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

Provisional text

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

6 April 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark Policolor — Earlier EU figurative mark ProfiColor — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009)

In Case T‑178/16,

Policolor SA, established in Bucharest (Romania), represented by M. Comanescu, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

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

CWS-Lackfabrik Conrad W. Schmidt GmbH & Co. KG, established in Düren-Merken (Germany),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 29 January 2016 (Case R 346/2015-1), relating to opposition proceedings between CWS-Lackfabrik Conrad W. Schmidt and Policolor,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 April 2016,

having regard to the response lodged at the Court Registry on 25 July 2016,

having regard to the letter of the applicant lodged at the Court Registry on 8 December 2016 and EUIPO’s observations regarding that letter lodged at the Court Registry on 16 January 2017,

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 20 September 2011, the applicant, Policolor SA, 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 following figurative sign in blue and white:

3        The goods in respect of which registration was sought are in, inter alia, Classes 2 and 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; none of the aforementioned goods for the electronic industry’;

–        Class 3: ‘Cleaning, polishing, scouring and abrasive preparations’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 239/2011 of 19 December 2011.

5        On 19 March 2012, CWS-Lackfabrik Conrad W. Schmidt GmbH & Co. KG 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 paragraph 3 above.

6        The opposition was based on the EU figurative mark filed on 8 November 2006 and registered on 15 May 2011 under the number 5482104, reproduced below:

7        The earlier mark covered, inter alia, goods and services in Classes 2 and 40, corresponding, for each of those classes, to the following description:

–        Class 2: ‘Paints, varnishes, lacquers; metals in foil and powder form for painters, decorators, printers and artists’;

–        Class 40: ‘Treatment of materials, mixing paints and lacquers using colour-mixing systems; consultancy with regard to paints and lacquers’.

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

9        On 16 December 2014, the Opposition Division upheld the opposition in respect of ‘paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; metals in foil and powder form for painters, decorators, printers and artists; none of the aforementioned goods for the electronic industry’ in Class 2. It rejected the opposition in respect of the ‘raw natural resins’ in that class and the goods in Class 3.

10      On 9 February 2015, the applicant 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 that division had upheld the opposition.

11      By decision of 29 January 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it found, first of all, that the relevant public consisted both of average consumers and of professionals in the field of the goods at issue and thus that the level of attention of the relevant public was average to high and that the relevant territory was that of the European Union. Secondly, it found that there was a high degree of similarity between the mark applied for and the earlier mark. Lastly, it found that the goods at issue were identical or similar. It concluded that there was a likelihood of confusion.

 Forms of order sought

12      The applicant claims that the Court should:

–        alter the contested decision in its entirety;

–        in consequence, annul the contested decision;

–        annul the Opposition Division’s decision;

–        reject the opposition brought against the mark applied for and allow that mark to proceed to registration;

–        order EUIPO and the other party before the Board of Appeal to pay the costs, including those incurred in the proceedings before the Board of Appeal.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant relies, in essence, on three pleas in law, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009, infringement of Article 75 of that regulation and that the earlier mark is not valid.

15      It is appropriate to examine the third plea first.

 The third plea, alleging that the earlier mark is not valid

16      By letter lodged at the Court Registry on 8 December 2016, the applicant informed the Court, first, that it had brought revocation proceedings against the earlier mark in June 2016 and, secondly, that that mark had no longer been in force since 8 November 2016, as the proprietor of that mark had not renewed its registration prior to that date. According to the applicant, given that that proprietor does not wish to maintain the registration of its mark, the Court should rule in its favour and therefore annul the contested decision and reject the opposition.

17      In the letter which it lodged at the Court Registry on 16 January 2017, EUIPO disputes the applicant’s arguments.

18      Article 46 of Regulation No 207/2009 provides that EU trade marks are registered for a period of 10 years from the date of filing of the application and that registration may be renewed in accordance with Article 47 of Regulation No 207/2009.

19      Article 47(3) of Regulation No 207/2009 provides:

‘The request for renewal shall be submitted in the six-month period prior to the expiry of the registration. The basic fee for the renewal, and where appropriate, one or more class fees for each class of goods or services exceeding the first one shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the expiry of registration, provided that an additional fee for late payment of the renewal fee or late submission of the request for renewal is paid within this further period’.

20      The application for registration of the earlier mark was filed on 8 November 2006. The 10-year period, as from that filing date, ended on 8 November 2016.

