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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

20 October 2016 (*)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark CLOVER CANYON — Earlier national word mark CANYON — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion)

In Case T‑693/15,

Clover Canyon, Inc., established in Los Angeles, California (United States), represented by T. Schmitz, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and A. Folliard-Monguiral, acting as Agents,

defendant,

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

Kaipa Sportswear GmbH, established in Heilbronn (Germany), represented by D. Pauli, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 August 2015 (Case R 3018/2014-5), relating to opposition proceedings between Kaipa Sportswear and Clover Canyon,

THE GENERAL COURT (Sixth Chamber),

composed, at the time of deliberation, of S. Frimodt Nielsen (Rapporteur), President, A.M. Collins and V. Valančius, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 27 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 10 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 9 March 2016,

having regard to the request for a hearing submitted by the applicant within three weeks after service of notification of the close of the written part of the procedure,

having regard to the applicant’s letter lodged at the Court Registry on 13 September 2016, EUIPO’s letter lodged at the Court Registry on 14 September 2016 and the intervener’s letter lodged at the Court Registry on 16 September 2016, the parties all stating that they would not be present at the hearing,

having decided to rule on the action without an oral part of the procedure, pursuant to Article 108(2) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 19 July 2012, the applicant, Clover Canyon, filed an application for an international registration designating the European Union 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 CLOVER CANYON.

3        The goods in respect of which registration was sought are in 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 correspond to the following description: ‘Clothing, namely, tops, bottoms, shirts, pants, sweaters, headwear, shorts, swimwear, lingerie, underwear, jackets, coats, wraps, dresses, skirts, scarves’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 138/2012 of 23 July 2012.

5        On 14 March 2013, the intervener, Kaipa Sportswear, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.

6        The opposition was based on the earlier German word mark CANYON, registered under No 976036, designating goods in Class 25 corresponding to the following description: ‘Woven, weft-knitted and warp-knitted clothing’.

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        On 26 September 2014, the Opposition Division upheld the opposition and refused the application for international registration designating the European Union in respect of all the goods referred to in paragraph 3 above.

9        On 26 November 2014, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

10      By decision of 4 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal considered, in essence, that, having regard to the identical nature of the goods, the visual, phonetic and conceptual similarity of the signs at issue on account of their common element ‘canyon’ and the average distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO or the intervener to pay the costs, including those relating to the appeal proceedings.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

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

14      The applicant contests the Board of Appeal’s assessment that there is a likelihood of confusion between the marks at issue, in particular on the basis of an allegedly incorrect assessment of the similarity of the signs at issue because of their common element ‘canyon’, without any account having being taken of the word ‘clover’ contained in the mark applied for.

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

 Preliminary observations

16      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 is 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.

17      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).

18      In that regard, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, so that 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 45).

 The relevant public

19      In paragraphs 20 to 22 of the contested decision, the Board of Appeal found that the goods at issue were targeted at the general public in Germany, where the earlier mark was registered. In addition, the Board of Appeal found that that public had an average level of attention.

20      In the light of the information in the file, that definition of the relevant public and the Board of Appeal’s conclusion regarding its level of attention — which have not indeed been challenged by the parties — must be endorsed.

 The comparison of the goods

21      The Board of Appeal stated, in paragraph 25 of the contested decision, that the goods covered by the mark applied for were all clothing items in Class 25 and that, therefore, they were identical to those designated by the earlier mark.

22      It must be held that the Board of Appeal was fully entitled to make that finding, which is not indeed challenged by the parties.

 The comparison of the signs

23      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).

24      In the present case, the Board of Appeal found, in paragraphs 29 to 31 of the contested decision, that the word mark applied for consisted of two words, ‘clover’ and ‘canyon’, whereas the earlier German word mark consisted of a single word ‘canyon’. However, the Board of Appeal noted that the earlier mark was completely reproduced in the mark applied for, which may indicate that the two trade marks are similar. It also stated that although the consumer normally attaches more importance to the first part of the words, that consideration cannot apply in every case.

