Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

28 September 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU word mark THE ART OF RAW — Earlier national and EU figurative marks art and earlier EU figurative mark The Art Company — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑593/15,

The Art Company B & S, SA, established in Quel (Spain), represented by J. Villamor Muguerza, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

G-Star Raw CV, established in Amsterdam (Netherlands),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 9 July 2015 (Case R 1980/2014-1), relating to opposition proceedings between The Art Company B & S and G-Star Raw,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of deliberation, of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 14 October 2015,

having regard to the response lodged at the Court Registry on 28 January 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 2 August 2012, G-Star Raw CV 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).

2        Registration as a mark was sought for the word sign THE ART OF RAW.

3        The goods and services in respect of which registration was sought are in, inter alia, 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: ‘Goods of leather or imitations of leather not included in other classes; bags; rucksacks; purses; wallets; trunks and travelling bags; umbrellas’;

–        Class 25: ‘Clothing; footwear; headgear; belts (clothing)’;

–        Class 35: ‘Advertising; sales promotion; business administration; business management; retail (store) services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, glasses, sunglasses, jewellery, bijoux, watches, leather and imitations of leather and goods made of these materials, bags, rucksacks and purses, wallets, trunks and travelling bags, umbrellas, clothing, footwear, headgear, belts (clothing) and fashion accessories; business intermediary services relating to purchase and sales of soaps, perfumery, essential oils, cosmetics, hair lotions, glasses, sunglasses, jewellery, bijoux, watches, leather and imitations of leather and goods made of these materials, bags, rucksacks and wallets, trunks and travelling bags, umbrellas, clothing, footwear, headgear, belts (clothing) and fashion accessories; administrative and business management services relating to franchising; all aforementioned services also provided via Internet’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 179/2012 of 19 September 2012.

5        On 13 November 2012, the applicant, The Art Company B & S, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in the application for registration, namely those in Classes 18 and 25 listed in paragraph 3 above, and in respect of certain services in Class 35, namely ‘Retail (store) services in the field of leather and imitations of leather and goods made of these materials, bags, rucksacks and purses, wallets, trunks and travelling bags, umbrellas, clothing, footwear, headgear, belts (clothing)’.

6        The opposition was based on the following earlier trade marks:

–        the EU figurative mark filed on 4 July 2003 and registered on 14 June 2007 under number 3256435 (‘earlier mark No 3256435’), covering, inter alia, ‘leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, portfolios, handbags, rucksacks and wallets’, in Class 18; ‘clothing, footwear, headgear, in particular boots, shoes, sandals and slippers’ in Class 25; and ‘retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets’ in Class 35, reproduced below:

–        the EU figurative mark filed on 5 May 1998 and registered on 29 September 1999 under number 815084 (‘earlier mark No 815084’), covering ‘clothing, footwear, headgear’ in Class 25, reproduced below:

–        the Spanish figurative mark filed on 4 February 2004 and registered on 23 June 2004 under number 2579003, covering ‘clothing, footwear (except for orthopaedic shoes), headgear’ in Class 25, reproduced below:

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        Following a request by G-Star Raw pursuant to Article 42(2) of Regulation No 207/2009, the applicant filed several items as evidence of genuine use of the earlier trade marks.

9        By decision of 17 June 2014, the Opposition Division held, first of all, that the applicant had proved genuine use of the earlier trade marks in connection with certain goods and services in Classes 25 and 35. Next, it stated that, for reasons of procedural economy, the opposition would be examined in relation to earlier mark No 3256435. It stated that the relevant territory for the analysis of the likelihood of confusion was the European Union, but that, also for reasons of procedural economy, the comparison of the signs would be carried out having regard to the Spanish-speaking part of the relevant public. Furthermore, it found that, because of their visual, conceptual and phonetic coincidences, the signs at issue were similar. Lastly, it upheld the opposition in respect of all the contested goods and services, with the exception of ‘trunks and travelling bags; umbrellas’ in Class 18, on the ground that there was a likelihood of confusion.

10      The Opposition Division also found that the mark applied for and earlier mark No 815084 were less similar, since the latter contained further figurative elements and an additional word that was not present in the mark applied for.

11      On 29 July 2014, G-Star Raw filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as it had upheld the opposition.

