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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

8 November 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark THOMAS MARSHALL GARMENTS OF LEGENDS — Earlier EU word and figurative marks MARSHALL and Marshall AMPLIFICATION — Article 42(2) and (3) of Regulation (EC) No 207/2009 (now Article 47(2) and (3) of Regulation (EU) 2017/1001) — Admissibility of the request for proof of the earlier marks’ genuine use — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑271/16,

Yusuf Pempe, residing in Créteil (France), represented by A. Vivès‑Albertini, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

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

Marshall Amplification plc, established in Milton Keynes (United Kingdom),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 March 2016 (Case R 376/2015-5), relating to opposition proceedings between Marshall Amplification and Mr Pempe,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 30 May 2016,

having regard to the response lodged at the Court Registry on 5 September 2016,

having regard to the fact that no request for a hearing was submitted by the 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 13 February 2013, the applicant, Yusuf Pempe, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following sign:

3        The goods and services in respect of which registration was sought are in, inter alia, Classes 9, 16, 18 and 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, for each of those classes, to the following description:

–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’;

–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;

–        Class 25: ‘Clothing, footwear, headgear’.

4        The EU trade mark application was published in European Union Trade Marks Bulletin No 281/2013 of 30 April 2013.

5        On 29 July 2013, Marshall Amplification plc filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).

6        The opposition was based, inter alia, on the following earlier EU trade marks (together ‘the earlier marks’):

–        EU figurative mark No 5 967 732 (‘the earlier figurative mark’), applied for on 4 June 2007 and registered on 27 May 2010 for the sign:

specifying the following goods:

–        Class 16: ‘Printed matter; books, magazines, newsletters and leaflets; calendars, posters; decalcomanias; photographs; stationery; pens and pencils’;

–        Class 18: ‘Bags; backpacks, beach bags, rucksacks, handbags, shoulder bags, suitcases, briefcases; purses and wallets; belts; umbrellas’;

–        Class 25: ‘Clothing, footwear, headgear; t-shirts, polo shirts, shirts, jogging pants, sweat pants, sweatshirts, hooded sweatshirts, tracksuits, fleeces, jackets, vests; baseball caps, beanies; sports shoes, sneakers; sweat bands; belts’.

–        EU word mark No 10 357 201 MARSHALL (‘the earlier word mark’), registered on 10 April 2012, specifying the following goods:

–        Class 9: ‘Electrical and electronic audio apparatus and instruments; sound recording, manipulating, amplifying, reproducing and transmitting apparatus; electrical and electronic apparatus and instruments, all for audio amplification, for the graphic equalisation of sound signal frequencies, for mixing sound tones, altering sound tones, or effecting echo, delay and other effects; sound amplifiers; amplifiers for sound reproducing equipment and for use with musical instruments; amplifiers complete with loudspeakers and cabinets; valve and digital guitar amplifiers; sound reverberation units; sound mixing, processing and synthesising apparatus; sound mixers; sound-mixer units; microphones, headphones; loudspeakers; horn-type speakers; loudspeaker cabinets; cases for loudspeakers; foot pedals and foot switches for processing, amplifying or distorting sound; foot switches and effects pedals for use with electrical musical instruments; sustain pedals, expression pedals, delay pedals, all being electronic effects pedals; radios; MP3 players; portable and handheld digital electronic devices for recording, organising, transmitting and processing audio, data and video files and electronic accessories therefor; docking stations; stands for MP3 players; stereo amplifier and speaker base stations; CD, DVD and MP3 cases; computer games; interactive DVD games; computer software for recording sound; computer software for use with any of the aforesaid goods; parts and fittings for the aforesaid goods; mousemats; magnets, refrigerator magnets; calculators’;

–        Class 11: ‘Torches’.

7        The opposition was also based, inter alia, on earlier United Kingdom mark No 2 508 163, registered on 15 May 2009, for the sign:

specifying the following goods:

–        Class 9: ‘Electrical and electronic audio apparatus; sound amplifiers; valve and digital guitar amplifiers; sound reverberation units; sound mixing, processing and synthesising apparatus; microphones, headphones; loudspeakers; horn-type speakers, loudspeaker cabinets; foot pedals and foot switches for processing, amplifying or distorting sound; foot switches and effects pedals for use with electrical musical instruments; sustain pedals, expression pedals, delay pedals, all being electronic effects pedals; radios; MP3 players; portable and handheld digital electronic devices for recording, organising, transmitting and processing audio, data and video files and electronic accessories therefor; docking stations; stands for MP3 players; stereo amplifier and speaker base stations; CD, DVD and MP3 cases; computer games; interactive DVD games; computer software for recording sound; computer software for use with any of the aforesaid goods; parts and fittings for the aforesaid goods’.

8        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).