21      It is common ground that the proprietor of the earlier mark did not submit a request for renewal of the registration of the earlier mark within the six-month period provided for by the first sentence of Article 47(3) of Regulation No 207/2009. However, the applicant itself acknowledges that that proprietor still has the possibility of submitting such a request, and of paying the requisite fees, within the further period of six months referred to in the third sentence of that provision. That further period expires, in the present case, on 8 May 2017. It is only if, by that latter date, it has not made use of that possibility that the registration of the earlier mark may once and for all be regarded as having expired on 8 November 2016 (see, to that effect, judgment of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 21).

22      Furthermore, EUIPO has not yet ruled on the application for revocation relating to the earlier mark, which was submitted after the contested decision had been adopted.

23      In any event, even if it were to appear that the registration of the earlier mark had expired on 8 November 2016 or if EUIPO were to rule that the earlier mark is revoked, that would not have any effect on the present action. It is only as of that date or, in principle, the date on which the application for that revocation was submitted that that mark would no longer have the effects provided for by Regulation No 207/2009 and not in respect of the earlier period with regard to which the contested decision was adopted (see, as regards the non-renewal of an earlier mark, judgment of 15 March 2012, ZYDUS, T‑288/08, not published, EU:T:2012:124, paragraph 22, and, as regards the revocation of an earlier mark, judgment of 4 November 2008, Group Lottuss v OHIM — Ugly (COYOTE UGLY), T‑161/07, not published, EU:T:2008:473, paragraph 50). Consequently, no account can be taken of a possible non-renewal of the earlier mark or of a possible revocation of that mark for the purpose of assessing the legality of the contested decision. The action brought in the present case does indeed relate to an earlier mark which produced effects at the time when that decision was adopted.

24      The third plea must therefore be rejected.

 The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

25      The applicant claims that the Board of Appeal erred in finding that there was a likelihood of confusion.

26      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, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

27      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).

28      It must be pointed out at the outset that the applicant does not dispute either the Board of Appeal’s assessment that the level of attention of the relevant public, since that public consists both of average consumers and of professionals, is average to high or its assessment that, since the earlier mark is an EU trade mark, the relevant territory is that of the European Union. The applicant also does not dispute the Board of Appeal’s assessment that the goods at issue are identical or similar.

29      However, the applicant disputes the Board of Appeal’s assessments relating to the similarity of the signs at issue and the likelihood of confusion.

 The comparison of the signs at issue

30      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).

31      In the present case, the marks at issue are two figurative marks. The mark applied for consists of the word element ‘policolor’ which is written in a white font on a blue rectangle. The earlier mark consists of the word element ‘proficolor’ and of a sphere with lines running across it, which is situated in the background of that word element.

32      The applicant submits that the term ‘color’, which is common to the word elements in the signs at issue, is weakly distinctive and that those signs are visually and phonetically different and similar to a low degree conceptually.

–       The distinctive character of the term ‘color’

33      The Board of Appeal found that the term ‘color’ was a term that the majority of the relevant public would recognise immediately because it was part of basic English vocabulary. Furthermore, it took the view that that term was the most dominant or eye-catching element in the signs at issue. It also stated that the majority of the consumers would focus on that term, which was the one which was most familiar to them in English, rather than on the first part of those signs.

34      The applicant does not dispute that the term ‘color’ will be understood by the majority of the relevant public. However, it claims that the Board of Appeal did not analyse the distinctiveness of that term. It submits that the Board of Appeal concluded only that that term was the most dominant or eye-catching element in the signs at issue, without explaining why. According to the applicant, the term in question is descriptive of the goods at issue and is therefore weakly distinctive. It maintains that the attention of the relevant public will therefore be on the differences between those signs, namely the terms ‘poli’ and ‘profi’, particularly because those terms are situated at the beginning of the word element in those signs.

35      It must be pointed out at the outset that, in claiming that the Board of Appeal did not analyse the distinctiveness of the term ‘color’ and did not explain why that term was dominant, the applicant is, in essence, complaining that there was a failure to state reasons on the part of the Board of Appeal. That argument will therefore be examined below, in the context of the second plea.

36      As regards the argument that the term ‘color’ is weakly distinctive, it must be pointed out that the goods at issue are materials for painters, decorators and artists. It must also be pointed out that it is common ground that that term will be understood by the majority of the relevant public. In the light of the nature of the goods at issue, the Board of Appeal should therefore have found that that term was descriptive of those goods and was thus weakly distinctive.

37      Pursuant to the case-law, owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and be remembered by them (see judgment of 17 October 2012, MIP Metro v OHIM — J. C. Ribeiro (MISS B), T‑485/10, not published, EU:T:2012:554, paragraph 27 and the case-law cited).

