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

Provisional text

JUDGMENT OF THE GENERAL COURT (First Chamber)

10 October 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark ASNA WINGS — Earlier Benelux word mark WINGS — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) — Evidence submitted for the first time before the Court)

In Case T‑382/16,

Asna, Inc., established in San Antonio, Texas (United States), represented by J.-B. Devaureix and J. Erdozain López, lawyers,

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, intervener before the General Court, being

Wings Software BVBA, established in Heist-Op-den-Berg (Belgium), represented by C. Dekoninck and J. Bussé, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 26 April 2016 (Case R 436/2015-5), relating to opposition proceedings between Wings Software and Asna,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 21 July 2016,

having regard to the response of EUIPO lodged at the Court Registry on 21 November 2016,

having regard to the response of the intervener lodged at the Court Registry on 30 November 2016,

further to the hearing on 18 July 2017,

gives the following

Judgment

I.      Background to the dispute

1        On 30 November 2012, the applicant, Asna, Inc., 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 word sign ASNA WINGS.

3        The goods and services in respect of which registration was sought are in Classes 9 and 42 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: ‘Computers; computer software; computer systems; computer operating systems; database management systems; computer networks; computer hardware; computer peripherals devices; parts and fitting for all the aforementioned goods’;

–        Class 42: ‘Designing, research and development, analysis, maintenance and updating of computer software, computer system, namely, software, computer operating systems, database management systems; consultancy in the field of computers, computer software, computer systems, computer operating systems, database management systems, computer networks, computer hardware, computer peripheral devices; leasing, hire and rental of computers, computer software, computer systems, computer operating systems, database management systems, computer networks, computer hardware, computer peripheral devices’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 14/2013 of 21 January 2013.

5        On 19 April 2013, the intervener, Wings Software BVBA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6        The opposition was based, in particular, on the earlier word mark WINGS, registered on 10 March 2005 at the Benelux Office for Intellectual Property under No 763625, designating goods and services in Classes 9 and 42 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Magnetic data media; CDs; CD-ROMS; diskettes; recorded computer programs; computer memories; handbooks stored on magnetic data media’;

–        Class 42: ‘Computer programming in connection with electronic data processing; rental of access time to computers and computer records; design, development, production, implementation and integration of software; consulting and services of experts in connection with computer software and programming’.

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8        On 17 January 2014, the applicant made a request under Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) to have the intervener furnish proof of the genuine use of the earlier mark.

9        By decision of 18 December 2014, the Opposition Division upheld the opposition.

10      On 18 February 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

11      By decision of 26 April 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, after stating that the period during which genuine use of the earlier mark had to be demonstrated ran from 21 January 2008 to 20 January 2013 (‘the relevant period’), the Board of Appeal evaluated the evidence of genuine use of the mark submitted by the intervener and held that such use had been proved in respect of the relevant period. Secondly, the Board of Appeal noted, in essence, that the relevant public was composed of both average consumers and professionals with specific knowledge of IT; that the goods and services in question were partly identical and partly similar; and that the signs at issue were visually and phonetically similar, on account of the presence in the two signs of the word element ‘wings’, and conceptually similar. It concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

II.    Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

III. Law

A.      The evidence submitted for the first time before the Court

14      The applicant submitted, in Annex 5 to the application, a series of documents to support its argument that the word element ‘wings’ is commonly used to designate goods in Class 9 and services in Class 42, in such a way that that word element necessarily has a limited distinctive character and that, therefore, the earlier mark, composed exclusively of that word element, has a weak distinctive character.

15      EUIPO and the intervener contend that those documents must be declared inadmissible, as they were not produced during the administrative proceedings.

16      For the same reason, the intervener disputes the admissibility of the documents submitted in Annex 4 to the application, which contain extracts from the EUIPO register relating to marks containing the element ‘wings’.