9        On 12 December 2014, the Opposition Division upheld the opposition in part in respect of the following goods:

–        Class 9: ‘photographic, cinematographic, optical and teaching apparatus and instruments; apparatus and instruments for conducting, accumulating electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; cash registers, calculating machines, data processing equipment, computers; computer software’;

–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; office requisites (except furniture); instructional and teaching material (except apparatus);’

–        Class 18: ‘Goods made of these materials and not included in other classes [leather and imitations of leather]; trunks and travelling bags; umbrellas and parasols’;

–        Class 25: ‘Clothing, footwear, headgear.’

10      The Opposition Division rejected the opposition in so far as it was based upon Article 8(4) and (5) of Regulation No 207/2009, on the basis that no proof had been supplied in support of those grounds.

11      On 11 February 2015, 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 (now Articles 66 to 71 of Regulation 2017/1001).

12      By decision of 16 March 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal, except with regard to the following goods in Class 9: ‘apparatus and instruments for conducting, accumulating, electricity’ and ‘cash registers’. On the basis of procedural economy, the Board of Appeal focused on the earlier marks mentioned in paragraph 6 above (paragraph 21 of the contested decision). It found, first, that the relevant territory was the European Union, although the comparison of the signs at issue was undertaken by the Opposition Division, for the purposes of procedural economy, by focusing on the English-speaking part of the relevant public (paragraph 48 of the contested decision). Secondly, the Board of Appeal confirmed that the goods and services covered by the marks at issue were similar or identical, except as regards ‘apparatus and instruments for conducting, accumulating, electricity’ and ‘cash registers’ of the mark applied for, which it considered were different from the goods designated by the earlier marks (paragraphs 26 and 37 of the contested decision). Thirdly, it found that the marks at issue were visually, phonetically and conceptually similar (paragraphs 50 to 54 and 64 to 69 of the contested decision). Fourthly, it found that the earlier marks were inherently distinctive for the goods covered in Classes 9, 16, 18 and 25 (paragraphs 55 to 59 of the contested decision). It concluded from this that there was a likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009, except in respect of the goods designated by the mark applied for which it considered were different from those designated by the earlier marks (paragraphs 60 to 73 of the contested decision).

 Forms of order sought

13      The applicant claims, in essence, that the Court should:

–        annul the contested decision;

–        reject the opposition in part;

–        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 two pleas in law, alleging, in essence, the infringement of the first subparagraph of Article 15(1), and of Article 42(2) and (3) of Regulation No 207/2009 (now the first subparagraph of Article 18(1), and Article 47(2) and (3) of Regulation 2017/1001) concerning the admissibility of his request for proof of genuine use of some of the opponent’s earlier marks, and the infringement of Article 8(1)(b) of that regulation, concerning the existence of a likelihood of confusion.

 The first plea in law, alleging an infringement of the first subparagraph of Article 15(1), and of Article 42(2) and (3) of Regulation No 207/2009

16      In the context of the first plea in law, the applicant submits, in essence, that the Opposition Division and the Board of Appeal misinterpreted the first subparagraph of Article 15(1), and Article 42(2) and (3) of Regulation No 207/2009, in finding that his request for proof of genuine use in respect of some the opponent’s earlier marks was inadmissible, whereas more than five years had elapsed between, first, the registration of those marks and, secondly, the Opposition Division’s decision and the Board of Appeal’s decision. He refers to the earlier United Kingdom mark No 2 508 163, registered on 15 May 2009, and the earlier figurative mark.

17      EUIPO disputes that argument.

18      In accordance with the first subparagraph of Article 15(1) of Regulation No 207/2009, if within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non‑use.

19      Article 42(2) of Regulation No 207/2009 reads as follows:

‘if the applicant so requests, the proprietor of an earlier [EU] trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the [EU] trade mark application, the earlier [EU] trade mark has been put to genuine use in the [European Union] in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier [EU] trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected …’.

20      Article 42(3) of Regulation No 207/2009 provides that the provision mentioned in paragraph 19 above is also to apply to earlier national trade marks referred to in Article 8(2)(a) of that regulation (now Article 8(2)(a) of Regulation 2017/1001).

21      It should be noted, first of all, that Article 42(2) of Regulation No 207/2009 lays down the opponent’s obligation to furnish, if the applicant so requests, proof of genuine use of the earlier mark, only in so far as at the date of publication of the EU trade mark application the earlier mark was registered for at least five years. Consequently, in establishing that rule, the EU legislature expressly set a criterion concerning the reference date for determining the admissibility of requests for proof of use, namely, the date of publication of the trade mark application, and the possible opening of opposition proceedings cannot have any bearing on that reference date. In addition, there is no contradiction between Article 42(2) of Regulation No 207/2009 and the purpose of compulsory usage of a mark, because the parties have other legal remedies to protect themselves from an opposition based on a mark which is liable to be revoked for non-use during the opposition proceedings. In the case of an EU trade mark, an application for revocation for non-use may be lodged at any time, including during the opposition proceedings against that mark. In the case of a national mark, the application would comply with the national provisions which the Members States were required to adopt (see, to that effect, order of 30 May 2013, Wohlfahrt v OHIM, C‑357/12 P, not published, EU:C:2013:356, paragraphs 30 to 32, and judgment of 15 July 2015, TVR Automotive v OHIM — TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraph 33).