38      Furthermore, according to the case-law, the consumer normally attaches more importance to the first part of words (see, to that effect, judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 43 and the case-law cited).

39      In the present case, neither the size of the term ‘color’ nor its position in the signs at issue makes it possible to conclude that that term is the most dominant or eye-catching element. The Board of Appeal therefore erred in finding that that was the case. Given that that term is weakly distinctive and is situated in the second part of the word elements in the signs at issue, the applicant is right in claiming that the relevant public will attach more importance to the first parts of the word elements in the signs at issue, namely ‘poli’ and ‘profi’.

40      However, the element ‘color’ is the same size as the elements ‘poli’ and ‘profi’. Furthermore, it contains one letter more than the element ‘poli’ in the mark applied for and the same number of letters as the element ‘profi’ in the earlier mark. It is not therefore negligible and will have to be taken into consideration in comparing the signs at issue from a visual, phonetic and conceptual standpoint.

–       The visual similarity

41      The Board of Appeal found that the signs at issue were visually similar to some extent because they have in common the term ‘color’ at the end of their respective word element and because they also contain the letters ‘p’, ‘o’ and ‘i’ in the first part of their respective word element.

42      The applicant submits that the signs at issue are visually different. It maintains that the mark applied for consists of one word, whereas the earlier mark will, on account of the letter ‘c’ written in upper case, be perceived as consisting of two words. It also maintains that the signs at issue include figurative elements which produce a different impression.

43      In that regard, it must be pointed out, as observed by EUIPO, that the mark applied for and the earlier mark will be perceived as consisting of two words. It is apparent from the case-law that although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 39 and the case-law cited). The term ‘color’, which is common to the signs at issue, will be understood by the majority of the relevant public. Consequently, the majority of the relevant public will break the word element of the mark applied for down into two parts, namely ‘poli’ and ‘color’, and will also break the word element of the earlier mark down into two parts, namely ‘profi’ and ‘color’.

44      As regards the figurative elements of the signs at issue, it must be borne in mind that, where a sign consists of word and figurative elements, the word element of that sign is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited). Furthermore, the colours used in the mark applied for, like the font of the word elements in the signs at issue, are commonplace. In addition, the blue rectangle in the mark applied for and the striped sphere in the earlier mark are situated in the background of the word elements. They will be perceived as essentially decorative elements.

45      The relevant public will therefore pay more attention to the word elements of the signs at issue. Those word elements have the term ‘color’, which is situated in the second parts of the word elements, in common. Furthermore, the first parts of those word elements, namely ‘poli’ and ‘profi’, to which the relevant public will attach most importance, are also visually similar. They have the letters ‘p’, ‘o’ and ‘i’, which are in the same order, in common. In addition, the first letter, ‘p’, of those signs is written in upper case.

46      Consequently, in the light of the similarity of the word elements in the signs at issue and the essentially decorative nature of the figurative elements in those signs, it must be held that there is at least a low degree of visual similarity between those signs.

–       The phonetic similarity

47      The Board of Appeal also found that the signs at issue were phonetically similar to some extent because their pronunciation coincided in the sound of the identical letters in those signs.

48      The applicant submits that the signs at issue are phonetically dissimilar because they consist of a different number of letters and because the pronunciation of those signs is different.

49      It must be pointed out that what is important with regard to the phonetic comparison is not so much the number of letters as the number of syllables in the signs at issue and their overall pronunciation. The word elements in those signs have the same number of syllables. Furthermore, it must be stated that the pronunciation of the word element in the mark applied for, namely ‘policolor’, and that of the word element in the earlier mark, namely ‘proficolor’, are quite similar. The differences in sound in the first parts of the signs at issue, arising out of the pronunciation of the letter ‘l’ in the mark applied for and the pronunciation of the letters ‘r’ and ‘f’ in the earlier mark, are minor.

50      It must therefore be held that there is at least a low degree of phonetic similarity between the signs at issue.

–       The conceptual similarity

51      The Board of Appeal pointed out that the signs at issue have the word ‘color’ in common. It also stated that the concept conveyed by the first part of the mark applied for, namely ‘poli’, which means ‘many or much’ in a number of languages of the European Union, differed from that conveyed by the first part of the earlier mark, namely ‘profi’, which means ‘professional’ in German. It found, however, that that difference was not sufficient to disregard the overall similarity of the signs at issue since that difference would be perceived only by a limited number of consumers.