25      In that regard, the Board of Appeal’s assessment of the three types of similarity must be considered. It should, however, be noted at the outset that the applicant’s argument relates primarily to the specific nature of the mark applied for as compared against the earlier mark, deriving from the word ‘clover’, which, it is claimed, is the element of the mark applied for which catches the relevant public’s attention the most since it is placed at the beginning of the mark in question and is not understood by that public.

 The visual comparison of the signs at issue

26      As regards the visual comparison, the Board of Appeal found, in paragraph 32 of the contested decision, that the signs at issue were visually similar to an average degree because of their common element ‘canyon’.

27      The applicant submits that since the mark applied for is composed of two words and twelve letters, while the earlier mark consists only of a single word and six letters, the visual dissimilarities between the two signs are obvious. Moreover, as the additional word ‘clover’ in the mark applied for is at the beginning of that mark, the relevant public would pay more attention to that word.

28      It must be noted, as EUIPO and the intervener rightly state, that although the mark applied for is composed of two words and contains twelve letters, whereas the earlier mark comprises only a single word of six letters, the second word of the mark applied for is identical to the earlier mark. Consequently, the signs at issue contain the same six letters in the same order since the earlier mark is fully reproduced in the mark applied for.

29      In that regard, it is to be noted that the presence in each of the marks of several letters in the same order may be of some importance in the assessment of the visual similarity between the signs at issue (see judgment of 12 May 2016, Red Lemon v EUIPO — Lidl Stiftung (ABTRONIC), T‑643/14, not published, EU:T:2016:294, paragraph 35 and the case-law cited).

30      In addition, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 26 and the case-law cited).

31      Furthermore, while it has been held, as the Board of Appeal notes in paragraph 31 of the contested decision, that the consumer normally attaches more importance to the first part of a word mark than the subsequent parts (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65), it has also been held that that consideration does not hold true in all cases (see judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70 and the case-law cited).

32      In any event, the fact that the first element of the mark applied for is the element that is distinct from the earlier mark cannot call in question the application of the principle that the assessment of the similarity of signs must take account of the overall impression created by them (see judgment of 8 September 2010, Quinta do Portal v OHIM — Vallegre (PORTO ALLEGRE), T‑369/09, not published, EU:T:2010:362, paragraph 22 and the case-law cited). However, contrary to the applicant’s claims, the fact that the signs differ because of the word ‘clover’, which is the first element of the mark applied for, is insufficient to counteract all of the visual similarity produced by the six-letter word ‘canyon’ comprising the second element of the mark applied for and the earlier mark in its entirety (see, to that effect, judgment of 8 September 2010, PORTO ALLEGRE, T‑369/09, not published, EU:T:2010:362, paragraph 26).

33      The Board of Appeal was, therefore, fully entitled to find that the signs at issue had an average degree of visual similarity.

 The phonetic comparison of the signs at issue.

34      As regards the phonetic comparison, the Board of Appeal found, in paragraph 33 of the contested decision, that the two signs were phonetically similar to an average degree because their common element is pronounced identically, notwithstanding the additional word in the mark applied for.

35      The applicant submits that the signs at issue differ on account of their number of syllables, the earlier mark comprising two syllables, whereas the mark applied for has four, which makes that mark twice as long. In addition, the applicant maintains that when the mark applied for is pronounced the accent is placed on its first word ‘clover’ which is pronounced in a hollow fashion because of the long vowel ‘o’, while the element ‘canyon’ is pronounced more smoothly.

36      It must be stated that the Board of Appeal acknowledged the phonetic difference between the signs due to the pronunciation of the first element of the mark applied for, ‘clover’, by holding that the relevant public would pronounce that element as ‘klo:ver’. However, it rightly found that because of the pronunciation of their common element ‘canyon’ which is identical, the signs at issue were phonetically similar. In the light of the overall impression given by the signs at issue, the difference arising from the pronunciation of the two syllables of the first element of the mark applied for was not sufficient to offset all of the phonetic similarity arising from the identical pronunciation of the common syllables that comprised the earlier mark and constituted the second element of the mark applied for (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 123).

