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Cite as: [2011] EUECJ T-483/10

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

23 November 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark PUKKA – Opposition by the proprietor of Community and national figurative marks featuring the word element pukas – Article 8(1)(b) of Regulation (EC) No 207/2009 – Partial refusal to register)

In Case T-483/10,

The Pukka Luggage Company Ltd, established in London (United Kingdom), represented by K. Gilbert and M. Blair, Solicitors,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Jesús Miguel Azpiroz Arruti, residing at San Sebastián (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 29 July 2010 (Case R 1175/2008-4), concerning opposition proceedings between Jesús Miguel Azpiroz Arruti and The Pukka Luggage Company Ltd,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and M. van der Woude, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 8 October 2010,

having regard to the response lodged at the Court Registry on 25 January 2011,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 5 October 2004, the applicant, The Pukka Luggage Company Ltd, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The application was for the registration of the word mark PUKKA.

2 The goods in respect of which registration was sought are in Class 18 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: ‘Articles made of leather or imitation leather; bags, handbags, holdalls, trunks and travelling bags; luggage; key-cases, wallets, purses; briefcases; belts; carriers (luggage) for suits and for dresses; attaché cases; cheque-book holders; passport-holders; credit-card holders; umbrellas’.

3 The Community trade mark application was published in Community Trade Marks Bulletin No 21/2005 of 23 May 2005.

4 On 17 August 2005, Jesús Miguel Azpiroz Arruti filed a notice of opposition to registration of the mark applied for on the basis of Article 8(1)(b) of Regulation No 207/2009.

5 The opposition was directed against all the goods in respect of which registration had been applied for.

6 The opposition was based on the following earlier rights:

– the Spanish figurative mark reproduced below, filed on 28 May 1990 and registered on 5 August 1992 under No 1 570 450 for ‘leather and imitations of leather, and goods made of these materials not included in other classes; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery’ in Class 18,

– the Community figurative mark filed on 1 April 1996, registered on 1 October 1998 under No 19 802 and duly renewed until 1 April 2016 for ‘clothing, footwear, headgear’ in Class 25, ‘games and playthings; gymnastic and sporting articles not included in other classes’ in Class 28 and ‘transport, packaging and storage of clothing, footwear, headgear, games and playthings, gymnastic and sporting articles’ in Class 39, reproduced below:

7 The opposition was based on all of the goods covered by the earlier Spanish trade mark and on the goods in Class 25 covered by the earlier Community trade mark.

8 By decision of 12 June 2008, the Opposition Division upheld the opposition, solely on the basis of the earlier Community trade mark, for part of the contested goods, namely for ‘articles made of leather or imitation leather; bags, handbags, holdalls, travelling bags; luggage; key-cases, wallets, purses; briefcases; belts; carriers (luggage) for suits and for dresses; attaché cases; cheque-book holders; passport-holders; credit-card holders’. The opposition was rejected in respect of trunks and umbrellas in Class 18.

9 On 12 August 2008, the applicant filed an appeal against that decision.

10 By decision of 29 July 2010 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it found that the Opposition Division had been right to hold that the earlier Community trade mark had been genuinely used for clothing and belts in Class 25. In addition, it held that, concerning the comparison of the goods, the articles in Class 18 covered by the mark applied for were not similar to the clothing in Class 25 covered by the earlier trade mark, but that there was an average degree of similarity for certain goods, and a high degree of similarity for belts, present in both classes. Lastly, in view of the fact that the marks being compared were visually similar and phonetically highly similar, the Board considered that there was a likelihood of confusion within the European Union.

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision;

– in the alternative, annul the contested decision as regards its finding that the opposition should succeed against luggage;

– in the further alternative, annul the contested decision as regards its finding that the opposition should succeed against hard suitcases and hard trolley cases;

– order OHIM to pay the costs.

12 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

Main claim by the applicant

13 The applicant submits two pleas in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and criticising errors by the Board of Appeal, first, in its assessment of the similarity of the goods and, second, in its assessment of the similarity of the marks at issue.

14 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks should be taken to mean trade marks registered in a State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

15 According to settled case-law, the risk that the public might 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and case-law cited).

Relevant public

16 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and case-law cited).

17 In light of the goods concerned, the relevant public is the average European Union consumer who is reasonably well informed and reasonably observant and circumspect.