12      By decision of 9 July 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division. First of all, it examined the opposition in relation to earlier mark No 3256435. First, it found that the relevant territory for the analysis of the likelihood of confusion was the European Union. Second, it found that the relevant public consisted of the general public as regards the goods in Classes 18 and 25 and that the services in Class 35 were directed essentially at professionals. Third, it confirmed the findings of the Opposition Division — which were moreover not disputed by the parties — as regards the existence of an identity and a similarity of the goods and services at issue, in Classes 18, 25 and 35, covered by the appeal. Fourth, it carried out a comparison of the signs at issue. First of all, it found that there was only a remote visual similarity between the signs, since they had only the word ‘art’ in common and they differed in all their remaining elements. Next, it found that there was no relevant degree of phonetic similarity between the signs at issue, since they coincided only in the pronunciation of the word element ‘art’. Lastly, the Board of Appeal found that, conceptually, earlier mark No 3256435 could be understood as a reference to the concept of ‘art’ in general whereas the mark applied for evoked the idea of a specific art. Fifth, in the context of the global assessment of the likelihood of confusion, it found, first of all, that the word element ‘art’ of the marks at issue had a weak distinctive character and that consumers would focus rather on the other elements of those marks. Next, it found that a likelihood of confusion could be excluded on the basis of the strong visual and conceptual differences between the marks, which outweighed the similarities resulting from the presence of the word ‘art’ in the mark applied for. Lastly, it stated that the identity or similarity of the goods and services was counteracted by the, at most, very low similarity of the signs. Sixth, it stated that that reasoning applied also to the Spanish trade mark referred to in paragraph 6 above, since it was identical to earlier mark No 3256435. Second, considering the opposition in relation to earlier mark No 815084, the Board of Appeal found that that mark had even fewer similarities to the mark applied for. It therefore concluded that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

14      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

15      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16      The applicant claims that the marks at issue are similar and that the Board of Appeal was wrong in finding that there was no likelihood of confusion.

17      Article 8(1)(b) of Regulation No 207/2009 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, 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.

18      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).

19      In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but has to place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

20      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).

21      Furthermore, 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 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 this 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).

22      The first point to be noted is that the Board of Appeal found that the goods and services covered by the earlier trade marks and by the mark applied for were identical or similar. That finding, with which moreover the parties agree, must be approved.

23      Next, the applicant does not dispute the Board of Appeal’s assessment that, as regards the goods in Classes 18 and 25, the relevant public consists of the general public, with an average level of attention, and that, as regards the services in Class 35, the target public consists essentially of professionals. The Board of Appeal concluded that the level of attention of the relevant public in the present case was neither particularly low nor particularly high (paragraph 18 of the contested decision). EUIPO notes, however, that, in its judgment of 30 November 2015, Hong Kong Group v OHIM — WE Brand (W E) (T‑718/14, not published, EU:T:2015:916, paragraphs 29 and 30), the Court found that the services in Class 35 were aimed at both the general public and business customers with professional knowledge or expertise. The definition of the relevant public in the contested decision is therefore more restrictive than that upheld in the case-law. However, as EUIPO notes, that incomplete definition of the relevant public as regards the services in Class 35 does not affect the present case. According to the case-law, where the relevant public consists of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account (see judgment of 19 April 2013, Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 27). In this case, it is clear from paragraph 18 of the contested decision that the Board of Appeal took account of the level of attention of the general public in examining the likelihood of confusion.

24      Lastly, the fact that the relevant territory for the analysis of the likelihood of confusion is the European Union has not been called in question.

25      As regards the marks at issue, it must be observed that earlier mark No 3256435 is a figurative mark consisting of the word element ‘art’ in a standard typeface and that it is preceded by the symbol of an eight-pointed asterisk. The mark applied for is a word mark consisting of the expression ‘the art of raw’ in capital letters.

26      The Board of Appeal found that there was only a remote visual similarity between the signs at issue, that there was no relevant degree of phonetic similarity and that, conceptually, earlier mark No 3256435 might be understood as a reference to the concept of ‘art’ in general, whereas the mark applied for evoked the idea of a specific art.

27      First of all, the visual analysis of the signs at issue carried out by the Board of Appeal must be approved. The similarity of the signs is limited to the fact that the marks at issue contain the word ‘art’. They differ in terms of all their remaining elements, namely the asterisk in the case of earlier mark No 3256435 and the word elements ‘the’, ‘of’ and ‘raw’ in the case of the mark applied for. As the Board of Appeal correctly noted, the marks at issue are structured differently since, so far as earlier mark No 3256435 is concerned, the asterisk is placed before the word element ‘art’ and directly next to it, whereas, in the case of the mark applied for, the four word elements are separated by spaces. It should also be noted that the marks at issue differ in terms of their length, earlier mark No 3256435 being significantly shorter than the mark applied for.