17      It should be noted that the purpose of an action before the 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). Under Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001), the Court may annul or alter a decision of a Board of Appeal of EUIPO only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [Regulation No 207/2009] or of any rule of law relating to their application or misuse of power’. It follows from that provision that the Court may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court may not annul or alter that decision on grounds which come into existence subsequent to its adoption (see judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53 and the case-law cited). It is also clear from that provision that facts not submitted by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action before the Court. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the Board’s application of EU law, particularly in the light of the facts submitted to the Board; the Court cannot, however, carry out such a review by taking into account matters of fact newly produced before it (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54). It is not the Court’s function, therefore, to review the facts in the light of evidence produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

18      In the present case, it is clear from the case file that the extracts from the EUIPO register relating to marks containing the element ‘wings’ in Annex 4 to the application had already been produced during proceedings before EUIPO. Those documents must therefore be regarded as admissible.

19      As regards Annex 5, in so far as the documents referred to in paragraph 14 above were produced for the first time before the Court, they may not be taken into consideration for the purpose of reviewing the legality of the contested decision and must therefore be disregarded.

B.      Substance

20      In support of its action, the applicant relies on two pleas in law, alleging, in essence, first, infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), and, secondly, infringement of Article 8(1)(b) of Regulation No 207/2009.

1.      The first plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) of Regulation No 2868/95

21      By its first plea, the applicant alleges that the Board of Appeal wrongly found that genuine use had been made of the earlier mark, despite the inadequate evidential value of the evidence of use of the mark WINGS submitted by the intervener. In that respect, the applicant invokes the judgment of 23 September 2015, L’Oréal v OHIM — Cosmetica Cabinas (AINHOA) (T‑426/13, not published, EU:T:2015:669), which, in its opinion, sets out the conditions to be met in order to find that genuine use has been made of an earlier mark.

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

23      It is apparent from recital 10 of Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark unless it is actually used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the trade mark application against which notice of opposition has been filed.

24      Under Rule 22(3) of Regulation No 2868/95, the evidence for proof of use must concern the place, time, extent and nature of use of the earlier trade mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 37, upheld on appeal by judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310; see also judgment of 27 February 2015, LS Fashion v OHIM — Gestión de Activos Isorana (L’Wren Scott), T‑41/12, not published, EU:T:2015:125, paragraph 19 and the case-law cited).

25      In accordance with settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of Regulation No 207/2009, and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is sound commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. By contrast, the purpose of those provisions is not to assess the commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

26      There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

27      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly whether such use is viewed as warranted in the relevant economic sector as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

28      As to the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

29      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was very intensive or very regular, and vice versa. In addition, the turnover and volume of sales under the earlier mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the market concerned. As a result, the EU judicature has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see judgment of 17 December 2015, Bice International v OHIM — Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraph 39 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39).

30      The Court has explained that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47; see also judgment of 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 26 and the case-law cited).

31      Lastly, it is possible that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgments of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36, and of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 34).

32      The question whether the Board of Appeal rightly found that the earlier mark had been put to genuine use during the relevant period must be examined in the light of those considerations.

33      As a preliminary point, it must be noted that the Board of Appeal held that the relevant period for the purpose of establishing the genuine use of the earlier mark ran from 21 January 2008 to 20 January 2013, and the parties do not dispute this.

34      For the purpose of examining the genuine use of the earlier mark during the relevant period, it is apparent from the contested decision that the Board of Appeal based its reasoning on the following evidence adduced by the intervener, as listed in that decision:

–        newsletters, written in Dutch, intended for clients or potential clients, dating from the relevant period;

–        invoices issued during the relevant period to clients established in Belgium, Ireland and the Netherlands;

–        catalogues of goods and services offered by the intervener, written in Dutch, for 2008 and 2010 to 2012;

–        other financial information, such as a credit note and an email containing a purchase order for software and related services;

–        a declaration by the executive director of the intervener dated 2014 relating to the intervener’s turnover in Belgium, the Netherlands and the other EU Member States between 2008 and 2013;

–        two copies of subscription contracts for services provided by the intervener.

35      First, as regards the applicant’s argument that some of the items of evidence adduced by the intervener, namely a brochure and photographs, are undated and therefore do not make it possible to determine whether they correspond to the relevant period, it is clear that that argument must be rejected as irrelevant. It is apparent from paragraph 30 of the contested decision that the Board of Appeal took into consideration, for the purpose of its decision, the evidence described in paragraph 34 above only, namely newsletters, invoices, catalogues, financial information, a declaration of the executive director and copies of service subscription contracts.

