Judgments nº T-454/18 of Tribunal General de la Unión Europea, October 10, 2019

• Resolution Date: October 10, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-454/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark OO - Earlier EU figurative mark OO - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-454/18,

Alessandro Biasotto, residing in Treviso (Italy), represented by F. Le Divelec Lemmi, R. Castiglioni and E. Cammareri, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Oofos, Inc., established in Reno, Nevada (United States), represented by J. Klink, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 15 May 2018 (Case R 1281/2017-2), relating to opposition proceedings between Oofos and Mr Biasotto,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 24 July 2018,

having regard to the response of EUIPO lodged at the Court Registry on 16 October 2018,

having regard to the response of the intervener lodged at the Court Registry on 12 October 2018,

further to the hearing on 13 June 2019,

gives the following

Judgment

Background to the dispute

1 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)).

2 Registration as a mark was sought for the following figurative sign:

3 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.’

4 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.

5 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’:

6 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).

7 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.

8 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.

9 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

10 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.

11 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

12 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.

13 EUIPO and the intervener contend that there is a likelihood of confusion.

14 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.

15 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).

16 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).

17 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

18 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.

19 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.

20 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.

21 EUIPO and the intervener dispute the applicant’s arguments.

22 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...