28      In that context, contrary to what the applicant claims, the asterisk placed at the beginning of earlier mark No 3256435 and the first word element of the mark applied for, namely ‘the’, do play a role in the visual perception of the marks at issue. Indeed, first, the shorter the sign, the better the public is able to perceive the differences between the signs at issue, since such differences may lead to different overall impressions (see, to that effect, judgments of 21 February 2013, Esge v OHIM — De’Longhi Benelux (KMIX), T‑444/10, not published, EU:T:2013:89, paragraph 27; 4 February 2015, El Corte Inglés v OHIM — Apro Tech (APRO), T‑372/12, not published, EU:T:2015:70, paragraph 34; and 3 June 2015, Levi Strauss v OHIM — L&O Hunting Group (101), T‑604/13, not published, EU:T:2015:351, paragraph 33). Second, even though the relevant public will understand the word element ‘the’ as a simple definite article which particularises the noun that follows it (see paragraph 35 below) so that that element is not very distinctive, the fact remains that the relevant public will perceive the mark applied for as a whole. Therefore, the word element ‘the’ cannot thus be considered negligible.

29      It follows that the Board of Appeal’s assessment as regards the existence of a remote visual similarity between the signs is untainted by error.

30      Next, the Board of Appeal likewise did not err in finding that, phonetically, there was no relevant degree of similarity between the marks at issue. First, earlier mark No 3256435 is monosyllabic, whereas the mark applied for consists of four syllables and is therefore significantly longer. Second, the mark applied for includes the additional word elements ‘the’, ‘of’ and ‘raw’. In this connection, the Board of Appeal observed correctly that the mere fact that the second syllable of the mark applied for is pronounced in the same way as the only syllable of earlier mark No 3256435 is not sufficient for a finding that the marks at issue are phonetically similar.

31      Lastly, as stated in paragraph 28 of the contested decision, conceptually, the word element ‘art’ refers to something artistic and, therefore, beautiful and pleasant to the eye, and is comprehensible to all of the European Union public.

32      The Board of Appeal stated that earlier mark No 3256435 may be understood as a reference to the concept of ‘art’ in general and that the mark applied for evokes the idea of a specific art. It concluded, in essence, that the mark applied for is conceptually richer.

33      Those findings must be upheld. The word ‘art’ is a basic word which the relevant public of the European Union will understand. As regards, the Spanish public in particular, which was taken into account in the comparison of the signs, the Board of Appeal stated correctly that the English word ‘art’ was close to the Spanish word ‘arte’ and that Spanish-speaking consumers were therefore likely to understand its meaning.

34      In addition, the word sequence ‘the art of raw’ conveys a single message by identifying a particular object or skill and does not convey the meaning of the word element ‘art’ as an abstract word. The word elements ‘the’, ‘of’ and ‘raw’ therefore have a strong semantic value which, combined with that of the word element ‘art’, produces a logical unit that is conceptually different from earlier mark No 3256435 (see, to that effect, judgments of 11 July 2006, Torres v OHIM — Bodegas Muga (Torre Muga), T‑247/03, not published, EU:T:2006:198, paragraph 51, and 10 December 2008, Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 30).

35      In that regard, the argument that the non-English-speaking public who have a below average command of the English language will not perceive the subtle difference noted by EUIPO and will not understand the specific meaning of the word element ‘art’ in the expression ‘the art of raw’ cannot succeed. First, the word elements ‘the’ and ‘of’ are part of basic English vocabulary (see, to that effect, judgments of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 109, and 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 44). It is therefore clear that the expression ‘the art of’ will be understood by the relevant public, including by those who have a below average command of the English language. In that context, it is therefore irrelevant whether the evidence provided by G-Star Raw before the Board of Appeal proves that the expression ‘the art of’ is commonly used in the course of trade in connection with the goods and services concerned.

36      Second, the fact that the meaning of the word element ‘raw’ might not be known by the non-English-speaking public does not call in question the idea that the word combination ‘the art of raw’ will be understood as ‘the art of something or somebody’ and will therefore be perceived as a unit with a specific conceptual content.

37      As regards the global assessment of the likelihood of confusion, it should be recalled that it 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 (see judgment of 21 June 2012, Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T‑276/09, EU:T:2012:313, paragraph 52 and the case-law cited).

38      In the present case, as is apparent from paragraphs 27 to 36 above, the Board of Appeal found, correctly, in the contested decision, that the overall impression created by the marks at issue revealed important visual and conceptual differences and that the signs were phonetically dissimilar.