36      The same conclusion must be drawn with regard to the applicant’s argument concerning the relevance of other items of evidence adduced by the intervener, in particular the lists of clients and distributors and the screenshots of an internet site, which, as is also apparent from paragraph 30 of the contested decision, were not taken into consideration by the Board of Appeal for the purpose of its decision.

37      Secondly, it should be noted, as the applicant rightly observed, and as was taken into account by the Board of Appeal in paragraphs 28 and 29 of the contested decision, that the declaration of the intervener’s executive director from 2014 relating to the intervener’s turnover in Belgium, the Netherlands and the other EU Member States between 2008 and 2013 was not, at any time during proceedings before EUIPO, supplemented by other evidence that might provide support for the figures put forward and, therefore, enable the significance of the use of the earlier mark to be assessed.

38      Thirdly, it should be noted that the other items of evidence adduced by the intervener on which the Board of Appeal based its finding that genuine use had been made of the earlier mark, namely the newsletters, the invoices, the catalogues, the financial information and the copies of service subscription contracts, provide further clarification as to the place, extent and nature of use of the earlier mark, and therefore provide support for the hypothesis of effective and sufficient use of the mark on the market concerned.

39      As regards the applicant’s claim that only 20 invoices, that is, four invoices per year, were issued by the intervener during the relevant period, the case file shows that the intervener submitted 20 invoices, quotes, order or delivery forms that it had issued during the relevant period, of which 17 were issued to clients established in the Benelux countries. Those 17 documents, as well as the credit note and the copies of the two service subscription contracts, also concerning clients established in the Benelux countries, show that the use is sufficiently significant to reflect real and genuine commercial use within the meaning of the case-law in paragraph 27 above.

40      In particular, it should be noted that the 20 documents issued to clients in the Benelux were all issued to different individuals, which shows that the mark was used publicly and outwardly and not solely within the intervener or within a distribution network owned or controlled by the intervener. More specifically, the invoices were made out over a period running from 5 March 2008 to 9 July 2012, that is, 52 months, concerning several product lines bearing the earlier mark and invoice numbers which are relatively far apart from each other.

41      It must be held that the sales in question, even if they are not large, constitute use which objectively is such as to create or preserve an outlet for the products concerned and which entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

42      Moreover, the newsletters and catalogues submitted by the intervener are relatively numerous, concern the goods and services at issue and were published during the relevant period. They suffice to show, on the one hand, that the use of the earlier mark was sufficiently intensive and very regular and, on the other hand, that that mark was used publicly and outwardly within the meaning of the case-law referred to in paragraph 24 above.

43      It follows from the foregoing that the Board of Appeal did not err when it held, following an overall assessment of the evidence adduced by the intervener, that that evidence, considered as a whole, demonstrated genuine use of the earlier mark in the Benelux countries.

44      Therefore, the first plea must be rejected.

2.      The second plea, alleging breach of Article 8(1)(b) of Regulation No 207/2009

45      By its second plea, the applicant claims, in essence, that the Board of Appeal erred when it found that there was a likelihood of confusion inasmuch as (i) the signs at issue have significant visual and phonetic differences and (ii) the word element ‘wings’ has a weak distinctive character, so that the word element ‘asna’ in the mark applied for dominates the overall impression given by that mark and is sufficient, in the present case, to rule out any likelihood of confusion.

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

47      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property, with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

48      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 line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and goods or services 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).

49      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

(a)    The relevant public

50      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 products 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).

51      In the present case, in view of the nature of the goods and services concerned and of the fact that the earlier mark invoked in support of the opposition is protected in Belgium, Luxembourg and the Netherlands, it is necessary to uphold the finding of the Board of Appeal in paragraph 34 of the contested decision — which the applicant moreover does not dispute — that, in essence, the likelihood of confusion must be analysed from the point of view of the relevant public established in those countries, consisting of the general public, with an average level of attention, as well as professionals, with a high level of attention.