22      In the present case, the five-year period at issue expired on 15 May 2014 as regards the earlier United Kingdom mark registered on 15 May 2009 under No 2 508 163, and on 27 May 2015 as regards the earlier figurative mark, so that it was still underway when the EU trade mark application was published on 30 April 2013. Consequently, the Board of Appeal was fully entitled to uphold the Opposition Division’s reasoning, stating that, for those two earlier marks, the fact that the five-year period came to an end during the course of the proceedings before EUIPO was irrelevant since that period had not yet come to a close when the EU trade mark application was published.

23      It is apparent from the foregoing that the first plea in law must be rejected. There is, therefore, no longer any need to rule on the application that the opponent be ordered to furnish proof of use of those marks.

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

24      In the context of the second plea in law, the applicant criticises, in essence, the Board of Appeal’s findings in relation to the perception of the marks at issue, the similarity of the signs, the similarity of the goods and the distinctive character of the earlier marks.

25      EUIPO disputes the applicant’s arguments.

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, 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.

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      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, 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 76 and the case-law cited).

29      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

30      In the present case, like the Opposition Division, the Board of Appeal found that, as regards normal mass circulation consumer goods, goods attracting due consideration and goods that professionals might use, the relevant public’s level of attention would vary from average to high. It stated that relevant territory was the European Union as a whole, although, for the purposes of procedural economy, the Opposition Division focused on the English-speaking part of that relevant public. That definition must be endorsed. Moreover, it is not disputed by the parties.

 The comparison of the signs

31      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 (judgment of 16 May 2007, Merant v OHIM — Focus Magazin verlag (FOCUS), T‑491/04, not published, EU:T:2007:141, paragraph 45).

32      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). In addition, the average consumer only rarely has the chance to compare the various marks directly, but must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

33      In the present case, the signs to be compared were the following:

34      In paragraphs 51 to 54 and 64 to 69 of the contested decision, the Board of Appeal found that the signs at issue were visually, phonetically and conceptually similar.

35      The applicant criticises, in essence, the assessment of the overall perception of the marks at issue. He submits that the mark applied for is different from the earlier marks, or, at the very least, from the earlier figurative mark, visually, phonetically and conceptually.

–       The overall perception of the marks at issue

36      With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (see judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35 and the case-law cited).

37      For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 27 February 2008, Citigroup v OHIM — Link Interchange Network (WORLDLINK), T‑325/04, not published, EU:T:2008:51, paragraph 66 and the case-law cited).

38      The contested decision must be examined in the light of that case-law.

39      In the present case, the Board of Appeal found, in paragraph 50 of the contested decision, that the earlier marks consisted of (i) the word ‘marshall’ and (ii) the expression ‘marshall amplification’ set against a dark rectangular background. It noted that, as regards the earlier figurative mark, the word ‘marshall’ was written above the word ‘amplification’, ‘amplification’ being considerably smaller. It found that the sign of the mark applied for contained, essentially, the following word elements in blue: the element ‘thomas marshall’, in a fairly standard upper case typeface, and the element ‘garments of legends’ in a much smaller typeface. It stated that on the upper right part of the mark applied for, there was a blue seal of such a small size that its details were hardly visible but for the letters ‘t’ and ‘m’, which appeared to represent a shield. The Board of Appeal found, in paragraphs 52, 53, 64 and 65 of the contested decision, that the dominant element of the earlier marks was the word ‘marshall’, because it was the largest and most eye-catching element. As regards the mark applied for, the Board of Appeal found that the dominant words were ‘thomas’ and ‘marshall’, because they were the most eye-catching visually given their size, position and the fact that they ‘go together’, since they were a first name followed by a surname, with the other elements being of secondary importance. It found, therefore, in essence, that the expression ‘garments of legends’ and the seal in that mark were smaller and would be perceived by the relevant public as the usual promotional fluff and labelling.

40      The applicant complains that the Board of Appeal, in essence, reduced the perception of the marks at issue to their common element, the word ‘marshall’, and neglected the ‘clearly distinctive’ nature of the first name Thomas and of the expression ‘garments of legends’ or of the seal shape in the mark applied for. He emphasises, in that regard, the weakly distinctive character of the element ‘marshall’ in the signs at issue, on the ground that Marshall is a very common surname in the United Kingdom.

41      EUIPO disputes those arguments.

42      In the first place, as regards the applicant’s argument that the Board of Appeal incorrectly limited the perception of the marks at issue to their sole common element, that is the word ‘marshall’, it must be found that that is not apparent from the contested decision.