52      The applicant does not dispute the Board of Appeal’s conclusion that the first part of the earlier mark, namely ‘profi’, means ‘professional’ in German, but stresses that it cannot be excluded that that first part may be perceived as the abbreviation of the word ‘professional’, which is understood by the majority of the relevant public on account of the existence of words that are equivalent to that word in many languages of the European Union. Furthermore, it submits that the first part of the mark applied for, namely ‘poli’, might be perceived by the majority of the relevant public as the plural form of the word ‘pole’. Consequently, according to the applicant, the elements ‘poli’ and ‘profi’ will be associated, by the majority of the relevant public, with different meanings. Lastly, the applicant submits, as regards the part of the public which will not associate those elements with any particular meaning, that the conceptual similarity based on the element in common ‘color’ is low in degree. It maintains that the Board of Appeal thus erred in finding that the signs at issue were conceptually similar to a high degree.

53      As regards the first parts of the signs at issue, the applicant’s arguments must be rejected. It is very unlikely that the element ‘profi’ will be understood by a significant part of the relevant public as referring to the word ‘professional’ given that that word begins with the group of letters ‘profe’ and not with the group of letters ‘profi’ in most of the languages of the European Union as is apparent from the annex provided by the applicant itself. It is also very unlikely that, associated with the word ‘color’, the first part of the mark applied for, namely ‘poli’, will be understood as referring to the plural of the word ‘pole’. Furthermore, that word is rarely used in the plural. The Board of Appeal’s assessment that the conceptual difference resulting from the elements ‘poli’ and ‘profi’ will be perceived only by a limited number of consumers in the European Union must therefore be confirmed.

54      For a significant part of the relevant public, the element ‘color’ in the signs at issue will be associated with the concept of ‘colour’. However, since that element is weakly distinctive, and will, in the present case, attract the relevant public’s attention less than the elements ‘poli’ and ‘profi’, it must be held that there is only an average degree of conceptual similarity between those signs.

55      Furthermore, as regards the previous decisions of EUIPO relied on by the applicant, it is sufficient to point out that the decisions concerning the registration or the protection of a sign as an EU trade mark which the Boards of Appeal take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see judgment of 12 April 2016, Auyantepui Corp. v EUIPO — Magda Rose (Mr Jones), T‑8/15, not published, EU:T:2016:213, paragraph 48 and the case-law cited). In any event, the decisions relied on by the applicant concern marks which are different from the signs at issue in the present case.

–       The global assessment of the similarity of the signs at issue

56      The Board of Appeal found that the conceptual dissimilarity between the first parts of the signs at issue, namely ‘poli’ and ‘profi’, was minor inasmuch as those signs coincided in the element ‘color’ and in their overall visual and phonetic impression. It found that there was a high degree of similarity between the mark applied for and the earlier mark.

57      It follows from all of the foregoing that the signs at issue are visually, phonetically and conceptually similar on account of the element ‘color’, which they have in common. That element, which is weakly distinctive, is of less importance in the assessment of the similarity of the signs at issue than the first parts of the word elements in those signs, namely ‘poli’ and ‘profi’. However, there are also visual and phonetic similarities between those first parts and those first parts do not convey any concept for the majority of the relevant public.

58      It must therefore be held that there is at least a low degree of similarity between the signs at issue.

59      However, in the light of the differences between the signs at issue, the Board of Appeal erred in finding that there was a high degree of similarity between those signs. The consequences of that error will be examined in assessing the likelihood of confusion.

 The likelihood of confusion

60      A 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 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

61      In the present case, the Board of Appeal found that, since the goods at issue were in part similar and in part identical and the signs at issue were similar to a high degree, there was a likelihood of confusion.

62      Furthermore, in response to the applicant’s argument alleging that there was no likelihood of confusion on account of the coexistence of the international figurative marks POLICOLOR with the earlier mark, the Board of Appeal pointed out that the international trade marks were registered in only eight of the Member States of the European Union, which is less than one third of all the EU Member States. It added that the territories of the specific Member States in which the mark applied for had been used, namely Bulgaria, the Czech Republic, Estonia, Greece, Hungary, Romania, Slovenia and Slovakia, constituted a very small percentage of the overall market.

63      The applicant maintains that the Board of Appeal should have concluded that there was no likelihood of confusion in the light of the sufficiently dissimilar overall impression of the signs at issue and the average to high level of attention of the relevant public. It also submits that it is not apparent from either the case-law or the practice of EUIPO that the territory in which the marks at issue must be shown to coexist must be significant.