(b)    Comparison of the goods and services

52      According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account (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).

53      Where the goods and services covered by the earlier mark include the goods and services covered by the trade mark application, those goods and services are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

54      In the present case, the parties agree on the fact that the goods and services in question, respectively in Classes 9 and 42, are, as observed by the Board of Appeal in paragraph 47 of the contested decision, partly identical and partly similar.

(c)    The comparison of the signs

55      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).

56      Moreover, it should be borne in mind that, according to settled 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 (see judgment of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT), T‑565/15, not published, EU:T:2016:518, paragraph 23 and the case-law cited).

(1)    On the distinctive and dominant elements

57      The distinctive character of an element making up a mark depends on the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services 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 or services for which the mark has been registered (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).

58      To establish the dominant character of an element making up a mark it is necessary to examine whether or not the overall impression conveyed to the relevant public by that mark is dominated by one or several elements of which it is composed. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that element is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other elements are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

59      In the present case, the Board of Appeal considered that none of the elements of the signs at issue could be regarded as distinctive or dominant.

60      The applicant criticises the Board of Appeal for having held that the earlier mark had an average distinctive character whereas, according to the applicant, the word element ‘wings’ — the sole component of the earlier mark and the element common to the marks at issue — has a weak distinctive character with regard to the goods in Class 9, in so far as its use on the market for that type of goods is common, and the word element ‘asna’ — present in the mark applied for and located at the beginning of the mark — necessarily dominates the overall impression given by the mark and is sufficient, in the present case, to rule out any likelihood of confusion.

61      With regard to the earlier mark, it should be noted that it cannot be inferred from the mere presence, in the register, of EU marks containing the element ‘wings’, with no reference whatsoever to their use on the market and any challenges to those marks on account of the existence of a likelihood of confusion, that that element has a weak distinctive character in respect of the goods and services in question.

62      Furthermore, the element ‘wings’ has no meaning for the relevant public in respect of the goods and services at issue and therefore has an average distinctive character.

63      Consequently, the Board of Appeal was right to find that the earlier mark had an average distinctive character.

64      As regards the mark applied for, it should be noted that it is composed of the word elements ‘asna’ and ‘wings’, both of which have an average distinctive character. Thus, the fact that the element ‘asna’ is placed before the element ‘wings’ is not sufficient to conclude that the term ‘asna’ is the dominant element of that mark.

65      Furthermore, as regards the applicant’s claim that the mark applied for constitutes, together with other marks of which it is the proprietor, a ‘family of marks’ likely to confer a higher distinctive character upon the term ‘asna’, it should be noted that the applicant does not adduce any evidence whatsoever to support the conclusion that such is the case with regard to the relevant public.

66      In the light of all those considerations, it must be held that the Board of Appeal was entitled to conclude that no element of the signs at issue could be regarded as distinctive or dominant.

(2)    Visual similarity

67      The Board of Appeal held, in paragraph 51 of the contested decision, that the signs at issue, on account of the presence of the common word element ‘wings’, displayed some degree of visual similarity.

68      The applicant claims, in essence, that the signs at issue are visually different, on account of the presence of four additional letters in the mark applied for.

69      First, it must be noted that the signs at issue each contain the word element ‘wings’.

70      Secondly, however, the signs at issue are distinguishable by their length. Whereas the earlier mark is composed of the single element ‘wings’, containing five letters, the mark applied for is composed of the two elements ‘asna’ and ‘wings’, separated by a space and containing nine letters in total.

71      Thirdly, it is clear that the element ‘wings’ of the mark applied for, separated by a space from the element ‘asna’, is an independent element. Although it is located in the second part of the sign, the element ‘wings’ may still be easily identified and perceived by the relevant public.

72      Thus, it must be held that the differences between the signs at issue are not such as to call into question their partial visual identity.

73      Furthermore, it should be recalled that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 7 March 2013, FairWild Foundation v OHIM — Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31 and the case-law cited). In the present case, the mark applied for is composed of a word element identical to the word element composing the earlier mark, to which the word element ‘asna’ has been added.