43      As regards the mark applied for, the Board of Appeal did not attribute greater distinctiveness or dominance to the surname Marshall than to the first name Thomas, but found, in essence, that the two elements were both as distinctive as each other and ‘co-dominant’. That analysis must be upheld, since those word elements are indeed in capital letters, in bold and are above all considerably larger and more eye-catching than the other word and figurative elements of the mark applied for.

44      In addition, the Board of Appeal did not neglect the other elements of the marks at issue, as is apparent in particular from paragraphs 64 and 65 of the contested decision. It explained that those elements were of secondary importance in the consumer’s perception, in particular because of their small size in relation to the dominant elements of those marks. It must be held that the Board of Appeal was fully entitled to find that the word element ‘garments of legends’ was in a much smaller typeface than the word element ‘thomas marshall’ and that it was the usual promotional fluff and hyperbole upon which the consumer would place only limited reliance. In that regard, the applicant simply states that the expression in question is distinctive, but does not set out the reasons therefor, and does not specify the error allegedly made by the Board of Appeal.

45      As regards the seal in the upper right part of the mark applied for, which the Board of Appeal correctly stated was smaller than the other elements of the contested sign, and in which only two initials, ‘t’ and ‘m’, could be distinguished, the applicant fails to show how it would not be perceived as purely decorative, and as a simple label, customary in trade, by way of decoration. The Board of Appeal also correctly found, in essence, that the references ‘thomas and marshall’, ‘5’, ‘9’, ‘*since 1999*’ inserted along the inside of the circle, were barely visible. As regards the initials ‘t’ and ‘m’ appearing together at the centre of the seal, they will be perceived only as a reminder of the initials of the words ‘thomas’ and ‘marshall’, to which reminder the consumer will pay much less attention than the word element ‘thomas marshall’, which is considerably larger in the mark applied for.

46      The applicant does not deny that, in the earlier figurative mark, the consumer will not focus on the word ‘amplification’, which is much smaller than the word ‘marshall’ located above it. As regards the earlier word mark, it suffices to note that it is in any event limited to the element ‘marshall’.

47      Consequently, the Board of Appeal carried out a global assessment of the marks at issue which is not vitiated by errors.

48      In the second place, the argument alleging that the name Marshall is weakly distinctive on the ground that it is a very common name in the United Kingdom must be examined. The applicant also relies on the alleged ‘clearly’ distinctive character of the first name Thomas, which, he states, will attract the relevant public’s attention more than the name Marshall.

49      As regards the element ‘marshall’, the relevant question is not how many people in a Member State have the name Marshall, but whether or not that element of the marks at issue will be perceived as a common British surname (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353 paragraph 34). It is in essence apparent from the documents included in Annex 3(a) to the application that 97 225 people are alleged to have that surname in Great Britain and that it is the 62nd most common surname among 5 000 surnames, which cannot prove that that name will in fact be perceived as common. As regards the lists of famous and well-known people having the surname Marshall in the English-speaking world, in Annex 3(b) to the application and in paragraphs 53, 54 and 55 of the application, they seek, on the contrary, to show that the surname is distinctive by virtue of reputation. In addition, such lists are not such as to prove that that surname will be perceived as common or widespread by the English-speaking public of the European Union, and, a fortiori, by the remainder of the relevant public, namely that of the European Union as a whole.

50      In addition, the applicant does not explain why the name Marshall is weakly distinctive in respect of the goods and services in question.

51      In any event, it should be borne in mind that the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).

52      As regards the first name Thomas, contrary to the applicant’s submissions, the Board of Appeal found that that first name and the surname Marshall were equally distinctive and dominant in the mark applied for, which renders the case-law relied on by the applicant in paragraph 73 of the application, concerning situations where the Board of Appeal attributed greater distinctiveness to the surname than to the first name, irrelevant. In any event, it must be found that the applicant does not explain on what grounds that first name is more distinctive than that surname, whereas both are written in the same typeface, share the same number of syllables and the first name in question is not particularly fanciful or rare for the English-speaking public and for the remainder of the EU public.

53      The fact that in the mark applied for the first name Thomas comes before the surname Marshall, which also appears in the earlier marks, is likewise not a ground for holding that the relevant public will attach greater importance to that first name. It is usual when identifying people to state their first name followed by their surname. If great importance were attached to the fact that the first name comes first, this would, therefore, mean that too much importance would be accorded to the first name in the absence of other elements capable of making it stand out more.

54      It follows from the foregoing that the Board of Appeal was entitled to conclude, without erring, that the dominant element of the earlier marks was the word ‘marshall’ and that the dominant words of the mark applied for were ‘thomas’ and ‘marshall’, the other elements being of secondary importance.

–       The visual comparison

55      After listing the differences between the signs at issue, the Board of Appeal found that they were visually similar to the extent that they ‘coincide[d] in the word “[marshall]”’.