18 It is apparent from paragraphs 10 and 11 of the contested decision that the Board of Appeal, following the Opposition Division’s approach, only took into account the clothing and belts in Class 25 covered by the earlier Community trade mark, since genuine use had not been proved for the other goods and services. Clothing and belts, together with the goods in Class 18 covered by the mark applied for, are mass consumption goods, frequently purchased by the average consumer. The degree of attention paid to those goods will be no higher than average given that the goods are for everyday use and that they do not have a serious impact on the health, budget or life of the European Union consumer.

Comparison of the goods

19 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and 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 goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and case-law cited).

20 In the present case, the Board of Appeal found, in paragraph 15 of the contested decision, that the belts in Class 18 covered by the mark applied for are highly similar to the belts in Class 25 covered by the earlier Community trade mark, despite the fact that the former are accessories for trousers, whereas the latter are accessories for luggage. Regarding the other contested goods in Class 18, the Board of Appeal found that they in no way resembled the clothing in Class 25. Nevertheless, the Board of Appeal also legitimately found that the goods other than belts in Class 18 showed an average degree of similarity with the belts in Class 25, given that those goods are all of the same nature, namely manufactured using leather and used by consumers as accessories.

21 The arguments put forward by the applicant in support of the plea alleging an incorrect assessment of the similarity of the goods are not such as to undermine those findings.

– Similarity between the belts in Class 25 and the luggage and travelling bags in Class 18

22 The applicant claims that the belts in Class 25 are not similar to the luggage and travelling bags in Class 18 covered by the mark applied for, given that those goods are neither in direct competition nor complementary and that the trade channels used to market them are completely different.

23 In that regard, it should be observed that the Board of Appeal correctly found that the belts in Class 25 and the goods in question in Class 18, namely, luggage and travelling bags in particular, were manufactured using the same materials and were used by consumers as accessories. That finding, which the applicant has not specifically contested, is not undermined by the fact that those goods are neither in direct competition nor complementary.

24 In addition, the applicant’s assertion that the trade channels used to market the goods concerned are completely different must be rejected.

25 As OHIM pointed out, numerous major brand companies in the clothing sector also produce, in addition to classic bags and handbags, different kinds of luggage and travel bags. Likewise, specialised luggage and suitcase makers often also manufacture accessories such as belts. As regards distribution and marketing, belts and luggage are marketed together not only in major retail establishments, in ‘one brand’ shops and in online stores, but also in more specialised stores. In particular, in the luxury fashion business, the consumer is used to the practice of marketing belts and the goods covered by the mark applied for together. Thus, the consumer of the goods in question may be confronted, at the same time and in the same place, with both the belts covered by the earlier Community trade mark and the luggage and travel bags covered by the mark applied for.

26 Moreover, it should be observed that, as accessories, the luggage and travel bags in Class 18, together with the belts and other clothing in Class 25, contribute to the external image of the consumer concerned, which may involve coordination of those various components at the design stage or when they are purchased. Furthermore, the fact that those goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods. It follows that the luggage and travel bags in Class 18 show a degree of similarity – which cannot be classified as slight – with the clothing in Class 25, including belts (see, by analogy, PiraÑAM diseño original Juan Bolaños, paragraphs 49 to 51).

– Failure to take into account other criteria when assessing the similarity of the goods

27 First, the applicant alleges that the Board of Appeal failed to examine, besides the nature and use of the goods, certain factors which could have been taken into account in order to assess the similarity between those goods, such as the distribution channels of the various goods grouped together under the heading ‘luggage’.

28 In that regard, it follows from the case-law cited in paragraph 19 above that although OHIM is required to take into account all the relevant factors relating to those goods, it may disregard those factors which are not relevant to the relationship between them.

29 In the present case, as is apparent from paragraphs 24 to 26 above, the distribution channels criterion is not relevant, since it does not appear that the belts in Class 25 differ from the luggage in Class 18 in that regard.

30 Consequently, the Board of Appeal did not act unlawfully by failing to take account of distribution channels when examining the similarity of the goods concerned.

31 Second, the applicant alleges that the Board of Appeal failed to take into account the observations it had made in the course of the administrative procedure before OHIM regarding the conclusions which needed to be drawn from certain earlier decisions by OHIM.

