1)(b) of Regulation 2017/1001. Since the Board of Appeal’s assessments relating to the comparison of the goods and services in question have not been successful and do not make it possible to establish whether a likelihood of confusion exists for all the goods and services covered by the mark applied for, with the result that the opposition cannot be upheld under Article 8(1)(b) of Regulation 2017/1001, it is necessary to go on to examine the applicant’s other pleas in law. Similarly, given that, in its assessment of the opposition under Article 8(5) of Regulation 2017/1001, the Board of Appeal relied on the comparison of the signs carried out in the context of the analysis of the opposition under Article 8(1)(b) of that regulation which, as is apparent from paragraph 53 above, is incorrect, those findings are necessarily vitiated by error. It follows that the contested decision must also be annulled as far as concerns the examination of the opposition based on Article 8(5) of Regulation 2017/1001, and there is no need to examine the applicant’s arguments raised in the context of the third and fourth pleas in law. The fifth plea in law, alleging infringement of Article 8(4) of Regulation 2017/1001 The applicant claims that the Board of Appeal, in stating, in paragraph 69 of the contested decision, that ‘the opponent [had] failed to contest that finding’, erred in that it did not take proper account of the applicant’s grounds submitted to it in the statement of grounds of appeal. The applicant claims that it submitted arguments relating to the application of United Kingdom law on passing off under Article 8(4) of Regulation 2017/1001. EUIPO contends that the Board of Appeal carefully assessed the applicant’s claim and arguments raised under Article 8(4) of Regulation 2017/1001. It adds that the applicant has not been able to demonstrate that the three conditions of ‘passing off’ have been satisfied and, despite having claimed that the findings relating to misrepresentation were wrongly assessed, the applicant had not elaborated on that ground before the Board of Appeal. Pursuant to Article 8(4) of Regulation 2017/1001, the proprietor of a sign, other than a registered trade mark, may oppose the registration of an EU trade mark if that sign satisfies four cumulative conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; finally, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative; thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation 2017/1001 cannot succeed (see judgment of 23 May 2019, Dentsply De Trey v EUIPO – IDS (AQUAPRINT) , T‑312/18, not published, EU:T:2017:358, paragraph 98 and the case-law cited). The first two conditions, namely those concerning the use and significance of the sign relied on, which must be more than merely local, arise from the very wording of Article 8(4) of Regulation 2017/1001 and must therefore be interpreted in the light of EU law. Therefore, Regulation 2017/1001 sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 23 May 2019, AQUAPRINT , T‑312/18, not published, EU:T:2017:358, paragraph 99 and the case-law cited). By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to … the law of the Member State governing that sign’ that the two other conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation 2017/1001, are conditions laid down by that regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation 2017/1001 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark. In accordance with Article 95(1) of Regulation 2017/1001, the burden of proving that the last-mentioned condition is satisfied lies with the opponent before EUIPO (see judgment of 23 May 2019, AQUAPRINT , T‑312/18, not published, EU:T:2019:358 , paragraph 100 and the case-law cited). As a preliminary point, it should be observed that the Opposition Division found that, in the present case, the applicant had adduced proof of use of the earlier marks in the course of trade in relation to the earlier marks Nos 7 to 8 only as far as concerns ‘energy drinks’ and carried out the assessment of the opposition under Article 8(4) of Regulation 2017/1001 in relation to those goods. Those assessments by the Opposition Division were confirmed by the Board of Appeal and are not disputed by the applicant in the present case. In the first place, it should be noted that the Opposition Division rejected the opposition under Article 8(4) of Regulation 2017/1001 by finding that, in the circumstances of the present case in which the goods and services covered by the mark applied for were dissimilar to the ‘energy drinks’ covered by the unregistered earlier marks, it was unlikely that the applicant’s customers would mistake the goods and services covered by the mark applied for with those covered by the earlier marks, even if the signs had some similarities. In the second place, to challenge those findings of the Opposition Division, the applicant maintained, in its statement of grounds of appeal, that the Opposition Division had erred in its application of the United Kingdom law on passing off by maintaining that, in that context, the assessment of the similarity of the goods and services was not relevant since the parties were not required to trade within an identical or even common field. That argument of the applicant was accompanied by a reference, in a footnote, to the judgment