74      In those circumstances, the Board of Appeal was entitled to find that the signs at issue were visually similar.

(3)    Phonetic similarity

75      The Board of Appeal held, in paragraph 53 of the contested decision, that, on account of the presence of the common word element ‘wings’, the signs at issue displayed some degree of phonetic similarity.

76      The applicant disputes the Board of Appeal’s assessment and claims, in essence, that, phonetically, there are significant differences between the signs at issue, as they have different numbers of syllables.

77      First, it should be noted that the signs at issue share the sequence of letters ‘w’, ‘i’, ‘n’, ‘g’ and ‘s’, which will be pronounced in the same way, as a single syllable.

78      Secondly, the earlier mark contains only one syllable, whereas the mark applied for, which shares the same syllable as the earlier mark, contains three syllables.

79      However, that difference in the number of syllables is not such as to call into question the partial phonetic identity of the signs at issue.

80      In those circumstances, and in the light of the case-law recalled in paragraph 73 above, the Board of Appeal was entitled to find that the signs at issue were phonetically similar.

(4)    Conceptual similarity

81      The Board of Appeal held, in paragraph 55 of the contested decision, that the signs at issue were conceptually similar to the extent that the element ‘wings’ would be understood by the relevant public as referring to the wing of a bird or an insect.

82      The applicant disputes the Board of Appeal’s assessment and claims that the word element ‘asna’, which has no meaning for the relevant public, unlike the word element ‘wings’, is more likely to attract the attention of that public.

83      From the outset, it is appropriate to reject the applicant’s claim based on the premiss that the element ‘asna’ would be more likely to attract the attention of the relevant public, given that, as held in paragraph 66 above, no element of the mark applied for could be regarded as dominant.

84      First, it must be noted that the signs at issue are composed of terms which have no ordinary or known meaning for the relevant Dutch- or French-speaking public.

85      Secondly, the term ‘asna’ is a fanciful term, the meaning of which is not known by the relevant public.

86      Thirdly, despite the absence of ordinary or known meaning for the relevant Dutch- or French-speaking public of the term ‘wings’, it should be noted that that term is an English one, and that it cannot be ruled out that its meaning, even if it is not ordinary, may be known by a significant part of the relevant public.

87      Thus, it is clear that the signs at issue both have an evocative force liable to bring to mind, for the relevant public, limbs which enable birds and many insects to fly, or structures which enable various machines to fly.

88      In those circumstances, the Board of Appeal was entitled to find that the signs at issue were conceptually similar.

89      It is apparent from all the foregoing that the Board of Appeal did not err when it found that the signs at issue are similar overall.

(5)    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 (judgments of 29 September 1998, Canon, C 39/97, EU:C:1998:442, paragraph 17, and 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).

91      The Board of Appeal, in paragraph 73 of the contested decision, endorsed the analysis of the Opposition Division that, in the light of the similarity of the signs at issue and the partial identity of the goods and services in question, there was a likelihood of confusion.

92      That finding cannot be called into question by the applicant’s claim that the peaceful coexistence on the market of the earlier mark with other marks that use the word element ‘wings’ is such as to reduce, or even rule out, any likelihood of confusion in the present case.

93      Indeed, even though it cannot be entirely ruled out that, in certain cases, the coexistence of earlier marks on the market could potentially reduce the likelihood of confusion found by the adjudicating bodies of EUIPO between two marks at issue, it is clear from the case-law that such a possibility can be taken into consideration only if, at the very least, during proceedings concerning the examination of the relative grounds for refusal before EUIPO, the applicant for the EU 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 intervener’s 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 5 May 2015, Skype v OHIM — Sky and Sky IP International (skype), T‑423/12, not published, EU:T:2015:260, paragraph 66 and the case-law cited). However, it is clear that the applicant did not prove that the peaceful coexistence on which it relies is based on the absence of a likelihood of confusion between the earlier marks it invokes and the earlier mark of the intervener.

94      It follows from all the foregoing that the applicant’s second plea must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

95      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.

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

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Asna, Inc. to pay the costs.

Delivered in open court in Luxembourg on 10 October 2017.

* Language of the case: English.

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