32 It is sufficient to note, in that regard, without it being necessary to rule on the admissibility of such an argument – which the applicant does not expressly put forward in its written pleadings before the Court – that, according to case-law, the decisions which the Boards of Appeal are called upon to take concerning registration of signs as Community trade marks, under Regulation No 207/2009, are based on circumscribed powers and not on discretionary powers. Accordingly, the lawfulness of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of an earlier decision-making practice of the Boards (see Case T-123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II-3979, paragraph 68 and case-law cited, and judgment of 16 December 2010 in Case T-161/09 Ilink Kommunikationssysteme v OHIM (ilink), not published in the ECR, paragraph 41).

– Failure to take into account subsets of goods included in ‘luggage’

33 The applicant claims that the Board of Appeal failed to take into account, for the purposes of assessing the similarity of the goods, different subcategories within the category of ‘luggage’, such as suitcases, hard trolley cases, suit carriers, rolling duffels, duffel bags, backpacks and garment bags, even though, in its observations before the Board of Appeal, the applicant had drawn attention to those subcategories. Taking into account those subcategories, instead of the general term ‘luggage’, would have clearly shown the lack of similarity between the goods covered by the marks at issue.

34 In that regard, it should be noted that the applicant argued the following in its observations submitted to the Board of Appeal by letter of 20 March 2009:

‘[L]uggage comes in many forms and the definition includes goods such as suitcases. Suitcases are clearly a subset of and within the encompassing term “luggage”. In this respect, we enclose various identifications of what suitcases actually are in Exhibit C. Further subsets of and within the term “luggage” are “trolley cases” and examples of these goods are attached as Exhibit D. Further examples extend to suit carriers, Exhibit E, rolling duffels, Exhibit F, and other forms of luggage, Exhibit G. Finally we have soft suitcases and back packs as well as duffel bags shown in Exhibit H.’

35 However, contrary to what the applicant asserts in paragraph 13.1 of the application and in the heading of its first plea, the subcategories referred to in the previous paragraph do not appear ‘separately in the specification of the contested Community trade mark application within the definition of luggage’. Indeed, the list of goods indicated by the applicant in its application for registration of 5 October 2004 does not contain any of the terms listed in the previous paragraph but simply the general term ‘luggage’. Nor has the applicant subsequently specified or restricted the list of goods in respect of which the mark applied for was supposed to be registered.

36 In that context, it should be borne in mind that, under Article 26(1)(c) of Regulation No 207/2009, an application for a Community trade mark is to contain a list of the goods or services in respect of which the registration is requested. According to Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the list of goods and services is to be worded in such a way as to indicate clearly the nature of the goods and services. Lastly, Article 43(1) of Regulation No 207/2009 provides that the applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein.

37 It is clear from those provisions that it is for the person requesting registration of a sign as a Community trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating their nature. OHIM, for its part, must examine the application in relation to all the goods or services on the list concerned, taking into account, if necessary, restrictions to that list within the meaning of Article 43(1) of Regulation No 207/2009. If the list of goods or services covered by a Community trade mark application includes one or more categories of goods or services, OHIM is not under any obligation to make an assessment of each of the goods or services coming within each category, but must direct its examination to the category in question, as such (Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 23).

38 Therefore, as OHIM rightly submitted, it had to take into account, when comparing the goods in question in the present case, the specification of those goods as it appeared in the trade mark application and in the earlier registrations. In particular, in the absence of any subsequent restriction, complying with all the required formalities, of the goods in respect of which the mark in question was applied for, OHIM was not able to split or dissect a broad category of goods into subcategories or individual items in order to examine them separately.

39 Therefore, the applicant’s argument alleging a failure to take into account subsets of goods included in the category of luggage must be rejected.

40 It follows from the foregoing that the plea alleging an incorrect assessment of the similarity of the goods must be rejected.

Comparison of the signs

41 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and case-law cited).

42 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant component (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).

43 The Board of Appeal rightly found, in paragraph 17 of the contested decision, that the marks at issue were almost identical phonetically, due to the highly similar pronunciation of their respective word elements, and that there was therefore a high degree of aural similarity between them. Moreover, the applicant has not disputed that finding.

44 Likewise, the Board of Appeal was right to find, in paragraph 18 of the contested decision, that there was no conceptual similarity between the marks at issue, which the applicant has not disputed.

45 Regarding the visual similarity, the Board of Appeal considered that the word elements of the marks at issue were highly similar, the only difference relating to the fact that the earlier Community trade mark also contained figurative elements. It concluded from this that there was at least an average degree of visual similarity between the marks.