of the High Court of Justice (England & Wales), Chancery Division (United Kingdom), Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155. In the third place, the Board of Appeal found, in paragraph 69 of the contested decision, that the applicant had ‘failed to contest [the] finding [of the Board of Appeal referred to in paragraph 71 above] or to submit any evidence in this respect before [it]’. It also held that that finding by the Opposition Division was correct. In the present case, the applicant complains that the Board of Appeal did not take into consideration its arguments presented before it to contest the Opposition Division’s decision. It is therefore necessary to assess whether the Board of Appeal’s finding in paragraph 69 of the contested decision is well founded. As regards the part of the sentence ‘the opponent failed to contest that finding’, in paragraph 69 of the contested decision, it should be noted that the Board of Appeal did indeed state, in paragraph 9 of that decision, under the heading ‘Article 8(4) [of Regulation 2017/1001]’, in the second sentence of the second indent, that the applicant ‘[had submitted] that the assessment as to goods and/or services [was] not relevant in this context for there [was] no requirement for the applicant and opponent to trade within an identical or even common field’. It follows that the applicant is not justified in claiming that the Board of Appeal had clearly failed to take into account the arguments reproduced in paragraph 35 of the application and referred to in paragraph 72 above. As is apparent from paragraph 76 above, the Board of Appeal did indeed take the applicant’s arguments into consideration. As regards the meaning to be given to the part of the sentence ‘the opponent failed to contest that finding’, in paragraph 69 of the contested decision, it must be held that the Board of Appeal essentially maintained that the applicant had not succeeded in calling into question the Opposition Division’s findings. In that regard, it should be noted that the only evidence relied on by the applicant to support its argument that the assessment of the similarity of the goods and services was not relevant when applying the United Kingdom law on passing off, since the parties were not required to trade within an identical or even a common field, is the judgment referred to in paragraph 73 above, to which reference was merely made in a footnote to the statement of grounds of appeal. That statement does not contain any other elements intended to support that argument of the applicant. As is apparent from Article 7(2)(d) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation 2017/1001, the opposing party is to provide inter alia evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied on by adducing publications of the relevant provisions or case-law. It must be held that a mere reference to the case-law on which the applicant intends to rely in support of its argument in order to demonstrate the content of the legislation and the applicable case-law is insufficient to fulfil the obligations arising from Article 7(2)(d) of Delegated Regulation 2018/625. It is true that, according to the case-law, in circumstances in which EUIPO may be called upon to take account, in particular, of the national law of the Member State in which protection is given to the earlier mark on which the opposition is based, it must – of its own motion and by whatever means considered appropriate – obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a relative ground for refusal relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted (see, to that effect, judgment of 27 March 2014, OHIM v National Lottery Commission , C‑530/12 P, EU:C:2014:186 , paragraph 45). However, it was also made clear that that requirement to obtain of its own motion information about national law applies, if necessary, where EUIPO already has information relating to national law, either in the form of claims as to its meaning, or in the form of evidence submitted and whose probative value has been adduced (judgment of 20 March 2013, El Corte Inglés v OHIM – Chez Gerard (CLUB GOURMET) , T‑571/11, EU:T:2013:145 , paragraph 41). In the present case, the applicant has not adduced the evidence that it was required to under Article 7(2)(d) of Delegated Regulation 2018/625, with the result that EUIPO cannot be criticised for not having exercised its power of verification. Similarly, it cannot be argued that the reference to the judgment referred to in paragraph 73 above satisfies the conditions of Article 7(3) of Delegated Regulation 2018/625, according to which, where evidence concerning the content of the relevant national legislation is accessible online from a source recognised by EUIPO, the opposing party may provide it by indicating that source. In the present case, the applicant has not indicated any source corresponding to the criteria laid down in the provision referred to above. It follows that the applicant has not established, to the requisite legal standard, the content of the case-law on which it itself relied, with the result that the Board of Appeal was also justified in finding, in essence, that no evidence had been produced in the present case in support of the applicant’s argument referred to in paragraph 72 above. In any event, the Court has already held