Judgments nº T-453/18 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-453/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark OOF - Earlier EU word mark OOFOS - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-453/18,

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 10 May 2018 (Case R 1270/2017-2), 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 18 October 2018,

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

having regard to the request for a stay of the proceedings lodged at the Court Registry by the applicant on 5 June 2019,

having regard to the observations on that request for a stay presented by EUIPO and by the intervener to the Court on 13 June 2019,

having regard to the decision of 13 June 2019 refusing the applicant’s request for a stay of the proceedings,

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, in particular, on the EU word mark OOFOS, registered on 17 November 2011 under No 9760042 in respect of, inter alia, goods in Class 25 corresponding to the following description: ‘Footwear comprised of foam; soles for footwear comprised of foam’.

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 18 April 2017, the Opposition Division upheld the opposition and refused registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

8 On 15 June 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

9 By decision of 10 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that, in the light of the ‘highly similar’ nature of the goods in question and the average degree of visual and phonetic similarity between the marks at issue, which share the sequence of letters ‘O-O-F’, and taking into account the principles of imperfect recollection and interdependence, there exists a likelihood of confusion on the part of the relevant public.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- allow the mark applied for to proceed to registration in respect of all the goods covered;

- order EUIPO or the intervener to pay the costs, including those incurred in the proceedings before the Opposition Division and the Board of Appeal.

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, first, that, visually, the marks at issue are ‘not at all similar’ and are clearly different. In his view, the overall visual impression of the OOF mark applied for is conveyed by the totality of its word and figurative elements, within which the word element consisting of the letters ‘O-O-F’ does not dominate over the other elements. An overall visual comparison of the marks at issue shows the striking difference between them, given that the mark applied for is a figurative mark in colour seeking protection not only for the letters ‘O-O-F’ but also for their particular stylisation, the two thick lines above the first two letters ‘O-O’ and the colours red and white for those two lines and the three letters ‘O-O-F’, whereas the earlier mark OOFOS is, in contrast, a simple word mark. Furthermore, figurative marks enjoy protection only and exclusively in respect of the specific graphic in which they are represented. Finally, marks consisting of three or fewer letters/numbers are considered to be short marks, in accordance with a number of EUIPO’s decisions and EUIPO’s guidelines, and small differences are sufficient to distinguish them.

19 Second, phonetically, the applicant maintains that the pronunciation of the signs at issue differs in the sound of the final sequence ‘O-S’ of the earlier mark, even though it coincides in the sound sequence of the letters ‘O-O-F’ common to both signs. He also submits that the degree of phonetic similarity between two marks is of less importance in the case of goods which, as in the present case, are marketed in such a way that the relevant public, when making a purchase, usually perceives visually the mark designating those goods. He concludes that the degree of phonetic similarity between the marks at issue is not sufficiently high to give rise, in itself, to a likelihood of confusion, even for those goods which are deemed to be identical.

20 Third, the applicant does not dispute the Board of Appeal’s finding that, in essence, a conceptual comparison is not possible and its impact is neutral.

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...