37      The Board of Appeal was, therefore, right to find that the signs at issue were phonetically similar to an average degree.

 The conceptual comparison of the signs at issue

38      As regards the conceptual comparison of the signs, the Board of Appeal stated, in paragraph 34 of the contested decision, that the word ‘canyon’ would be understood by the general public in Germany as referring to a deep gorge typically one with a river flowing through it, as found in North America. In particular, the Board of Appeal noted that many German consumers would know, for example, the Grand Canyon in Arizona (United States). On the other hand, the Board of Appeal considers that the average German consumer would not understand the English word ‘clover’, a leguminous plant generally having trifoliate leaves. The Board of Appeal concluded from this that the signs were conceptually similar to the extent that both signs referred to the concept of a canyon.

39      The applicant acknowledges that the relevant public will not be able to understand the English word ‘clover’, although the word ‘canyon’ will be well known to it. In the applicant’s view, the mark applied for has no clear meaning for the relevant public where its two words are presented together, whereas the relevant public would know the meaning of the earlier mark. That would exclude any conceptual similarity between the signs at issue.

40      The applicant’s reasoning cannot be accepted. The fact that the element ‘clover’ has no clear meaning for the relevant public does not imply that the mark applied for, considered in its entirety, would have no meaning. On the contrary, it is precisely because the element ‘clover’ is not known by the relevant public that it will more easily retain the element whose meaning it does know, ‘canyon’. As EUIPO and the intervener correctly note, both signs refer to the concept of a canyon. Since the signs at issue were composed of the identical element ‘canyon’ and the additional element ‘clover’ in the mark applied for did not convey any concept that the relevant public could identify, the Board of Appeal was fully entitled to find that the signs at issue had to be considered conceptually similar.

41      In the light of the foregoing, the Board of Appeal’s conclusion that the signs at issue were visually, phonetically and conceptually similar to an average degree, because of the common word ‘canyon’, must be endorsed.

 The likelihood of confusion

42      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 29 April 2015, Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 66 and the case-law cited).

43      The relevant factors mentioned in paragraph 42 above also include the distinctive character of the earlier trade mark, whether this derives from the inherent qualities of that mark or its reputation. However, even in the case of an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between the signs at issue (see judgment of 29 April 2015, HostelTouristWorld.com, T‑566/13, not published, EU:T:2015:239, paragraph 67 and the case-law cited).

–       The earlier mark’s distinctiveness

44      In paragraphs 36 to 38 of the contested decision, the Board of Appeal found that, from the relevant public’s perspective, the earlier mark enjoyed an average degree of inherent distinctiveness for the clothing articles it designates.

45      In that regard, the Board of Appeal found, in paragraphs 39 and 40 of the contested decision, that there was no evidence to substantiate the argument that the relevant public would associate the word ‘canyon’ with the sporting activity of canyoning. In the Board of Appeal’s view, even assuming that part of the relevant public associates the word ‘canyon’ with such an activity, there would be no link between that activity and the goods designated by the earlier mark, namely, everyday clothing items. It is, therefore, unlikely that, when faced with the earlier mark, the average German clothing consumer will think that it designates items of clothing related to the extreme sporting activity of canyoning.

46      The applicant submits that the word ‘canyon’ is associated by the relevant public with outdoor activities such as hiking or canyoning and, therefore, also with the clothes that are worn for such activities. As a result, according to the applicant, the earlier mark has no or at very most low distinctiveness, whereas the mark applied for, incorporating the word ‘clover’, which does not convey any connection with the designated goods, enjoys a high degree of distinctiveness.

47      First of all, it is necessary to recall the case-law cited in paragraph 43 above, in accordance with which, for the purposes of examining the likelihood of confusion, the distinctive character of the earlier mark must be examined. Consequently, the applicant’s arguments relating to the distinctive character of the mark applied for are irrelevant.