that, in the judgment of the High Court of Justice (England & Wales), Chancery Division, Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155, it was held that the claimant company, Lego, which produces children’s toys under that name, could prevent the defendant in the action for passing-off from marketing, under that same name, coloured plastic irrigation products such as garden sprinklers. That case confirms, therefore, that the existence of a common field of activity is not determinative, which does not, however, imply that such a circumstance is of no relevance (see, to that effect, judgment of 4 October 2018, Paice v EUIPO – Blackmore (DEEP PURPLE) , T‑328/16, not published, EU:T:2018:649 , paragraph 31). Therefore, by taking that circumstance into account in the present case, the Opposition Division did not disregard the principle laid down in the judgment of the High Court of Justice (England & Wales), Chancery Division, Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155. The fifth ground of appeal should therefore be dismissed. In the light of all the foregoing considerations, the contested decision must be annulled in so far as it rejected the opposition based on Article 8(1)(b) and (5) of Regulation 2017/1001. The second and third heads of claim, seeking annulment of the Opposition Division’s decision and of the refusal to register the mark applied for By its second and third heads of claim, the applicant asks the Court to annul the Opposition Division’s decision of 21 March 2019 and to reject the application for registration of the mark applied for in respect of all the goods and services covered by that mark. It must be found that those heads of claim seek, in essence, that the Court exercise its power to alter decisions in order to annul the Opposition Division’s decision and uphold the opposition to registration of the mark applied for in respect of all the goods and services which it covers, thus adopting the decision which, according to the applicant, the Board of Appeal should have taken when it was seised of the appeal. It is apparent from the second sentence of Article 71(1) of Regulation 2017/1001 that the Board of Appeal can annul the decision of the EUIPO department which was responsible for the contested decision and exercise any power within the competence of that department, in this instance to rule on the opposition and reject it. Consequently, those measures fall within those which may be taken by the General Court in the exercise of its power to alter decisions under Article 72(3) of Regulation 2017/1001 (see judgments of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL) , T‑504/09, EU:T:2011:739, paragraph 40 and the case-law cited, and of 13 December 2018, Monster Energy v EUIPO – Bösel (MONSTER DIP) , T‑274/17, EU:T:2018:928 , not published, paragraph 97; see also judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep) , T‑20/19, EU:T:2020:309 , paragraphs 18 to 22). It must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco) , T‑498/18, EU:T:2019:763, paragraph 129 and the case-law cited). In the present case, however, the conditions for alteration are not met in that the Court is not in a position to determine which decision the Board of Appeal was required to take. First, as is apparent from paragraph 24 of the contested decision, the Board of Appeal found that there was no likelihood of confusion relying on the assumption that all the goods and services were identical. However, since, first, as is apparent from paragraph 61 above, there is a likelihood of confusion in respect of the identical goods and services and, second, the Board of Appeal did not carry out a specific assessment of those goods and services, the Court – whose role it is not to assess for the first time questions which have not been examined by the Board of Appeal – is not in a position to determine the goods and services in respect of which the opposition under Article 8(1)(b) of Regulation 2017/1001 was to be upheld and, consequently, is not able to exercise its power to alter decisions. Second, the Court is also not in a position to exercise its power to alter decisions as regard the opposition based on Article 8(5) of Regulation 2017/1001, since the Board of Appeal merely found that there was no link between the marks in question without having assessed all the conditions for the application of that article. As is apparent from paragraph 64 above, the Board of Appeal’s conclusion relating to the absence of a link between the marks was based, inter alia, on the incorrect assessment of the similarity of the signs carried out in the context of the opposition under Article 8(1)(b) of Regulation 2017/1001. It follows that the application for alteration, contained, in essence, in the second and third heads of claim, must be dismissed. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful for the most part, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 November 2019 (Case R 1104/2019 ‑ 5), in so far as it concerns the rejection of the opposition based on Article 8(1)(b) and (5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark; 2. Dismisses the action as to the remainder; 3. Orders EUIPO to pay the costs. Tomljenović Škvařilová-Pelzl Nõmm Delivered in open court in Luxembourg on 2 December 2020. 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