39      In that context, it must be recalled that the distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. The examination of the distinctive character of the earlier trade mark is particularly relevant in circumstances where there is only a low degree of similarity between the signs and where it is necessary to determine whether that low degree may be offset by a high degree of similarity between the goods (judgments of 22 September 2011, ara v OHIM — Allrounder (A with two triangular motifs), T‑174/10, not published, EU:T:2011:519, paragraph 34, and 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 67).

40      As the Board of Appeal correctly stated (see contested decision paragraphs 33, 36 and 39), the word element that the marks at issue have in common is of weak distinctive character. It refers to something artistic and, therefore, beautiful and pleasant to the eye. The word element ‘art’, considered in isolation in relation to the goods and services covered by the marks at issue, evokes the idea that those goods and services are the result of an imaginative and creative process. That idea that there has been artistic design work confers a valuable aesthetic character on those goods and services. Therefore, the word element ‘art’ constitutes a laudatory term for the goods and services concerned and has thus a limited distinctive character in relation to them.

41      The applicant has submitted no relevant argument that would call in question the weak distinctive character of earlier mark No 3256435 in relation to the goods and services concerned.

42      First, it is to no avail that the applicant claims that the link between the word element ‘art’ and the goods and services concerned is remote on the ground that the goods are directed at the general public and are not related to works of art. The concept of ‘art’ is not limited to the restricted conception of that notion defended by the applicant, but has a wider meaning. Thus, as stated by the Board of Appeal in paragraph 28 of the contested decision, that concept refers to something ‘beautiful and pleasant to the eye’ and may be used to ‘promote a characteristic of goods that are artistic and pleasurable’, namely creative products with strong imaginative or aesthetic appeal. Indeed, the goods concerned are the result of creation by stylists or ‘designers’, who try to create aesthetic trends. Consumers will purchase the goods concerned at least in part because of the image they will convey by wearing clothing that is ‘beautiful and pleasant to the eye’.

43      The applicant’s argument that G-Star Raw ought to have adduced proof that the goods concerned are usually marketed as ‘works of art’ must also be rejected on the same grounds.

44      Second, the argument that G-Star Raw did not adduce evidence proving the presence of the element ‘art’ in trade marks other than the marks at issue, and that, therefore, it did not establish that the word element ‘art’ had no distinctive character, is irrelevant. It follows from paragraph 40 above that the weak distinctive character of the word element ‘art’ is intrinsic and that, accordingly, it is not due to its use on the market.

45      In this connection, the applicant cannot usefully rely on paragraph 34 of the contested decision in support of its arguments. That paragraph states that ‘the presence on the ... Register [of EU trade marks] of many trade marks in [Classes 18 and 25] containing the word “art” is not quite as irrelevant’ because ‘it shows that consumers in the [European Union] ... are likely to encounter a number of “art” marks in this field, since it may be assumed that commercial undertakings do not generally waste resources by securing protection for trade marks which they have no intention of using’. Those statements by the Board of Appeal cannot be construed as an element of its reasoning in establishing the weak distinctive character of the word element ‘art’. Paragraph 34 must be read first as a criticism of the Opposition Division for having found of its own motion that it could not be assumed on the basis of only one register containing registrations of trade marks that all those trade marks had effectively been used. In addition, as EUIPO observes, the fact that the Board of Appeal did not itself carry out a further analysis of the evidence confirms that it considered that that point was irrelevant for addressing the question of the degree of distinctiveness of the word element ‘art’.

46      Third, the applicant claims that the word element ‘art’ should be more distinctive than the word element ‘raw’ for the goods in Class 25 and submits in that regard that the term ‘raw’ describes a characteristic of the material in which some articles of clothing are produced, namely ‘raw denim’. However, that argument cannot succeed.

47      The meaning of the word element ‘raw’ is not known by the non-English-speaking public and it will therefore be perceived as a fanciful word. As regards the perception of that word by the English-speaking public, it should be noted that the adjective ‘raw’ is used as a noun in the expression ‘the art of raw’ and may be interpreted in different ways. Its interpretation therefore necessitates an intellectual process. Consequently, the applicant has not succeeded in establishing that the word element ‘raw’ is less distinctive than the word element ‘art’.