56      The applicant submits that the signs at issue must not be limited to their sole word in common, and emphasises the differences between those signs. He also states that the Board of Appeal itself found that two words were dominant in the mark applied for, namely ‘thomas’ and ‘marshall’, which ought to have led it to conclude that those signs were visually dissimilar. The applicant also relies on the specific conditions for the marketing of clothing, footwear and bags, which confer particular importance on the visual aspect of those signs, and also on EUIPO’s decisional practice concluding that signs were different notwithstanding the presence of a common surname.

57      EUIPO disputes those arguments.

58      The fact that a mark consists exclusively of the earlier mark, to which another word element has been added, is an indication that the two trade marks are similar (see, to that effect, judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 28, and of 28 October 2009, X-Technology R & D Swiss v OHIM — Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 31).

59      In the present case, it is not disputed that the earlier word mark is entirely included in the mark applied for, so that the two signs coincide in the dominant word ‘marshall’, with the mark applied for including in addition the element ‘thomas’, which is also dominant, the expression ‘garments of legends’ and the seal, although the last two are secondary in the overall impression. Accordingly, it must be held that the Board of Appeal was fully entitled to find, in essence, that there was an average degree of similarity.

60      That analysis cannot be invalidated by the applicant’s arguments.

61      First, contrary to the applicant’s submissions, the Board of Appeal did not confine itself, in the comparison of the signs, to the common element of the marks at issue and correctly took into account, in paragraphs 50 and 51 of the contested decision, the differences between them, which it listed as follows: the word ‘thomas’ and the expression ‘garments of legends’ in blue and the blue seal in the mark applied for, and the word ‘amplification’ in one of the earlier signs. It is apparent from paragraphs 44 to 46 above that most of those elements of difference will be perceived as secondary by the relevant public, which normally perceives a mark as a whole and does not engage in an analysis of its various details. It must also be pointed out that the fact that the figurative signs at issue are represented in different characters, that is to say, upper-case and lower-case letters, and that the earlier figurative mark is, unlike the mark applied for, represented in italics, cannot lead to the conclusion that they will be perceived as different by the relevant public.

62      Secondly, as regards the applicant’s argument that the signs ought to have been considered different because of the finding that the words ‘thomas’ and ‘marshall’ were ‘co-dominant’ in the mark applied for, it must be pointed out that on its own the ‘co-dominance’ of one of the elements of difference with an element of similarity between the signs is not capable of counteracting a finding of average similarity between the marks at issue.

63      Thirdly, although in clothes shops the choice of the item of clothing is generally made visually and, therefore, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (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 50), it must be found that since the visual similarity between the signs must be upheld, that argument becomes ineffective in the present case.

64      Fourthly, it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71). The arguments based on previous decisions of EUIPO must, therefore, be rejected.

65      It follows that the Board of Appeal did not err in concluding that the signs at issue are visually similar.

–       The phonetic comparison

66      In the present case, the Board of Appeal found, in paragraph 53 of the contested decision, that it was most probable that the earlier mark would be pronounced ‘marshall’, whereas the mark applied for would be pronounced ‘thomas marshall’, and that the expression ‘garments of legends’ and the word ‘amplification’, not being ‘decisive’ and being much smaller, would probably not be pronounced by the relevant consumer, simply to economise on pronunciation. The Board of Appeal also stated that much of what is contained in the blue seal would not be pronounced, and that the initials ‘t’ and ‘m’, which will be perceived as shorthand for the word element ‘thomas marshall’, would be ignored.

67      The applicant submits that the signs at issue are phonetically different, because they are different in respect of at least seven syllables, since the opponent’s marks are composed of two syllables, namely ‘mar’ and ‘shall’, whereas the mark applied for is composed of nine syllables, namely ‘tho’, ‘mas’, ‘mar’, ‘shall’, ‘gar’, ‘ments’, ‘of’, ‘le’ and ‘gends’. He adds that the consumer will remember the beginning of the mark applied for, the word ‘thomas’, more clearly than the rest of the mark, and that the beginnings of the signs with tonic accents are completely different. In the light of the Board of Appeal’s finding that the earlier figurative mark would be pronounced ‘marshall’, it submits that the mark applied for could, following the same logic, be pronounced ‘thomas’, which would make the marks phonetically different.

68      EUIPO disputes those arguments.

69      First, the applicant incorrectly considers that the signs at issue differ in respect of seven syllables. In its comparison of the mark applied for with the earlier word mark, which is the shortest, the Board of Appeal correctly found that the expression ‘garments of legends’, was long to pronounce and in a very small typeface, constituting the usual promotional fluff for that type of goods, and consequently that that expression would not be pronounced by the consumer. Similarly, the initials in the seal of the mark applied for will not be pronounced for several reasons: their discreet place in the overall sign, their function as a ‘label’, their small typeface and the fact that they will be interpreted as redundant vis-à-vis the dominant words ‘thomas’ and ‘marshall’.