64      In that regard, it must be borne in mind that, as regards the assessment of the likelihood of confusion, the section of the public which has the lowest level of attention must be taken into consideration (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).

65      Consequently, since the relevant public consists of, inter alia, consumers with an average level of attention (see paragraph 28 above), the goods at issue are identical or similar and the signs at issue are similar to at least a low degree, the Board of Appeal did not err in finding that there was a likelihood of confusion, even though it erred in concluding that the signs at issue were highly similar.

66      As regards the applicant’s argument relating to the coexistence of the marks at issue, it must be borne in mind that, according to the case-law, it cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82).

67      It is also apparent from the case-law that, as regards the geographic scope of coexistence, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark and the coexistence of that earlier mark with a trade mark identical to the mark applied for is relied on in support of there being no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union. If the likelihood of confusion exists potentially throughout the European Union owing to the scope of the earlier trade mark, the absence of any likelihood of confusion as a result of the coexistence of marks identical to the marks at issue must, in turn, be proved throughout the European Union (see judgment of 23 October 2015, Vimeo v OHIM — PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799, paragraph 51 and the case-law cited).

68      In view of that case-law, the Board of Appeal was right in rejecting the applicant’s argument relating to the coexistence of the marks at issue on the ground that the proof of use of the international trade marks POLICOLOR in the countries listed in paragraph 62 above, which do not represent a significant part of the territory of the European Union, was not sufficient.

69      Consequently, the first plea in law put forward by the applicant must be rejected.

 The second plea, alleging infringement of Article 75 of Regulation No 207/2009

70      The applicant claims that the Board of Appeal did not analyse the distinctiveness of the signs at issue, especially the distinctiveness of the element ‘color’, which they have in common. It submits that the Board of Appeal concluded only that that element was the most dominant or eye-catching element in those signs, without explaining why. It also maintains that the Board of Appeal did not explain why, having regard to the level of attention of the relevant public, there was a likelihood of confusion between the signs at issue despite the weak distinctiveness of the element ‘color’ and the differences between the first parts of those signs.

71      EUIPO disputes the applicant’s arguments.

72      The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. 

73      It is apparent from settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (see judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73 and the case-law cited).

74      It is also apparent from settled case-law that the obligation to state reasons is an essential procedural requirement and distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 28 January 2016, Novomatic v OHIM — Simba Toys (African SIMBA), T‑687/14, not published, EU:T:2016:37, paragraph 22 and the case-law cited).

75      It is true that, in the contested decision, the Board of Appeal did not expressly rule on the distinctiveness of the element ‘color’, which is common to the signs at issue. However, it is apparent from paragraph 7 of the contested decision, which sets out the applicant’s arguments, that the applicant invoked the weak distinctiveness of that element only to lead the Board of Appeal to conclude that the relevant public would focus on the first parts of the word elements in the signs at issue, namely ‘poli’ and ‘profi’.

76      By stating, in paragraphs 29 and 30 of the contested decision, that the element ‘color’, which is common to the signs at issue, was the most dominant or eye-catching element in those signs and that the majority of the consumers would focus on that element, which is the one which is most familiar to them in English, rather than on the first parts of the word elements in the signs at issue, the Board of Appeal clearly rejected the applicant’s arguments relating to the weak distinctiveness of the element ‘color’. It also clearly explained why it took the view that the element in question was the most dominant element.

77      Furthermore, it is apparent from the contested decision that the Board of Appeal referred, in its analysis of whether the signs at issue were visually, phonetically and conceptually similar, not only to the element ‘color’, which is common to the word elements in those signs, but also to the first parts of those word elements, namely ‘poli’ and ‘profi’, and to the figurative elements in those signs (see paragraphs 18 to 21 of the contested decision). As a result of the overall assessment of the differences and similarities between the signs in question, it found that those signs were highly similar.

78      Lastly, the Board of Appeal took the view, after assessing whether the goods at issue were similar and finding them to be identical or similar, that, in the light of the identity or similarity of the goods at issue and the high degree of similarity between the signs at issue, there was a likelihood of confusion.

79      The Board of Appeal thus provided a sufficient statement of reasons for its finding relating to the existence of a likelihood of confusion.

80      Consequently, the applicant’s second plea must be rejected.

81      As none of the pleas put forward by the applicant in support of the form of order which it seeks is well founded, the action must be dismissed in its entirety.

 Costs

82      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.

83      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 (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Policolor SA to pay the costs.

Delivered in open court in Luxembourg on 6 April 2017.

*      Language of the case: English.

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