48      In that context, the applicant’s assertion to the effect that references to G-Star Raw as ‘G-Star’, instead of ‘G-Star Raw’, before the Board of Appeal, demonstrate the weak distinctive character of the word element ‘raw’, is irrelevant. EUIPO very rightly notes not only that the causal connection claimed by the applicant is merely speculative, but also that the applicant has not demonstrated that the failure to use the word ‘raw’ when referring to the company concerned was a constant reality.

49      It follows from the foregoing that the Board of Appeal’s assessment that the word element ‘art’ may be used to promote a characteristic of artistic and pleasurable goods and that it is of weak distinctive character is untainted by error.

50      The fact that the word element ‘art’ is of weak distinctive character must have an effect on the relevant public’s perception of that element, since it cannot constitute the dominant element of the signs at issue. Accordingly, the Board of Appeal was fully entitled to hold that the element ‘art’ was not decisive with regard to the overall impression created by the signs at issue, with the result that it could not be decisive with regard to their visual, phonetic and conceptual comparison and, therefore, to the assessment of the likelihood of confusion between the marks at issue (see, to that effect, judgment of 31 January 2013, K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), T‑54/12, not published, EU:T:2013:50, paragraphs 31 and 32).

51      It follows from the foregoing that the element of similarity between the marks at issue, namely the presence of the common element ‘art’, cannot offset the differences that exist between them and which create a different overall impression (see, to that effect, judgment of 23 September 2009, Viñedos y Bodegas Príncipe Alfonso de Hohenlohe v OHIM — Byass (ALFONSO), T‑291/07, not published, EU:T:2009:352, paragraph 50).

52      Therefore, since the word element ‘art’ of earlier mark No 3256435 has weak distinctive character, it must be held, in the circumstances of the present case, that the identity and similarity of the goods at issue are not such as to offset the very low degree of similarity between the signs at issue.

53      In that context, it is to no avail that the applicant submits that, even if earlier mark No 3256435 is of weak distinctive character, the target public is likely to view the mark applied for as being one of its sub-brands. It should be observed that sub-brands are characterised by signs that derive from a principal mark and that share with it a common dominant element (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, EU:T:2004:293, paragraph 51). However, in the present case, the marks at issue do not share a common dominant element. Indeed, as is apparent from the foregoing considerations, the word element ‘art’ cannot be considered to be the dominant element of any of the marks at issue in view of its weak distinctive character.

54      As regards the examination of the opposition in relation to earlier mark No 815084, contrary to what the applicant claims, the Board of Appeal did not err in finding, in paragraph 40 of the contested decision, that there were even more differences between that earlier trade mark and the mark applied for and that, consequently, it was even less likely that there would be a risk of confusion between them.

55      First of all, unlike earlier mark No 815084 and the two other earlier trade marks, the mark applied for does not have a figurative element, as was moreover also noted by the Opposition Division (see paragraph 10 above). The figurative element placed before the word elements of earlier mark No 815084 plays a not insignificant role in the visual perception of the marks at issue. Therefore, the applicant cannot submit merely that the initial part of the mark applied for and the initial part of earlier mark No 815084 are identical on the ground that they both start with the word sequence ‘the art’. Such an approach would effectively deny the role that that figurative element plays in the visual perception of those marks and overestimate that of the word element ‘art’, the weak distinctive character of which was made clear in paragraphs 33, 36 and 39 of the contested decision, as recalled in paragraph 40 above.

56      Furthermore, by contrast with the other earlier trade marks, the word elements of earlier mark No 815084 are not reproduced in their entirety in the mark applied for, which renders the latter marks even less similar. On the contrary, earlier mark No 815084 contains three word elements, including the word ‘company’ which is in no way similar to any of the word elements of the mark applied for, as the Opposition Division noted (see paragraph 10 above), and it has a different structure. By contrast, as stated in paragraphs 30 and 36 above, the mark applied for consists of four word elements and refers to ‘the art of something or somebody’; earlier mark No 814085 does not.

57      It follows that, contrary to what the applicant submits, the mere fact that the marks at issue have the word elements ‘the’ and ‘art’ in common nevertheless does not offset their numerous differences.

58      Therefore, the Board of Appeal did not err in finding, in paragraph 40 of the contested decision, that there were even more differences between earlier mark No 815084 and the mark applied for and that, consequently, they were even less similar.

59      It follows from all the foregoing that the single plea in law must be rejected and that the action must therefore be dismissed in its entirety.

 Costs

60      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.

61      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders The Art Company B & S, SA to pay the costs.

Delivered in open court in Luxembourg on 28 September 2016.

[Signatures]

* Language of the case: English.

© European Union
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