70      Secondly, although the consumer normally attaches more importance to the beginning of words, that consideration cannot apply in all cases (judgment of 16 May 2007, Trek Bicycle v OHIM-Audi (ALLTREK), T‑158/05, EU:T:2007:143, paragraph 70), and cannot in any case invalidate the principle that the assessment of the similarity of marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 10 December 2008, Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 28 and the case-law cited). In the present case, it is apparent in particular from paragraphs 43 and 49 to 54 above that the Board of Appeal correctly found that the words ‘marshall’ and ‘thomas’ were dominant in the mark applied for. In addition, the first part of the mark applied for contains exactly the same number of syllables as the second part, and the applicant also fails to show how the tonic accents would be placed.

71      Thirdly, the applicant does not explain why the relevant consumer would pronounce the mark applied for ‘thomas’, not ‘thomas marshall’, those two words having correctly been found to be the dominant words of the mark applied for. That argument must, therefore, be rejected.

72      It follows that the Board of Appeal did not err in finding that the signs at issue are phonetically similar.

–       The conceptual comparison

73      In the present case, the Board of Appeal found, in paragraph 54 of the contested decision that although the word ‘marshall’, common to the signs at issue, could mean different things in English, the signs would all refer to the same idea of a name, and would therefore be conceptually similar. In addition, it found, in paragraph 66 of that decision, that those signs could also refer to the same person. In paragraph 69 of that decision, it stated that even if it had to be accepted that the English-speaking public would recognise the name Thomas Marshall as referring to a famous person, which in the Board of Appeal’s view was not proven, the conceptual link would not be disturbed, because the signs in question would then be referring to the same individual.

74      The applicant complains that the Board of Appeal failed to take into account the conceptual difference between, first, the earlier marks, which will be associated with the common word ‘marshall’ designating a member of the police force or a rank in the army in the mind of the English-speaking consumer, and secondly, the mark applied for, which, comprising a first name and a surname, will be associated with a specific natural person, or even a famous person, Thomas Marshall being especially known in the United Kingdom as an American Democratic politician, Vice-President of the United States. In any event, even if the earlier marks could be regarded as designating a surname, the applicant relies on the widespread nature of that surname in the United Kingdom. He submits that, consequently, the relevant public will focus more on the first name Thomas than on the surname Marshall.

75      EUIPO disputes those arguments.

76      As regards the earlier marks, it must be found, first, that while they could be perceived as designating a member of the police force, that is not the only possibility. In that regard, the applicant fails to show that the earlier marks would be precluded from being perceived as a surname by the EU consumer, in particular by the English-speaking public. In that context, it should be pointed out that the argument that the word ‘marshall’ would be perceived first and foremost as a common word seems to be inconsistent with the applicant’s numerous other arguments intended to show that that word refers to a very common surname in the United Kingdom, which is moreover the surname of many well-known people.

77      The applicant does not deny that the mark applied for will be perceived by the relevant public as a first name and a surname. Consequently, the word ‘marshall’ of the signs at issue will be able to be perceived by that public as referring to the same surname.

78      In the presence of marks composed of an identical element understood as a surname, the mere addition in one of the marks of a first name cannot create a conceptual difference between those marks. On the contrary, those marks will be understood by the relevant public as designating the names of people and, more particularly, of people having the same surname. Consequently, in the present case, since the word ‘marshall’ may be understood as a family name, the addition of the word ‘thomas’, which would be the first name of a member of that family, does not render the signs at issue conceptually different. Moreover, it cannot be precluded that, for part of the relevant public, the word ‘marshall’ of the earlier marks will be understood as referring to a person having the name Thomas Marshall, that is to say to the same person referred to by the dominant words of the mark applied for.

79      Nor can that finding be called in question by the applicant’s argument that the conceptual difference between the signs at issue stems from the fact that the mark applied for refers to a very well-known person. That assertion is not proven, as stated by the Board of Appeal in paragraph 69 of the contested decision and nor does the applicant show why, in that case, the relevant public would not perceive the surname Marshall as itself referring to the same well-known person, or at the very least to his family. It cannot, therefore, be concluded from such an argument that there is no conceptual similarity between those signs.

80      As regards the applicant’s argument intended to maintain that the word ‘marshall’ is weakly distinctive because of its nature as a common surname and the pre-eminence of the word ‘thomas’ in the mark applied for, it has also been rejected in paragraphs 48 to 53 above.

81      The Board of Appeal did not, therefore, err in finding that the signs at issue are conceptually similar.

 The comparison of the goods and services

82      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

83      The applicant submits, in essence, that in the absence of similarity between the mark applied for and the earlier figurative mark, only the earlier word mark, registered for the goods and services in Classes 9 and 11, should be taken into consideration for the comparison of the goods. In that regard, he submits that, except for some of the goods in Class 9 designated by the mark applied for, which he accepts are identical, or similar, to the goods in Class 9 designated by the earlier word mark, all the other goods designated by the mark applied for must be considered dissimilar to the opponent’s goods, on the ground that they have no relevant aspects, purpose, method of use, users, distribution channels and providers in common. Those goods are moreover neither in competition nor complementary to each other. The applicant concludes from this that the contested decision must be varied and the opposition rejected for the goods and services in Classes 3, 14, 16, 18 and 25, and partially upheld for the goods in Class 9 which he accepts are identical or similar to those of the earlier word mark, that is for ‘Apparatus for recording, transmission or reproduction of sound or images’, ‘Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media’, and ‘Computers and computer software’.