46 The applicant submits, in that regard, that the Board of Appeal was wrong to consider that the earlier Community trade mark was dominated by its word element, rather than by its graphic element – represented by the oval shape with a star in the centre – which was five times the size of the word element.

47 However, the mere size of the various elements in a composite trade mark cannot in itself be decisive in determining their dominant character. In the present case, it should be taken into account in particular that, as noted by OHIM, the figurative elements of the earlier Community trade mark – namely, the oval and the geometric shape vaguely recalling a five-point star which is superimposed thereon – do not convey any identifiable conceptual content. Consequently, it is highly unlikely that those figurative elements will hold the attention of the relevant consumer. By contrast, although the word element does not convey any conceptual content either, the fact remains that it may be read and pronounced and that it is, therefore, likely to be remembered by consumers. Therefore, the word element of the earlier Community trade mark must be considered to dominate the visual impression given by that mark.

48 The applicant also submits that the Board of Appeal should have taken account of the fact that, when buying belts in Class 25, consumers were more likely to base their decisions on visual selection. Therefore, more emphasis should have been placed on the graphic elements of the earlier trade marks and on the visual comparison of the marks at issue.

49 That argument must be rejected. As has been stated in paragraph 47 above, contrary to what the applicant claims, the word element ‘pukas’ dominates the visual impression given by the earlier Community trade mark. Consequently, giving more weight to the visual similarity criterion than to the phonetic similarity criterion when comparing the signs could not have led to a more favourable outcome for the applicant.

50 Therefore, even if it is accepted that consumers actually are in the habit of buying belts on the basis of a visual selection, that does not affect the fact that the image of the marks at issue which those consumers will retain will be dominated by their word elements which are in turn highly similar, given their phonetic resemblance.

51 Consequently, the Board of Appeal did not err in considering that the marks at issue showed an average degree of visual similarity.

52 Accordingly, the plea alleging errors in assessing the similarity of the marks at issue must be rejected.

Likelihood of confusion

53 The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).

54 In the present case, the Board of Appeal was right to take the view, applying the principle of interdependence, that, given that the goods covered by the marks showed an average degree of similarity – and even a high degree of similarity in respect of belts – and that the signs at issue were visually and phonetically similar, there was a likelihood of confusion within the European Union in respect of the goods covered by the mark applied for.

55 Since examination of the applicant’s arguments has not brought to light any evidence likely to undermine the Board of Appeal’s assessment of the likelihood of confusion, the main claim must be rejected.

Subsidiary claims by the applicant

56 OHIM disputes the admissibility of the applicant’s claims in the alternative and argues that the first claim in the alternative, seeking annulment of the contested decision in respect of its finding that the opposition should succeed against luggage, is superfluous given that the main claim completely encompasses the claim made in the alternative in that it covers the product ‘luggage’ and that the General Court has jurisdiction to accept the applicant’s claim in part.

57 In that regard, it should be stated that rejection of the first claim in the alternative is included in rejection of the main claim. Therefore, there is no longer any need to rule on the admissibility of the first claim in the alternative.

58 Regarding the second claim in the alternative, seeking annulment of the contested decision in respect of its finding that the opposition should succeed against hard suitcases and hard trolley cases, OHIM submits that the specification of the Community trade mark application does not contain goods such as ‘hard suitcases’ and ‘hard trolley cases’, but only ‘luggage’ which, as a broad term, covers many goods other than those two products, which have not been dealt with either by the Opposition Division or by the Board of Appeal.

59 In that regard, it should be borne in mind that, as has been stated in paragraph 35 above, the list of goods indicated by the applicant in its application for registration of 5 October 2004 does not include hard suitcases or hard trolley cases but simply the general term ‘luggage’. Therefore, as has been observed in paragraphs 37 and 38 above, the Board of Appeal rightly merely examined the likelihood of confusion between the marks at issue with respect to the category of goods consisting of luggage, without separately examining the existence of a likelihood of confusion with respect to certain subcategories within that category. Consequently, in the contested decision, the Board of Appeal only ruled on the category of luggage.

60 Under Article 135(4) of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.

61 Therefore, since the second claim in the alternative deviates from the subject-matter of the contested decision, that claim must be rejected as inadmissible.

62 Accordingly, the action must be dismissed in its entirety.

Costs

63 Under Article 87(2) 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders The Pukka Luggage Company Ltd to pay the costs.

Pelikánová

Jürimäe

van der Woude

Delivered in open court in Luxembourg on 23 November 2011.

[Signatures]

** Language of the case: English.