Opinion of Advocate General Saugmandsgaard Øe delivered on 14 November 2019.

• Jurisdiction: European Union
• Court: Court of Justice (European Union)
• ECLI: ECLI:EU:C:2019:974
• Date: 14 November 2019

Provisional text

OPINION OF ADVOCATE GENERAL

SAUGMANDSGAARD ØE

delivered on 14 November 2019 (1)

Case C‑328/18 P

European Union Intellectual Property Office (EUIPO)

v

Equivalenza Manufactory SL

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Application for the figurative mark BLACK LABEL BY EQUIVALENZA — Opposition proceedings — Earlier figurative mark LABELL — Article 8(1)(b) — Likelihood of confusion — Similarity of the signs — Method for comparing signs — Finding that the signs at issue have an average degree of aural similarity — Obligation to carry out a global assessment of the likelihood of confusion)

I. Introduction

1. The present appeal has been brought by the European Union Intellectual Property Office (EUIPO) against the judgment of the General Court of the European Union of 7 March 2018, Equivalenza Manufactory v EUIPO — ITM Entreprises (BLACK LABEL BY EQUIVALENZA) (T‑6/17, not published, EU:T:2018:119; ‘the judgment under appeal’), by which the General Court annulled the decision of the Second Board of Appeal of EUIPO of 11 October 2016 relating to opposition proceedings between ITM Entreprises SAS and Equivalenza Manufactory SL (‘Equivalenza’) (Case R 690/2016-2; ‘the contested decision’).

2. This appeal raises several questions of law regarding the examination of the relative ground for refusal to register a sign as an EU trade mark, referred to in Article 8(1)(b) of Regulation (EC) No 207/2009, (2) based on the existence of a likelihood of confusion on the part of the public. Specifically, EUIPO asks the Court to specify the method for comparing signs and the circumstances in which the General Court is justified in considering that two signs do not satisfy the condition relating to similarity laid down in that provision.

3. As I will explain in this Opinion, the General Court’s numerous decisions in this area have not always followed the same approach in relation to those different aspects. In fact, they have differed to the point of establishing two distinct lines of case-law which currently coexist without the Court having adopted a position in favour of one or the other. This case offers the Court the opportunity to do so.

II. Legal framework

4. Regulation No 207/2009 was repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 on the European Union trade mark. (3) Nonetheless, given the date on which the application for registration at issue in the present dispute was filed, namely 16 December 2014, which is decisive for the purpose of identifying the applicable substantive law, the present dispute is governed by the substantive provisions of the former regulation.

5. Recital 8 of Regulation No 207/2009 states:

‘The protection afforded by [an EU] trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection.’

6. Article 8 of that regulation, entitled ‘Relative grounds for refusal’, provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) 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.

…

5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier [EU] trade mark, the trade mark has a reputation in the [European Union] and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

III. Background to the dispute

7. The background to the dispute is set out in paragraphs 1 to 10 of the judgment under appeal. For the purposes of the present appeal, this may be summarised as follows.

8. On 16 December 2014, Equivalenza filed with EUIPO an application for registration of an EU trade mark pursuant to Regulation No 207/2009 for the following figurative sign:

9. The goods in respect of which registration was sought fall in particular within Class 3 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 to the following description: ‘Perfumery’.

10. On 18 March 2015, ITM Enterprises filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the trade mark applied for for the goods set out in the preceding point on the ground of a likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation.

11. The opposition was based, inter alia, on the earlier figurative mark, reproduced below, that is the subject of international registration No 1079410, designating Austria, Belgium, Bulgaria, the Czech Republic, Denmark, Estonia, Greece, Croatia, Hungary, Lithuania, Luxembourg, Latvia, the Netherlands, Poland, Portugal, Romania, Slovenia and Slovakia, registered on 1 April 2011 and covering ‘Cologne, deodorants for personal use (perfume), perfumes’:

12. By decision of 2 March 2016, the Opposition Division upheld the opposition in respect of all of the contested goods on account of the existence of a likelihood of confusion on the part of the relevant public in the Czech Republic, Hungary, Poland and Slovenia.

13. By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal brought by Equivalenza against the Opposition Division’s decision. The Board of Appeal found that the relevant public was composed of the general public in the four Member States in question, with an average level of attention, and that the goods in question were identical. As regards the comparison of the signs at issue, the Board of Appeal considered that they had an average degree of visual and aural similarity and that were conceptually dissimilar. It inferred from this that they were similar overall. The Board of Appeal concluded that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, on the part of the relevant public.

IV. The procedure before the General Court and the judgment under appeal

14. By application lodged at the Registry of the General Court on 4 January 2017, Equivalenza brought an action for the annulment of the contested decision. In support of its action, it put forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15. When examining that plea, the General Court relied on the uncontested findings of the Board of Appeal of EUIPO, in accordance with which, first, the relevant public is made up of the general public in the Czech Republic, Hungary, Poland and Slovenia with an average level of attention and, secondly, the goods designated by the signs at issue are identical (paragraphs 17 and 18 of the judgment under appeal).

16. As regards the similarity between the signs at issue, the General Court, in the first place, compared their visual, aural and conceptual aspects. In that connection, it took the view that those signs convey different overall visual impressions (paragraphs 29 to 33 of the judgment under appeal), have an average degree of aural similarity (paragraphs 34 to 39 of that judgment) and are conceptually different (paragraphs 40 to 45 of that judgment).

17. In the second place, the General Court carried out a global assessment of the similarity of the signs at issue. In that connection, it observed that, in the light of the fact that the goods in question, namely perfumes, are generally sold in either self-service stores or in perfume shops, the visual aspect of those signs was more important, for their overall impression, than their aural and conceptual aspects. In that regard, the General Court reiterated its finding that those signs are visually different. Moreover, it noted that those signs are conceptually different. The General Court concluded that, based on an overall impression, the signs at issue are not similar, within the meaning of Article 8(1)(b) of Regulation No 207/2009 (paragraphs 48 and 51 to 55 of the judgment under appeal).

18. As one of the cumulative conditions for the application of that provision was not satisfied, the General Court held that the Board of Appeal had erred in law in finding that there was a likelihood of confusion within the meaning of that provision (paragraph 56 of the judgment under appeal). It therefore upheld the single plea in law raised by Equivalenza and annulled the contested decision.

V. The procedure before the Court and the forms of order sought

19. The present appeal was...