84      First, it must be found that the goods designated by the mark applied for in Classes 3 and 14 are not analysed by the Board of Appeal in the contested decision. The applicant’s complaint concerning those goods must, therefore, be rejected as ineffective.

85      Secondly, as EUIPO contends, by his reasoning the applicant artificially excludes from the comparison of the goods and services all the goods in Classes 16, 18 and 25 designated by the earlier figurative mark, relevant to the comparison, without any valid reason. It is apparent from paragraphs 31 to 81 above that the applicant incorrectly states that the mark applied for and the earlier figurative mark are dissimilar. In so far as the mark applied for is similar to the earlier figurative mark as well, the Board of Appeal was correct to carry out its comparison of the goods designated by the mark applied for with those designated by that earlier figurative mark.

86      Thirdly, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and pursuant to Article 177(1)(d) of the Rules of Procedure of the General Court, the application must, inter alia, contain the subject matter of the proceedings and a summary of the pleas in law relied on. That information must be sufficiently clear and precise to enable the defendant to prepare his defence and the Court to rule on the action, even without any other information (see judgment of 21 April 2004, Concept v OHIM (ECA), T‑127/02, EU:T:2004:110, paragraph 17 and the case-law cited). In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 8 July 2010, Strålfors v OHIM (ID SOLUTIONS), T‑211/10, not published, EU:T:2010:301, paragraph 5). Similar requirements apply where a claim or an argument is relied on in support of a plea in law (judgment of 9 July 2010, Grain Millers v OHIM — Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38).

87      However, it must be found that the applicant’s general statement that, in essence, with the exception of certain goods in Class 9, all the other goods in Classes 9, 16, 18 and 25 covered by the mark applied for are dissimilar, on the ground that they have no relevant aspects, purpose, method of use, users, distribution channels and providers in common and are neither in competition nor complementary to each other, is the result of a peremptory statement which is neither substantiated nor proven. The applicant does not develop any specific arguments in that regard, does not identify the goods to be compared, and does not state the errors of law or of fact which the Board of Appeal allegedly made during its detailed analysis of the comparison of numerous goods, carried out in paragraphs 23 to 46 of the contested decision.

88      In addition, it is not for the Court to speculate about the reasoning and precise observations, both in fact and law, that lie behind the action (judgment of 9 September 2010, Evropaïki Dynamiki v EMCDDA, T‑63/06, not published, EU:T:2010:368, paragraph 80) and, therefore, to identify, in the present case, which of the applicant’s arguments relate to which goods, nor the goods which must be compared, and which evidence could support the general statement that the criteria of similarity as apparent from the case-law in paragraph 82 above are not met in the circumstances of the case. In any event, as regards the findings that the goods are similar or identical challenged by the applicant, it suffices to note that, in the contested decision, the Board of Appeal correctly took into account the nature (paragraphs 24, 25, 32, 38, and 40 to 45), (almost) identical nature of the wording (paragraphs 32, 34, 39 and 46), purpose (paragraphs 24, 25, 38, 44 and 45), use (paragraphs 25, 40 and 45), manufacture (paragraphs 41 and 44), distribution channels (paragraphs 38, 41, 42, 44 and 45), and complementarity of the goods (paragraphs 33, 40 to 41 and 45).

89      Accordingly, the complaint alleging the lack of similarity of some of the goods concerned must be rejected.

 The likelihood of confusion

90      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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

91      In paragraphs 55 to 59 of the contested decision, the Board of Appeal, in essence, found that the earlier marks were inherently distinctive for the goods designated in Classes 9, 16, 18 and 25, on the ground essentially that they had no meaning in relation to those goods. It concluded, in paragraphs 72 and 73 of that decision, that, in view of the identical nature or similarity of the goods covered by the marks at issue, the visual, phonetic and conceptual similarity of the signs at issue and the normal inherent distinctiveness of the earlier marks, there was a likelihood of confusion between the marks at issue, at least from the perspective of the English-speaking consumers within the European Union. The Board of Appeal specified that that conclusion was valid for all the contested goods concerned, with the exception of those for which the Board had found no similarity, in contrast to the Opposition Division’s findings.

92      The applicant submits, in essence, that the earlier marks are weakly distinctive, because the word ‘marshall’ is a very common surname in the United Kingdom, and that the relevant consumer would be accustomed, in the sectors concerned, to a coexistence of marks containing the name Marshall. In that regard, he submits that that name is much used in numerous registered trade marks and on the market. He also refers to the judgment of 12 July 2006, Rossi v OHIM — Marcorossi (MARCOROSSI) (T‑97/05, not published, EU:T:2006:203), which he considers applicable to the present case.