48      Next, it must be reiterated, as has been stated in paragraphs 38 and 39 above, that the parties agree with the Board of Appeal’s finding that the word ‘canyon’ is understood by the general public in Germany as referring to a deep gorge through which a river typically flows. However, in the light of the documents in the case, the Board of Appeal was fully entitled to find that it had not been proved, on the basis of the single extract from an electronic dictionary submitted by the applicant, that the original English word ‘canyoning’ would necessarily be recognised by the general public in Germany as referring to an extreme sporting activity practised in canyons and that that public would associate the word ‘canyon’ with that activity. In that regard, the Board of Appeal is justified, as it did in paragraph 41 of the contested decision, in distinguishing the circumstances of the present case from those relevant in the case giving rise to the judgment of 16 May 2007, ALLTREK (T‑158/05, not published, EU:T:2007:143).

49      Lastly, it must be pointed out, as stated in paragraph 6 above, that the opposition was based on all the goods designated by the earlier mark, as registered, which include all types of clothing, not only those intended for sporting activities. Consequently, in the light of the documents in the case, the Board of Appeal was fully entitled to find that, even assuming that part of the relevant public may be able to associate the word ‘canyon’ with canyoning activities, it had not been proved that when faced with the earlier mark, that part of the public would think that the items of clothing designated by it are related to the extreme sporting activity of canyoning.

50      Accordingly, the Board of Appeal was entitled to find that the earlier mark enjoys an average degree of inherent distinctiveness for the goods it designates.

–       The global assessment of the likelihood of confusion

51      In paragraphs 43 to 48 of the contested decision, the Board of Appeal reiterated that the marks designated identical goods and that the two signs at issue were similar to an average degree. The Board of Appeal also noted that the two marks included the element ‘canyon’, which comprised the entirety of the earlier mark and which, notwithstanding the additional element ‘clover’, had an independent distinctive role in the mark applied for. In addition, the Board of Appeal stated that it is common in the clothing sector for the same mark to be configured in various different ways and for the same clothing manufacturer to use sub-brands, in order to distinguish his or her various lines from one another. Accordingly, the Board of Appeal found that it was conceivable that the relevant public may regard the clothing designated by the mark CLOVER CANYON as a specific product line coming from the same manufacturer marketing goods designated by the mark CANYON.

52      The applicant argues, in essence, that the Board of Appeal incorrectly examined the overall impression produced by the signs at issue since it did not take into account the element ‘clover’ in the mark applied for, which is highly distinctive since it has no meaning for the relevant public. However, the common element in both marks, ‘canyon’, which has no distinctive character or at most a weak distinctive character, has no independent distinctive role in the mark applied for.

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

54      In that regard, it must be reiterated, first of all, that the Board of Appeal is justified in finding that the earlier mark has an average degree of inherent distinctiveness for the relevant public (see paragraphs 47 to 50 above).

55      Similarly, the Court points out that although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even if, as the applicant itself concedes, the earlier mark was only of weak distinctive character, in the case of a mark applied for which constitutes a partial reproduction of the earlier mark, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods covered (see, to that effect, judgment of 16 March 2005, FLEXI AIR, T‑112/03, EU:T:2005:102, paragraph 61), as is the case here.

56      In addition, it must be reiterated that the element ‘canyon’ is identical for the two signs at issue and that the additional element ‘clover’ in the mark applied for does not convey any notion which may be identified by the relevant public (see paragraph 40 above). Contrary to the applicant’s claims, the fact that the signs at issue differ as a result of the additional element in the mark applied for, even if that element has no meaning for the relevant public, is insufficient to counteract the visual and phonetic similarities created by the element ‘canyon’, common to both signs, and their conceptual similarity, precisely because that element refers to the same concept of a deep gorge through which a river typically flows.

57      It follows that, overall, having regard to the fact the relevant public is composed of the average consumer belonging to the general public with an average level of attention, the goods designated by the marks at issue are identical, the signs at issue are similar and the earlier mark enjoys an average degree of distinctiveness for the goods it designates, the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

58      Since the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded, the head of claim seeking annulment of the contested decision must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

59      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.

60      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Clover Canyon, Inc. to pay the costs.

Delivered in open court in Luxembourg on 20 October 2016.

[Signatures]

* Language of the case: English.

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