93      EUIPO disputes those arguments.

94      In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49).

95      First of all, it must be noted that, in paragraphs 55 to 59 of the contested decision, the Board of Appeal’s reasoning on the distinctiveness of the earlier mark related, essentially, to the earlier marks, since it referred to the goods in Classes 9, 16, 18 and 25.

96      It is apparent from paragraphs 48 to 50 above that the applicant argues incorrectly that the allegedly common nature of the surname Marshall in the United Kingdom is likely to weaken its distinctiveness as regards the goods and services at issue.

97      In addition, it may not be concluded from the documents produced by the applicant that the word ‘marshall’ is weakly distinctive or not distinctive because of its alleged widespread use and the alleged coexistence of numerous economic operators using that word in combination with other words in order to designate identical or similar services on the market.

98      As regards the documentary evidence intended to prove that the word ‘marshall’ is used in 58 EU trade-mark registrations and 500 World Intellectual Property Organisation registrations, it does not prove actual presence on the market. According to the case-law, the relevant factor for the purposes of challenging an element’s distinctiveness is its actual presence on the market, not in registers or databases (judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). That evidence must, therefore, be rejected.

99      As regards the applicant’s statements that the word ‘marshall’ appears in numerous company names or numerous company officers’ names, it must be found that the evidence submitted in support of those statements, in Annexes 4(b), 4(c) and 4(d) to the application, was not submitted during the procedure before EUIPO. 

100    Documents produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). They must, therefore, be declared inadmissible.

101    In any event, it must be pointed out that the business name, shop sign or surname is irrelevant, given the substantial difference between the use of a word as a mark and its use as a business name, shop sign or surname, those latter signs not seeking to indicate the commercial origin of the goods (see, to that effect, judgment of 8 March 2013, David Mayer, T‑498/10, not published, EU:T:2013:117, paragraph 78).

102    As regards the documentary evidence included in Annex 5 to the application, intended to show a coexistence of marks using the word ‘marshall’ on the market, it must be found that some of the pages had already been submitted during the procedure before EUIPO (that is, pages 33 to 40, 43, 49, 90 to 93, 95 to 98, 129, 142 to 154 and a photograph on page 50, in the numbering of the applicant’s annexes), while others had not.

103    In the light of the case-law in paragraph 100 above, Annex 5 to the application must, therefore, be rejected as inadmissible, with the exception of pages 33 to 40, 43, 49, 90 to 93, 95 to 98, 129, 142 to 154 and a photograph on page 50, in the numbering of the applicant’s annexes, which are themselves admissible.

104    As the Board of Appeal noted in paragraphs 55 and 56 of the contested decision, the coexistence of earlier marks on the market can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 13 June 2013, Hostel drap v OHIM — Aznar textil (MY drap), T‑636/11, not published, EU:T:2013:314, paragraph 48 and the case-law cited).

105    In the present case, the Board of Appeal found that the applicant had not shown that the alleged coexistence of earlier marks on the market was based on such an absence of confusion on the part of the relevant public.

106    As regards the pages of Annex 5 to the application which are admissible in the context of the present action, it must be held that the Board of Appeal was fully entitled to find that they consisted in various screenshots of websites, the frequency of access to which by consumers in the European Union was unknown, some of those websites being clearly based in the United States. It also found that although there are clearly some trade names shown incorporating the word ‘marshall’, the material was repetitive. It must be noted, for example, that the name Official US Marshall appears several times. In addition, the Board of Appeal was fully entitled to state that the goods or services referred to were sometimes far removed from those relevant to the current matter and that some of the references are even to websites devoted to individuals such as Marshall MuLuhan and Yanis Marshall, not to trade marks. The applicant has adduced no evidence such as to cast doubt on that analysis.

107    In any event, it should be borne in mind that a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

108    As regards the judgment of 12 July 2006, MARCOROSSI (T‑97/05, not published, EU:T:2006:203), relied on by the applicant, it must be noted that, in the case giving rise to that judgment, the signs at issue differed significantly from those concerned in the present case. The Court held that the unusual combination of the first name Marco with the surname Rossi in a single word gave rise to an indivisible whole which would be memorised as such by the consumer, unlike the mark applied for in the present case. In addition, the earlier mark was not entirely reproduced in the contested sign in that case, unlike in the present case. The applicant’s arguments in that regard cannot, therefore, succeed.

109    The second plea in law must, therefore, be rejected.

110    Accordingly, the action must be dismissed in its entirety, and there is no need to rule on the admissibility of the applicant’s second head of claim.

 Costs

111    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Yusuf Pempe to pay the costs.

Delivered in open court in Luxembourg on 8 November 2017.

*      Language of the case: English.

© European Union
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